“EDGE
`
`®
`
`Commissioner for Trademarks
`PO. Box 1451
`Alexandria
`VA 22313-1451
`
`November 28, 2005
`
`Via Express Mail
`
`MARK: THE EDGE
`
`SERIAL NUMBER: 75/077,113
`
`RESPONSE TO OFFICE ACTION — Attention Jennifer Chicoski, Law Office 101
`
`Dear Ms Chicoski
`
`The attached is by and large a repeat copy of the response to your Office Action of 6/3/05
`which has been previously transmitted via email.
`
`In addition to the text of our response previously emailed to you, please find attached the
`specimens requests (for classes 16, 21, 25 and 28 (your having confirmed that the
`previous specimen supplied was acceptable for class 9, and our having proposed the
`delete class 20 with its prior contents being reassigned to amended wording of classes 9
`and 28 — per your office action comments in this regard). Also please find attached a
`check for the balance of the fee due for this application, as well as signed statements and
`a signed declaration in accord with 37 C.F.R. §2.20 per your request in respect to the
`multiple class nature of our application.
`
`We believe that we have now answered all of your points such that it should now be
`possible to withdraw the prior refusal(s) and permit this application to go forward to
`publication. Should this not be the case, and should you feel there is any outstanding
`issue, we would be most obliged for any expedition possible in concluding any
`outstanding matters as this is a 1996 application that we are naturally extremely keen to
`at last have go forward to publication and registration after all these years.
`
`Yours tru
`
`1y{(g»r>~3(£6W
`
`,,;,
`
`Dr Tim Langdell
`CEO.
`
`(5/M5
`
`_
`The EDGE Interactive Media, Inc., (dba EDGE Games/The EDGE)
`530 South Lake Avenue, Suite 171, Pasadena, CA 91101
`T: 626 449 4EDGE (449-4334) F: 626 844 4EDGE (844-4334)
`
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`
`12-01-2005
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`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Attn: Jennifer D. Chicoski
`Law Office 101
`
`November 26, 2005
`
`RESPONSE TO OFFICE ACTION
`
`SERIAL NO.
`
`75/077113
`
`APPLICANT:
`
`THE EDGE INTERACTIVE lvfl3DIA INC.
`
`MARK:
`
`THE EDGE
`
`CORRESPONDENT ADDRESS:
`
`Tim Langdell
`The EDGE Interactive Media Inc.
`530 South Lake Avenue
`Suite 171
`
`Pasadena, CA 91101
`Tel. No. 626 449 4334
`
`Email: tim@edgegames.com
`
`GENERAL RESPONSE:
`
`We note that we are making a timely response within the 6-months given to us to respond
`to your Office Action of June 3, 2005
`
`We also note that the assignment on October 25, 2004 to Future Publishing Ltd. WAS A
`CLERICAL ERROR and that this has been subseguently corrected. Ownership of this
`application is now back with (and should never have lefl) The EDGE Interactive Media
`Inc. (correction completed 11/2/2005, Reel 3186 / Frame 0406).
`
`LIKELIHOOD OF CONFUSION - RESPONSES
`
`In respect to Reg, no. 1,518,900 —— “EDGE”
`We acknowledge the pre-existing registration for the mark EDGE for ‘magazine
`for company employees published periodically” and propose that our specification of
`goods and services be amended to instead of reading ‘magazines’ now read ‘magazines
`other than those published for company employees’. We trust this fully resolves this cite
`against us. In the alternate, should our revised wording in respect to the scope of
`“magazines” indicated in our response to your request to list the types of magazine in
`
`

`
`Class 16 be adequate in resolving this cite, then we do not propose adding in the above
`wording ‘ other than those published for company employees’ as it would be redundant.
`
`In respect to Reg. No. 2,209,319 — “THE EDGE”
`Applicant notes that it is in fact the owner of this registered mark, and has been
`the owner of it since at least 1998. The Assignment details on your database show that
`the entire interest in this registered mark was assigned to us on 11/30/1999, based on an
`assignment execution date of 8/19/1998 (Reel 1994/ Frame 0874). While there are two
`subsequent recorded assignments on the database, you will see that the first such is based
`on a document dated 8/20/1998, and thus is invalid as the prior day all rights in the
`registration were assigned to us. Thus on that day Stuart Hall had no rights to assign to
`Pen-Tab Industries. The third assignment likewise falls as Pen-Tab had no rights to then
`assign to Mead Corporation or anyone else. We are still the rightful owners of this
`registered mark. Insofar as you maintain this cite against us we thus formally claim our
`ownership of this mark.
`
`In respect to Reg. No. 2,382,429 — “EDGE”
`We note your cite against us stating that the TTAB has decided that software and
`hardware peripherals are so closely related that confusion might arise, and thus we
`propose amending our specification of goods and services from ‘computers, computer
`accessories and computer peripherals’ to ‘computers, computer accessories and computer
`peripherals except those used to analyze and predict the creditworthiness of individuals’.
`
`In respect to Reg. No. 2,71 1,579 — “EDGE”
`We note your cite against us arguing a likelihood of confusion unless we restrict
`the definition of our goods and services, we thus propose amending our definition of
`goods and services from ‘computers, computer accessories, and computer peripherals’ to
`‘computers, computer accessories, and computer peripherals except computer hardware
`for motion control used in metal cutting and forming industries’. Or in the alternate that
`you accept our former amendment proposed above for 2,382,429, then the amended
`wording would read ‘computers, computer accessories, and computer peripherals’ to
`‘computers, computer accessories, and computer peripherals except those used to analyze
`and predict the creditworthiness of individuals and except computer hardware for motion
`control used in metal cutting and forming industries’.
`
`In respect to Reg. No. 2,855,432 and 2,920,266 — “EDGE”
`We note you believe we need to restrict our specification of goods and services so
`as to distinguish ourselves from “software for office automation” and those propose
`amending our specification of goods and services from ‘computers, computer accessories
`and computer peripherals’ to ‘computers, computer accessories and computer peripherals
`except those used in association with office automation’. Or if the above proposed
`amendments are also accepted, then the full newly amended specification would read
`‘computers, computer accessories, and computer peripherals’ to ‘computers, computer
`accessories, and computer peripherals except those used to analyze and predict the
`creditworthiness of individuals and except those used in association with office
`
`

