Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1096686
`11/20/2020
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`MOBIGAME SARL
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`11/21/2020
`
`25 RUE TITON
`PARIS, 75011
`FRANCE
`
`Attorney informa-
`tion
`
`PATRICK J. CONCANNON
`NUTTER, MCCLENNEN & FISH, LLP
`SEAPORT WEST, 155 SEAPORT BOULEVARD
`BOSTON, MA 02210
`UNITED STATES
`Primary Email: docket@nutter.com
`Secondary Email(s): pconcannon@nutter.com
`617-439-2177
`
`Docket Number
`
`116551-6
`
`Applicant Information
`
`Application No.
`
`86538581
`
`Publication date
`
`09/22/2020
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`11/20/2020
`
`NONE
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`11/21/2020
`
`NONE
`
`Edge Games, Inc.
`530 SOUTH LAKE AVENUE
`171
`PASADENA, CA 91101
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 1984/06/04 First Use In Commerce: 1984/06/04
`All goods and services in the class are opposed, namely: Computer application software for mobile
`phones, namely, software for games; Computer game programmes downloadable via the Internet;
`Computer game software; Computer game software downloadable from aglobal computer network;
`Downloadable computer game programs; Downloadable computer game software via a global com-
`puternetwork and wireless devices; Downloadable electronic publications in the nature of e-zines and
`electronically repurposed printed magazine content on the Internet, in the field of mobile, on-
`computerand on-console gaming in the field of games software and hardware; Handheld personal
`computers; Personal computers; Video game software
`
`

`

`Class 016. First Use: 1984/06/04 First Use In Commerce: 1984/06/04
`All goods and services in the class are opposed, namely: Cardboard packaging; Printed matter,
`namely, paper signs, books, manuals, curricula, newsletters, informational cards and brochures in the
`field of computer and video game software and hardware
`
`Class 041. First Use: 2003/08/01 First Use In Commerce: 2003/08/01
`All goods and services in the class are opposed, namely: Non-downloadable electronic publications
`in the nature of e-zines and electronically repurposed printed magazine content on the Internet, in the
`field of mobile, on-computer and on-console gaming in the field of games software and hardware;
`Providing a web-based system and on-line portal for customers to participate in on-line gaming, oper-
`ation and coordination of game tournaments, leagues and tours for recreational computer game play-
`ing purposes
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`No use of mark in commerce before application
`or amendment to allege use was filed
`
`No bona fide intent to use mark in commerce for
`identified goods or services
`
`Fraud on the USPTO
`
`Trademark Act Sections 1(a) and (c)
`
`Trademark Act Section 1(b), 44(e) or 66(a)
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`
`86491036
`
`Application Date
`
`12/28/2014
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Related Proceed-
`ings
`
`Attachments
`
`EDGE
`
`NONE
`
`Class 009. First use: First Use: 2008/07/11 First Use In Commerce: 2008/12/24
`Computer game software
`
`Cancellation No. 92075393
`
`Notice of Opposition to 86538581.pdf(73936 bytes )
`Opposition Exhibit A.pdf(6029633 bytes )
`
`Signature
`
`/PJC/
`
`Name
`
`Date
`
`PATRICK J. CONCANNON
`
`11/20/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 86/538,581
`Filed on February 18, 2015
`For the Mark: EDGE
`Published in the Official Gazette on September 22, 2020
`
`
`
`MOBIGAME SARL,
`
`Opposer,
`v.
`
`Edge Games, Inc.,
`
`Applicant.
`
`
`BOX TTAB FEE
`Assistant Commissioner for Trademarks P.O. Box 1451
`Alexandria, VA 22313-1451
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`Opposition No.: ___________
`
`Notice of Opposition
`
`Opposer, MOBIGAME SARL, a société à responsabilité limitée organized and existing
`
`under the laws of the France, having an address at 25 rue Titon, Paris, France 75011
`
`(“Opposer”), believes that it would be damaged by issuance of the proposed registration of the
`
`trademark EDGE in Application No. 86/538,581 (the “Application”) published in the Official
`
`Gazette on September 22, 2020 and filed by Edge Games, Inc., a corporation organized and
`
`existing under the laws of the State of California (“Applicant”), and hereby opposes the
`
`Application. Opposer filed a timely Request for an Extension of Time to Oppose the Application
`
`on October 22, 2020, which was approved by the Board.
`
`The grounds for this Opposition are as follow:
`
`
`
`

