Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1272438
`03/16/2023
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`ESTTA Tracking number:
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`Filing date:
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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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`Defendant
`Microsoft Corporation
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`APRIL L BESL
`DINSMORE & SHOHL LLP
`255 EAST FIFTH STREET SUITE 1900
`CINCINNATI, OH 45202
`UNITED STATES
`Primary email: april.besl@dinsmore.com
`Secondary email(s): karen.gaunt@dinsmore.com, luke.curran@dinsmore.com,
`andrew.hilton@dinsmore.com, dsmstrademarks@dinsmore.com
`513-977-8527
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`Submission
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`Filer's name
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`Filer's email
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`Reply in Support of Motion
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`April L. Besl
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`april.besl@dinsmore.com, karen.gaunt@dinsmore.com,
`luke.curran@dinsmore.com, andrew.hilton@dinsmore.com, dsmstrade-
`marks@dinsmore.com
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`Signature
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`Date
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`/april l besl/
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`03/16/2023
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`Attachments
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`Reply in Support of Partial Motion to Dismiss.pdf(600362 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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`Registration No.: 5,766,386
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`Mark: BLEEDING EDGE
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`EDGE GAMES, INC.,
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`Petitioner,
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`-vs-
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`MICROSOFT CORPORATION,
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`Registrant.
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`REGISTRANT’S REPLY IN SUPPORT OF ITS PARTIAL MOTION TO DISMISS
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`Registrant Microsoft Corporation (“Registrant”) hereby submits this reply (“Reply”) in
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`support of its Partial Motion to Dismiss (“Motion”) the Petition to Cancel (“Petition”) filed by
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`Petitioner Edge Games, Inc.’s (“Petitioner”). This Reply also is submitted in response to
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`Petitioner’s March 9, 2023 opposition to Registrant’s Motion (“Opposition”).
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`While Registrant acknowledges that reply briefs are generally disfavored by the Board
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`where the reply simply re-argues the points made in the original Motion, in light of a new issue
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`raised by Petitioner in its Opposition, Registrant hereby submits this Reply in response.
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` In short, in its Opposition, Petitioner explicitly concedes that Counts II, III, and IV of
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`the Petition fail as a matter of law, and agrees with the arguments made in Registrant’s Motion
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`that these counts should be dismissed from the Petition with prejudice. However, in its
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`Opposition, Petitioner argues that the Board should not dismiss its unpled dilution claim (which
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`Petitioner implicitly concedes was, in fact, unpled) identified only in the ESTTA cover sheet that
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`accompanied the Petition.1 This Reply thus, only addresses the dilution arguments raised by
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`1 It is worth noting that in its Opposition, Petitioner does not attempt to save the other unpled claims identified on
`the ESTTA cover sheet accompanying the Petition, namely, (1) the mark was never used in commerce under Section
`14(6); (2) the mark is not inherently distinctive under Sections 14(1) and 2(f); and (3) nonownership under Sections
`14(1) and 1 of the Trademark Act (along with the unpled dilution claim, these claims are collectively referred to as
`the “Unpled Claims”).
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`Petitioner in its Opposition since Petitioner has conceded that all other claims (other than the
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`pled claim in Count I alleging priority and likelihood of confusion) should be dismissed.
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`I.
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`PETITIONER’S ATTEMPT TO EXCUSE ITS FAILURE TO PLEAD THE
`UNPLED DILUTION CLAIM IS INADEQUATE TO DEFEAT REGISTRANT’S
`MOTION.
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`As an initial matter, the Petition itself fails to plead the required elements for the dilution
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`claim that Petitioner feebly attempts to rescue in its Opposition. Petitioner incorrectly states that
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`its unpled dilution claim “go[es] to the core Count I claim of Petitioner’s prior rights and
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`likelihood of confusion.” See Opposition brief at line 8-9. However, this argument is illogical, as
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`the elements of a dilution claim are different and distinct from the elements of a likelihood of
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`confusion claim.
