ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1358660
`05/14/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92081334
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`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 and Counterclaim
`
`John L. Krieger
`
`trademarkslv@dickinson-wright.com, jkrieger@dickinson-wright.com, amor-
`etto@dickinson-wright.com
`
`/John L. Krieger/
`
`05/14/2024
`
`2024-05-14 Public Notice.pdf(90504 bytes )
`Exhibit A Amended Answer and Counterclaims Exhibits 1-5.pdf(4820074 bytes )
`Exhibits 6-10 to Exhibit A Public Notice Amended Answer and Countercl
`aims.pdf(3496468 bytes )
`Exhibit B Public redline.pdf(199070 bytes )
`
`Registration subject to the submission
`
`Registration no.
`
`5934761
`
`Registration date
`
`12/17/2019
`
`Register
`
`Registrant
`
`Principal
`
`Edge Games, Inc.
`530 SOUTH LAKE AVENUE, #171
`PASADENA, CA 91101
`UNITED STATES
`Email: uspto@edgegames.com
`
`Goods/services subject to the submission
`
`Class 009. First Use: Dec 31, 2003 First Use In Commerce: Dec 31, 2003
`All goods and services in the class are requested, namely: 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
`
`Grounds for cancellation
`
`No use of mark in commerce before application,
`amendment to allege use, or statement of use
`was due
`
`Fraud on the USPTO
`
`Trademark Act Sections 14(1) and 1(a), (c), and
`(d)
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`

`

`Registration subject to the submission
`
`Registration no.
`
`5987060
`
`Registration date
`
`02/18/2020
`
`Register
`
`Registrant
`
`Principal
`
`EDGE Games, Inc.
`WWW.EDGEGAMES.COM
`530 S LAKE AVENUE, 171
`PASADENA, CA 91101
`UNITED STATES
`Email: uspto@edgegames.com
`
`Goods/services subject to the submission
`
`Class 009. First Use: Jan 7, 1998 First Use In Commerce: Jan 7, 1998
`All goods and services in the class are requested, namely: Computer hardware; Computer hardware
`and peripheral devices; Computers and computer hardware; Desktop computers; Entertainment sys-
`tem comprising a computer, multiple image display screen, multiple input devices and a printer;
`Handheld computers; Handheld personal computers; Laptop computers; Netbook computers; Note-
`book computers; Personal computers; Personal digital assistant computers; Tablet computer
`
`Grounds for cancellation
`
`No use of mark in commerce before application,
`amendment to allege use, or statement of use
`was due
`
`Trademark Act Sections 14(1) and 1(a), (c), and
`(d)
`
`Abandonment
`
`Fraud on the USPTO
`
`Trademark Act Section 14(3)
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`Registration subject to the submission
`
`Registration no.
`
`5987061
`
`Registration date
`
`02/18/2020
`
`Register
`
`Registrant
`
`Principal
`
`EDGE Games, Inc.
`530 S LAKE AVENUE, 171
`PASADENA, CA 91101
`UNITED STATES
`Email: uspto@edgegames.com
`
`Goods/services subject to the submission
`
`Class 009. First Use: Jan 7, 1998 First Use In Commerce: Jan 7, 1998
`All goods and services in the class are requested, namely: 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; Netbook computers; Note-
`book computers; Personal computers; Personal digital assistant computers; Tablet computer
`
`Grounds for cancellation
`
`No use of mark in commerce before application,
`amendment to allege use, or statement of use
`was due
`
`Trademark Act Sections 14(1) and 1(a), (c), and
`(d)
`
`Abandonment
`
`Trademark Act Section 14(3)
`
`

