Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1258760
`
`Filing date:
`
`01/09/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`
`Petitioner information
`
`Name
`
`Entity
`
`Address
`
`Correspondence
`information
`
`EDGE Games, Inc.
`
`Corporation
`
`Citizenship
`
`California
`
`530 SOUTH LAKE AVENUE, 171
`PASADENA, CA 91101
`UNITED STATES
`
`TIM LANGDELL
`CEO
`EDGE GAMES, INC.
`1141 S OAKLAND AVENUE
`PASADENA, CA 91106-4338
`UNITED STATES
`Primary email: edgegames@gmail.com
`Secondary email(s): edgegames@gmail.com
`16268240097
`
`Registration subject to cancellation
`
`Registration no.
`
`5766386
`
`Registration date
`
`06/04/2019
`
`Register
`
`International re-
`gistration no.
`
`Registrant
`
`Principal
`
`NONE
`
`Microsoft Corporation
`ONE MICROSOFT WAY
`REDMOND WA 98052-6399
`UNITED STATES
`
`International re-
`gistration date
`
`NONE
`
`Goods/services subject to cancellation
`
`Class 009. First Use: None First Use In Commerce: None
`All goods and services in the class are subject to cancellation, namely: computer games software
`
`Class 041. First Use: None First Use In Commerce: None
`All goods and services in the class are subject to cancellation, namely: Entertainment services,
`namely, providing online electronic games; providing information about computer games; organiza-
`tion of electronic game competitions
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Mark never used in commerce
`
`Trademark Act Section 14(6)
`
`No use of mark in commerce before application,
`amendment to allege use, or statement of use
`
`Trademark Act Sections 14(1) and 1(a), (c), and
`(d)
`
`

`

`was due
`
`Abandonment
`
`Trademark Act Section 14(3)
`
`The mark is not inherently distinctive and has not
`acquired distinctiveness
`
`Trademark Act Sections 14(1) and 1,2 and 45;
`and Section 2(f)
`
`Dilution by blurring
`
`Dilution by tarnishment
`
`Registrant not rightful owner of mark for identi-
`fied goods or services
`
`Fraud on the USPTO
`
`Trademark Act Sections 14(1) and 43(c)
`
`Trademark Act Sections 14(1) and 43(c)
`
`Trademark Act Sections 14(1) and 1
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`Marks cited by petitioner as basis for cancellation
`
`U.S. registration
`no.
`
`5987060
`
`Register
`
`Principal
`
`Registration date
`
`02/18/2020
`
`Application date
`
`04/01/2013
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`EDGE PC
`
`NONE
`
`Class 009. First use: First Use: Jan 7, 1998 First Use In Commerce: Jan 7, 1998
`Computer hardware; Computer hardware and peripheral devices; Computers
`and computer hardware; Desktop computers; Entertainment system comprising
`a computer, multiple image display screen, multiple input devices and a printer;
`Handheld computers; Handheld personal computers; Laptop computers; Net-
`book computers; Notebook computers; Personal computers; Personal digital as-
`sistant computers; Tablet computer
`
`U.S. registration
`no.
`
`5934761
`
`Register
`
`Principal
`
`Registration date
`
`12/17/2019
`
`Word mark
`
`Design mark
`
`EDGE GAMES
`
`Application date
`
`10/07/2010
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`NONE
`
`

`

`Goods/services
`
`Class 009. First use: First Use: Dec 31, 2003 First Use In Commerce: Dec 31,
`2003
`Computer game programs; Computer game software; Computer game software
`downloadable from a global computer network; Computer game software for use
`on mobile and cellular phones
`
`U.S. registration
`no.
`
`5987061
`
`Register
`
`Principal
`
`Registration date
`
`02/18/2020
`
`Application date
`
`04/01/2013
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`EDGE GAMING PC
`
`NONE
`
`Class 009. First use: First Use: Jan 7, 1998 First Use In Commerce: Jan 7, 1998
`Computer hardware; Computer hardware and computer peripherals; Computers
`and computer hardware; Desktop computers; Entertainment system comprising
`a computer, multiple image display screen, multiple input devices and a printer;
`Handheld computers; Handheld personal computers; Laptop computers; Net-
`book computers; Notebook computers; Personal computers; Personal digital as-
`sistant computers; Tablet computer
`
`U.S. application
`no.
`
`86538581
`
`Application date
`
`02/18/2015
`
`Register
`
`Principal
`
`Registration date
`
`NONE
`
`Word mark
`
`Design mark
`
`EDGE
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 009. First use: First Use: Jun 4, 1984 First Use In Commerce: Jun 4, 1984
`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 net-
`work; 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 per-
`sonal computers; Personal computers; Video game software
`Class 016. First use: First Use: Jun 4, 1984 First Use In Commerce: Jun 4, 1984
`
`

