`
`
`
`JMM
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
`
`May 31, 2023
`
`Cancellation No. 92081334
`
`EDGE Games, Inc.
`
`v.
`
`Microsoft Corporation
`
`
`
`By the Trademark Trial and Appeal Board:
`
`Respondent owns a registration for the standard character mark BLEEDING
`
`EDGE1 for “computer games software” in International Class 9 and “entertainment
`
`services, namely, providing online electronic games; providing information about
`
`computer games; organization of electronic game competitions” in International Class
`
`41.2 Petitioner seeks cancellation of Respondent’s registration on the grounds of
`
`priority and likelihood of confusion, fraud, nonuse, and abandonment.
`
`This case comes before the Board for consideration of Respondent’s motion, filed
`
`in lieu of an answer, to dismiss the fraud, nonuse, and abandonment claims from the
`
`petition to cancel for failure to state a claim upon which relief can be granted
`
`pursuant to Fed. R. Civ. P. 12(b)(6). The partial motion to dismiss is fully briefed.
`
`
`1 Registration No. 5766386 was issued on June 4, 2019, pursuant to Section 66(a) of the
`Trademark Act, 15 U.S.C. § 1141(f).
`
`2 The identification of goods in International Class 25 is not subject to this proceeding.
`
`
`
`

`

`Cancellation No. 92081334
`
`
`The Board has reviewed the parties’ briefs on the motion but does not repeat or
`
`discuss all of the arguments therein in this order. Guess? IP Holder LP v. Knowluxe
`
`LLC, 116 USPQ2d 2018, 2019 (TTAB 2015). To the extent either party argued the
`
`merits of Petitioner’s claims, rather than the sufficiency of those claims, such
`
`arguments are inappropriate on a motion to dismiss for failure to state a claim, and
`
`those arguments have been given no consideration. See Advanced Cardiovascular
`
`Sys. Inc. v. SciMed Life Sys. Inc., 26 USPQ2d 1038, 1041 (Fed. Cir. 1993); see also
`
`Compagnie Gervais Danone v. Precision Formulations LLC, 89 USPQ2d 1251, 1256
`
`(TTAB 2009) (“...if a motion to dismiss is filed that references matters outside the
`
`pleadings, the Board may exclude from consideration the matters outside the
`
`pleadings and may consider the motion for whatever merits it may present as a
`
`motion to dismiss.”). Likewise, to the extent Respondent submitted documents as
`
`exhibits to its partial motion to dismiss, the Board has not considered those materials
`
`to assess the sufficiency of the petition to cancel. See Caymus Vineyards v. Caymus
`
`Med., Inc., 107 USPQ2d 1519, 1522 n.2 (TTAB 2013) (evidence attached to motion to
`
`dismiss counterclaim not considered).
`
`I. Applicable Legal Principles
`
`A motion to dismiss under Fed. R. Civ. P. 12(b)(6) for failure to state a claim upon
`
`which relief can be granted tests only the legal sufficiency of the allegations in a
`
`complaint. Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015, 1016 (TTAB 2018).
`
`To withstand such a motion, a petitioner need only allege sufficient factual matter which,
`
`if proved, would establish that (1) it is entitled to a statutory cause of action under
`
`Trademark Act § 14, and (2) a valid statutory ground exists for cancelling the registration
`
`
`
`2
`
`

`

`Cancellation No. 92081334
`
`
`of the involved mark. Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB
`
`2007); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 503.02
`
`(2022).
`
`“[A] complaint must contain sufficient factual matter, accepted as true, to ‘state a
`
`claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)
`
`(quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “The pleading must
`
`be examined in its entirety, construing the allegations therein liberally, as required by
`
`Fed. R. Civ. P. 8(f), to determine whether it contains any allegations which, if proved,
`
`would entitle plaintiff to the relief, sought.” Fair Indigo LLC, 85 USPQ2d at 1538 (citing
`
`Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982)).
`
`The allegations of a complaint should be construed so as to do justice. Corporacion
`
`Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1874 (TTAB 2011) (citation omitted).
`
`II. Entitlement to A Statutory Cause of Action
`
`Entitlement to a statutory cause of action must be pleaded and proved. See Australian
`
`Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837,
`
`*3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S.
`
`118, 109 USPQ2d 2061, 2067 n.4 (2014)); see also Empresa Cubana Del Tabaco v. Gen.
`
`Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish its
`
`entitlement to a statutory cause of action under Section 14 of the Trademark Act, a
`
`plaintiff must demonstrate that cancellation of the registration is within the zone of
`
`interests protected by the statute and that plaintiff has a reasonable belief of damage
`
`proximately caused by continued registration of the mark. Corcamore, LLC v. SFM, LLC,
`
`978 F.3d 1298, 2020 USPQ2d 11277, *6–7 (Fed. Cir. 2020); see also Australian
`
`
`
`3
`
`

