Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1297373
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`Filing date:
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`07/14/2023
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
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`92081334
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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
`
`Defendant
`Microsoft Corporation
`
`JOHN L. KRIEGER
`DICKINSON WRIGHT PLLC
`3883 HOWARD HUGHES PARKWAY, SUITE 800
`LAS VEGAS, NV 89169
`UNITED STATES
`Primary email: trademarkslv@dickinsonwright.com
`Secondary email(s): jkrieger@dickinsonwright.com, cvil-
`lanueva@dickinsonwright.com
`702-550-4400
`
`Answer
`
`John L. Krieger
`
`trademarkslv@dickinsonwright.com, jkrieger@dickinsonwright.com, amor-
`etto@dickinsonwright.com, cvillanueva@dickinsonwright.com
`
`/John L. Krieger/
`
`07/14/2023
`
`2023-07-14 Answer to Amended Petition for Cancellation - Microsoft Co rpora-
`tion - Cancellation No. 92081334.pdf(131803 bytes )
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`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`EDGE GAMES, INC.
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`MICROSOFT CORPORATION,
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`v.
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`Petitioner,
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`Respondent.
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`Cancellation No. 92081334
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`Registration No. 5,766,386
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`Mark: BLEEDING EDGE
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`
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`ANSWER TO AMENDED PETITION FOR CANCELLATION
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`Respondent Microsoft Corporation (“Respondent”), by and through its counsel, hereby
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`
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`responds to the Amended Petition for Cancellation filed by Edge Games, Inc. (“Petitioner”),
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`attempting to cancel U.S. Registration No. 5,766,386 in Classes 09 and 41 for the trademark
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`BLEEDING EDGE (“Respondent’s Mark”).
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`PRELIMINARY STATEMENT
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`The Cancellation is based on the misguided notion Petitioner owns exclusive trademark
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`rights to the term “edge” for everything and anything, including for goods and services it does
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`not offer, or even alleges it offers. Even before Petitioner filed the Cancellation, it has been
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`embroiled in an action challenging its priority rights to the term “edge.” Mobigame v. Edge
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`Games, Inc., Cancellation No. 92075393 (1 TTABVUE 2.) To the extent this Cancellation is
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`based on Respondent’s purported common law rights, any such rights appear to be narrowly
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`confined to the purported usage. Moreover, Petitioner has been deemed a “troll” by a United
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`States federal court. Given the suspect nature of Dr. Langdell’s representations to both the
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`United States Patent and Trademark Office (“USPTO”) and a federal court concerning
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`Petitioner’s current and future sales and business activities, it is an open question whether
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`Petitioner’s business activities legitimately extend beyond trolling various gaming-related
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`industries for licensing opportunities. Edge Games, Inc. v. Elec. Arts, Inc., 745 F. Supp. 2d 1101,
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`1117 (N.D. Cal. 2010).
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`At bottom, this Cancellation is an attempt by Petitioner to overstate its purported
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`trademark rights, and interfere with Registrant’s registration for which there could be no
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`likelihood of confusion with Petitioner’s business. The Cancellation should be denied.
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`ANSWER TO CANCELLATION
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`Respondent responds to the allegations set forth as follows:
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`1.
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`Respondent is without information sufficient to admit or deny the allegations in
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`Paragraph 1 and therefore denies the same.
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`2.
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`Respondent admits the USPTO records list Petitioner as the current owner of Reg.
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`No. 5,934,761, Reg. No. 5,987,060, and Reg. No. 5,987,061, but is without information
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`sufficient to admit or deny the remaining allegations in Paragraph 2 and therefore denies the
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`same.
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`3.
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`Paragraph 3 appears to only be Petitioner’s observation and not an actual
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`allegation to which Respondent is required to respond. To the extent the allegations contained in
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`Paragraph 3 constitute a legal conclusion concerning purported “priority” of registrations,
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`Respondent is not required to respond. To the extent this Paragraph does not call for a legal
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`conclusion, Respondent is without information sufficient to admit or deny the allegations in
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`Paragraph 3, and therefore denies the same.
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`4.
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`Respondent admits the USPTO records list Petitioner as the current owner of
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`Serial No. 86538581, Serial No. 90686518, and Serial No. 97064385, but is without information
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`sufficient to admit or deny the remaining allegations in Paragraph 4 and therefore denies the
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`same.
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`5.
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`Paragraph 5 appears to only be Petitioner’s observation and not an actual
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`allegation to which Respondent is required to respond. To the extent the allegations contained in
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`Paragraph 5 constitute a legal conclusion concerning purported “priority” of registrations,
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`Respondent is not required to respond. To the extent this Paragraph does not call for a legal
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`conclusion, Respondent is without information sufficient to admit or deny the allegations in
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`Paragraph 5, and therefore denies the same.
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`6.
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`7.
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`Respondent denies the allegations in Paragraph 6.
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`Respondent is without information sufficient to admit or deny the allegations in
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`Paragraph 7 and therefore denies the same.
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`8.
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`Respondent is without information sufficient to admit or deny the allegations in
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`Paragraph 8 and therefore denies the same.
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`9.
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`Respondent is without information sufficient to admit or deny the allegations in
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`Paragraph 9 and therefore denies the same.
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`Microsoft Corporation and the Subject Registration
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`10.
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`As to Paragraph 10, Respondent denies it is a limited liability company, but
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`admits the remaining allegations in Paragraph 10.
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`11.
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`As to Paragraph 11, Respondent admits the allegations to the extent the
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`information listed accurately reflects that which is contained in the USPTO records for
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`Registrant’s Mark.
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`12.
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`As to Paragraph 12, a response is not necessary as the Board struck the claims for
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`fraud, nonuse, and abandonment from the Petition for Cancellation (8 TTABVUE 5) and the
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`Amended Petition for Cancellation no longer asserts these claims. To the extent a response is
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`

