ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1388096
`10/07/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer information
`
`Name
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Correspondence
`information
`
`Forgen, LLC
`
`10/05/2024
`
`6025 S QUEBEC STREET, SUITE 300
`CENTENNIAL, CO 80111
`UNITED STATES
`
`AMY L. KRAMER
`GREENBERG TRAURIG, LLP
`1144 15TH STREET, SUITE 3300
`DENVER, CO 80202
`UNITED STATES
`Primary email: gtipmail@gtlaw.com
`Secondary email(s): Amy.Kramer@gtlaw.com, vandykek@gtlaw.com,
`strackk@gtlaw.com
`303-572-6500
`
`Applicant information
`
`Application no.
`
`98251656
`
`Opposition filing
`date
`
`Applicant
`
`10/07/2024
`
`Forgen AI, LLC
`636 CHERRY CT.
`BIRMINGHAM, MI 48009
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`08/06/2024
`
`Opposition period
`ends
`
`10/05/2024
`
`Class 042. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Technology consultation in the field of artifi-
`cial intelligence; technical consulting in the field of artificial intelligence (AI) software customization;
`consulting services in the field of providing online, non-downloadable software and applications; com-
`puter software consulting in the field of generative AI software; research in the field of artificial intelli-
`gence technology; providing temporary use of online non-downloadable computer chatbot software
`for simulating conversations; providing online non-downloadable computer software platforms using
`generative AI for text generation; providing online non-downloadable computer software platforms us-
`ing generative AI for text messaging and word processing; software as a service (SAAS) services
`featuring software using AI for generating text; SAAS services featuring software using AI large lan-
`guage models for understanding text input from a user; SAAS services featuring computer chatbot
`software using AI for simulating conversations
`
`Grounds for opposition
`
`

`

`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks cited by opposer as basis for opposition
`
`U.S. application
`no.
`
`98121907
`
`Application date
`
`08/08/2023
`
`Registration date
`
`NONE
`
`Word mark
`
`Design mark
`
`FORGEN
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 037. First use: First Use: Feb 2020 First Use In Commerce: Feb 2020
`geotechnical construction services, namely deep foundations, including slurry
`walls, soil stabilization, and soil improvement; civil construction services, namely
`earth work including grading, dam and levee construction, wetlands, stream and
`channel restoration; excavation services; construction project management ser-
`vices; wild fire clean-up services; disaster clean-up services, namely environ-
`mental remediation, removal and stabilization of soil, environmental containment
`of soil, localization and consolidating of soil, site assessments
`
`U.S. application
`no.
`
`98121918
`
`Application date
`
`08/08/2023
`
`Registration date
`
`NONE
`
`Word mark
`
`Design mark
`
`FORGEN
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 039. First use: First Use: None First Use In Commerce: None
`disaster response services, namely, removal of debris, soil, and vegetation
`Class 040. First use: First Use: Feb 2020 First Use In Commerce: Feb 2020
`environmental remediation services, namely, treatment of soil
`
`U.S. application
`no.
`
`98121911
`
`Application date
`
`08/08/2023
`
`Registration date
`
`NONE
`
`Word mark
`
`Design mark
`
`F FORGEN
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of a capital letter "F" embedded in a diamond appears on the
`left, and the term "FORGEN" appears to the right.
`
`Class 037. First use: First Use: Feb 2020 First Use In Commerce: Feb 2020
`geotechnical construction services, namely deep foundations, including slurry
`walls, soil stabilization, and soil improvement; civil construction services, namely
`
`