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`To the extent that Petitioner’s Opposition attempts to argue a claim for dilution by
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`blurring and tarnishment under Sections 14(1) and 43(c) of the Trademark Act (as identified in
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`the ESTTA cover sheet but unpled in the Petition itself), the fact remains that the Petition, as
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`filed, does not allege facts sufficient to plead a claim for dilution. The Board must judge the
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`Petition as it presently stands, and Petitioner’s Opposition did not even attempt to argue that
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`the original Petition sufficiently alleged facts to support a claim for dilution. Furthermore, even
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`if the Board decided to consider the arguments asserted in Petitioner’s Opposition as somehow
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`constituting allegations made in the Petition itself, these arguments still do not sufficiently state
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`a claim for dilution upon which relief can be granted.
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`A.
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`Petitioner Has Not Pled Facts Sufficient to Allege Dilution Because
`Petitioner Has Failed to Establish Prior Fame.
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`To successfully plead a claim of dilution by blurring or tarnishment under the Lanham
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`Act § 43(c), 15 U.S.C. § 1125(c), a petitioner must plead the following: (1) it owns a famous mark
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`that is distinctive; (2) the defendant is using a mark in commerce that allegedly dilutes plaintiff’s
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`famous mark; (3) the defendant’s use of its mark began after plaintiff’s mark became famous; and
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`2
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`(4) defendant’s use of its mark is likely to cause dilution by blurring or tarnishment. Coach Servs.
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`v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ 2d 1713, 1723-24 (Fed. Cir. 2012). Even
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`when viewed in a light most favorable to Petitioner, the Petition fails to adequately assert the
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`first, third, and fourth elements of dilution, at a minimum.
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`In particular, the Petition (and the Opposition to the extent the Board considers it as part
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`of the original Petition) fail to establish prior fame. There is no doubt that the third requisite
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`element of a dilution claim requires a petitioner to plead that the asserted mark became famous
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`prior to either an applicant’s first use of its mark or the filing date of an applicant’s intent-to-use
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`application. See The Toro Co. v. ToroHead, Inc., 61 USPQ 2d 1164, 1174 (TTAB 2001)
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`(emphasizing that “in the case of an intent-to-use application, an owner of an allegedly famous
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`mark must establish that its mark had become famous prior to the filing date of the trademark
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`application or registration against which it intends to file an opposition or cancellation
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`proceeding.”); see also Polaris Indus. v. DC Comics, 59 USPQ 2d 1798, 1800 (TTAB 2000); Hewlett-
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`Packard Co. v. HopOne Internet Corp., 2001 TTAB LEXIS 791, at *4 (TTAB 2001) (not
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`precedential) (attached hereto).
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`Here it is clear that Petitioner has not done so. The Petition wholly fails to allege that
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`Petitioner’s purported mark either became famous prior to Registrant’s use of the BLEEDING
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`EDGE mark or the filing date of the application that resulted in the BLEEDING EDGE
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`registration. While Petitioner argues in its Opposition that its mark is supposedly famous, see
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`Opposition at ¶ 18, the Petition itself is noticeably silent as to when its asserted mark allegedly
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`became famous, whether the mark is distinctive, and whether such fame was achieved prior to
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`Registrant’s filing date.
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`Whenever a petitioner alleging dilution fails to plead the timing for when an asserted
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`mark became famous, the Board routinely dismisses it. For instance, in Polaris Indus. v. DC
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`3
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`Comics, Polaris filed a notice of opposition against DC Comics’ application for DR. POLARIS
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`based on likelihood of confusion. See Polaris Indus. v. DC Comics, 59 USPQ2d 1798, 1799-1800
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`(TTAB 2000). While the matter was pending before the Board, dilution became available as a
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`ground for opposition, which led Polaris to seek leave to amend its notice of opposition to add
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`the dilution claim. Id. But Polaris’ amended pleading failed to allege the prior fame of the
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`POLARIS mark and the Board held that Polaris’ “allegation of dilution is legally insufficient
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`inasmuch as there is no allegation as to when opposer’s mark became famous.” Id. at 1800.