`

`
`
`
`
`Opposer and its Marks
`
`1.
`
`Opposer is a société à responsabilité limitée organized and existing under the laws
`
`of France with its principal place of business in Paris, France.
`
`2.
`
`Opposer is in the business of selling and distributing mobile application video
`
`games throughout the world.
`
`3.
`
`Opposer owns Appl. Serial No. 86/491,036 for the mark EDGE for “computer
`
`game software” filed on December 28, 2014, prior to the Application.
`
`4.
`
`Opposer first used EDGE as a trademark in and throughout the U.S. in December
`
`2008 by selling computer games prominently bearing EDGE to customers in the U.S. and
`
`facilitating customers’ downloading of the computer games. Opposer has used its EDGE mark
`
`in relation to computer games continuously since December 2008, and continues to do so at the
`
`time of this Notice of Opposition filing.
`
`5.
`
`Opposer thus owns nationwide common law trademark rights dating back to
`
`December 2008 in its mark EDGE in connection with computer games by virtue of its
`
`widespread, continuous and exclusive use of that mark throughout the United States. Upon
`
`information and belief, Opposer established such common law rights in its EDGE mark prior to
`
`any date of first use or priority date upon which Applicant can rely in relation to the mark EDGE
`
`in the Application.
`
`6.
`
`Opposer has expended time and effort in advertising and promoting its computer
`
`games under its EDGE mark. As a result of Opposer’s advertising and promotional activities
`
`and continuous and substantially exclusive use of EDGE, the relevant public has come to
`
`associate and identify Opposer’s EDGE mark exclusively with Opposer, and the mark has
`
`attained a high degree of consumer recognition. Opposer derives substantial goodwill from such
`
`identification by consumers.
`
`
`
`
`2
`
`

`

`
`
`
`
`Applicant and its Mark
`
`7.
`
`Opposer hereby incorporates by reference the allegations in Paragraphs 1 through
`
`5 hereof as if fully set forth herein.
`
`8.
`
`Upon information and belief, Applicant is a corporation organized and existing
`
`under the laws of the State of California with an address of 530 South Lake Avenue, #171,
`
`Pasadena, California 91101.
`
`9.
`
`Applicant filed the Application based upon both Section 1(a) of the Lanham Act
`
`and Section 44(e) of the Lanham Act for the following goods and services:
`
`Computer application software for mobile phones, namely, software for games;
`
`Computer game programmes downloadable via the Internet; Computer game software;
`
`Computer game software downloadable
`
`from a global computer network;
`
`Downloadable computer game programs; Downloadable computer game software via a
`
`global computer network and wireless devices; Downloadable electronic publications in
`
`the nature of e-zines and electronically repurposed printed magazine content on the
`
`Internet, in the field of mobile, on-computer and on-console gaming in the field of
`
`games software and hardware; Handheld personal computers; Personal computers;
`
`Video game software (alleging a date of first use of June 4, 1984), in Class 9;
`
`Cardboard packaging; Printed matter, namely, paper signs, books, manuals, curricula,
`
`newsletters, informational cards and brochures in the field of computer and video game
`
`software and hardware (alleging a date of first use of June 4, 1984), in Class 16;
`
`Non-downloadable electronic publications in the nature of e-zines and electronically
`
`repurposed printed magazine content on the Internet, in the field of mobile, on-
`
`computer and on-console gaming in the field of games software and hardware;
`
`Providing a web-based system and on-line portal for customers to participate in on-line
`
`
`
`
`3
`
`