`

`Cancellation No. 92081334
`
`
`Therapeutic Supplies Pty. Ltd., 2020 USPQ2d at *3; Empresa Cubana Del Tabaco, 111
`
`USPQ2d at 1058; Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
`
`USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
`
`1023, 1025 (Fed. Cir. 1999).
`
`In its partial motion to dismiss, Respondent does not specifically challenge
`
`Petitioner’s entitlement to a statutory cause of action. Nevertheless, the Board notes that
`
`Petitioner pleaded, inter alia, that:
`
`2. EGI has use the marks EDGE and EDGE GAMES in US Commerce
`since 1984, has continuously owned U.S. trademark registrations in
`respect to computer games for the mark EDGE and other EDGE
`formative marks at all times since or about 1992, and currently owns a
`number of EDGE formative U.S. Trademark Registrations: Registration
`No. 5,934,761 for EDGE GAMES in class 09 for computer games and
`mobile phone games and other products and services; Reg. No. 5,987,060
`for EDGE PC in Class 09; and Reg. No. 5,987,061 for EDGE GAMING
`PC in Class 09.
`
`3. Petitioner notes that all three of EGI’s U.S. EDGE registrations were
`filed prior to the date of application of Registrant’s Registration.
`
`4. In addition, EGI owns the following U.S. trademark applications for
`EDGE formative marks: Serial No. 86538581 for EDGE in Classes 09,
`16 and 41 for computer and mobile games and related goods and
`services; Serial No. 90686518 for THE EDGE in Class 09 for computer
`and mobile games and related goods and services; and Serial No.
`97064385 for EDGE in Class 42 for the design of computer and mobile
`games and related services.
`
`* * *
`
`7. Along with owning U.S. registrations and applications for the mark
`EDGE and EDGE formative marks that substantially pre-date the filing
`date of Registrant’s Mark, EGI also has common law rights in the marks
`EDGE, THE EDGE, EDGE GAMES, and a family of EDGE formative
`marks for computer games arising from continuous use in United States
`commerce since or about June 1984. Additionally, EGI has maintained
`a web presence since 1995 for games at www.edgegames.com where
`consumers have been able to access downloadable content, game
`information, screenshots, and news and information about the EDGE
`
`
`
`4
`
`

`

`Cancellation No. 92081334
`
`
`brand of computer games and computer game hardware. EGI claims
`first use of its EDGE and EDGE formative marks in commerce of June
`1984.
`
`(1 TTABVUE 6–8). This is sufficient to plead Petitioner’s entitlement to a statutory
`
`cause of action. See Toufigh v. Persona Parfum, Inc., 95 USPQ2d 1872, 1874 (TTAB 2010);
`
`see also Spirits Int’l B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri
`
`Birligi, 99 USPQ2d 1545, 1548 (TTAB 2011).
`
`III. Fraud, Nonuse, and Abandonment Claims
`
`As an initial matter, the Board notes that marks registered pursuant to Section
`
`66(a) of the Trademark Act, 15 U.S.C. § 66(a), do not require proof of use in commerce
`
`prior to registration. Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925, 1931
`
`(TTAB 2014) (for purposes of abandonment, the relevant period of nonuse begins to
`
`run from the date of issuance of a Section 66(a) registration). Moreover, in its
`
`response to the partial motion to dismiss, Petitioner notes that it “failed to notice that
`
`the application in question was filed under Section 66(a) based on a foreign
`
`registration,” and “agrees to the dismissal (striking of) COUNTS II, III and IV of the
`
`petition.” (5 TTABVUE 2).
`
`Accordingly, Respondent’s partial motion to dismiss is granted. Petitioner’s
`
`fraud, nonuse, and abandonment claims are hereby dismissed.
`
`IV. Claims On ESTTA Cover Form
`
`On the Electronic System for Trademark Trials and Appeals (ESTTA) generated
`
`filing form, Petitioner selected as additional grounds for cancellation (i) that
`
`Respondent has never used the mark in commerce (“expungement”), (ii) that the
`
`mark is not inherently distinctive and has not acquired distinctiveness, (iii) dilution
`
`
`
`5
`
`