`

`Fraud on the USPTO
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`Cancellation No. 92081334
`
`Registration No. 5,766,386
`
`Mark: BLEEDING EDGE
`
`
`
`Petitioner,
`
`Respondent.
`
`
`EDGE GAMES, INC.
`
`
`
`
`
`MICROSOFT CORPORATION,
`
`
`
`
`
`
`NOTICE OF COMPLIANCE WITH BOARD ORDER TO SUBMIT AN AMENDED
`ANSWER AND COUNTERCLAIMS
`
`In accordance with the Board’s Order of April 24, 2024 (31 TTABVUE 10), Respondent
`
`
`
`Microsoft Corporation (“Microsoft”), hereby submits its Amended Answer and Counterclaim,
`
`attached hereto as Exhibit A, and payment of fees as allowed by the Board. A redline version
`
`showing Respondent’s proposed changes to its original Answer is attached as Exhibit B. Out of
`
`an abundance of caution, Microsoft files certain portions of its Amended Answer and
`
`Counterclaim under seal until the Board addresses the confidentiality issue that led it to shield
`
`Microsoft’s April 5, 2024 submission from public view. Microsoft disputes the basis for the
`
`designation and seal, and welcomes the opportunity to address the issue with the Board.
`
`Dated: May 14, 2024.
`
`
`
`Respectfully submitted,
`
`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)
`
`

`

`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`I hereby certify that a true and correct copy of NOTICE OF COMPLIANCE WITH
`
`BOARD ORDER is being filed electronically with the United States Patent and Trademark
`
`Office Trademark Trial and Appeal Board and being served by electronic mail, this 14th day of
`
`May 2024 via email and U.S. mail as follows:
`
`Tim Langdell
`EDGE GAMES, INC.
`35 North Lake Avenue, Suite 710
`Pasadena, CA 91101
`Email: edgegames@gmail.com; uspto@edgegames.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Ashley B. Moretto
`An Employee of Dickinson Wright PLLC
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`Petitioner,
`
`Respondent.
`
`
`Cancellation No. 92081334
`
`Registration No. 5,766,386
`
`Mark: BLEEDING EDGE
`
`
`
`EDGE GAMES, INC.
`
`
`
`
`
`MICROSOFT CORPORATION,
`
`
`
`
`
`
`FIRST AMENDED ANSWER TO AMENDED PETITION FOR CANCELLATION AND
`COUNTERCLAIMS
`
`Respondent Microsoft Corporation (“Respondent”), by and through its counsel, hereby
`
`
`
`responds to the Amended Petition for Cancellation filed by Edge Games, Inc. (“Petitioner”),
`
`attempting to cancel U.S. Registration No. 5,766,386 in Classes 09 and 41 for the trademark
`
`BLEEDING EDGE (“Respondent’s Mark”).
`
`PRELIMINARY STATEMENT
`
`The Cancellation is based on the misguided notion Petitioner owns exclusive trademark
`
`rights to the term “edge” for everything and anything, including for goods and services it does
`
`not offer, or even alleges it offers. Even before Petitioner filed the Cancellation, it has been
`
`embroiled in an action challenging its priority rights to the term “edge.” Mobigame v. Edge
`
`Games, Inc., Cancellation No. 92075393 (1 TTABVUE 2.) To the extent this Cancellation is
`
`based on Respondent’s purported common law rights, the validity of any such rights appear to be
`
`highly questionable, and if they do exist, extremely narrow. Moreover, Petitioner has been
`
`deemed a “troll” by at least one United States federal court. Given the suspect nature of Dr.
`
`Langdell’s representations to both the United States Patent and Trademark Office (“USPTO”)
`
`

`

`
`
`and a federal court concerning Petitioner’s current and future sales and business activities, it is an
`
`open question whether Petitioner’s business activities legitimately extend beyond trolling various
`
`gaming-related industries for licensing opportunities. Edge Games, Inc. v. Elec. Arts, Inc., 745 F.
`
`Supp. 2d 1101, 1117 (N.D. Cal. 2010).
`
`At bottom, this Cancellation is an attempt by Petitioner to overstate (and even fabricate)
`
`its purported trademark rights, and interfere with Registrant’s registration for which there could
`
`be no likelihood of confusion with Petitioner’s business. The Cancellation should be denied.
`
`ANSWER TO CANCELLATION
`
`Respondent responds to the allegations set forth as follows:
`
`1.
`
`Respondent is without information sufficient to admit or deny the allegations in
`
`Paragraph 1 and therefore denies the same.
`
`2.
`
`Respondent admits the USPTO records list Petitioner as the current owner of Reg.
`
`No. 5,934,761, Reg. No. 5,987,060, and Reg. No. 5,987,061, but is without information
`
`sufficient to admit or deny the remaining allegations in Paragraph 2 and therefore denies the
`
`same.
`
`3.
`
`Paragraph 3 appears to only be Petitioner’s observation and not an actual
`
`allegation to which Respondent is required to respond. To the extent the allegations contained in
`
`Paragraph 3 constitute a legal conclusion concerning purported “priority” of registrations,
`
`Respondent is not required to respond. To the extent this Paragraph does not call for a legal
`
`conclusion, Respondent is without information sufficient to admit or deny the allegations in
`
`Paragraph 3, and therefore denies the same.
`
`4.
`
`Respondent admits the USPTO records list Petitioner as the current owner of
`
`Serial No. 86538581, Serial No. 90686518, and Serial No. 97064385, but is without information
`
`