`

`
`
`
`
`gaming, operation and coordination of game tournaments, leagues and tours for
`
`recreational computer game playing purposes (alleging a date of first use of August 1,
`
`2003), in Class 41.
`
`10. The Application was suspended based upon Opposer’s prior application (a
`
`designation of rights under an International Registration) for its EDGE mark in relation to
`
`computer games. Applicant’s application proceeded to publication when Opposer’s International
`
`Registration, and thus its prior USPTO application, lapsed as a result of a clerical oversight in the
`
`part of Opposer.
`
`Count I: Priority and Likelihood of Confusion
`
`11.
`
`Opposer hereby incorporates by reference the allegations in Paragraphs 1 through
`
`9 hereof as if fully set forth herein.
`
`12. Applicant’s mark EDGE, as set forth in the Application, is identical to Opposer’s
`
`EDGE mark. Opposer uses its EDGE mark in a plain text form that is indistinguishable from the
`
`mark in the Application. To the extent that Applicant is deemed to instead own rights in a mildly
`
`stylized mark, that stylized EDGE mark and Applicant’s EDGE are virtually identical and at the
`
`very least are highly similar to each other in terms of sight, sound, connotation, and commercial
`
`impression. Moreover, Opposer’s prior Appl. Serial No. 86/491,036 for “computer game
`
`software”, goods legally identical to those in the Application, is for the word EDGE in standard
`
`characters with no style restriction. The mark EDGE in the Application, on the one hand, and
`
`Opposer’s EDGE, on the other, are confusingly similar on their whole.
`
`13. The goods listed in the Application and Opposer’s computer games are legally
`
`identical to the extent that they entail computer games. The Class 9 goods other than computer
`
`game software listed in the Application, namely, downloadable electronic publications in the
`
`nature of e-zines and electronically repurposed printed magazine content on the Internet, in the
`
`
`
`
`4
`
`

`

`
`
`
`
`field of mobile, on-computer and on-console gaming in the field of games software and
`
`hardware, handheld personal computers and personal computers, are closely related to
`
`Applicant’s computer game software. With the exception of cardboard packaging (which should
`
`be denied registration on other grounds set forth below in this Notice), the Class 16 printed
`
`matter goods listed in the Application are closely related to the goods in relation to which
`
`Opposer enjoys EDGE trademark rights because they are “in the field of computer and video
`
`game software and hardware”. The Class 41 services in the Application are electronic
`
`publications relating to game software and an online portal for providing online game software
`
`and video game competitions, all of which related closely to the goods for which Opposer owns
`
`EDGE trademark rights. With the exception of “cardboard packaging”, all goods and services
`
`listed in the Application are either legally identical to or closely related to Opposer’s goods.
`
`14. Accordingly, Applicant’s applied-for EDGE mark is likely to cause confusion or
`
`mistake, or to deceive the public into believing that Applicant’s goods and services emanate
`
`from or are somehow affiliated or associated with, connected to or sponsored by Opposer. The
`
`mark EDGE in the Application should be deemed barred from registration because it consists of
`
`or comprises a mark which is identical to or so resembles Opposer’s previously used mark
`
`EDGE and the EDGE mark in Appl. Serial No. 86/491,036 as to be likely, when used in
`
`connection with the goods in the Registration, to cause confusion, mistake, or deception within
`
`the meaning of 15 U.S.C. § 1052(d).
`
`15.
`
`If Applicant is allowed to register the EDGE mark in the Application, there will
`
`be likelihood of confusion as to the source of Applicant’s goods and services, resulting in
`
`damage and injury to Opposer.
`
`16. Opposer would be damaged by Applicant’s registration of the EDGE mark
`
`because such registration would support and assist Applicant in the confusing and misleading use
`
`
`
`
`5
`
`