`

`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: First Use: Aug 1, 2003 First Use In Commerce: Aug 1,
`2003
`Non-downloadable electronic publications in the nature of e-zines and electron-
`ically 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 hard-
`ware; Providing a web-based system and on-line portal for customers to particip-
`ate in on-line gaming, operation and coordination of game tournaments, leagues
`and tours for recreational computer game playing purposes
`
`U.S. application
`no.
`
`90686518
`
`Application date
`
`05/02/2021
`
`Register
`
`Principal
`
`Registration date
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`THE EDGE
`
`NONE
`
`Class 009. First use: First Use: Oct 1, 1984 First Use In Commerce: Oct 1, 1984
`Computer game software downloadable from a global computer network; Down-
`loadable computer game software for personal computers and home video
`game consoles; Downloadable computer game software for use on mobile and
`cellular phones; Downloadable game software; Downloadable computer game
`instruction manuals; Downloadable electronic game software; Downloadable in-
`teractive game software; Downloadable video and computer game programs;
`Recorded computer game software
`
`U.S. application
`no.
`
`97064385
`
`Application date
`
`10/07/2021
`
`Register
`
`Principal
`
`Registration date
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`EDGE
`
`NONE
`
`Class 042. First use: First Use: Jun 1, 1984 First Use In Commerce: Jun 1, 1984
`Smartphone software design for games; Updating of computer games software;
`Designing and developing computer game software and videogame software for
`the use with computers, video game program systems and computer networks
`
`Attachments
`
`85147499#TMSN.png( bytes )
`86538581#TMSN.png( bytes )
`Petition to Cancel Bleeding Edge.pdf(479033 bytes )
`
`Signature
`
`/Tim Langdell/
`
`Name
`
`Date
`
`Tim Langdell
`
`01/09/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the Matter of Registration No. 5,766,386
`For the Trademark BLEEDING EDGE
`Issued June 4, 2019
`
`
`)
`
`
`
`EDGE GAMES, INC.
`)
`
`
`
`
`
`
`
`)
`
`
`
`Petitioner,
`
`
`)
`
`
`
`
`
`
`
`)
`
`
`
`v.
`
`
`
`)
`
`
`
`
`
`
`
`)
`
`
`MICROSOFT CORPORATION
`)
`
`
`
`
`
`
`
`)
`
`
`Registrant
`
`
`
`__________________________________________)
`
`Trademark Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`Cancellation No.
`
`
`
`1
`
`

`

`
`
`PETITION FOR CANCELLATION
`
`EDGE Games, Inc., a California corporation having its principal place of business at 530
`
`South Lake Avenue, 171, Pasadena, CA 91101 (“Petitioner”), believes that is being and/or will
`
`be damaged by the continued registration of Registration No. 5,766,386 for BLEEDING EDGE
`
`in Classes 09 and 41 (referred to herein as “the Registration”), in the United States Patent and
`
`Trademark Office (“USPTO”) by Microsoft Corporation (“Registrant”), and hereby petitions to
`
`cancel same under Section 14 of the Trademark Act of 1946, 15 U.S.C. § 1064.
`
`As grounds for this Petitioner, Petitioner alleges the following:
`
`FACTUAL BACKGROUND
`
`Petitioner and the “EDGE” Family of Marks
`
`1. EDGE Games, Inc. (“EGI”) is a California corporation, having its principal place of
`
`business at 530 South Lake Avenue, 171, Pasadena, CA 91101, United States of America. EGI’s
`
`predecessor in rights was founded in 1981, is well known developer and publisher of interactive
`
`entertainment for personal computers, mobile phones and devices, handheld game players, and
`
`online game formats, and computer game hardware such as game computers and handheld
`
`gaming devices, and digital news magazines for games, as well as related goods and services.
`
`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
`
`
`
`2
`
`

`

`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 EDGE, THE EDGE, EDGE GAMES, and a family of EDGE
`
`formative marks for computer games arising from continuous use in United States commerce
`
`
`
`3
`
`

`

`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.
`
`8. Since or about 1992, EGI has endeavored at all times to monitor the U.S. trademarks
`
`register to check that no other entity has attempted to register the mark EDGE, or any other
`
`EDGE formative mark, in its name with the goal of maintaining a lack of dilution of the mark
`
`EDGE on the U.S. Register. From about 1992 to about 2015, EGI was able to keep the U.S.
`
`Register clear of any rival EDGE marks for the same or similar goods and services (computer
`
`games). However, due to clerical errors, it has only just been drawn to EGI’s attention that some
`
`EDGE formative marks for games slipped through without EGI opposing their registration and
`
`without the USPTO appropriately citing our earlier filed applications and registrations against
`
`such newer “EDGE” mark applications for games. The subject Registration is one of those marks
`
`that EGI overlooked in error that clearly it should have filed a timely opposition to the
`
`registration of.
`
`9. It has recently come to EGI’s attention that at least one other infringing user of
`
`Petitioner’s mark EDGE is refusing to cease use, citing Registrant’s mark as the reason for not
`
`respecting EGI’s 38-year rights in the mark EDGE and EDGE formative marks for games. EGI
`
`is thus being harmed and almost certainly will be further harmed should Registrant’s mark
`
`continue to exist on the Register causing unlawful dilution of EGI’s core house mark EDGE.
`
`-//-
`
`-//-
`
`
`
`4
`
`