`

`Cancellation No. 92081334
`
`
`by blurring, (iv) dilution by tarnishment, and (v) non-ownership. However, these
`
`claims were not addressed in the attached enumerated pleading. Although the
`
`content of the ESTTA cover form is read in conjunction with the petition to cancel as
`
`an integral component, PPG Indus. Inc. v. Guardian Indus. Corp., 73 USPQ2d 1926,
`
`1928 (TTAB 2005), the mere mention of a ground on the cover form is insufficient to
`
`constitute a claim. Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1827
`
`n.2 (TTAB 2013) (internal citation omitted).
`
`Respondent contends that “the Petition is devoid of any allegations to support the
`
`additional asserted grounds for cancellation set forth on the ESTTA cover sheet.” (4
`
`TTABVUE 4). In response, Petitioner states that:
`
`Petitioner’s mark EDGE may thus not only have its rights blurred by
`the use and registration of the subject mark BLEEDING EDGE, but any
`negative report relating to the BLEEING EDGE mark will tarnish
`Petitioner’s mark EDGE by association in consumers’ minds. It is also
`unclear who exactly owns the mark and who is using it, since they do
`not seem to both be MICROSOFT CORPORATION.
`
`(5 TTABVUE 3).
`
`As noted above, the mere selection of a claim on the ESTTA cover form is
`
`insufficient to plead that claim. Embarcadero Techs., Inc., 105 USPQ2d at 1827 n.2.
`
`Moreover, statements in a brief in opposition to a motion are also insufficient to plead
`
`a claim. Accordingly, the five above-mentioned claims, identified only on the ESTTA
`
`cover form, are stricken. See Fed. R. Civ. P. 12(f); Finanz St. Honore, B.V. v. Johnson
`
`& Johnson, 85 USPQ2d 1478, 1480 (TTAB 2007); W. Worldwide Enters. Grp. Inc. v.
`
`Qinqdao Brewery, 17 USPQ2d 1137, 1139 (TTAB 1990).
`
`
`
`6
`
`

`

`Cancellation No. 92081334
`
`
`V. Priority and Likelihood of Confusion
`
`In its partial motion to dismiss, Respondent does not challenge Petitioner’s priority
`
`and likelihood of confusion claim. Nevertheless, the Board notes that Petitioner pleaded,
`
`inter alia, that:
`
`2. EGI has use the marks EDGE and EDGE GAMES in US Commerce
`since 1984, has continuously owned U.S. trademark registrations in
`respect to computer games for the mark EDGE and other EDGE
`formative marks at all times since or about 1992, and currently owns a
`number of EDGE formative U.S. Trademark Registrations: Registration
`No. 5,934,761 for EDGE GAMES in class 09 for computer games and
`mobile phone games and other products and services; Reg. No. 5,987,060
`for EDGE PC in Class 09; and Reg. No. 5,987,061 for EDGE GAMING
`PC in Class 09.
`
`3. Petitioner notes that all three of EGI’s U.S. EDGE registrations were
`filed prior to the date of application of Registrant’s Registration.
`
`4. In addition, EGI owns the following U.S. trademark applications for
`EDGE formative marks: Serial No. 86538581 for EDGE in Classes 09,
`16 and 41 for computer and mobile games and related goods and
`services; Serial No. 90686518 for THE EDGE in Class 09 for computer
`and mobile games and related goods and services; and Serial No.
`97064385 for EDGE in Class 42 for the design of computer and mobile
`games and related services.
`
`5. Importantly, Petitioner notes that its application to register the mark
`EDGE for computer and mobile games Serial No. 86538581 in Classes
`09, 16 and 41 was filed February 18, 2015, which is substantially earlier
`than the filing date of Registrant’s Mark or the IR mark on which the
`application was based.
`
`6. Given Registrant’s mark BLEEDING EDGE has a likelihood of
`confusion with Petitioner’s marks EDGE and EDGE GAMES for games,
`clearly the USPTO should not have permitted Registrant’s mark to go
`forward to publication. Instead, Registrant’s application should have
`been held in suspension pending the outcome of Petitioner’s 2015
`application for the mark EDGE and pending the disposition of
`Petitioner’s EDGE GAMES mark, which did subsequently register.
`
`7. Along with owning U.S. registrations and applications for the mark
`EDGE and EDGE formative marks that substantially pre-date the filing
`date of Registrant’s Mark, EGI also has common law rights in the marks
`
`
`
`7
`
`