`

`
`
`
`
`of EDGE, would give color of rights to Applicant in violation of Opposer’s prior and superior
`
`common law rights in its EDGE mark, and would enable Applicant’s serial trademark trolling
`
`activities reflected in Applicant’s numerous groundless and harassing proceedings before the
`
`USPTO. Opposer therefore has a real interest in opposing the Application and standing to bring
`
`this action.
`
`Count II: Applicant’s Fraud in Filing the Application
`
`17. Opposer hereby incorporates by reference the allegations in Paragraphs 1 through
`
`15 hereof as if fully set forth herein.
`
`18. Applicant’s CEO Tim Langdell, on Applicant's behalf, represented to the USPTO
`
`within the Application that Applicant was at the time of filing actively using the subject mark
`
`EDGE in U.S. commerce on or in relation to all the goods and services in the Application and
`
`had been using EDGE in commerce in connection with the Class 9 goods since June 4, 1984, the
`
`Class 16 goods since June 4, 1984 and the Class 41 services since August 1, 2003 (collectively
`
`the “Representations”).
`
`19. On information and belief, the Representations were false at the time Tim
`
`Langdell made them on Applicant’s behalf, and Tim Langdell knew the Representations to be
`
`false at the time he made them on Applicant’s behalf. Upon information and belief, primarily
`
`stemming from Applicant’s inability to produce credible evidence of EDGE or EDGE GAMES
`
`trademark use when called upon to do so in an earlier proceeding involving Opposer and
`
`Applicant, Applicant (a) was not using the mark EDGE on the goods and in relation to the
`
`services in the Application at the time of filing the Application; and (b) had not been using the
`
`mark EDGE on the goods and in relation to the services in the Application by or since the dates
`
`of first use that Applicant alleged as part of the Representations. Applicant and Tim Langdell
`
`have a history of perpetrating fraud before the USPTO, intentionally misleading courts of law
`
`
`
`
`6
`
`

`

`
`
`
`
`and trademark registries, and abuse of legal procedure, including in opposition and cancellation
`
`proceedings.
`
`20. On October 1, 2010 Hon. William Alsup of the United States District Court of the
`
`District of Northern California issued an "Order Denying Motion for Preliminary Injunction" in
`
`relation to legal proceedings that Applicant brought against Electronic Arts, Inc. See Exhibit A
`
`to this Petition. Judge Alsup’s order included factual findings relevant to this Petition. After
`
`considering the parties’ evidence and arguments concerning the motion in that proceeding, Jude
`
`Alsup found that Applicant had altered/falsified specimens submitted to the USPTO under oath
`
`in support of several of Applicant’s trademark applications. Judge Alsup also found that
`
`Opposer had submitted a specimen alleged to show current use for purposes of maintaining a
`
`registration, and that in fact the use had discontinued more than ten years earlier. The court
`
`found that Applicant claimed use through companies as alleged licensees which instead had no
`
`relationship with Applicant, or where the “use” asserted was outside of the scope of the parties’
`
`license. Moreover, Judge Alsup found that Applicant had doctored genuine images product
`
`packaging to add wording attributing rights in the mark to Applicant in an attempt to create the
`
`appearance of ownership of valid rights as a licensor.
`
`21.
`
`Judge Alsup in the same order detailed above found that Applicant in 2004, and
`
`after the dates of first use alleged in the Application, had submitted falsified specimens to the
`
`USPTO in support of a (now cancelled) registration for the mark EDGE.
`
`22. On information and belief, because Applicant had been found to intentionally
`
`mislead the USPTO and falsify specimens filed before the USPTO during the time period during
`
`which it claimed use in the Application, and as evidence obtained through discovery in this
`
`proceeding will likely further show, Applicant and Tim Langdell knew the Representations were
`
`false at the time it was made.
`
`
`
`
`7
`
`