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`Similarly, in Hewlett-Packard Co. v. HopOne Internet Corp., the Board granted a motion to
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`dismiss against another dilution claim where the opposer, Hewlett-Packard, only alleged that its
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`marks were “famous throughout the world” and that registration of the applicant’s mark would
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`dilute the distinctive quality of Hewlett-Packard’s marks. See Hewlett-Packard Co. v. HopOne
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`Internet Corp., 2001 TTAB LEXIS 791, at *1-4 (TTAB 2001). The Board again found that
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`Hewlett-Packard had not sufficiently plead a claim of dilution solely because there was no
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`allegation as to when its marks became famous. Id. As a result, the motion to dismiss was
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`granted. Id.
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`The foregoing well-established case law directly applies here where Petitioner has wholly
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`failed to plead that its asserted mark was allegedly famous prior to Registrant’s use and/or filing
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`date. See Petition, generally. Just as in Polaris and Hewlett-Packard, Petitioner’s unpled claims
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`of dilution by blurring and tarnishment (only first (and thinly) argued in Petitioner’s Opposition,
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`and not pled or alleged at all in the Petition itself), must be dismissed with prejudice pursuant to
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`Fed. R.Civ.P. 12(b)(6) and Rule 503.02 of the Trademark Rules of Practice.
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`B.
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`Petitioner Has Not Pled Facts Sufficient to Allege Any of the Remaining
`Unpled Claims.
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`With respect to the remaining Unpled Claims, namely, (1) the mark was never used in
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`commerce under Section 14(6); (2) the mark is not inherently distinctive under Sections 14(1)
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`4
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`and 2(f); and (3) nonownership under Sections 14(1) and 1 of the Trademark Act, the Petition is
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`devoid of any facts in support of any of these claims, and Petitioner’s arguments in the Opposition
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`(to the extent even made) are insufficient to defeat the Motion.2 Although the content of the
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`ESTTA cover sheet is to be read in conjunction with the petition to cancel, (see, e.g., PPG
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`Industries Inc. v. Guardian Industries Corp., 73 USPQ2d 1926, 1928 (TTAB 2005)), the mere
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`mention of a ground on the cover sheet is insufficient to constitute a pled claim. Embarcadero
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`Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1927 n.2 (TTAB 2013).
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`Because the Petition is devoid of any allegations to support these remaining Unpled
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`Claims, Registrant respectfully requests that each of these remaining unpled claims be dismissed
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`with prejudice.
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`II.
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`PETITIONER CONCEDES THAT COUNTS II, III, AND IV FAIL AS A MATTER
`OF LAW; EACH SHOULD THEREFORE BE DISMISSED.
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`Finally, as conceded in its Opposition, Petitioner agrees that Counts II, III, and IV should
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`be dismissed since these claims fail as a matter of law. Thus, Registrant respectfully requests that
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`Counts II, III, and IV be dismissed with prejudice.
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`III. CONCLUSION
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`For the arguments and reasons as fully set forth in Registrant’s Partial Motion to
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`Dismiss, and also for each of the above reasons, Counts II, III, and IV, along with each and every
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`Unpled Claims should be dismissed with prejudice.
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`Date: March 16, 2023
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`Respectfully submitted,
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`DINSMORE & SHOHL LLP
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`By: /April L. Besl__________
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`2 Indeed, Petitioner’s Opposition seemingly does not even attempt to rescue these remaining Unpled Claims.
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`5
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`

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`April L. Besl, Esq.
`Karen K. Gaunt, Esq.
`Luke S. Curran, Esq.
`Andrew D. Hilton, Esq.
`255 East Fifth Street, Suite 1900
`Cincinnati, OH 45202
`Telephone: (513) 977-8527
`Facsimile: (513) 977-8141
`E-mail: april.besl@dinsmore.com
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`karen.gaunt@dinsmore.com
`luke.curran@dinsmore.com
`andrew.hilton@dinsmore.com
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`Attorneys for Registrant
`Microsoft Corporation
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`6
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing has been served upon the
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`following by e-mail this 16th day of March, 2023:
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`Tim Langdell
`EDGE Games, Inc.