`

`earth work including grading, dam and levee construction, wetlands, stream and
`channel restoration; excavation services; construction project management ser-
`vices; wild fire clean-up services; disaster clean-up services, namely environ-
`mental remediation, removal and stabilization of soil, environmental containment
`of soil, localization and consolidating of soil, site assessments
`
`U.S. application
`no.
`
`98121916
`
`Application date
`
`08/08/2023
`
`Registration date
`
`NONE
`
`Word mark
`
`Design mark
`
`F FORGEN
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of a capital letter "F" embedded in a diamond appears on the
`left, and the term "FORGEN" appears to the right.
`
`Class 039. First use: First Use: None First Use In Commerce: None
`disaster response services, namely, removal of debris, soil, and vegetation
`Class 040. First use: First Use: Feb 2020 First Use In Commerce: Feb 2020
`environmental remediation services, namely, treatment of soil
`
`Attachments
`
`98121907#TMSN.png( bytes )
`98121918#TMSN.png( bytes )
`98121911#TMSN.png( bytes )
`98121916#TMSN.png( bytes )
`Notice of Opposition FORGEN Cl 42.pdf(141810 bytes )
`Exhibits.pdf(73213 bytes )
`
`Signature
`
`/Amy L. Kramer/
`
`Name
`
`Date
`
`AMY L. KRAMER
`
`10/07/2024
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Application Serial No. 98251656: FORGEN
`Published in the Official Gazette on August 6, 2024
`
`
`
`)
`FORGEN, LLC,
`)
`
`
`)
`Opposer,
`)
`
`
`)
`v.
`
`)
`Opposition No. ____________________
`
`
`)
`FORGEN AI, LLC,
`)
`
`
`)
`Applicant.
`)
`
`
`)
`
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer Forgen, LLC (“Forgen”), a Delaware limited liability company with its principal
`
`place of business at 6025 South Quebec Street, Suite 300, Centennial, Colorado 80111, opposes
`
`Forgen AI, LLC (“Applicant”)’s Application Serial No. 98251656 (the “Application”) because
`
`Forgen will be damaged by registration of the Application.
`
`The grounds for opposition are:
`
`INTRODUCTION
`
`1.
`
`Applicant seeks to register FORGEN as a service mark for technology
`
`consultation in the field of artificial intelligence; technical consulting in the field of artificial
`
`intelligence (AI) software customization; consulting services in the field of providing online,
`
`non-downloadable software and applications; computer software consulting in the field of
`
`generative ai software; research in the field of artificial intelligence technology; providing
`
`temporary use of online non-downloadable computer chatbot software for simulating
`
`conversations; providing online non-downloadable computer software platforms using generative
`
`1
`
`

`

`
`
`ai for text generation; providing online non-downloadable computer software platforms using
`
`generative ai for text messaging and word processing; software as a service (SAAS) services
`
`featuring software using ai for generating text; SAAS services featuring software using ai large
`
`language models for understanding text input from a user; SAAS services featuring computer
`
`chatbot software using ai for simulating conversations (the “Class 42 Services”).
`
`2.
`
`Applicant filed the application on November 2, 2023, based on Applicant’s
`
`alleged bona fide intent to use the mark for the Class 42 Services.
`
`FORGEN’S USE AND APPLICATIONS TO REGISTER THE FORGEN MARK
`
`Forgen is one of the largest self-performing environmental, geotechnical, flood
`
`3.
`
`control, and ecosystem restoration contractors in the United States.
`
`4.
`
`Forgen has been using the FORGEN mark in U.S. commerce since at least as early
`
`as February 2020 and has established common law rights through its exclusive use in connection
`
`with geotechnical and civil construction services, wild fire and disaster clean-up services, removal
`
`of debris/soil/remediation, environmental remediation services, and technical consulting in the
`
`field of disaster clean-up services, namely site assessments.
`
`5.
`
`Forgen owns U.S. App. No. 98121907 for FORGEN in International Class 37 for
`
`geotechnical construction services, namely deep foundations, including slurry walls, soil
`
`stabilization, and soil improvement; civil construction services, namely earth work including
`
`grading, dam and levee construction, wetlands, stream and channel restoration; excavation
`
`services; construction project management services; wild fire clean-up services; disaster clean-up
`
`services, namely environmental remediation, removal and stabilization of soil, environmental
`
`containment of soil, localization and consolidating of soil, site assessments (TSDR record
`
`attached as Exhibit 1).
`
`2
`
`