`

`
`
`
`
`23. The only reasonable inference from the foregoing is that Tim Langdell made the
`
`Representations on Applicant’s behalf to mislead the USPTO and to cause the USPTO to accept
`
`and publish the Application.
`
`24. The false Representations were and are material because, but for the false
`
`Representations, the USPTO would not have accepted and published the Application.
`
`25. Opposer will be harmed by the Application’s advancing to registration because it
`
`is likely to prevent Opposer from obtaining a registration for its EDGE mark, because such
`
`registration would support and assist Applicant in the confusing and misleading use of EDGE,
`
`and because such registration would give color of rights to Applicant in violation of Opposer’s
`
`prior and superior common law rights in its EDGE mark.
`
`26. Based on the foregoing, Applicant filed the Application fraudulently, which is
`
`grounds for sustaining this opposition to the Application with respect to all listed goods and
`
`services.
`
`Count III: Lack of Use in Commerce and Lack of Bona Fide Intent to Use in Commerce
`
`27.
`
`Opposer hereby incorporates by reference the allegations in Paragraphs 1 through
`
`25 hereof as if fully set forth herein.
`
`28. Upon information and belief, Applicant had not used the subject mark EDGE on
`
`or in relation to any of the goods and services listed in the Application in interstate commerce at
`
`the time of filing of the Application.
`
`29.
`
`Upon information and belief, Applicant did not have as of the filing date of the
`
`Application, nor does it presently have, an intent to use the subject mark EDGE on or in relation
`
`to the goods and services listed in the Application in interstate commerce.
`
`
`
`
`8
`
`

`

`
`
`
`
`30.
`
`Opposer would be damaged by registration of the Application, which would
`
`improperly give color of rights to Applicant and entitle Applicant to presumptions and other
`
`benefits under the Lanham Act that are not warranted.
`
`Prayer for Relief
`
`WHEREFORE, Opposer prays that this Opposition be sustained and that the
`
`Application be in all respects denied. The filing fee of $1,200 for this Notice of Opposition is
`
`being submitted electronically with this Notice.
`
`Dated: November 20, 2020
`
`Respectfully submitted,
`
`NUTTER MCCLENNEN & FISH, LLP
`
`
`
`By:
`
`Patrick J. Concannon
`
`Seaport West
`155 Seaport Boulevard
`Boston, Massachusetts 02210
`617-439-2177
`pconcannon@nutter.com
`docket@nutter.com
`
`Attorneys for Opposer MOBIGAME
`SARL
`
`
`
`CERTIFICATE OF ELECTRONIC MAILING
`
` I
`
` hereby certify that the foregoing Notice of Opposition is being submitted electronically through the
`Trademark Trial and Appeal Board’s ESTTA System on this 20th day of November 2020.
`
`
`
`
`
`
`
`
`
`
`
`
`
`4990636.2
`
`
` Patrick J. Concannon
`
`
`
`
`
`
`9
`
`

`

`Exhibit A
`Exhibit A
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Edge Games, Inc. v. Electronic Arts Inc..
`
`Dec. 67
`
`
`
`UnitedStatesDistrictCourt
`
`
`
`
`
`
`
`
`
`FortheNorthernDistrictofCalifornia
`
`.—
`
`D‘OOO‘JGLh-SBUN
`
`”MMMMNNNM—lh‘l—Hb—Ji—IP—‘l—lr—Ii—L—nmummawMHosDocqoxm-P-mm—n
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`EDGE GAMES, INC, a California
`corporation,
`
`No. C 10-02614 WHA
`
`Plaintiff,
`
`v.
`
`ORDER DENYING MOTION FOR
`PRELIMINARY INJUNCTION
`
`ELECTRONIC ARTS, INC, a Delaware
`corporation,
`
`Defendant.
`
`/
`
`INTRODUCTION
`
`In this trademark infringement action involving video-gaming giant Electronic Arts, inc.
`
`and its “revolutionary” first-person, action-adventure video game “Mirror’s Edge,” plaintiff Edge
`
`Games, Inc. — a so-called “small video-gaming company” based in Pasadena —— moves to
`
`preliminarily enjoin defendant Electronic Arts from using the “MIRROR’S EDGE” mark while
`
`this dISpute unfolds in court. Because plaintiffhas failed to establish that it is likely to succeed on
`
`the merits, that it is likely to suffer inoperable harm in the absence of preliminary relief, that the
`
`balance of equities tips in its favor, or that an injunction is in the public interest, the motion for a
`
`preliminary injunction is DENIED.
`
`Dockets.Justia.c m
`
`

