Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1264933
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`Filing date:
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`02/08/2023
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`92081010
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`Party
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`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Defendant
`Community Initiatives
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`REBECCAH GAN
`MUNCY, GEISSLER, OLDS & LOWE, P.C.
`125 S. ROYAL ST.
`ALEXANDRIA, VA 22314
`UNITED STATES
`Primary email: rgan@mg-ip.com
`Secondary email(s): maryfran@mg-ip.com, swr@mg-ip.com,
`cemond@mg-ip.com
`703-621-7140
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`Other Motions/Submissions
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`Rebeccah Gan
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`maryfran@mg-ip.com, swr@mg-ip.com, rgan@mg-ip.com, cemond@mg-ip.com
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`/rgan/
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`02/08/2023
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`Motion to Substitute Party Set Aside Notice of Default and Reopen Tim e to File
`Answer-92081010.pdf(671164 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`EDGE GAMES, INC.
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`Petitioner,
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`v.
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`THE GIVING BACK FUND, INC.,
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`Respondent.
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`Cancellation No. 92081010
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`Registration No.: 5944855
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`Mark: SHADOW'S EDGE
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`MOTION TO SUBSTITUTE PARTY, SET ASIDE NOTICE OF DEFAULT, AND
`MOTION FOR LEAVE TO REOPEN TIME TO FILE ANSWER
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`Pursuant to TBMP § 512.01 (2022), The Giving Back Fund, Inc. (“Respondent”), through
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`counsel, in the above-referenced cancellation proceeding, hereby moves the Trademark Trial and
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`Appeal Board (“Board”) to substitute the assignee as the cancellation Respondent.
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`Respondent attaches herewith at Exhibit A proof of recordation of the assignment (to The
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`Giving Back Fund, Inc.), which was filed in the USPTO on February 8, 2023.
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`Further, pursuant to Fed. R. Civ. P. 55(c), and TBMP §§§ 312.02, 508, and 509.01(b)(1)
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`(2022), Respondent, through counsel, hereby moves the Board to set aside the Notice of Default
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`dated January 25, 2023, and further moves the Board for leave to reopen the time to file an answer
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`to the Petition for Cancellation.
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`A Notice of Default may be set aside upon a showing of good cause. See Fed. R. Civ. P.
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`55(c), and TBMP §§ 312.02 and 508 (2022).
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`Good cause why default judgment should not be entered against a defendant for failure to
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`file a timely answer to the complaint, is usually found when the defendant shows that: (1) the delay
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`Cancellation No. 92081010
`Page 1 of 5
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`in filing an answer was not the result of willful conduct or gross neglect on the part of the
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`defendant; (2) the plaintiff will not be substantially prejudiced by the delay; and (3) the defendant
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`has a meritorious defense to the action. Id. In practice, the Board “is lenient in accepting late-
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`filed answers” when the delay is not excessive. See, Mattel, Inc. v. Henson, 88 Fed.401 Appx.
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`401, n.1. (Fed. Cir. 2004), n.1. In the case at bar, the Board has ample reason to employ its leniency
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`and authorize the late filing of an answer, upon only the showing of good cause. See TBMP §§
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`312.02 and 508 (2022).
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`Respondent is the assignee of Community Initiatives. Respondent did not receive timely
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`notice of the Petition for Cancellation from its predecessor in interest, and required legal assistance
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`to record the assignment and prepare an answer to the Petition.
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`This motion is made for good cause and not made simply for purposes of delay.
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`Respondent believes that good cause exists, because delays occasioned by the assignment of
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`interest and lack of timely notice from Respondent’s predecessor in interest are extraordinary
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`circumstances that warrant setting aside the Notice of Default and reopening the time to file an
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`answer to the Petition for Cancellation, and Respondent does not believe that EDGE Games, Inc.
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`(“Petitioner”) would be prejudiced by setting aside the Notice of Default.