`

`Cancellation No. 92081334
`
`
`EDGE, THE EDGE, EDGE GAMES, and a family of EDGE formative
`marks for computer games arising from continuous use in United States
`commerce since or about June 1984. Additionally, EGI has maintained
`a web presence since 1995 for games at www.edgegames.com where
`consumers have been able to access downloadable content, game
`information, screenshots, and news and information about the EDGE
`brand of computer games and computer game hardware. EGI claims
`first use of its EDGE and EDGE formative marks in commerce of June
`1984.
`
`* * *
`
`18. Petitioner uses its house mark EDGE both on its own as EDGE (and
`almost always as capital letters) and has a long history of using the core
`mark EDGE with other words to form a “family of EDGE marks.” For
`instance, THE EDGE, EDGE GAMES, CUTTING EDGE, OVER THE
`EDGE, GET THE EDGE, MAGIC EDGE, and so on, to promote and
`market its famous EDGE brand computer software and hardware, and
`related goods and services.
`
`* * *
`
`20. Registrant’s mark is likely to be confused with Registrant’s mark
`EDGE and likely to be assumed by U.S. consumers to be an EDGE
`formative mark whose origins are with Petitioner, not Registrant.
`
`(1 TTABVUE 6–11). This is sufficient to plead Petitioner’s priority and likelihood of
`
`confusion claim based on (i) its pleaded Registration Nos. 5934761, 5987060, and
`
`5987061; (ii) its pleaded application Serial No. 86538581; and (iii) its alleged prior
`
`common law rights in the marks EDGE and EDGE GAMES in connection with
`
`computer games. However, these allegations are not sufficient to plead a claim of
`
`priority and likelihood of confusion based on a family of marks.
`
`To assert ownership of a family of marks, a plaintiff must allege: (1) prior use of
`
`marks sharing a recognizable common characteristic; (2) that the common
`
`characteristic is distinctive; and (3) that prior to the defendant’s first use (or
`
`constructive first use) of its involved mark, plaintiff’s marks have been used and
`
`
`
`8
`
`

`

`Cancellation No. 92081334
`
`
`advertised in promotional material or in everyday sales activities in such a manner
`
`as to create common exposure and thereafter recognition among the purchasing
`
`public such that the common characteristic is itself indicative of a common origin of
`
`the goods or services. See Truescents LLC v. Ride Skin Care, LLC, 81 USPQ2d 1334,
`
`1337–38 (TTAB 2006).
`
`Petitioner does not allege the second or third elements identified above, namely,
`
`that the common characteristic of Petitioner’s alleged family is distinctive, and that
`
`prior to Respondent’s first use (or constructive first use), Petitioner’s marks have
`
`been used and advertised in promotional material or in everyday sales activities in
`
`such a manner as to create common exposure and thereafter recognition among the
`
`purchasing public such that the common characteristic is itself indicative of a
`
`common origin of the goods or services. Accordingly, Petitioner’s priority and
`
`likelihood of confusion claim with respect to its alleged family of marks is not well-
`
`pleaded. See Wise F& I, LLC v. Allstate Ins. Co., 120 USPQ2d 1103, 1109 (TTAB
`
`2016) (plaintiff must plead family of marks in order to rely on the marks as a family
`
`as basis of sustaining opposition).
`
`Accordingly, the priority and likelihood of confusion claim based on an alleged
`
`family of marks is stricken. See Fed. R. Civ. P. 12(f); Finanz St. Honore, B.V., 85
`
`USPQ2d at 1480; W. Worldwide Enters. Grp. Inc., 17 USPQ2d at 1139.
`
`VI. Leave to Replead
`
`It is generally the Board’s policy to allow amendment of defective pleadings. Wise
`
`F&I, LLC v. Allstate Ins. Co., 120 USPQ2d 1103, 1110 (TTAB 2016); Intellimedia
`
`
`
`9
`
`