`

`
`
`UnitedStatesDistrictCourt
`
`
`
`
`
`
`
`FortheNorthernDish-letofCalifornia
`
`ouconqmm-thmuy—a
`MMNMHMMMM-‘Ho—‘HHHHHHI—ImummewM—dcewqmmewhfiw
`
`1.
`
`PLAINTIFF EDGE GAMES, INC.
`
`STATEMENT
`
`Edge Games, Inc. is “one of the oldest surviving video game development and publishing
`
`businesses” on the planet — at least, that’s what its founder, chief executive officer, and sole
`
`shareholder, Dr. Tim Langdell, would have a jury believe (Langdell Decl. fil‘fl 1-3). According to
`
`Dr. Langdell's declaration, he began using the “EDGE” mark in connection with video-game
`
`marketing and sales back in 1984 through a London-based video-game company called Sofiek
`
`(id. at fl 2). Sofiek is supposedly a predecessor-in-interest to Edge Games. After Dr. Langdell
`
`mOVed to Los Angeles in 1990, he reincorporated Softek as Edge Interactive Media (another
`
`supposed predecessor-in-interest to Edge Games). He then incorporated Edge Games — the
`
`alleged trademark holder herein — in 2005 (id. at 1] 3).
`
`Plaintiff Edge Games and its predecessors supposedly developed, distributed, and sold
`
`several dozen video games from the mid-19905 through 2010 bearing the asserted marks (id. at 1]
`
`17). Examples of recent video-game products purportedly marketed by Edge Games and bearing
`
`one or more of the asserted marks include “Bobby Bearing,” “Raffles,” “Mythora,” “Pengu,”
`
`“Battlcpods,” and “Racers” (id. at 11 i4, Exhs. K—T). BetWeen 2003 and 2009, Edge Games
`
`purportedly sold over 1 1,000 units of Raffles, Mythora, and Racers, which are “packaged PC
`
`video game” products, as well as over 45,000 units of Bobby Bearing, Pcngu, and BattiePods,
`
`which are games that can be played on certain mobile phones (id. at 311] 15—16). In addition to PC
`
`and mobile-phone video games, Dr. Langdell also claims that Edge Games develops, publishes,
`
`andfor licenses games for major gaming consoles such as the Sony PlayStation 3, and that various
`
`releases are currently being developed for gaming consoles and platforms including Microsoft’s
`
`Xbox 360, the Nintendo Wii, and the Apple iPhone and iPad (id. at 1: 15).
`
`According to Dr. Langdell, these “upcoming” releases fi'om Edge Games will supposedly
`
`be sold through the same retailers that the accused products were (and are still being) sold, such
`
`as Amazoncom, Best Buy, and Target (id. at 11 20). In sum, based upon Dr. Langdell‘s
`
`declaration, Edge Games is a legitimate “small video-gaming company” that is active in the
`
`video-gaming industry.
`
`

