ESTTA Tracking number:
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`ESTTA1409643
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`Filing date:
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`01/21/2025
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`92081334
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`Party
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`Correspondence
`address
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`Plaintiff
`Edge Games, Inc.
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`TIM LANGDELL
`EDGE GAMES INC
`35 NORTH LAKE AVENUE
`SUITE 710
`PASADENA, CA 91101
`UNITED STATES
`Primary email: edgegames@gmail.com
`Secondary email(s): uspto@edgegames.com
`626-824-0097
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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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`Other Motions/Submissions
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`Tim Langdell
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`edgegames@gmail.com
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`/Tim Langdell/
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`01/21/2025
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`Attachments
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`Petitioners Partial Motion to Dismiss.pdf(436294 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Cancellation No. 92081334
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`In the Matter of Registration No. 5,766,386
`For the Trademark BLEEDING EDGE
`Issued June 4, 2019
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`EDGE GAMES, INC.
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`Petitioner,
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`MICROSOFT CORPORATION
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`Registrant
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`__________________________________________)
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`Trademark Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
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`PETITIONER’ S PARTIAL MOTION TO DISMISS
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`Petitioner EDGE Games, Inc. (“Petitioner”) pursuant to Fed. R. Civ. P. 12(b)(6) and Rule
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`503.02 of the Trademark Rules of Practice, hereby files its Partial Motion to Dismiss (“Motion”)
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`and moves to dismiss the fraud claim portions of Registrant’s Counterclaim Counts I, II, and III.
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`Registrant has failed to state a claim upon which relief can be granted with respect to these three
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`pled claims and fails to meet the minimum criteria of pleading fraud that must be “with
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`particularity” such that fraud can reasonably be expected to be proven “to the hilt,” and therefore
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`Petitioner seeks dismissal of Counts I, II and III of the Counterclaims with prejudice.
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`1
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`I.
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`INTRODUCTION
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`Petitioner filed its petition to cancel Registrant’s mark “BLEEDING EDGE”
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`(Serial No. 79/237,384) on January 9, 2023. Following a period in which the proceedings were
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`suspended while the parties discussed potential settlement negotiations, and then a period in
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`which several motions were considered and ruled upon, Registrant eventually filed its Amended
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`Answer and Counterclaim on May 14, 2024 (Docket #37). Further motions were considered
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`which put the proceedings into suspension again, and on December 31, 2024 (Docket #47) the
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`Board issued an order recommencing proceedings and giving Petitioner until January 31, 2025
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`to file and answer or otherwise respond to Registrant’s counterclaims. Being filed before the
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`answer to the counterclaims is due, this Motion is thus timely.
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`II.
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`REGISTRANT’S CLAIMS FOR FRAUD FAIL TO STATE A CLAIM
`UPON WHICH RELIEF CAN BE GRANTED AND DO NOT MEET THE
`MINIMUM REQUIREMENTS FOR PLEADING A COUNT OF FRAUD
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`To sufficiently plead a claim of fraud, a petitioner must sufficiently allege that (1) the
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`registrant made a false representation (misrepresentation) to the USPTO; (2) the false
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`representation is material to the determination of registrability (or maintenance) of a mark; (3)
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`the registrant had knowledge of the falsity of the representation; and (4) the registrant made the
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`representation with the intent to deceive the USPTO to issue (or maintain) the registration. See In
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`re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1941 (Fed. Cir. 2009). Moreover, the
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`circumstances constituting fraud must be alleged “with particularity.” Fed. R. Civ. P. 9(b). A
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`pleading that simply alleges the substantive elements of fraud, without setting forth the
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`particularized factual bases for the allegations, does not satisfy Fed. R. Civ. P. 9(b). See
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`Petroleos 5 Mexicanos v. Intermix S.A., 97 USPQ2d 1403, 1407 (TTAB 2010), citing Asian and
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`W. Classics B.V. v. Selkow, 92 USPQ2d 1478, 1478 (TTAB 2009) (elements of fraud must be
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`pleaded with particularity).