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`Respondent further asserts that the length of the delay is not significant, and there is no
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`impact on other pending judicial proceedings. The reason for the delay is fairly characterized as
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`inadvertent, due to delay occasioned by the transfer of interest in the subject registration and the
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`attendant updating of USPTO contact information. Similarly, there is no issue of willful conduct,
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`gross neglect, or bad faith. DeLorme Publishing Co v. Eartha’s Inc., 60 USPQ2d 1222, 1224
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`(TTAB 2000) (willful conduct shown where although applicant may not have intended that
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`proceedings be resolved by default, applicant admittedly intended not to answer for six months);
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`Cancellation No. 92081010
`Page 2 of 5
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`Paolo’s Associates L.P. v. Bodo, 21 USPQ2d 1899, 1903-04 (Comm’r 1990) (where no evidence
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`that failure was willful, leave for late answer should be granted); Fred Hayman Beverly Hills, Inc.
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`v. Jacques Bernier, Inc., 21 USPQ2d 1556, 1557 (TTAB 1991) (failure to answer due to
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`inadvertence on part of applicant’s counsel; minimal delay would cause minimal prejudice by
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`submission of answer which was not frivolous, and thus, meritorious defense was shown).
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`Default judgment is an extreme sanction, and “a weapon of last, not first, resort.” Martin
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`v. Coughlin, 895 F. Supp. 39 (N.D.N.Y. 1995). Ultimately, there is no reason in this situation to
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`depart from the well-known preference in the federal courts that litigation disputes be resolved on
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`their merits. See, Richardson v. Nassau County, 184 F.R.D. 497, 501 (E.D.N.Y. 1999).
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`Respondent further understands that “The determination of whether default judgment should be
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`entered against a party lies within the sound discretion of the Board. In exercising that discretion,
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`the Board must be mindful of the fact that it is the policy of the law to decide cases on their merits.
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`Accordingly, the Board is very reluctant to enter a default judgment for failure to file a timely
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`answer and tends to resolve any doubt on the matter in favor of the defendant.” See TBMP §
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`312.02 (2022).
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`Accordingly, for the foregoing reasons, Respondent respectfully moves that the assignee
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`be substituted as the Respondent, that default judgment not be entered in this proceeding, and that
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`leave be granted to file a late answer.
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`Cancellation No. 92081010
`Page 3 of 5
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`Dated: February 8, 2023
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`Respectfully submitted,
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`Mary Fran Love, Esquire
`Rebeccah Gan, Esquire
`Counsel for Respondent
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`MUNCY, GEISSLER, OLDS & LOWE, P.C.
`125 S. Royal St.
`Alexandria, VA 22314
`Telephone: 703-621-7140
`Emails: maryfran@mg-ip.com, swr@mg-ip.com,
`rgan@mg-ip.com, cemond@mg-ip.com
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`Cancellation No. 92081010
`Page 4 of 5
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`CERTIFICATE OF SERVICE
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`I, Rebeccah Gan, hereby certify that on this 8th day of February 2023, a true and complete
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`copy of the foregoing Motion to Substitute Party, Set Aside Notice of Default, and Motion for
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`Leave to Reopen Time to File Answer, has been served on Petitioner, Tim Langdell of EDGE
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`Games, Inc., via electronic mail (as prescribed by law), addressed as follows:
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`edgegames@gmail.com
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` Rebeccah Gan, Esq.
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`Cancellation No. 92081010
`Page 5 of 5
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`EXHIBIT A
`EXHIBIT A
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`USPTO Pay - Choose Checkout Method
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`https://fees.uspto.gov/pay/?auth=true
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`United States Patent and Trademark Office
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`Home | Site Index | Search | Guides | Contacts | eBusiness | eBiz alerts | News | Help
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`Electronic Trademark Assignment System
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`Confirmation Receipt
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`Your assignment has been received by the USPTO.
`The coversheet of the assignment is displayed below:
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`TRADEMARK ASSIGNMENT COVER SHEET
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`Electronic Version v1.1
`Stylesheet Version v1.2
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`SUBMISSION TYPE:
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`NEW ASSIGNMENT
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`NATURE OF CONVEYANCE:
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`ASSIGNMENT OF THE ENTIRE INTEREST AND THE
`GOODWILL
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`CONVEYING PARTY DATA
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`Name
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`Formerly
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`Community Initiatives
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`RECEIVING PARTY DATA
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`Execution
`Date
`03/01/2022 Non-Profit Corporation:
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`Entity Type
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`The Giving Back Fund, Inc.
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`5757 West Century Blvd.