`

`
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`required, Respondent denies the same.
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`13.
`
`As to Paragraph 13, a response is not necessary as the Board struck the claims for
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`fraud, nonuse, and abandonment from the Petition for Cancellation (8 TTABVUE 5) and the
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`Amended Petition for Cancellation no longer asserts these claims. To the extent a response is
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`required, Respondent denies the same.
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`14.
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`As to Paragraph 14, a response is not necessary as the Board struck the claims for
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`fraud, nonuse, and abandonment from the Petition for Cancellation (8 TTABVUE 5) and the
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`Amended Petition for Cancellation no longer asserts these claims. To the extent a response is
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`required, Respondent denies the same.
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`15.
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`As to Paragraph 15, a response is not necessary as the Board struck the claims for
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`fraud, nonuse, and abandonment from the Petition for Cancellation (8 TTABVUE 5) and the
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`Amended Petition for Cancellation no longer asserts these claims. To the extent a response is
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`required, Respondent denies the same.
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`16.
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`Respondent denies the allegations in Paragraph 16.
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`Count I: Petitioner’s Prior Rights and Likelihood of Confusion
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`17.
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`Respondent believes Paragraph 17 does not warrant a response. To the extent a
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`response is needed, Respondent incorporates its responses to Paragraphs 1 through 16 as set forth
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`herein.
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`18.
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`Respondent is without information sufficient to admit or deny the allegations in
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`Paragraph 18 and therefore denies the same.
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`19.
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`Respondent is without information sufficient to admit or deny the allegations in
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`Paragraph 19 and therefore denies the same.
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`20.
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`Paragraph 20 calls for a legal conclusion to which no response is necessary. To
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`the extent a response is required, Respondent denies the allegations in Paragraph 20.
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`21.
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`Respondent is without information sufficient to admit or deny the allegations in
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`Paragraph 21 and therefore denies the same.
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`22.
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`Respondent is without information sufficient to admit or deny the allegations in
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`Paragraph 22 and therefore denies the same.
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`23.
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`Respondent is without information sufficient to admit or deny the allegations in
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`Paragraph 23 and therefore denies the same.
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`24.
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`Respondent denies the allegations in Paragraph 24.
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`25.
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`Paragraph 25 calls for a legal conclusion to which no response is necessary. To
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`the extent a response is required, Respondent denies the allegations in Paragraph 25.
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`26.
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`Respondent denies the allegations in Paragraph 26.
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`27.
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`Respondent denies the allegations in Paragraph 27.
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`28.
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`Respondent denies the allegations in Paragraph 28.
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`29.
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`Respondent denies the allegations in Paragraph 29.
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`AFFIRMATIVE DEFENSES
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`
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`Without assuming any burden of proof that Respondent would not otherwise bear under
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`applicable law, Respondent asserts the following affirmative defenses:
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`1.
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`Petitioner fails to allege sufficient facts, rather than conclusory or bare
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`allegations, that establish its prior use in interstate commerce or secondary meaning of its
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`purported EDGE and EDGE GAMES marks, including for goods and services that overlap with
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`those in the challenged registration.
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`2.
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`Petitioner fails to allege sufficient facts, rather than conclusory or bare
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`allegations, that establish its marks have acquired fame sufficient to allege dilution by blurring
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`and/or tarnishment.
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`WHEREFORE, Respondent respectfully requests that the Board enter judgment in
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`Respondent’s favor, the Board deny the Amended Petition for Cancellation with prejudice, and
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`grant any other relief the Board may deem appropriate.
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`Dated: July 14, 2023.
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`
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`
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`Respectfully submitted,
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`DICKINSON WRIGHT PLLC
`
`/John L. Krieger/_____________
`John L. Krieger, Esq.
`Cindy A. Villanueva, Esq.
`jkrieger@dickinsonwright.com
`cvillanueva@dickinsonwright.com
`trademarkslv@dickinsonwright.com
`3883 Howard Hughes Parkway, Suite 800
`Las Vegas, Nevada 89169
`(702) 550-4400 (phone)
`
`
`

`

`
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that a true and correct copy of ANSWER TO AMENDED PETITION
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`FOR CANCELLATION is being filed electronically with the United States Patent and
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`Trademark Office Trademark Trial and Appeal Board and being served by electronic mail, this
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`14th day of July, 2023, via email as follows:
`
`
`Tim Langdell
`EDGE GAMES, INC.
`1141 S. Oakland Avenue 171
`Pasadena, CA 91106
`Email: edgegames@gmail.com
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`/s/ Ashley B. Moretto
`An Employee of Dickinson Wright PLLC
`
`

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