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`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
`
`July 28, 2024
`
`Cancellation No. 92081334
`
`Edge Games, Inc.
`
`v.
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`Microsoft Corporation
`
`
`
`Jill M. McCormack, Interlocutory Attorney:
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`On June 18, 2024, the Board held a teleconference with the parties to address
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`Petitioner’s request to challenge the confidentiality designation of an exhibit attached
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`to Respondent’s motion for leave to amend (26 TTABVUE), and Petitioner’s fully-
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`briefed motion to suspend this proceeding pending the outcome of two other Board
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`proceedings.1
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`I. Motion to Suspend Denied
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`a. Relevant Background
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`Petitioner seeks cancellation of Respondent’s Registration No. 5766386 for the
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`mark BLEEDING EDGE on the ground of likelihood of confusion. Petitioner pleads
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`ownership of three registrations and three applications consisting of or including the
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`term EDGE. On April 5, 2024, Respondent sought leave to amend its answer to assert
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`1 The Board has considered the parties’ arguments and does not recount all of the facts or
`arguments. See Guess? IP Holder LP v. Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015).
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`
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`
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`Cancellation No. 92081334
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`counterclaims to cancel Petitioner’s pleaded Registration Nos. 5934761, 5987060, and
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`5987061.2
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`On April 14, 2024, Petitioner filed a motion to suspend this case pending the
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`outcome of two other Board proceedings, Opposition No. 91266066 and Cancellation
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`No. 92075393.3 In the cancellation, the petitioner, Mobigame, seeks cancellation of
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`Respondent’s pleaded Registration Nos. 5934761. In the opposition, currently
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`suspended pending disposition of the cancellation, Mobigame seeks to deny
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`registration of Respondent’s pleaded application Serial No. 86538581.
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`b. Applicable Legal Principles
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`Trademark Rule 2.117(a), provides, in relevant part, that:
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`Whenever it shall come to the attention of the Trademark Trial and
`Appeal Board that . . . another Board proceeding . . . may have a bearing
`on a pending case, proceedings before the Board may be suspended until
`termination of . . . the other Board proceeding . . . .
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`37 C.F.R. § 2.117(a). Suspension of a Board proceeding pending the final
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`determination of another proceeding is solely within the discretion of the Board.
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`Because the Board and the parties are interested in the prompt disposition of pleaded
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`claims and defenses, separate Board proceedings that involve the same properties
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`but different parties typically proceed simultaneously. Cf. New Orleans La. Saints
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`LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1550-51 (TTAB 2011) (The Board regularly
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`allows multiple opposition proceedings against the same application to proceed
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`2 Respondent paid the required fees on May 14, 2024.
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`3 Petitioner’s initial motion to suspend, 29 TTABVUE, is considered superseded by the later-
`filed version, 30 TTABVUE. Petitioner’s initial motion will be given no consideration.
`Likewise, Petitioner’s corrected reply, 40 TTABVUE, is considered operative, and its initial
`reply, 39 TTABVUE, will be given no consideration.
`
`
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`2
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`
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`Cancellation No. 92081334
`
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`simultaneously so as not to choose which parties receive faster resolution.).
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`Otherwise, the chance of prejudicing the non-consenting party may grow as the
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`proceedings remain suspended. The Board, however, will typically review the
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`pleadings in the other proceedings to determine if there is good cause to justify a
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`suspension over the objection of the non-moving party. See New Orleans La. Saints
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`LLC, 99 USPQ2d at 1551.
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`c. Analysis and Decision
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`In this proceeding, Petitioner bases its claim of likelihood of confusion on (i) its
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`pleaded Registration Nos. 5934761, 5987060, and 5987061; (ii) its pleaded application
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`Serial No. 86538581; (iii) its alleged prior common law rights in the marks EDGE and
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`EDGE GAMES; and (iv) a family of EDGE formative marks. In the other Board
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`proceedings, third-party Mobigame is challenging two of Petitioner’s pleaded
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`properties. As a result, although a determination in the Mobigame proceedings may
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`have a bearing on this proceeding, they will not be dispositive of all of the claims and
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`counterclaims herein. Moreover, because Opposition No. 91266066 is currently
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`suspended pending Cancellation No. 92075393, it could be a significant length of time
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`before a final resolution of those proceedings. Thus, the Board finds that the potential
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`prejudice to Respondent in this case outweighs the potential benefits of suspension.4
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`4 As discussed during the teleconference, should Mobigame prove unsuccessful in its
`proceedings, this would not automatically prohibit Respondent in this case from moving
`forward with its counterclaims and/or defenses. See generally, 5 J. Thomas McCarthy,
`MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 32:83 (5th ed. May 2024
`update) (“It is elementary that a person cannot be collaterally estopped from litigating a fact
`determined in a prior proceeding where that person was not a party, or in privity with a
`party, to the prior determination.”).
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`
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`3
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`
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`Cancellation No. 92081334
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`In view of the foregoing, as stated during the call, Petitioner’s motion to suspend
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`this proceeding pending the outcome of the Mobigame cases is denied.
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`II. Briefing Required On Confidentiality Issue
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`The Trademark Rules of Practice provide that all inter partes proceeding files, as
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`well as the involved registration and application files, are open to public inspection.
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`When appropriate, however, a party or witness, on its own or through its attorney,
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`may seek to protect the confidentiality of information. In conjunction with its motion
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`for leave to amend its answer, 26 TTABVUE, Respondent attached an exhibit without
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`any such confidentiality designation. Petitioner now seeks to challenge that lack of
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`designation and require that the entire document be labeled with a confidentiality
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`designation pursuant to the Board’s Standard Protective Order .5
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`Petitioner is allowed THIRTY (30) DAYS from the date of this order to file its
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`motion challenging the designation of the exhibit attached to Respondent’s motion for
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`leave to amend. Respondent is allowed TWENTY (20) DAYS from the date of service
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`thereof to respond to the motion. Petitioner’s reply, if any, must be filed is accordance
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`with Trademark Rule 2.127(a), 37 C.F.R. § 2.127(a).
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`The Board notes that Petitioner’s proposed confidentiality designation should be
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`respected until the Board rules on the designation. To the extent either party
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`discloses designated information to the Board, the designated information should be
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`filed under seal. See TBMP § 412.04. “If a party submits any brief, pleading, motion,
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`or other such filing containing confidential information, either electronically via
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`5 The parties have satisfied their obligation, pursuant to Section 14 of the Standard Protective
`Order, to negotiate in good faith regarding the designation of the document at issue.
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`4
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`
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`Cancellation No. 92081334
`
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`ESTTA or, where permitted, by paper under seal, the party must also submit for the
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`public record a redacted version of said submission.” Id. “Thus, for confidential
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`submissions filed either via ESTTA or, where permitted, by paper, two versions are
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`required – a confidential version as well as a redacted version available for public
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`view.” Id.
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`Proceedings otherwise remain suspended.6
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`6 As was discussed on the call, any request for reconsideration of this order may be filed
`during the suspension period. The parties should otherwise not file any papers that are not
`germane to Petitioner’s forthcoming motion to challenge confidentiality designations.
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`5
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