`

`
`
`sufficient to admit or deny the remaining allegations in Paragraph 4 and therefore denies the
`
`same.
`
`5.
`
`Paragraph 5 appears to only be Petitioner’s observation and not an actual
`
`allegation to which Respondent is required to respond. To the extent the allegations contained in
`
`Paragraph 5 constitute a legal conclusion concerning purported “priority” of registrations,
`
`Respondent is not required to respond. To the extent this Paragraph does not call for a legal
`
`conclusion, Respondent is without information sufficient to admit or deny the allegations in
`
`Paragraph 5, and therefore denies the same.
`
`6.
`
`7.
`
`Respondent denies the allegations in Paragraph 6.
`
`Respondent is without information sufficient to admit or deny the allegations in
`
`Paragraph 7 and therefore denies the same.
`
`8.
`
`Respondent is without information sufficient to admit or deny the allegations in
`
`Paragraph 8 and therefore denies the same.
`
`9.
`
`Respondent is without information sufficient to admit or deny the allegations in
`
`Paragraph 9 and therefore denies the same.
`
`Microsoft Corporation and the Subject Registration
`
`10.
`
`As to Paragraph 10, Respondent denies it is a limited liability company, but
`
`admits the remaining allegations in Paragraph 10.
`
`11.
`
`As to Paragraph 11, Respondent admits the allegations to the extent the
`
`information listed accurately reflects that which is contained in the USPTO records for
`
`Registrant’s Mark.
`
`12.
`
`As to Paragraph 12, a response is not necessary as the Board struck the claims for
`
`fraud, nonuse, and abandonment from the Petition for Cancellation (8 TTABVUE 5) and the
`
`

`

`
`
`Amended Petition for Cancellation no longer asserts these claims. To the extent a response is
`
`required, Respondent denies the same.
`
`13.
`
`As to Paragraph 13, a response is not necessary as the Board struck the claims for
`
`fraud, nonuse, and abandonment from the Petition for Cancellation (8 TTABVUE 5) and the
`
`Amended Petition for Cancellation no longer asserts these claims. To the extent a response is
`
`required, Respondent denies the same.
`
`14.
`
`As to Paragraph 14, a response is not necessary as the Board struck the claims for
`
`fraud, nonuse, and abandonment from the Petition for Cancellation (8 TTABVUE 5) and the
`
`Amended Petition for Cancellation no longer asserts these claims. To the extent a response is
`
`required, Respondent denies the same.
`
`15.
`
`As to Paragraph 15, a response is not necessary as the Board struck the claims for
`
`fraud, nonuse, and abandonment from the Petition for Cancellation (8 TTABVUE 5) and the
`
`Amended Petition for Cancellation no longer asserts these claims. To the extent a response is
`
`required, Respondent denies the same.
`
`16.
`
`Respondent denies the allegations in Paragraph 16.
`
`Count I: Petitioner’s Prior Rights and Likelihood of Confusion
`
`17.
`
`Respondent believes Paragraph 17 does not warrant a response. To the extent a
`
`response is needed, Respondent incorporates its responses to Paragraphs 1 through 16 as set forth
`
`herein.
`
`18.
`
`Respondent is without information sufficient to admit or deny the allegations in
`
`Paragraph 18 and therefore denies the same.
`
`19.
`
`Respondent is without information sufficient to admit or deny the allegations in
`
`Paragraph 19 and therefore denies the same.
`
`