`1411 S. Oakland Ave 171
`Pasadena, CA 91106-4338
`edgegames@gmail.com
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`By:
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`/April L. Besl__________
`April L. Besl, Esq.
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`7
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`Hewlett-Packard Co. v. HopOne Internet Corp. , 2001 TTAB LEXIS 791
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`Trademark Trial and Appeal Board
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`November 2, 2001, Decided
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`Opposition No. 121,759
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`Reporter
`2001 TTAB LEXIS 791 *
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`Hewlett-Packard Company v. HopOne Internet Corporation
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`Core Terms
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`dilution, marks
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`Panel: [*1] Before Hairston, Walters and Holtzman, Administrative Trademark Judges.
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`Opinion
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`THIS OPINION IS NOT A PRECEDENT OF THE TTAB
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`By the Board:
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`On January 18, 2001, opposer filed a notice of opposition against applicant's intent-to-use application on two
`grounds; likelihood of confusion between opposer's previously used and registered "HP" marks for goods and
`services including computers and computer consulting services and applicant's mark HOPONE INTERNET CORP.
`and design for services including computer consulting services; and dilution of opposer's "HP" marks. With respect
`to the dilution claim, opposer alleges that its marks "are famous throughout the world" and that registration of
`applicant's mark would dilute the distinctive quality of opposer's famous marks. The Board, on January 23, 2001,
`issued a notice to the parties instituting this proceeding and allowing applicant until March 4, 2001 to file an answer.
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`On February 8, 2001, applicant, acting pro se, filed a paper styled "response to frivolous opposition" which we have
`construed as a motion to dismiss the opposition under Fed. R. Civ. P. 12(b)(6) for failure to state a claim on which
`relief can be granted. Applicant argues [*2] therein that opposer "does not provide services of type that [applicant]
`does, so there are no common business grounds" and that:
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`'HopOne Internet Corporation' does contain the letters 'H' and 'P,' however, the letters are not even continuous,
`nor a prominent portion of the company logo. It is simply that the word 'Hop' contains the two letters (as its first
`and third letter, respectively), the first being capitalized, and the second appearing in lower-case. 1
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`Opposer maintains that the notice states sufficient grounds for opposition and that whether applicant's mark
`contains a prominent depiction of the letters "HP" is the ultimate issue for the Board to decide. 2
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`1 Applicant also claims that opposer "falsely indicts [sic] that [applicant's] mark has not been used in connection with services."
`Opposer, in its response, has explained that the allegations in its pleading relate only to applicant's use of its mark prior to the
`filing dates of the applications underlying opposer's registrations.
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`Andrew Hilton
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`2001 TTAB LEXIS 791, *2
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`Page 2 of 3
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` [*3]
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`In order to avoid dismissal at this stage of the proceeding, opposer need only allege facts sufficient to state a claim
`on which relief can be granted. In other words, opposer need only allege facts in its pleading which, if proved,
`establish that (1) it has standing to challenge the application, and (2) there is a valid ground for seeking to oppose
`registration. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
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`Opposer has sufficiently pleaded its standing by alleging that it has a real interest, that is, a personal stake, in the
`outcome of the case. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999). Also, opposer has
`alleged sufficient facts to support a claim of likelihood of confusion between the parties' marks.
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`Applicant's arguments relate to the merits of opposer's claims rather than the sufficiency of the claims. 3 For
`purposes of a motion to dismiss, all of opposer's well pleaded allegations in the opposition must be accepted as
`true. Whether the allegations are, in fact, true, is not a matter for determination at this time. See TBMP § 503.02.
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` [*4]
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`While the pleading of likelihood of confusion is sufficient, we find that opposer has not sufficiently pleaded a claim of
`dilution inasmuch as there is no allegation as to when opposer's marks became famous. See Polaris Industries, Inc.
`v. DC Comics, 59 USPQ2d 1798 (TTAB 2000).
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`In view of the foregoing, the motion to dismiss is granted only to the extent that opposer is allowed until twenty
`days from the mailing date stamped on this order to file an amended pleading which states a proper claim of
`dilution, failing which, the claim of dilution will be dismissed.