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`2
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`A party seeking cancellation of a trademark registration for fraud bears a heavy burden of
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`proof. Bose, 91 USPQ2d at 1939 (citing W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 377
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`F.2d 1001, 153 USPQ 749, 750 (CCPA 1967)). Indeed, “the very nature of the charge of fraud
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`requires that it be proven ‘to the hilt’ with clear and convincing evidence. There is no room for
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`speculation, inference or surmise and, obviously, any doubt must be resolved against the
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`charging party.” Id. (quoting Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (TTAB
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`1981)). The Board will not find fraud if the evidence shows that a false statement was made with
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`a reasonable and honest belief that it was true, rather than intent to mislead the USPTO into
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`issuing a registration to which the applicant was not otherwise entitled. See id.; see also
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`Woodstock’s Enters. Inc. (Cal.) v. Woodstock’s Enters. Inc. (Or.), 43 USPQ2d 1440, 1443
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`(TTAB 1997), aff’d (unpub’d), Appeal No. 97-1580 (Fed. Cir. Mar. 5, 1998).
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`COUNT I – FRAUD IN APPLYING FOR THE ‘761 MARK
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`Here in support of its fraud claim in Count I of the Counterclaims seeking cancellation of
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`the ‘761 registration (EDGE GAMES) in paragraph 38 Registrant presents the grounds for its
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`pleading of fraud as “On information and belief, Edge Games was not using the EDGE GAMES
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`mark in commerce in connection with all the ‘761 Goods listed in the application as of the
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`application filing date.” Registrant then goes on (in its paragraph 39) to say that “on information
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`and belief” the representation “was false at the time Langdell made it on Edge Games’ behalf.”
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`And then in its paragraph 40 Registrant once again relies on nothing more than “on information
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`and belief” to suggest that Edge Games knew the representation was false at the time it was
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`made.
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`As noted above, the Board requires that any pleading of fraud must be alleged “with
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`particularity.” Fed. R. Civ. P. 9(b). Registrant however states no particularity whatsoever, and in
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`3
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`fact the pleading could not be vaguer. In each of its paragraphs, Registrant relies on the phrase
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`“on information and belief” but then provides absolutely no information that could support an
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`accusation of fraud at all, let alone a pleading of fraud “with particularity” that could be said to
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`be the basis for the requirement to at trial prove the charge “to the hilt” as the Board requires.
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`Registrant also gives no detail whatsoever as to what might be the basis for its alleged “belief”
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`despite information and details for basis for belief being required to be stated at the time of claim
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`(or, here, counterclaim) with particularity by precedential Board rulings in order to be permitted
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`to plead a claim of fraud.
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`COUNT II – FRAUD IN APPLYING FOR THE ‘060 REGISTRATION
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`As with their COUNT I in regard to the ‘761 mark, this count of fraud is also almost
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`entirely based on the same vague “on information and belief” statements that do not come
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`remotely close to meeting the required level of pleading “with particularity.” The vague
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`references to what may or may not be true about a license to use the mark EDGE with a
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`company called Velocity Micro have no bearing on an accusation of fraud and in any event could
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`not be fairly characterized as arguing the fraud claim “with particularity.” It is a matter of record
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`that Petitioner originally filed a specimen of use of its ‘060 mark based on use by Velocity Micro
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`of the mark “Edge” for game computers. Thus, Petitioner stating it believes Velocity Micro uses
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`only the GAMER’S EDGE and EDGE marks is entirely consistent with what Petitioner
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`represented in its application for the ‘060 mark, and in no sense whatsoever provides any detail,
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`let alone ‘particularity’ that could be said to support a fraud claim. Indeed, Registrant is in fact
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`merely pointing out that Petitioner made an accurate representation in its filing. Further,
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`Petitioner made no representation that its application as finally considered by the USPTO was
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`reliant at all on its license arrangement with Velocity Micro, and thus yet again there is no sense
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`4
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`whatsoever that in COUNT II Registrant is providing any evidence at all to support a claim of
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`fraud. It is of record that Petitioner’s initial specimen of use based on use by Velocity Micro (and
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`the reference to a license) was not accepted by the USPTO. Petitioner was required to file a new
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`specimen of use which this time had no reference to Velocity Micro or any license with that
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`company. Consequently, any issues about the license with Velocity Micro have no bearing on a
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`fraud claim since the final application as amended had no connection to or representation about
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`any license agreement with Velocity Micro.