`

`
`
`6.
`
`Forgen owns U.S. App. No. 98121918 for FORGEN in International Class 39 for
`
`disaster response services, namely, removal of debris, soil, and vegetation and International
`
`Class 40 for environmental remediation services, namely, treatment of soil (TSDR record
`
`attached as Exhibit 2).
`
`7.
`
`Forgen owns U.S. App. No. 98121911 for
`
`in International
`
`Class 37 for geotechnical construction services, namely deep foundations, including slurry walls,
`
`soil stabilization, and soil improvement; civil construction services, namely earth work including
`
`grading, dam and levee construction, wetlands, stream and channel restoration; excavation
`
`services; construction project management services; wild fire clean-up services; disaster clean-up
`
`services, namely environmental remediation, removal and stabilization of soil, environmental
`
`containment of soil, localization and consolidating of soil, site assessments (TSDR record
`
`attached as Exhibit 3).
`
`8.
`
`Forgen owns U.S. App. No. 98121916 for
`
` in International
`
`Class 39 for disaster response services, namely, removal of debris, soil, and vegetation and
`
`International Class 40 for environmental remediation services, namely, treatment of soil (TSDR
`
`record attached as Exhibit 4).
`
`9.
`
`U.S. App. Nos. 98121907, 98121918, 98121911, and 98121916 were all filed
`
`before the Application was filed and all claim first use dates of February 2020. The services
`
`identified in U.S. App. Nos. 98121907, 98121918, 98121911, and 98121916 and in ¶5 are
`
`collectively referred to as “Forgen’s Services.”
`
`10.
`
`Through its continuous and exclusive use in commerce and as a result of
`
`marketing, promotion, advertising, and sales activity, Forgen’s distinctive FORGEN mark has
`
`3
`
`

`

`
`
`achieved recognition among the consuming public, has come to symbolize Forgen’s goodwill
`
`and reputation, and is strongly associated with Forgen.
`
`PRIORITY AND LIKELIHOOD OF CONFUSION
`
`11.
`
`Forgen’s common law rights in the FORGEN mark predate the Application’s
`
`filing date by over four years.
`
`12.
`
`As a result of Forgen’s efforts, years before Applicant filed the Application,
`
`Forgen’s FORGEN mark was substantially recognized by the public as a strong indicator of
`
`Forgen’s Services.
`
`13.
`
`Applicant’s applied-for FORGEN mark is confusingly similar in sight, sound, and
`
`commercial impression to Forgen’s FORGEN mark because it is identical.
`
`14.
`
`The applied-for Class 42 Services are related to Forgen’s Services because Forgen
`
`provides technical consultation as part and parcel of its engineering and disaster response
`
`services including site assessments, for example. Additionally, the Class 42 services are of a
`
`type that can be used in conjunction with or in the provision of Forgen’s Services. For example,
`
`“technology consultation in the field of artificial intelligence” can be used for the purpose of
`
`improving the construction services and environmental remediation services Forgen renders.
`
`This is especially true because most companies are currently incorporating artificial intelligence
`
`into their goods and services.
`
`15.
`
`Applicant’s FORGEN-branded services will directly compete with Forgen’s
`
`FORGEN-branded services and will be offered to the same types of consumers.
`
`16.
`
`Applicant’s FORGEN-branded services will be provided through the same trade
`
`channels as Forgen’s FORGEN-branded services.
`
`4
`
`