`

`Microsoft Corporation and the Subject Registration
`
`10. On information and belief, Microsoft Corporation, is a limited liability company located
`
`in the state of Washington at One Microsoft Way, Redmond, WA 98052.
`
`11. The Registration BLEEDING EDGE is in the following Classes for the following goods
`
`and services: IC 009. Computer game software; IC 041. Entertainment services, namely,
`
`providing online electronic games; providing information about computer games; organization of
`
`electronic game competitions.
`
`12. Registrant does not claim a date of first use of the mark in US commerce since the
`
`application was based on an IR, which itself was invalid due to Petitioner already owning
`
`superior prior rights in the UK and EU for the mark EDGE, however Petitioner believes
`
`Registrant was not using the mark at the time of filing to claim ownership of it.
`
`13. On information and belief, the subject Registration No. 5,766,386 is no longer in use and
`
`has been abandoned within the meaning of Section 45 of the Lanham Act as a result of non-use
`
`and intent not to resume use.
`
`14. On information and belief, the subject Registration No. 5,766,386 was fraudulently
`
`obtained.
`
`15. On information and belief, the subject Registration No. 5,766,386 was not being use in
`
`U.S. commerce as at the date of filing in all of the classes of goods applied for, or for all goods
`
`and services listed in the application.
`
`16.
`
`On information and belief, Registrant has acquired no appreciable goodwill in
`
`relation to its use of the Registered Mark, and any such use has been likely to cause
`
`confusion in the minds of U.S. consumers as to the true source of goods and services due to
`
`
`
`5
`
`

`

`the fact of the well-known nature of Petitioner’s EDGE mark and the 38 years of goodwill
`
`associated therewith in U.S. nationwide commerce.
`
`Count I: Petitioner’s Prior Rights and Likelihood of Confusion
`
`17.
`
`Petitioner hereby incorporates by reference the allegations in Paragraphs 1
`
`through 16 hereof as if fully set forth herein.
`
`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.
`
`19. Registrant’s use of the mark BLEEDING EDGE features the word EDGE large in capital
`
`letters whereas the word “Bleeding” is smaller, emphasizing the word EDGE in its use of its
`
`mark. Further, Petitioner is well known for using its mark EDGE written in large non-serif block
`
`capitals just as Registrant uses it (EDGE):
`
`
`
`6
`
`
`
`

`

`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.
`
`21. Petitioner is well known for publishing non-violent games, whereas Registrant’s game
`
`using Petitioner’s mark focuses on extreme violence which in turn has caused or is likely to
`
`cause severe damage to the reputation of Petitioner’s 38-year-old EDGE mark
`
`22. The goods listed in the Registration and Petitioner’s computer games and mobile games
`
`are legally identical.
`
`23. Accordingly, Registrant’s mark in the Registration is likely to cause confusion or
`
`mistake, or to deceive the public into believing that Registrant’s goods emanate from or are
`
`somehow affiliated or associated with, connected to or sponsored by Petitioner. The mark
`
`BLEEDING EDGE should be deemed barred from registration and should be cancelled because
`
`it consists of or comprises a mark which so resembles Petitioner’s previously used (and earlier
`
`registered) marks EDGE and EDGE GAMES as to be likely, when used in connection with the
`
`goods in the Registration, to cause confusion, mistake, or deception with the meaning of 15
`
`U.S.C. § 1064.
`
`24. If Registrant is permitted to continue owning a valid registration for the BLEEDING
`
`EDGE mark, there will be likelihood of confusion as to the source of Registrant’s goods,
`
`resulting in continued damage and injury to Petitioner.
`
`25. Petitioner will continue to be damaged by Registrant’s ongoing registration of the
`
`BLEEDING EDGE mark because such registration supports and assists Registrant in the
`
`confusing and misleading use of BLEEDING EDGE and will give color of rights to Registrant in
`
`violation of Petitioner’s prior and superior rights in its EDGE and EDGE GAMES marks. The
`
`
`
`7
`
`