`

`
`
`20.
`
`Paragraph 20 calls for a legal conclusion to which no response is necessary. To
`
`the extent a response is required, Respondent denies the allegations in Paragraph 20.
`
`21.
`
`Respondent is without information sufficient to admit or deny the allegations in
`
`Paragraph 21 and therefore denies the same.
`
`22.
`
`Respondent is without information sufficient to admit or deny the allegations in
`
`Paragraph 22 and therefore denies the same.
`
`23.
`
`Respondent is without information sufficient to admit or deny the allegations in
`
`Paragraph 23 and therefore denies the same.
`
`24.
`
`Respondent denies the allegations in Paragraph 24.
`
`25.
`
`Paragraph 25 calls for a legal conclusion to which no response is necessary. To
`
`the extent a response is required, Respondent denies the allegations in Paragraph 25.
`
`26.
`
`Respondent denies the allegations in Paragraph 26.
`
`27.
`
`Respondent denies the allegations in Paragraph 27.
`
`28.
`
`Respondent denies the allegations in Paragraph 28.
`
`29.
`
`Respondent denies the allegations in Paragraph 29.
`
`AFFIRMATIVE DEFENSES
`
`
`
`Without assuming any burden of proof that Respondent would not otherwise bear under
`
`applicable law, Respondent asserts the following affirmative defenses:
`
`1.
`
`Petitioner fails to allege sufficient facts, rather than conclusory or bare
`
`allegations, that establish its prior use in interstate commerce or secondary meaning of its
`
`purported EDGE and EDGE GAMES marks, including for goods and services that overlap with
`
`those in the challenged registration.
`
`2.
`
`Petitioner fails to allege sufficient facts, rather than conclusory or bare
`
`

`

`
`
`allegations, that establish its marks have acquired fame sufficient to allege dilution by blurring
`
`and/or tarnishment.
`
`COUNTERCLAIMS
`
`Counterclaimant Microsoft believes that it is, and will continue to be, damaged by
`
`Counterdefendant Edge Game’s pleaded Registration Nos. 5934761, 5987060, and 5987061, and
`
`hereby counterclaims for cancellation of said registrations.
`
`As grounds for its counterclaims, Microsoft alleges as follows:
`
`1.
`
`Edge Games and its CEO, Tim Langdell (“Langdell”), have a history of
`
`perpetrating fraud before the PTO, intentionally misleading courts of law and trademark
`
`registries, and abusing legal procedure, including filing unwarranted opposition and cancellation
`
`proceedings.
`
`2.
`
`In fact, Edge Games has been deemed a trademark “troll” by a United States
`
`federal court. Edge Games, Inc. v. Elec. Arts, Inc., 745 F. Supp. 2d 1101, 1117 (N.D. Cal. 2010).
`
`3.
`
`The court in Edge Games, Inc. v. Elec. Arts, Inc. specifically noted that the record
`
`revealed “numerous items of evidence that [Edge Games] willfully committed fraud against the
`
`USPTO in obtaining and/or maintaining registrations for many of the asserted “EDGE” marks,
`
`possibly warranting criminal penalties if the misrepresentations prove true.” Id. at 1115. Further,
`
`the court held that many of the representations made by Langdell in his declaration with regard
`
`to Edge Games’ alleged licensees and use were “materially misleading or downright false.” Id.
`
`4.
`
`Over the course of this proceeding, Microsoft discovered that the scope of Edge
`
`Games’ and Langdell’s fraudulent activities has extended to the marks being asserted as a basis
`
`for the Cancellation against Microsoft.
`
`5.
`
`Specifically, Microsoft uncovered evidence that Edge Games committed fraud
`
`