`

`
`
`17.
`
`Because the marks are identical and the Applicant’s services are related to
`
`Forgen’s Services, the public is likely to incorrectly believe that Applicant’s FORGEN-branded
`
`services are connected to Forgen. This confusion will cause irreparable harm to Forgen.
`
`18.
`
`Any dissatisfaction with Applicant’s Class 42 Services will reflect negatively
`
`upon and irreparably damage Forgen’s reputation and the goodwill embodied in its FORGEN
`
`mark.
`
`19.
`
`Applicant’s use and registration of the applied-for mark is likely to cause
`
`confusion, mistake, and deception as to the source of Applicant’s Class 42 Services within the
`
`meaning of 15 U.S.C. §§ 1114 and 1125(a).
`
`20.
`
`Applicant’s use and registration of the applied-for mark will injure and damage
`
`Forgen and the goodwill and reputation symbolized by Forgen’s FORGEN mark within the
`
`meaning of 15 U.S.C. § 1063(a).
`
`21.
`
`Applicant’s applied-for mark is not registrable under 15 U.S.C. § 1052(d),
`
`because it resembles a mark previously used in the United States by Forgen and is likely to cause
`
`confusion, mistake, or to deceive.
`
`CONCLUSION
`
`22.
`
`Forgen respectfully requests that this opposition be sustained and registration of
`
`U.S. Application Serial No. 98251656 be refused.
`
`Date: October 7, 2024
`
`Respectfully submitted,
`GREENBERG TRAURIG, LLP
`
`
`
`Amy L. Kramer
`Kristen Van Dyke
`
`1144 15th Street
`
`5
`
`

`

`
`
`Suite 3300
`Denver, CO 80202
`Phone: (303) 685-7449
`Fax: (720) 904-6149
`
`Attorneys for Opposer
`
`Forgen, LLC
`
`6
`
`

`

`
`
`
`
`
`
`
`
`
`
`Exhibit 1
`Exhibit 1
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Generated on: This page was generated by TSDR on 2024-10-07 17:52:02 EDT
`
`Mark: FORGEN
`
`US Serial Number: 98121907
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Aug. 08, 2023
`
`LIVE/APPLICATION/Under Examination
`
`The trademark application has been accepted by the Office (has met the
`minimum filing requirements) and that this application has been assigned to
`an examiner.
`
`Status: A non-final Office action has been sent (issued) to the applicant. This is a letter from the examining attorney requiring additional
`information and/or making an initial refusal. The applicant must respond to this Office action. To view all documents in this file, click on
`the Trademark Document Retrieval link at the top of this page.
`
`Status Date: Sep. 11, 2024
`
` 
`
`Mark Literal
`Elements:
`
`FORGEN
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: geotechnical construction services, namely deep foundations, including slurry walls, soil stabilization, and soil improvement; civil
`construction services, namely earth work including grading, dam and levee construction, wetlands, stream and channel restoration;
`excavation services; construction project management services; wild fire clean-up services; disaster clean-up services, namely
`environmental remediation, removal and stabilization of soil, environmental containment of soil, localization and consolidating of soil,
`site assessments
`
`International
`Class(es):
`
`037 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Feb. 2020
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`U.S Class(es): 100, 103, 106
`
`Use in Commerce: Feb. 2020
`
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`

`

`Owner Name: Forgen, LLC
`
`Owner Address: 6025 S Quebec Street, Suite 300
`Centennial, COLORADO UNITED STATES 80111
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney Name: Amy L. Kramer
`
`Docket Number: 216939010100
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`gtipmail@gtlaw.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Amy L. Kramer
`GREENBERG TRAURIG, LLP
`1144 15TH STREET, SUITE 3300
`DENVER, COLORADO United States 80202
`
`Phone: 303-572-6500
`
`Fax: 303-572-6540
`
`Correspondent e-
`mail:
`
`gtipmail@gtlaw.com amy.kramer@gtlaw.com van
`dykek@gtlaw.com strackk@gtlaw.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Sep. 11, 2024
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Sep. 11, 2024
`
`NON-FINAL ACTION E-MAILED
`
`Sep. 11, 2024
`
`NON-FINAL ACTION WRITTEN
`
`Aug. 29, 2024
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`Aug. 29, 2024
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Aug. 29, 2024
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`Jul. 09, 2024
`
`APPLICATION EXTENSION GRANTED/RECEIPT PROVIDED
`
`Jul. 09, 2024
`
`APPLICATION EXTENSION TO RESPONSE PERIOD - RECEIVED
`
`Apr. 09, 2024
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Apr. 09, 2024
`
`NON-FINAL ACTION E-MAILED
`
`Apr. 09, 2024
`
`NON-FINAL ACTION WRITTEN
`
`Apr. 09, 2024
`
`ASSIGNED TO EXAMINER
`
`Sep. 06, 2023
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`
`Aug. 11, 2023
`
`NEW APPLICATION ENTERED
`TM Staff and Location Information
`
`TM Attorney: WILLIS, ALLYSON
`
`TM Staff Information
`
`Law Office
`Assigned:
`
`LAW OFFICE 113
`
`File Location
`
`Current Location: TMO LAW OFFICE 113
`
`Date in Location: Sep. 11, 2024
`
`Proceeding
`Number
`
`