`

`
`
`UnitedStatesDistrictCourt
`
`
`
`
`
`
`
`FortheNorthernDistictchaliforn‘fl
`
`
`
`
`
`2.
`
`DEFENDANT ELECTRONIC ARTS, INC.
`
`Electronic Arts — or EA for short — is a leading “interactive. entertainment” company
`
`that develops, publishes, and distributes video games and related software for modern gaming
`
`consoles including Microsoft’s Xbox 360, the Sony PlayStation 3, and the Nintendo Wii, as well
`
`as for PCS, Macs, and various mobile-gaming devices. Since its formation in 1982, EA has
`
`grown to become an international, publicly traded corporation with more than ten video—game
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`development studios spanning the globe. In 2009 alone, EA had sales exceeding one million
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`units for at least 31 of its active video-game fi‘anchises (Hershberger Decl. 1] 2).
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`“Mirror’s Edge” is one of EA’s modestly successful video—game franchises. Developed
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`by EA Digital Illusions CE AB (or “EA DICE" for short) in Stockholm, Sweden — one of EA’s
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`ten video-game development studios — the “Mirror’s Edge" franchise stands at the heart ofthe.
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`instant trademark dispute (id. at 1] 3).
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`3.
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`THE “MIRROR’S EDGE” FRANCHISE
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`in July 2007, EA announced in “Edge Magazine” — a leading print and online video-
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`game magazine published by Future Publishing — that its EA DICE development studio was
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`creating a “revolutionary new take on the first-person action adventure game” entitled “Mirror’s
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`Edge” (id. at 1] 4). The announcement was a cover story in the magazine, and it was accompanied
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`by a press release issued by EA on July 11, 2200?, officially announcing the development of the
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`“Mirror’s Edge” video game (id. at Exh. A; Binns Decl. 1] 3, Exh. F). According to EA’s senior
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`marketing director, Lincoln Hershberger, “Mirror’s Edge” was widely known and discussed
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`throughout the gaming industry and became one of the most anticipated video-game releases of
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`2008 (Hershberger Decl. 1] 5). Tens of millions of dollars were invested by BA in the game’s
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`development, which spanned three years and involved a team of over 60 individuals (id. at 1| 8).
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`The game itself is set in a city of gleaming skyscrapers with reflective surfaces and empty
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`streets, whose population has been marginalized by a totalitarian regime. Players interact with
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`and explore this world through the eyes of a character named “Faith," who is a messenger (or, as
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`the game describes her, a “runner”) tasked with covertly delivering information, messages, and
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`other items within the city while evading government surveillance. The network of roofiOps and
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`aerial skyways that Faith and other “runners” utilize to make these deliveries and evade the
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`government is dubbed the “Mirror’s Edge” (id. at 1] 6).
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`Prior to its official release, “Mirror’s Edge” was demonstrated and publicized at numerous
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`industry events, including the Game Developers Conference in February 2008 and the Electronic
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`Entertainment Expo (or “133”) in July 2008. E3 is widely regarded as the most important expo in
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`the video-game industry (id. at 1! 9). Also in July 2008, “Mirror’s Edge” was showcased at
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`Comic-Con, the largest comic-hook convention in the world, where a limited-run comic-book
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`adaptation of “Mirror’s Edge” was announced. The six-issue “Mirror‘s Edge” comic “mini-
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`series” was published in 2008 and 2009 by a division of DC Comics (I'd. at1l 10).
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`In total, EA
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`invested over $9 million to market “Mirror’s Edge” in North America (I'd. at 1] ii).
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`In November 2008, “Mirror’s Edge" was released for the Sony PlayStation 3 and
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`Microsoft’s Xbox 360. A PC version followed in January 2009 (id. at 1] 13). These games were
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`sold through retail channels including mass merchandisers (e.g, Walmart, Target), electronics
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`sellers (cg, Best Buy), video-game resellers (rag, GameStop), club stores (tag, Costco), and
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`online retailers (e.g., Amazoncom) (id. at 1] 14). Since its initial release, over two million units of
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`“Mirror's Edge” have been sold worldwide, including over 750,000 units in North America alone
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`(id. at 1[ 17). While EA is no longer manufacturing or distributing copies of “Mirror’s Edge” for
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`the Sony PlayStation 3, the Microsoft’s Xbox 360, or the PC for third-party retailers, the PC
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`version ofthe game remains available for download on EA’s online store (id. at 1[ 18).
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`Due to its modest success, additional products were developed for the “Mirror’s Edge”
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`fi'anchiSe. In February 2009, EA released “additional downloadable context” for the game, which
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`was sold as “Mirror’s Edge Pure Time Trials Map Pack” (id. at1i 15). Additionally, a separate
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`and “substantially scaled down” side-scrolling version of the game was announced in December