`

`
`
`against the PTO when it filed applications to register the marks EDGE and THE EDGE without
`
`informing the PTO of the fact that it had
`
`
`
`
`
`6.
`
`Moreover, Microsoft’s research conducted in February and March 2024, also
`
`exposed evidence confirming that, at the time Edge Games filed the use-based applications to
`
`register the EDGE GAMING PC and EDGE PC marks in connection with computers and
`
`computer hardware, neither Velocity Micro, Inc. (Edge Games’ alleged licensee) nor Edge
`
`Games were in fact using the marks in connection with these products.
`
`7.
`
`Further, Microsoft uncovered evidence that Edge Games had not been using the
`
`mark EDGE GAMES in commerce in connection with video games as of the date the application
`
`for the EDGE GAMES mark was filed.
`
`8.
`
`In particular, Microsoft discovered that on
`
`
`
`
`
` A true and correct copy of the
`
`agreement is attached as Exhibit 1.
`
`9.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`10.
`
`Thereafter, Edge Games appeared to comply with the terms
`
`
`
`True and accurate copies of the PTO status
`
`pages for each of these marks are attached hereto as Exhibit 2.
`
`11.
`
`However, not to be deterred by entering into the
`
` Edge
`
`Games continued to file trademark applications for various EDGE marks in violation of the
`
`
`
`some of which are at issue in this proceeding.
`
`12.
`
`In its Amended Petition for Cancellation, Edge Games asserted rights against
`
`Microsoft based on its pending applications for EDGE (Ser. No. 86538581) (the “‘581
`
`Application”), THE EDGE (Ser. No. 90686518) (the “‘518 Application’) and EDGE (Ser. No.
`
`97064385) (the “‘385 Application).
`
`13.
`
`Each of these applications was fraudulently filed, namely, Edge Games and
`
`Langdell swore under penalty of perjury that Edge Games was entitled to use the marks in
`
`commerce and that no other person had a right to use the marks in commerce, knowing that Edge
`
`Games had
`
`
`
`
`
`14.
`
`However, the ‘385 Application and the ‘518 Application are still pending and,
`
`therefore, do not form a basis for the Cancellation or any counterclaims at this time.
`
`15.
`
`As for the ‘581 Application, it is still pending and is currently the subject of an
`
`opposition proceeding filed by Mobigame Sarl, Opp. No. 91266066, where the petitioner
`
`Mobigame has asserted claims based on fraud and non-use predicated on allegations that Edge
`
`Games and Langdell fabricated specimens and dates of first use with the intent of purposefully
`
`misleading the PTO.
`
`16.
`
`Notwithstanding the foregoing, Microsoft is able to proceed against other
`
`

`

`
`
`registrations asserted against it in the Amended Petition for Cancellation.
`
`17.
`
`On or around October 7, 2010, Edge Games filed a use-based application for the
`
`mark EDGE GAMES, Reg. No. 5,934,761, for “[c]omputer game programs; Computer game
`
`software; Computer game software downloadable from a global computer network; Computer
`
`game software for use on mobile and cellular phones” in Class 9 (the “‘761 Goods”), and alleged
`
`a date of first use of December 31, 2003 (the “‘761 Registration”).
`
`18.
`
`The application filed by Edge Games for the ‘761 Registration also included a
`
`specimen that Edge Games described as the “[o]pening screen of EDGE GAMES mobile game
`
`“Bobby Bearing.” A true and correct copy of the application is attached at Exhibit 3. A copy of
`
`the specimen is shown below:
`
`
`
`19.
`
`However, upon information and belief, the original “Bobby Bearing” game
`
`released in 1986 did not include any use of the EDGE GAMES mark as depicted in the
`
`specimen. A
`
`true
`
`and
`
`correct
`
`copy
`
`of
`
`a
`
`screen
`
`capture
`
`located
`
`at
`
`<https://www.mobygames.com/game/53061/bobby-bearing/> is attached as Exhibit 4.
`
`20.
`
`Upon information and belief, the subsequent re-releases of the “Bobby Bearing”
`
`game – EdgeBobby2 (released in June 2011) and Bobby Bearing 2: 2020 Reroll (released in
`
`February 2020) – do not include use of the EDGE GAMES mark, even though they were
`
`released after the date the ‘761 Registration was filed.
`
`21. Microsoft also uncovered a declaration authored by Langdell dated August 19,
`
`

