260 S Lake Ave, PMB#234,
`
`Pasadena CA 91101
`F: 626 844 4334
`
`Assistant Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Via First
`
`August 31, 2000
`
`Wm/lllllllllll/llll//ll/lllf/flfmmm
`O9-12.
`u3’lMta ' Ratio; ,5,
`
`Re:
`
`Application Serial No. 75/077,113
`For the mark THE EDGE in classes 9, 16, 20, 21, 25, and 28.
`Applicant: The Edge Interactive Media, Inc.
`
`Dear Sir,
`
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`
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`
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`
`
`
`We write in response to Office Action No. 03 of March 8, 2/000 and note that we are responding
`within the 6-months time limit given to us for this response.
`-
`
`First, NOTICE OF CHANGE OF ADDRESS.
`We note that the Trademark Database still reflects our old address and wish to formally request
`again that it be changed to our new address, which is:
`The Edge Interactive Media, Inc,
`260 South Lake Avenue, PMB#234
`Pasadena, CA 91101
`
`Second, NOTICE OF RELIANCE
`We also wish to note for the record that we are the owners of the following registered and
`pending marks:
`1. EDGE, Class 16, Pending (Published, in opposition) Serial No. 74/390,998
`2. EDGE, Class 28, Registered 9/13/94, Reg. No. 1853705
`3. EDGE, Class 16, Registered 1/26/1999, Reg. No. 2219837
`We rely upon these previously existing registrations/applications in this current application for
`the almost identical mark THE EDGE for similar goods and services.
`
`Third, Specific Responses to Office Action No.3
`1. Seaian 2(d) refusa1(s)
`We note the objection that as worded our specification of goods is overly broad given the
`existing registrations for similar EDGE marks registered in respect to computers and computer-
`related goods. However, we have a firm claim in our prior registrations for registrafion in respect
`to entertainment related goods. We thus propose that we add to the end of our class 9 and 25
`descriptions the phrase “all relating to entertainment.” Our rights in respect to interactive
`entertainment, video games, computer games, and so forth, are clear. We thus suggest that this
`
`

`
`0'
`
`wording or one very similar to it would — or should — enable our application to go forward to
`publication for these classes.
`
`2. Identification
`We do not understand this objection. Many of our competitors have registrations on the
`register that simply state (in eflect) “video game accessories,” or “video game peripherals,” or
`“computer accessories,” or “computer peripherals,” without apparently ever having been required
`to then list what these items “namely” are. It is well understood in the marketplace what these
`terms refer to, and we thus request that we are permitted to retain the current wording with the
`addition of some term such as “for use in the field of amusement” or “for entertainment
`purposes.” Please see attached registration (No 1754952) which shows that our competitors have
`been permitted to have product identifications in the form we are requesting.
`
`With the other classes (above refers to 9) we would propose the addition of a similar
`phrase such as “for use in the field of amusement” or “for entertainment purposes.” We also
`suggest the deletion of class 20 in its entirety as we did not intend to apply for registration in
`respect to cabinets — when we use the term “video game consoles” we use it in the way it is
`generally understood in U.S commerce, namely as interchangable with the term “video game
`machine.”
`
`3. Specimens
`We hereby declare under penalty of perjury and in accord with 37 CPR. Section 2.20,
`that the substitute specimens we supplied were in use in commerce at least as early as the filing
`date of this application. This is so declared by the undersigned.
`
`4. Prior Pending Applications
`We believe our above responses successfully also deal with this objection too and render
`all these prior applications irrelevant once the identification of goods in each class has been
`amended per our requests.
`
`5. Fees
`
`Once the issue of the number of classes has been resolved, applicant is happy to then submit
`any further fees required, if necessary.
`
`We understand that this deals with all the points raised in Offiee Action N03, and thus request
`that our mark be now permitted to go forward to publication as proposed above.
`
`Sincerely
`
`W1
`
`K.
`Dr Tim Langdell
`For The Edge Interactive Media, Inc.
`
`Enos: (1) Example ofRegistered Mark (2) Certificate ofMailing
`
`

`
`0'
`
`CERTIFICATE OF MAILING
`
`The undersigned hereby certifies that on September I, 2000 a copy ofthe foregoing
`
`APPLICANT’S RESPONSE TO OFFICE ACTION NO. 3 in respect to Application No.
`
`75/077,133 was mailed by first class mail, postage prepaid, as follows:
`
`Assistant Commissioner for Trademarks
`2900 Crystal Drive
`Arlington
`VA 22202-35 l3
`
`Executed this 1st day of September 2000 at Pasadena, California‘
`
`<7
`
`\
`
`, C/\_
`
`QQEU
`
`Dr. Tim Langdell,
`For Applicant / The Edge_I eractive Media, Inc.
`
`

`
`IlllllllllllllllllllllllllIllllllllllllllllllllll
`
`09-12-2000
`u.s. Plbntfl TMOfl=/TM Mlll Hemp‘, as
`
`260 S Lake Ave., PMB#234,
`Pasadena CA 91101
`F: 626 844 4334
`
`The Assistant Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3503:
`
`Via Federal Express
`
`September 11, 2000
`
`Re:
`
`NOTICE OF CHANGE OF ADDRESS (REPEAT COPY)
`Serial No. 75/077,113 THE EDGE
`
`Dear Sir
`
`We have written on numerous occasions to have you change our address on your database in
`respect to this registered mark to our current address, apparently without effect. You still have an
`extremely out of date address for us (140 South Lake Ave.) on the database.
`
`Can you please immediately update your database as follows and please ensure that any notices
`we should have received regarding this registration are expeditiously re-sent to our correct
`address‘? Thank you.
`
`The Edge Interactive Media, Inc.
`260 South Lake Avenue, PMB#234
`Pasadena, CA 9110]
`
`Thank you
`
`Smce L /
`
`Tim Langdell
`
`

`
`.
`
`Page 1 of2
`
`Us PATENT 8: TRADEMARK OFFICE
`“I“‘1r-amts:£«: M..&"«».1E’-3‘:}‘*.’.
`'”i‘1::;i-:"‘r.1:2..1w;:t:a Irswtreas: 1'J3urs..'"ai::m,m=.=sE
`
`(4 of 18)
`
`Word Mark
`
`ACCLAIM
`
`cm»; Status f
`
`Owner Name
`Owner Address
`
`(REGISTRANT) ACCLAIMENTERTAINMENT, INC.
`71 Audrey Avenue Oyster Bay NEW YORK 11771 CORPORATION
`DELAWARE
`
`Attorney of
`Record
`
`M IRIS HESS
`
`Serial Number
`
`74441788
`
`Registration
`Num ber
`
`1754952
`
`Filing Date
`
`02/25/1991.
`
`Registration
`Date
`
`Mark Drawing
`Code
`
`Register
`Other
`
`Registration
`Info.
`
`Published for
`
`Opposition
`
`03/02/1993:
`
`(1) TYPED DRAWING
`
`PRINCIPAL
`
`163 1382
`
`12/08/1992
`
`Affidavits
`Type of Mark
`
`SECT 15.; SECT 8 (6—YR)
`TRADEMARK; SERVICE MARK
`
`International
`Class
`Goods and
`Services
`
`009/W-
`computer peripherals end computer software for use in the field ofamusement;
`DATE OF FIRST USE: 1987.08.30; DATE OF FIRST USE IN COMMERCE:
`1987.08.30
` :——:——:..:.
`
`International
`Class
`
`028