`

`Cancellation No. 92081334
`
`
`Sports v. Intellimedia Corp., 43 USPQ2d 1203, 1208 (TTAB 1997). Accordingly,
`
`consistent with Board practice, Petitioner is allowed until June 20, 2023, to file and
`
`serve an amended petition to cancel that pleads claims of dilution by blurring and/or
`
`tarnishment and priority and likelihood of confusion based on a family of marks.3
`
`VII. Proceeding Schedule
`
`Proceedings are resumed. Dates are reset as follows:
`
`Time to Answer
`
`Deadline for Discovery Conference
`
`Discovery Opens
`
`Initial Disclosures Due
`
`Expert Disclosures Due
`
`Discovery Closes
`
`Plaintiff’s Pretrial Disclosures Due
`
`Plaintiff’s 30-day Trial Period Ends
`
`Defendant’s Pretrial Disclosures Due
`
`Defendant’s 30-day Trial Period Ends
`
`Plaintiff’s Rebuttal Disclosures Due
`
`Plaintiff’s 15-day Rebuttal Period Ends
`
`Plaintiff’s Opening Brief Due
`
`Defendant’s Brief Due
`
`Plaintiff’s Reply Brief Due
`
`7/14/2023
`
`8/13/2023
`
`8/13/2023
`
`9/12/2023
`
`1/10/2024
`
`2/9/2024
`
`3/25/2024
`
`5/9/2024
`
`5/24/2024
`
`7/8/2024
`
`7/23/2024
`
`8/22/2024
`
`10/21/2024
`
`11/20/2024
`
`12/5/2024
`
`Request for Oral Hearing (optional) Due
`
`12/15/2024
`
`
`
`
`3 As noted above, a request for extension of protection of an international registration under
`Section 66(a) is not based on use but rather on an international registration owned by the
`applicant and a bona fide intention to use the mark in commerce. See TRADEMARK MANUAL
`OF EXAMINING PROCEDURE (TMEP) §§ 1904.01(c) and (d) (2022). Accordingly, a claim based
`on lack of ownership is not available against a Section 66(a) application. Cf. Hole In 1 Drinks,
`Inc. v. Latjay, 2020 USPQ2d 10020, *5 (TTAB 2020) (“a claim that an applicant, or in this
`case Respondent, was not the rightful ‘owner’ of the mark when the application was filed is
`not available when the application, as originally filed, is not based on use of the mark in
`commerce.”).
`
`
`
`10
`
`

`

`Cancellation No. 92081334
`
`
`Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
`
`taken and introduced out of the presence of the Board during the assigned testimony
`
`periods. The parties may stipulate to a wide variety of matters, and many
`
`requirements relevant to the trial phase of Board proceedings are set forth in
`
`Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
`
`manner and timing of taking testimony, matters in evidence, and the procedures for
`
`submitting and serving testimony and other evidence, including affidavits,
`
`declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
`
`submitted in accordance with Trademark Rules 2.128(a) and (b). Such briefs should
`
`utilize citations to the TTABVUE record created during trial, to facilitate the Board’s
`
`review of the evidence at final hearing. Oral argument at final hearing will be
`
`scheduled only upon the timely submission of a separate notice as allowed by
`
`Trademark Rule 2.129(a).
`
`
`
`11
`
`