`
`automation and except computer hardware for motion control used in metal cutting and
`forming industries’
`
`In respect to Reg. No. 1,557,689 — “EDGE”
`We note the continued cite against us and propose that our specification of goods
`and services be amended to add the wording ‘
`except those used in connection with
`order-entry systems for mutual fund transactions’. And that this amendment be
`concatenated with the above proposed amendments as appropriate to maintain the
`distinction of definition of goods and services from those uses of the mark already
`registered to other parties.
`
`In respect to Reg. No. 1,648,669 — “EDGE”
`As with the above cite against us, we propose amending our specification of
`goods and services to add in the phrase ‘
`except those used in connection with
`marketing by telephone’ and as above we propose that this amendment be concatenated
`with the other proposed amendments above should all amendments be accepted, or added
`to such other wording of the prior proposed amendments as may be suggested by you in
`reply to us.
`
`In respect to Reg. No. 1,935,090 — EDG ”
`We note the cite against us and propose amending our specification of goods and
`services to distinguish our use from that of this prior registrant, and thus propose adding
`the following wording to our specification: ‘
`except those used in connection with
`CNC data and CAD programs and communication to machine tools’ and that this
`wording be concatenated with the prior above proposed amendments as appropriate to
`ensure that in total our specification of goods and services is distinct from all prior
`registered uses of the same mark.
`
`We note that we have thus dealt with all remaining cites against us that were the basis of
`refusal and trust that we have made proposals acceptable to you to now permit this
`application to go forward to publication with the proposed amendments to the wording of
`our goods and services, or as further amended by your suggestions in reply to ours above
`should our proposed wording per se not be acceptable to you. We note that all other cites
`against us were withdrawn, or were dealt with fully in prior responses to Office Actions,
`and thus trust this application may now go forward as amended to publication with all
`possible speed.
`
`INSUFFICIENT FEE
`
`The short-fall in fee has been made up by a payment which accompanies the hard-
`copy of this Reply, which is being also sent to you in a timely manner. We do note
`though that this application should have 1996 fees associated with it, not current fees.
`
`

`
`IDENTIFICATION OF GOODS
`
`Class 9
`
`You have asked that we amend the identification to list all “computer accessories” by
`their common commercial name. We thus propose the following amended wording for
`this part of our specification of goods: “computer accessories, namely keyboards, mice,
`game controllers, memory sticks, headphones, augmented reality headsets, virtual reality
`headsets, storage disc cases, video cards, audio cards, audio speakers, web-cameras, back
`packs, can'ying cases and bags for carrying portable computers or computer accessories
`in; ...”
`
`Class 16
`
`You have requested that we clarify which “magazines” we trade in by referencing the
`subject matter of the magazines, and we thus propose the following amended wording
`“magazines, namely magazines in thefields ofbusiness, entertainment, popular culture
`and education including those relating to computer games, video games, board games,
`/rand-held games, interactive media, television, music, video, movies, clothing, fashion,
`leisure activities and life styles; comics books, posters, note paper, note cards,
`(etc)”
`
`You suggested we amend “collectors cards” to “collectors’ trading cards” we instead
`wish to delete the reference to collectors cards.
`
`You suggested we amend “stationary” to “stationery” and we do of course agree and
`apologize for this prior typo.
`
`Class 20
`
`You are correct that we did not choose to place these goods in Class 20 — we had
`previously supposed they were better suited to classes 9 and 28. We thus propose
`dissolving this Class (deleting it from our application — which makes one fewer class for
`us to pay for) and dividing the goods up as you effectively suggested by adding to the
`wording of our Class 28 specification to now include “
`stand alone video game
`machines and accessories therefor” and adding to our Class 9 specification to now
`include “
`video game machines for use with television and accessories therefor”. Or in
`the alternate if accessories for stand alone video game machines are not in Class 28 but
`are included in Class 9, then we agree to delete that part of our above proposed amended
`wording for Class 28.
`
`Class 28
`
`You wish us to refine the term “toys and playthings” with further definition, and we thus
`propose “toys and playthings, namely battery operated action toys, bendable toys,
`collectable toy figures, electronic action toys, electronically operated toy vehicles,
`fantasy character toys, mechanical action toys, modeled plastic toy figurines, molded toy
`figures, plastic character toys, plush toys, positionable toy figures, toy action figures, toy
`boxes, toy figures; video game sofiware, stand alone video machines, handheld electronic
`games, computer game software, computer game software for use in location based
`entertainment centers in International Class 28”
`
`