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`Applicant is allowed until forty days from the date stamped on this order to file an answer to the amended pleading,
`if one is filed, or to file an answer to the original pleading, if an amended pleading is not filed. Applicant is required,
`in accordance with Fed. R. Civ. P. 8(b), to answer the opposition by stating, with respect to each allegation, that the
`allegation is either admitted or denied. If applicant does not know whether a particular allegation is true or not,
`applicant may answer by stating that it has insufficient information to admit or deny the [*5] allegation, and this will
`have the effect of a denial.
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`It should be noted that while Patent and Trademark Office Rule 10.14 permits any person to represent itself, it is
`generally advisable for a person who is not acquainted with the technicalities of the procedural and substantive law
`involved in an opposition proceeding to secure the services of an attorney who is familiar with such matters. The
`Patent and Trademark Office cannot aid in the selection of an attorney. It is recommended that applicant obtain a
`copy of the latest edition of Title 37 of the Code of Federal Regulations, which includes the Trademark Rules of
`Practice and is available for a fee from the Superintendent of Documents, U. S. Government Printing Office,
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`2 Applicant, on March 20, 2001, filed a reply stating that it "conducted a limited, unofficial, market survey" and that all responses
`thereto indicated that the marks are not similar. A reply brief, if filed, is due within 15 days from the date of service of the brief in
`response to the motion. We have deemed the reply timely in this case because the certificate of service attached to opposer's
`response is unsigned, and although it is clear that the response was served on applicant, we cannot assume that it was actually
`served on the date indicated in the certificate. However, because the reply is not accompanied by proof of service on counsel for
`opposer as required by Trademark Rule 2.119 (which is more fully explained later in this order) it will not be considered by the
`Board. A copy of the reply is forwarded herewith to counsel for opposer, but strict compliance with Trademark Rule 2.119 is
`required in all further papers filed with the Board. Moreover, applicant's unsupported and undocumented survey evidence is not
`proof of anything and, in any event, evidence in support of a party's case will only be considered by the Board if it has been
`timely and properly introduced in evidence in accordance with the applicable rules. See, for example, TBMP § 702.
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`3 Applicant should keep in mind, in this regard, that the issue in this case is not whether the typed word "HopOne" is similar to
`opposer's marks, but whether the particular display of the mark, as it appears in the opposed application, is similar to opposer's
`marks.
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`Andrew Hilton
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`2001 TTAB LEXIS 791, *5
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`Page 3 of 3
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`Washington, D.C. 20402. The Board's manual on practice and procedure (Trademark Trial and Appeal Board
`Manual of Procedure) (TBMP) is available online at www.uspto.gov.
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`As noted earlier in this order, Trademark Rules 2.119(a) and (b) require that every paper filed in the Patent and
`Trademark Office in a proceeding before the Board must be served upon the attorney for the other party, or on the
`party if there is no attorney, and proof of such service must [*6] be made before the paper will be considered by the
`Board. Consequently, copies of all papers which applicant may subsequently file in this proceeding, including its
`answer to the opposition, must be accompanied by a signed statement indicating the date and manner in which
`such service was made. The statement, whether attached to or appearing on the paper when filed, will be accepted
`as prima facie proof of service.
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`Compliance with the applicable rules of practice and procedure is expected of all parties before the Board, whether
`or not they are represented by counsel. 4
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`The motion to compel filed by opposer on October 3, 2001 is noted. A ruling on the motion will be issued once
`sufficient time has been allowed for the Board to receive applicant's response, if any, to the motion. Except to the
`extent indicated [*7] above, proceedings are suspended pending disposition of the motion to compel. The parties
`should not file any paper which is not germane to the motion. See Trademark Rule 2.120(e)(2), as amended
`effective October 9, 1998.
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`End of Document
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`4 Applicant's motion contains disparaging remarks directed at opposer's counsel. Applicant is warned that business before the
`Patent and Trademark Office is to be conducted with decorum and courtesy as required by Trademark Rule 1.3 and that papers
`presented in violation of this requirement will be submitted to the Director and will be returned by his direct order.
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`Andrew Hilton
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