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`2009 and developed from scratch for the Apple iPad, iPhone, and iPod Touch (Correa Decl. 111
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`2—6). This side-scrolling version of the game -— published in 2010 — was entitled “Mirror’s
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`Edge 2D.” It is currently available for purchase through Apple’s App Store, where over 37,000
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`units have already been downloaded for the Apple iPad (id. at 111! 4—6; Hershbergcr Decl. 1[ 15).
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`Finally, a Mac version of the original “Mirror’s Edge” video game is currently under
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`development and is slated for release later this year (Hershberger Decl. 1] l3).
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`4.
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`THE ASSERTED AND ACCUSED MARKS
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`As should be obvious by this point, this trademark battle centers on EA's use ofthe word
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`“Edge" in the “Mirror’s Edge” franchise. The logo for “Mirror’s Edge” and examples of how
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`“Mirror’s Edge” appeared in advertising and product packaging are reproduced below (id. at 111]
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`] 1—13, Exhs. D—E; Shafer Dec]. 1[ 2, Exhs. A-H):
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`As shown, the logos for both EA and EA DICE were prominently displayed on the game’s
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`packaging and advertising. In the reproductions above, the logos for EA and EA DICE are most
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`clearly seen on the bottom right of the Xbox 360 cover art. The logos for EA and EA DICE were
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`also placed on the advertisement (to the left of “There’s No Looking Back”). While difficult to
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`see in the reproduction above, the logos are clearly visible on the normal sized version.
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`The “MIRROR’S EDGE” mark is owned by EA DICE. The application was filed in
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`September 2009 and — over a letter of protest filed by Edge Games — the United States Patent
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`and Trademark Office approved the registration of the “MIRROR’S EDGE” mark on June 22,
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`2010, for computer and video game software, comic books, and online video games (Schatz Deci.
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`'[I 21, Exh. S).
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`Turning next to the asserted marks in this action, Edge Games is the purported owner of
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`six federally registered trademarks that it supposedly “uses and selectively licenses” to other
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`companies. These marks are: (1) “EDGE,” (2) “THE EDGE,” (3) “GAMER’S EDGE,” (4)
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`“EDGE OF EXTINCTION,” (5) “CUTTING EDGE,” and (6) “EDGEGAMERS.” Edge Games
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`also claims common-law trademark rights OVer the “EDGE” logo (Langdell Dec]. at 111} 4~1 2,
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`Exh. '1‘). Each mark will be described briefly below.
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`A.
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`“EDGE”
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`Edge Games purportedly owns two valid USPTO registrations for the. mark “EDGE” as
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`used in connection with printed matter and publications relating to video games and comic books.
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`According to Dr. Langdell, the “EDGE” mark was in continuous use since 1985, and — for at
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`least one ot'the two registrations — is incontestable. Edge Games also asserts ownership over the
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`common—law mark “EDGE” for use in connection with video-game software and related goods
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`and services, with continuous use supposedly extending back to 1984 (id. at 1[ 6, Exits. A—C).
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`B.
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`“THE EDGE”
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`Plaintiff also supposedly owns a valid registration for the mark “THE EDGE,” issued by
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`the USPTO in 2009 for use in connection with Video-game software, video-game controllers, and
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`video-game magazines, with continuous use allegedly extending back to 1995 (id. at 1] 7, Exh. D).
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`C.
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`“GANIER’S EDGE”
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`Another registered mark purportedly owned by Edge Games is “GAMER’S EDGE,”
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`issued by the USPTO in 2008 for use in connection with video-game software and various video-
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`game accessories, with continuous use supposedly extending back to 1986 (id. at 1] 8, Exh. E).
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`Again, Dr. Langdell asserts that the plaintiff owns a valid registration over this mark.
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`D.
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`“EDGE OF EXTINCTION”
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`Ownership of the “EDGE OF EXTINCTION" mark is also claimed by Edge Games. This
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`mark was originally registered by a non-party and issued by the USPTO in 2003 for use in
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`connection with computer-game software, with continuous use purportedly extending back to
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`2000. The mark was later assigned to Edge Games by the original registrant. According to Dr.
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`Langdell, the “EDGE OF EXTINCTION” mark is incontestable (id. at if 9, fish. F, G)
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`E.
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`“EDGEGAMERS”
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`Edge Games also asserts ownersh