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`Name:
`Street
`Address:
`Internal
`Address:
`Los Angeles
`City:
`State/Country: CALIFORNIA
`90045
`Postal Code:
`Non-Profit Corporation: MASSACHUSETTS
`Entity Type:
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`Suite 410
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`PROPERTY NUMBERS Total: 2
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`Property Type
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`Number
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`Word Mark
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`Registration
`Number:
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`Registration
`Number:
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`5944855
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`SHADOW'S EDGE
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`5837239
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`DIGGING DEEP
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`CORRESPONDENCE DATA
`swr@mg-ip.com
`Email:
`Correspondence will be sent to the e-mail address first; if that is unsuccessful, it will be
`sent using a fax number, if provided; if that is unsuccessful, it will be sent via US Mail.
`Muncy Geissler Olds & Lowe P.C.
`Correspondent Name:
`125 S. Royal St.
`Address Line 1:
`Alexandria, VIRGINIA 22314
`Address Line 4:
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`NAME OF SUBMITTER:
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`Sherri Weisbeck-Raslich
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`1 of 2
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`2/8/2023, 11:25 AM
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`USPTO Pay - Choose Checkout Method
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`https://fees.uspto.gov/pay/?auth=true
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`Signature:
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`Date:
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`/Sherri Weisbeck-Raslich/
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`02/08/2023
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`Total Attachments: 2
`source=Digging Deep Trademark Assignment 2.23#page1.tif
`source=Digging Deep Trademark Assignment 2.23#page2.tif
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`RECEIPT INFORMATION
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`ETAS ID:
`Receipt Date:
`Fee Amount:
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`TM785441
`02/08/2023
`$65
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`Return to ETAS home page
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`| .HOME | INDEX| SEARCH | eBUSINESS | CONTACT US | PRIVACY STATEMENT
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`2 of 2
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`2/8/2023, 11:25 AM
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`ｄｯ｣ｵｓｩｧｮ＠ｅｮｶ･ｬｯｰ･＠ｉｄＺ＠ＲｆＶｂＶＹＲＷＭＶｂＱＷＭＴＴＸＶＭＹｆｄＰＭｅＸｂＷｂｂＰＳＱｂＶＰ
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`TRADEMARK ASSIGNMENT
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`WHEREAS, Community Initiatives (“Assignor”), a California non-profit public benefit
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`corporation located at 1000 Broadway, Suite 480, Oakland, California 94607 is the owner of the US
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`trademark registrations identified on the attached Appendix (“the trademarks”).
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`WHEREAS, The Giving Back Fund, Inc. (“Assignee”), a Massachusetts non-profit
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`corporation located at 5757 West Century Blvd., Suite 410, Los Angeles, California 90045 acquired
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`the trademark registrations identified below on March 1, 2022 along with the goodwill of the
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`business associated therewith.
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`NOW, THEREFORE, for valuable consideration, the receipt is hereby acknowledged by the
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`parties, the Assignor hereby transfers and assigns to Assignee the entire right, title and interest in and
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`to the trademarks together with the goodwill of the business associated with the mark effective March
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`1, 2022. Assignor hereby authorizes the Assignee to record the transfer of the trademarks with the
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`Commissioner of Patents and Trademarks.
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`Community Initiatives
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`By________________________________
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`ＲＯＷＯＲＰＲＳ
`Date: _____________________________
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`ｒｵｴｨ＠ｗｩｬｬｩ｡ｭｳ
`Name: ____________________________
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`ｐｲ･ｳｩ､･ｮｴ＠｡ｮ､＠ｃｅｏ
`Title: _____________________________
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`ｄｯ｣ｵｓｩｧｮ＠ｅｮｶ･ｬｯｰ･＠ｉｄＺ＠ＲｆＶｂＶＹＲＷＭＶｂＱＷＭＴＴＸＶＭＹｆｄＰＭｅＸｂＷｂｂＰＳＱｂＶＰ
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`APPENDIX
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`Owner:
`Mark:
`Reg. No.:
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`Owner:
`Mark:
`Reg. No.:
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`Community Initiatives
`Shadow’s Edge
`5,944,855
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`Community Initiatives
`Digging Deep
`5,837,239
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`-2-
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