`

`
`
`
`
`
`
`
`
`
`
`Exhibit 2
`Exhibit 2
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Generated on: This page was generated by TSDR on 2024-10-07 17:52:48 EDT
`
`Mark: FORGEN
`
`US Serial Number: 98121918
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Aug. 08, 2023
`
`LIVE/APPLICATION/Under Examination
`
`The trademark application has been accepted by the Office (has met the
`minimum filing requirements) and that this application has been assigned to
`an examiner.
`
`Status: Review prior to publication completed.
`
`Status Date: Sep. 12, 2024
`
`Publication Date:Oct. 15, 2024
` 
`
`Mark Information
`
`Mark Literal
`Elements:
`
`FORGEN
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: disaster response services, namely, removal of debris, soil, and vegetation
`
`International
`Class(es):
`
`039 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 100, 105
`
`For: environmental remediation services, namely, treatment of soil
`
`International
`Class(es):
`
`040 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Feb. 2020
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`U.S Class(es): 100, 103, 106
`
`Use in Commerce: Feb. 2020
`
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`

`

`Current Owner(s) Information
`
`Owner Name: Forgen, LLC
`
`Owner Address: 6025 S Quebec Street, Suite 300
`Centennial, COLORADO UNITED STATES 80111
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney Name: Amy L. Kramer
`
`Docket Number: 216939010100
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`gtipmail@gtlaw.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Amy L. Kramer
`GREENBERG TRAURIG, LLP
`1144 15TH STREET, SUITE 3300
`DENVER, COLORADO United States 80202
`
`Phone: 303-572-6500
`
`Fax: 303-572-6540
`
`Correspondent e-
`mail:
`
`gtipmail@gtlaw.com Amy.Kramer@gtlaw.com van
`dykek@gtlaw.com strackk@gtlaw.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Sep. 25, 2024
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`Sep. 11, 2024
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Sep. 11, 2024
`
`EXAMINER'S AMENDMENT ENTERED
`
`Sep. 11, 2024
`
`NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`
`Sep. 11, 2024
`
`EXAMINERS AMENDMENT E-MAILED
`
`Sep. 11, 2024
`
`EXAMINERS AMENDMENT -WRITTEN
`
`Aug. 29, 2024
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`Aug. 29, 2024
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Aug. 29, 2024
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`Aug. 08, 2024
`
`APPLICATION EXTENSION GRANTED/RECEIPT PROVIDED
`
`Aug. 08, 2024
`
`APPLICATION EXTENSION TO RESPONSE PERIOD - RECEIVED
`
`May 08, 2024
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`May 08, 2024
`
`NON-FINAL ACTION E-MAILED
`
`May 08, 2024
`
`NON-FINAL ACTION WRITTEN
`
`Apr. 09, 2024
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Apr. 09, 2024
`
`NON-FINAL ACTION E-MAILED
`
`Apr. 09, 2024
`
`NON-FINAL ACTION WRITTEN
`
`Apr. 09, 2024
`
`ASSIGNED TO EXAMINER
`
`Sep. 06, 2023
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`
`Aug. 11, 2023
`
`NEW APPLICATION ENTERED
`TM Staff and Location Information
`
`TM Attorney: WILLIS, ALLYSON
`
`TM Staff Information
`
`Law Office
`Assigned:
`
`LAW OFFICE 113
`
`File Location
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Sep. 12, 2024
`
`Proceeding
`Number
`
`