`

`
`
`2010, which was submitted in support of Edge Game’s Motion for Preliminary Injunction against
`
`EA (the “2010 Declaration”). A true and correct copy of the 2010 Declaration is attached as
`
`Exhibit 5.
`
`22.
`
`In the 2010 Declaration, which was submitted to court less than two (2) months
`
`before the ‘761 Registration was filed, Langdell described the EDGE family of marks, yet
`
`omitted any mention that Edge Games owned any common law rights in the EDGE GAMES
`
`mark, nor did Langdell state that the “Bobby Bearing” games used the EDGE GAMES mark,
`
`notwithstanding the alleged purported use claimed in the application for the ‘761 Registration.
`
`See Exhibit 5.
`
`23.
`
`As such, upon information and belief, Edge Games was not using the EDGE
`
`GAMES mark in commerce in connection with all the ‘761 Goods listed in the application as of
`
`October 7, 2010, the application filing date.
`
`24.
`
`On or around April 1, 2013, Edge Games filed a use-based application for the
`
`mark EDGE PC, Reg. No. 5987060, for “[c]omputer 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; Netbook
`
`computers; Notebook computers; Personal computers; Personal digital assistant computers;
`
`Tablet computer,” in Class 9 (the “‘060 Goods”), alleging a date of first use of January 7, 1998
`
`(the “‘060 Registration”). A true and correct copy of the application for the ‘060 Registration is
`
`attached as Exhibit 6.
`
`25.
`
`On or around April 1, 2013, Edge Games also filed a use-based application for the
`
`mark EDGE GAMING PC, Reg. No. 5987061, for “[c]omputer 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;
`
`Netbook computers; Notebook computers; Personal computers; Personal digital assistant
`
`computers; Tablet computer,” in Class 9 (the “‘061 Goods”), alleging a date of first use of
`
`January 7, 1998 (the “‘061 Registration”). A true and correct copy of the application for the
`
`‘061 Registration is attached as Exhibit 7.
`
`26.
`
`Edge Games claimed rights in both the EDGE PC and EDGE GAMING PC
`
`marks based on a license agreement with Velocity Micro, Inc. as noted in the applications
`
`describing the specimen: “‘Edge’ brand gaming computer (PC) sold and manufactured by Edge
`
`Games Inc.’s Licensee Velocity Micro Inc (Velocity Micro licenses the mark Edge from Edge
`
`Games Inc).” See Exhibits 6 & 7.
`
`27.
`
`Yet, in the 2010 Declaration, Langdell omitted any mention of Velocity Micro,
`
`Inc. allegedly selling personal computers under either the EDGE PC or EDGE GAMING PC
`
`marks. See Exhibit 5.
`
`28.
`
`Furthermore, Microsoft discovered that on or around September 25, 2023,
`
`Randall Copeland, the prior Chief Executive Officer of Velocity Micro, Inc. and the current
`
`Chief Executive Officer of Velocity Holdings, LLC, submitted a testimonial declaration signed
`
`under oath in the matter Mobigame v. Edge Games, Inc., Cancellation No. 92075393 (the
`
`“Velocity Declaration”), in which he testified via declaration that Velocity Micro only had a
`
`license with Edge Games for use of the mark EDGE, that Velocity Micro only manufactured
`
`computer products under the marks GAMER’S EDGE and EDGE, and that Edge Games did not
`
`engage in any meaningful quality control over the manufacture of the computers. A true and
`
`