`

`continued validity of Registrant’s Registration interferes with the Petitioner’s current business.
`
`Petitioner therefore has a real interest in seeking cancellation of the Registration and standing to
`
`bring this action.
`
`Count II: Registrant’s Fraud in its Procurement of Registration
`
`26. Petitioner hereby incorporates by reference the allegations in Paragraphs 1 through 25
`
`hereof as if fully set forth herein.
`
`27. In Registrant’s application that is filed April 12, 2018 did not state a date of first use
`
`either in the US market or anywhere else worldwide, and left unstated whether the mark had ever
`
`been use in commerce. Registrant failed to supply a sample of use of the mark in commerce, and
`
`it stated that the goods and services the mark is used for in Classes 09 and 41 are: Class 09
`
`computer games software; Class 41 Entertainment services, namely, providing online electronic
`
`games; providing information about computer games; organization of electronic game
`
`competitions. By statement or implication Registrant claimed they owned the true right and
`
`priority of right in the mark EDGE in the form BLEEDING EDGE and claimed they were the
`
`true uncontested owner of an International EDGE registration (the “Representation”).
`
`28. On information and belief, the Representation was false at the time Registrant made it,
`
`intentionally misleading the USPTO as to the true facts of Registrant’s use of the mark, if any, at
`
`the time of filing the original application. Reviewing the claimed specimens of use that
`
`accompanied the application, it is clear that the mark was not being used for all the goods and
`
`services Registrant falsely claimed they were being used for, if they were being used for any.
`
`29. Based on the foregoing, Registrant obtained the Registration fraudulently, which is
`
`grounds for cancellation of the Registration in its entirety.
`
`-//-
`
`
`
`8
`
`

`

`Count III: No Use of Mark in Commerce Before Application for Registration was Filed
`
`30.
`
`Petitioner hereby incorporates by reference the allegations in Paragraphs 1
`
`through 28 hereof as if fully set forth herein.
`
`31.
`
`On information and belief, and contrary to the claim made by Registrant at the
`
`time of filing its application to register the mark BLEEDING EDGE that result in the
`
`Registration, Registrant did not use in interstate commerce the BLEEDING EDGE mark in
`
`connection with all the goods and services listed in such application prior to filing such
`
`application.
`
`32.
`
`As a further basis for cancellation, because Registrant was not using the
`
`BLEEDING EDGE mark in connection with any of the goods identified in the Registration as of
`
`July 1, 2016, the application that resulted in the Registration was void ab initio.
`
`33. Petitioner will be damaged by continued existence of the Registration, which would
`
`improperly give color of rights to Registrant and entitle Registrant to presumptions and other
`
`benefits under the Lanham Act that are not warranted.
`
`Count IV: Registration No. 5,145,710 Has Been Abandoned
`
`
`
`34. Petitioner hereby incorporates by reference the allegations in Paragraphs 1 through 33
`
`hereof as if fully set forth herein.
`
`35. Registration No. 5,766,386 may be cancelled under Section 14 of the Trademark Act of
`
`1946, 15 U.S.C. § 1064(3), due to abandonment.
`
`36. On information and belief, Registrant has discontinued use of the mark associated with
`
`the Subject Registration with the intent not to resume such use.
`
`
`
`9
`
`

`

`37. On information and belief, Registrant has never used or intended to use the mark
`
`identified in the Subject Registration in connection with all of the goods and services described
`
`in the Registration, Registrant has no independent use that could support registration of the mark
`
`in connection with those goods and services. Petitioner alleges that the Subject Registration has
`
`been abandoned and should be cancelled.
`
`38. On information and belief, the developer of the game titled BLEEDING EDGE (the prior
`
`owner of the registration, Ninja Theory), ceased all work on the product because it did not sell:
`
`
`
`
`
`Source: https://www.polygon.com/2021/1/28/22254694/bleeding-edge-ended-development-
`
`shut-down-ninja-theory
`
`39. Petitioner is and will continue to be harmed by the continued registration of the mark in
`
`the Registration.
`
`-//-
`
`-//-
`
`
`
`10
`
`

`

`Prayer for Relief
`
`
`
`WHEREFORE, Petitioner prays that this cancellation petition be sustained, and that the
`
`Registration be in all respects cancelled. The filing fee of $1200 for the Petition to Cancel is
`
`being submitted electronically with this Petition.
`
`Dated: January 9, 2023
`
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`Respectfully submitted,
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`By: ____________________
`Dr. Tim Langdell, CEO
`Petitioner in pro se.
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`EDGE Games, Inc.
`530 South Lake Avenue 171
`Pasadena, CA 91101
`edgegames@gmail.com
`626 824 0097
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`CERTIFICATION OF ELECTRONIC MAILING
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` hereby certify that the foregoing Petitioner of Cancellation is being electronically submitted
`through the Trademark Trial and Appeal Board’s ESTTA System on this 9th day of January
`2023.
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`_________________________
`Dr, Tim Langdell
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`11
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