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`COUNT III – FRAUD IN APPLYING FOR THE ‘061 REGISTRATION
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`Petitioner repeats the arguments made above in regard to Registrants counterclaim claims
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`I and II, noting that the exact same arguments are made by Registrant in regard to the application
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`for the ‘061 registration. Yet again there is no require particularity of the allegation of fraud and
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`not the slightest hint that at trial, based on the pleaded grounds for the claim, Registrant would be
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`able to prove fraud “to the hilt.” Yet again the basis primarily relies on the vague “on
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`information and belief” with no substantial support as to what information or what might form
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`any belief. As with Count II, the statements about Velocity Micro and any purported license are
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`completely irrelevant given that here, as with the ‘060 application, the specimen that mentioned
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`Velocity Micro was replaced with one that did not mention Velocity or any license. Insofar as
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`the original specimen represented that Velocity sold a computer named “Edge” this in no way
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`even suggests fraud in the representation since as Registrant states Velocity uses the name
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`“Edge.” Registrant was again thus just confirming the veracity of Petitioner’s original
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`representation with the initial filing. But since the replacement specimen again (as with the ‘060
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`mark) did not reference Velocity Micro or any license in its representations, it follows again that
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`5
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`Registrant’s suggestions regarding any such license have no bearing whatsoever on the question
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`of the accuracy of Petitioner’s representations upon which the USPTO granted registration.
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`SUMMARY
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`Registrant is required to plead any claim of fraud with particularity or it is not permitted
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`to include a fraud head of claim. In all three instances of Counts I, II and III, Registrant
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`completely failed to plead the claim of fraud with any particularity at all. From the precedential
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`rulings by the Board, it is clear that the level of particularity the Board needs to see in initial
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`pleadings in order to permit a claim of fraud must be such that the Board has a reasonable belief
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`that at trial the party making the claim has a reasonable prospect of proving the claim of fraud
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`“to the hilt.” Thus, the level of particularity included in the initial claim (or here, counterclaim)
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`must be extensive and detailed. However, Registrant offers no detail at all for its Count I in
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`regard to the ‘761 mark. And in regard to the ‘060 and ‘061 marks Registrant once again offers
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`no basis at all for the Board to believe fraud occurred since its vague remarks about Velocity
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`Micro and a license agreement have no bearing on any claim of fraud since no representations
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`about Velocity micro or any license agreement were made by Petitioner when applying to
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`register either of these marks. The USPTO thus did not in any sense rely upon any representation
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`relating to Velocity Micro or a license when granting the registrations, and hence it follows the
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`vague statements made by Registrant do not rise to the level of supporting a fraud claim at all, let
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`alone supporting the claims “with particularity” such that the Board could reasonably anticipate
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`Registrant could prevail at trial by proving fraud “to the hilt.” Or indeed that Registrant could
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`even have a remotely reasonable chance of prevailing on the fraud claims at all given the paucity
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`of detail in, and inadequacy of, the pleadings for these three Counts.
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`///
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`6
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`WHEREFORE, Petitioner respectfully requests that the Board enter judgment in
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`Petitioner’s favor, denying Counts I, II and III of Registrant’s counterclaim with prejudice, and
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`granting any other relief as the Board may deem appropriate
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`Dated January 21, 2025
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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.
`35 N. Lake Avenue, Ste 171
`Pasadena, CA 91101
`edgegames@gmail.com
`626 824 0097
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`CERTIFICATE OF SERVICE
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`I hereby certify that pursuant to CFR 2.101(b), on January 21, 2025 a true and correct copy of
`the foregoing PETITIONER’S PARTIAL MOTION TO DISMISS
`Was served via email on Respondent’s counsel:
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`trademarkslv@dickinsonwright.com, jkrieger@dickinsonwright.com,
`cvillanueva@dickinsonwright.com
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`/Tim Langdell/____________
`Dr. Tim Langdell
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`7
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`EXHIBIT A
`EXHIBIT A
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`8
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`EXHIBIT B
`EXHIBIT B
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`9
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