EDGE®
`
`530 South Lake Avenue,
`Suite 171, Pasadena,
`California 91101
`Fax: 626 844 4334
`
`US Patent & Trademark Office
`Commissioner for Trademarks
`PO. Box 1451
`Alexandra
`VA 22313-145ill
`
`Attention: Jenniifer D. Chicoski, Law Office 101
`
`December 19, 2006
`
`Re:
`
`Trademark Application Serial Number 75/077113
`For the mark “THE EDGE” in the name of The Edge Interactive
`Media, Inc., Applicant
`
`Dear Ms. Chicoski,
`
`Please find attached our Response to your Office Action of 6/22/06.
`
`Yours Sincerely,
`
`<1
`
`fig?
`
`~22
`
`Dr Tim Langdell
`CEO
`
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`1 2-22-2006
`US. %BI'It&TMOfclTM Mail FCWDL #72
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Attn: Jennifer D. Chicoski
`Law Office 101
`
`December 19, 2006
`
`RESPONSE TO OFFICE ACTION
`
`SERIAL NO.
`
`75/077113
`
`APPLICANT:
`
`THE EDGE INTERACTIVE MEDIA INC.
`
`MARK;
`
`THE EDGE
`
`CORRESPONDENT ADDRES S:
`
`Tim Langdell
`The EDGE Interactive Media Inc.
`530 South Lake Avenue
`Suite 171
`
`Pasadena, CA 91 101
`Tel. No. 626 824 0097
`
`Email: tim@edgegames.com
`
`We are "writing in response to the Office Action dated June 22, 2006 (which was a repeat
`of the office action originally attempted to be sent to us January 04, 2006 — we note the
`time for us to respond was set to 6 months from the repeat sending of 6/22/06).
`
`First we note again that the assignment on October 25, 2004 to Future Publishing Ltd.
`WAS A CLERICAL ERROR and that this has been subsequently corrected. Ownership
`of this application is now back With (and should never have left) The EDGE Interactive
`Media Inc. (confection completed ll/2/2005, Reel 3186 / Frame 0406).
`
`Here are our responses to your Office Action:
`
`1. We note that you indicate our Registration No. 1,853, 705 (for the mark EDGE in
`IC 09) has been canceled and that you are thus ignoring our claim of ownership of
`that registration. However, that registration was mistakenly deemed canceled due
`to the failure to properly process our Section 8 and Section 9 forms which were
`timely filed. This cancellation is thus in error and we are still awaiting the
`response from the Commissioner’s Office to our complaint and request that this
`registration be placed back in full current “live” registered status. Insofar as our
`ownership this near identical mark for the same goods as are applied for in this
`rriore recent application, we note for the record that should the temporary error in
`
`
`
`regard to this registration being wrongly canceled impact the decision whether to
`allow all or part of the current application to go forward to publication, that the
`application (or said part of it) be placed in suspension pending the outcome of our
`request to have this registration restored to full “live” status. We also previously
`claimed ownership of the mark “EDGE” in Class 9, Serial No. 75/029400 which
`application we noted had been mistakenly abandoned due to an error by the
`Commissioners Office. This application is about to be revived and we thus ask
`this fact be noted. That said, as all cites against us have been removed, we trust
`the above observations are not relevant to this application now moving forward to
`publication.
`
`We did pay for all the classes with a check sent with our prior response to Office
`Action of November 25, 2005, but have been unable to gain proof of this prior
`payment from our bank by way of a canceled check. We are thus taking the
`commercial decision to enclose a repeat payment and trust the USPTO will give
`us a refund once we prove we did in fact already pay this.
`
`We understand that you have withdrawn all prior registrations cited against this
`application on condition solely that we agree amended classification and
`identification of goods. We respond that we agree with the proposed new
`yvording_fo_r' all classes of the identification of goods.
`
`You request that we list the goods in order of their international class, and we are
`confused why you wish us to do this given that in your Offiee Action you list
`them in order and ask us to approve them, which we did. While not completely
`understanding this requirement then we present the list you gave us back to you
`(which wording we approved) trusting this meets the requirement you have made
`(as it is all we can presume you mean by what you wrote):
`
`“video game peripherals,‘ computers, computer accessories, namely keyboards, mice,
`game controllers, memory sticks, headphones, augmented reality headsets, virtual reality
`headsets, storage disc cases, video display and capture cards, audio cards, audio
`speakers, web-cameras, backpacks, carrying cases and bags, allfor carryingportable
`computers or computer accessories and computer peripherals; video game machinesfor
`use with television and accessories therefior; video game sofiware; computer gam
`softwarefor use in location based entertainment centers in International Class 9;”
`
`“magazines, namely magazines in thefields ofbusiness, entertainment, popular culture
`and education including those relating to computer games, video games, board games,
`hand-held games, interactive media, television, music, video, movies, clothingfashton,
`leisure activities and lifestyles; computer and video game magazines, comics books,
`posters, note paper, note cards, bumper stickers, stickers, pencils, ball point pens, ink
`pens, stationeryfolders in International Class 16; ”
`
`“mugs and cups in International Class 21; ”
`
`“t—shirts, sweatshirts, jackets in International Class 25; ”
`
`
`
`“toys andplaythings, namely battery operated action toys, bendable toys, collectable toy
`figures, electronic action toys, electronically operated toy vehicles, fantasy character
`toys, mechanical action toys, modeledplastic toyfigurines, molded toyfigures, plastic
`character toys, plush toys, positionable toyfigures, toy actionfigures, toy boxes, toy
`figures; hand held unitfor playing electronic games, stand alone video game machines
`and accessories therefor in International Class 28. ”
`
`5. The date of first use in commerce and first use anywhere in respect to class 09 is
`June 4, 1984; first use anywhere and in commerce in respect to class 16 is April
`14, 1993; first use anywhere and in commerce in respect to classes 21, 25 and 28
`are August 12, 1995. In each case the first use anywhere and first use in
`commerce are all before the date of filing of the current application.
`
`. We note that the specimens we have supplied in respect to each class were
`acceptable to you other than our specimen for Class 28 — a new specimen for that
`class being attached which we trust is acceptable now‘
`
`. We repeat for avoidance of doubt that in respect to all specimens we have
`supplied. previously and the new specimen attached hereto, the use of the mark in
`each case was at least as early as the filing date of this application.
`
`8. Here is a verification of the statements:
`
`The undersigned, being hereby warned that willful false statements and the like so made
`are punishable by fine or imprisonment, or both, under l8 U.S.C. §l()01, and that such
`willfiil false statements may jeopardize the Validity of the application or any resulting
`registration, declares that the facts set forth in this application are true; all statements
`made of his/her own knowledge are true; and all statements made on information and
`belief are believed to be true.
`
`(Signal
`"Tm l,PrN9iD'EIL_l_1C€O
`(Print or Type Name and Position)
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`
`
`
`Class 28 Specimen: accessory for hand-held unit for playing games (case)
`First use anywhere and first commercial use both prior to date of application
`Reference: Serial No. 75/077113
`Mark: THE EDGE
`
`Applicant: The Edge lnteractive Media, Inc.