`
`MULTIPLE CLASS APPLICATION
`We attach hereto a list of goods by international class in ascending numerical order. We
`also attach statements of the dates of first use for each class of goods, one specimen each
`for the classes 16, 21, 25 and 28 (class 20 being deleted in this response and your having
`confirmed you have an acceptable specimen for class 9). We also attach statements that
`the mark was used in connection with the goods in question at least as early as the filing
`date. And we also attach verifications of the statements 3(a) and 3(c) in your OFFICE
`ACTION signed under 37 C.F.R. S220.
`
`We note that our original application was a multi-class one, and that we have not divided
`a single class application up into a multi-class one at some later date.
`
`PRIOR U.S. REGISTRATIONS
`We hereby formally claim ownership of Reg. Nos. 1,853,705 and 2,219,837 (while
`1,853,705 currently mistakenly shows as canceled, in fact we did file timely Section 8 for
`this registration and have submitted proof of this under separate cover). We also claim
`ownership of Reg. No. 2,209,319 (assignment recorded) and for Reg. No. 2,251,584
`(assignment was not done properly and is currently being corrected to show us as the
`current owner of record).
`
`We are also owner (and hereby formally claim ownership of) the mark “EDGE” in Class
`9, Serial No. 75/029400. While this mark mistakenly shows on the Register as
`“abandoned” we have in fact given proof to the Commissioners Office that this
`application was placed in suspension (along with this current application, at the same
`time by the same examiner) and it was a mistake on the database to show this application
`otherwise than suspended. Thus this application should shortly be revived and placed
`back in a pending status (with a new Office Action sent to us shortly in respect to it).
`
`It is our understanding that the above, along with the attachments hereto (signed versions
`and specimens sent with the hard-copy), fully deal with all issues raised against our
`application moving forward to publication We thus ask that this application now move
`forward to publication as swiftly as possible — not least because its filing date was March
`1996 — and that should any of our proposed amended wordings not be acceptable to you
`that you do please telephone us to discuss agreed wording so that we may expedite this
`application finally being published.
`
`Thank you,
`
`Dr. Tim Langdell
`CEO
`
`For Applicant in Pro Per.
`tel: 626 449 4334 email: tim@edgegames.com
`
`

`
`MULTIPLE CLASS APPLICATION REQUESTED ITEMS:
`
`1. List of goods by International Class in ascending numerical order, with dates of
`first use and first use in U.S. commerce:
`
`1C 009 (goods per the agreed upon amended wording). First use 19850600, First use
`in Commerce 19850600
`
`1C 016 (goods per the agreed upon amended wording). First use 19850600, First use
`in Commerce 19850600
`
`IC 021 (goods per the agreed upon amended wording). First use 19850600,, First use
`in Commerce 19850600
`
`IC 025 (goods per the agreed upon amended wording). First use 19850600,, First use
`in Commerce 19850600
`
`IC 028 (goods per the agreed upon amended wording). First use 19850600,, First use
`in Commerce 19850600
`
`2. We hereby state that the specimens of the use of the mark in each international
`class were used in connection with each of the goods listed at least as early as the
`filing date of this application. A signed copy of this Statement is included in the
`hard-copy of this Response.
`
`. The signed verification under 37 C.F.R. S2.20 is attached to the hard-copy of this
`Response along with the additional specimens for classes 16, 21, 25, 28.
`
`

`
`STATEMENT
`
`Re: Trade mark “THE EDGE”
`
`Serial Number: 75/077,1 13
`
`November 25, 2005
`
`The specimens provided for each class of goods (one per class) were each in use in
`commerce on or in connection with the goods listed in the application at least as early as
`the filing date of the application.
`
`The dates of first use in the application apply to each of the classes in question, and this
`applies to both anywhere and in commerce, and these dates are at least as early as the
`date of application.
`
`(the above two statements pertain to items 3(a) and 3(b) in the 6/3/05 Office Action)
`
`DECLARATION
`
`The undersigned being warned that willful false statements and the like are punishable by
`fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false
`statements and the like may jeopardize the validity of the application or document or any
`registration resulting therefrom, declares that all statements made of his/her own
`knowledge are true; and all statements made on information and belief are believed to be
`true.
`
`«/figJaw
`
`\—~
`Signed:
`Name: Tim Langdell
`Position: CEO, Applicant in pro per.