`

`
`
`correct copy of the Velocity Declaration is attached as Exhibit 8. See Exhibit 8 ¶¶ 7 & 9.
`
`29.
`
`Further, Mr. Copeland testified that Velocity Holdings “ceased selling any
`
`products branded with GAMER’S EDGE or EDGE by some time in 2014 or by early 2015 at the
`
`latest.” Id. ¶ 14.
`
`30. Mr. Copeland also testified that he was unaware of Edge Games manufacturing or
`
`selling any computer gaming equipment under the mark EDGE, EDGE GAMES or otherwise.
`
`Id. ¶ 13.
`
`31.
`
`Edge Games currently claims it has rights in EDGE PC and EDGE GAMING PC
`
`marks because it allegedly sells computers under the marks. A true and correct copy of the
`
`“licensees” page from the Edge Games website located at <edgegames.com/licensees.htm> is
`
`attached as Exhibit 9.
`
`32.
`
`Upon information and belief, Edge Games has never sold a computer under the
`
`marks EDGE PC or EDGE GAMING PC in interstate commerce.
`
`33.
`
`Upon information and belief, Edge Games was not using the EDGE PC mark in
`
`commerce in connection with all the ‘060 Goods listed in the application as of April 1, 2013, the
`
`application filing date.
`
`34.
`
`Upon information and belief, Edge Games was not using the EDGE GAMING PC
`
`mark in commerce in connection with all the ‘061 Goods listed in the application as of April 1,
`
`2013, the application filing date.
`
`35.
`
`In fact, the image of the alleged EDGE computer shown on Edge Games’ website
`
`is not an image of an actual product sold by Petitioner, but is, instead, an image of a Corsair
`
`Obsidian 1000D Series personal computer that has been digitally altered to show the EDGE
`
`mark. A
`
`true
`
`and
`
`correct
`
`copy
`
`of
`
`a
`
`screen
`
`capture
`
`located
`
`at
`
`

`

`
`
`<http://www.edgegames.com/gamingpcs.htm> and at <https://optocrypto.com/corsair-obsidian-
`
`1000d-series-new-chassis-two-systems> is attached as Exhibit 10.
`
`COUNT I: CANCELLATION OF ‘761 REGISTRATION FOR FRAUD
`
`36. Microsoft incorporates the foregoing paragraphs as if set forth fully herein.
`
`37.
`
`In the application filed by Edge Games for the ‘761 Registration, a true and
`
`correct copy of which is attached as Exhibit 3, Edge Games’ CEO, Langdell, on Edge Games’
`
`behalf, represented to the PTO that Edge Games was actively using the EDGE GAMES mark in
`
`commerce in connection with the ‘761 Goods as of the date the application was filed (the “‘761
`
`Representation”).
`
`38.
`
`On information and belief, Edge Games was not using the EDGE GAMES mark
`
`in commerce in connection with all the ‘761 Goods listed in the application as of the application
`
`filing date.
`
`39.
`
`On information and belief, the ‘761 Representation was false at the time Langdell
`
`made it on Edge Games’ behalf.
`
`40.
`
`On information and belief, Edge Games and Langdell knew the ‘761
`
`Representation was false at the time it was made because Langdell knew Edge Games did not
`
`sell any games using the EDGE GAMES mark as of the date the application was filed.
`
`41.
`
`The false ‘761 Representation was material because, but for the false ‘761
`
`Representation, the PTO would not have granted Edge Games’ request for registration of the
`
`‘761 Registration.
`
`42.
`
`Edge Games and Langdell made the false ‘761 Representation with the intent to
`
`mislead the PTO and cause it to issue the ‘761 Registration on December 17, 2019.
`
`43.
`
`Based on the foregoing, Edge Games obtained the ‘761 Registration fraudulently,
`
`which is grounds for cancellation of the ‘761 Registration in its entirety.
`
`

`

`
`
`44. Microsoft has been and will continue to be harmed by the ‘761 Registration
`
`because Edge Games is relying on the ‘761 Registration to assert its alleged rights against
`
`Microsoft.
`
`COUNT II: CANCELLATION OF ‘060 REGISTRATION FOR FRAUD
`
`
`
`45. Microsoft incorporates the foregoing paragraphs as if set forth fully herein.
`
`46.
`
`In the application filed by Edge Games for the ‘060 Registration, a true and
`
`correct copy of which is attached as Exhibit 6, Edge Games’ CEO, Langdell, on Edge Games’
`
`behalf, represented to the PTO that Edge Games was actively using the EDGE PC mark in
`
`commerce in connection with the ‘060 Goods as of the date the application was filed (the “‘060
`
`Representation”).
`
`47.
`
`On information and belief, Edge Games was not using the EDGE PC mark in
`
`commerce in connection with all the ‘060 Goods listed in the application as of the application
`
`filing date.
`
`48.
`
`On information and belief, the ‘060 Representation was false at the time Langdell
`
`made it on Edge Games’ behalf.
`
`49.
`
`On information and belief, Edge Games was not using the EDGE PC mark in
`
`connection with computers and computer hardware because Velocity Micro, the alleged licensee
`
`of Edge Games who was selling computers and computer hardware, was only using the marks
`
`GAMER’S EDGE and EDGE.
`
`50.
`
`Further, any use of the GAMER’S EDGE and EDGE marks by Velocity Micro
`
`did not inure to the benefit of Edge Games because Edge Games provided no quality control
`
`oversight rendering it a naked license agreement. Yocum v. Covington, 216 USPQ 210, 216
`
`(TTAB 1982); 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §
`
`

`

`
`
`18:48.
`
`51.
`
`In addition, upon information and belief, Edge Games has not sold any computers
`
`under the marks EDGE PC in commerce.
`
`52.
`
`On information and belief, Edge Games and Langdell knew the ‘060
`
`Representation was false at the time it was made because Langdell was aware that Velocity was
`
`not selling any computers or computer hardware under the mark EDGE PC, that Edge Games
`
`was providing no oversight over its alleged licensee, and that Edge Games itself was not selling
`
`any computers under the EDGE PC mark.
`
`53.
`
`The false ‘060 Representation was material because, but for the false ‘060
`
`Representation, the PTO would not have granted Edge Games’ request for registration of the
`
`‘060 Registration.
`
`54.
`
`Edge Games and Langdell made the false ‘060 Representation with the intent to
`
`mislead the PTO and cause it to issue the ‘060 Registration on February 18, 2020.
`
`55.
`
`Based on the foregoing, Edge Games obtained the ‘060 Registration fraudulently,
`
`which is grounds for cancellation of the ‘060 Registration in its entirety.
`
`56. Microsoft has been and will continue to be harmed by the ‘060 Registration
`
`because Edge Games is relying on the ‘060 Registration to assert its alleged rights against
`
`Microsoft.
`
`COUNT III: CANCELLATION OF THE ‘061 REGISTRATION FOR FRAUD
`
`57. Microsoft incorporates the foregoing paragraphs as if set forth fully herein.
`
`58.
`
`In the application filed by Edge Games for the ‘061 Registration, a true and
`
`correct copy of which is attached as Exhibit 7, Edge Games’ CEO, Langdell, on Edge Games’
`
`behalf, represented to the PTO that Edge Games was actively using the EDGE GAMING PC
`
`

`

`
`
`mark in commerce in connection with the ‘061 Goods as of the date the application was filed
`
`(the “‘061 Representation”).
`
`59.
`
`On information and belief, Edge Games was not using the EDGE GAMING PC
`
`mark in commerce in connection with the ‘061 Goods listed in the application as of the
`
`application filing date.
`
`60.
`
`On information and belief, the ‘061 Representation was false at the time Langdell
`
`made it on Edge Games’ behalf.
`
`61.
`
`Edge Games was not using the EDGE GAMING PC mark in connection with
`
`computers and computer hardware because Velocity Micro, the alleged licensee of Edge Games
`
`who was selling computers and computer hardware, was only using the marks GAMER’S EDGE
`
`and EDGE.
`
`62.
`
`Further, any use of the GAMER’S EDGE and EDGE marks by Velocity Micro
`
`did not inure to the benefit of Edge Games because Edge Games provided no quality control
`
`oversight rendering it a naked license agreement. Yocum v. Covington, 216 USPQ 210, 216
`
`(TTAB 1982); 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §
`
`18:48.
`
`63.
`
`In addition, upon information and belief, Edge Games has not sold any computers
`
`under the marks EDGE GAMING PC in commerce.
`
`64.
`
`On information and belief, Edge Games and Langdell knew the ‘061
`
`Representation was false at the time it was made because Langdell was aware that Velocity
`
`Micro was not selling any computers or computer hardware under the mark EDGE GAMING
`
`PC, that Edge Games was providing no oversight over its alleged licensee, and that Edge Games
`
`itself was not selling any