`

`
`
`
`
`
`
`
`
`
`
`Exhibit 3
`Exhibit 3
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Generated on: This page was generated by TSDR on 2024-10-07 17:53:11 EDT
`
`Mark: F FORGEN
`
`US Serial Number: 98121911
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Aug. 08, 2023
`
`LIVE/APPLICATION/Under Examination
`
`The trademark application has been accepted by the Office (has met the
`minimum filing requirements) and that this application has been assigned to
`an examiner.
`
`Status: A non-final Office action has been sent (issued) to the applicant. This is a letter from the examining attorney requiring additional
`information and/or making an initial refusal. The applicant must respond to this Office action. To view all documents in this file, click on
`the Trademark Document Retrieval link at the top of this page.
`
`Status Date: Sep. 11, 2024
`
` 
`
`Mark Literal
`Elements:
`
`F FORGEN
`
`Standard Character
`Claim:
`
`No
`
`Mark Information
`
`Mark Drawing
`Type:
`
`Description of
`Mark:
`
`3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S) /NUMBER(S)
`
`The mark consists of a capital letter "F" embedded in a diamond appears on the left, and the term "FORGEN" appears to the right.
`
`Color(s) Claimed: Color is not claimed as a feature of the mark.
`
`Design Search
`Code(s):
`
`26.07.21 - Diamonds that are completely or partially shaded
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: geotechnical construction services, namely deep foundations, including slurry walls, soil stabilization, and soil improvement; civil
`construction services, namely earth work including grading, dam and levee construction, wetlands, stream and channel restoration;
`excavation services; construction project management services; wild fire clean-up services; disaster clean-up services, namely
`environmental remediation, removal and stabilization of soil, environmental containment of soil, localization and consolidating of soil,
`site assessments
`
`International
`Class(es):
`
`037 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Feb. 2020
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`U.S Class(es): 100, 103, 106
`
`Use in Commerce: Feb. 2020
`
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`

`

`Filed 66A: No
`
`Filed No Basis: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Forgen, LLC
`
`Owner Address: 6025 S Quebec Street, Suite 300
`Centennial, COLORADO UNITED STATES 80111
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney Name: Amy L. Kramer
`
`Docket Number: 216939010100
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`gtipmail@gtlaw.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Amy L. Kramer
`GREENBERG TRAURIG, LLP
`1144 15TH STREET, SUITE 3300
`DENVER, COLORADO United States 80202
`
`Phone: 303-572-6500
`
`Fax: 303-572-6540
`
`Correspondent e-
`mail:
`
`gtipmail@gtlaw.com amy.kramer@gtlaw.com van
`dykek@gtlaw.com strackk@gtlaw.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Sep. 11, 2024
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Sep. 11, 2024
`
`NON-FINAL ACTION E-MAILED
`
`Sep. 11, 2024
`
`NON-FINAL ACTION WRITTEN
`
`Aug. 29, 2024
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`Aug. 29, 2024
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Aug. 29, 2024
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`Jul. 09, 2024
`
`APPLICATION EXTENSION GRANTED/RECEIPT PROVIDED
`
`Jul. 09, 2024
`
`APPLICATION EXTENSION TO RESPONSE PERIOD - RECEIVED
`
`Apr. 09, 2024
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Apr. 09, 2024
`
`NON-FINAL ACTION E-MAILED
`
`Apr. 09, 2024
`
`NON-FINAL ACTION WRITTEN
`
`Apr. 09, 2024
`
`ASSIGNED TO EXAMINER
`
`Sep. 07, 2023
`
`NOTICE OF DESIGN SEARCH CODE E-MAILED
`
`Sep. 06, 2023
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`
`Aug. 11, 2023
`
`NEW APPLICATION ENTERED
`TM Staff and Location Information
`
`TM Attorney: WILLIS, ALLYSON
`
`TM Staff Information
`
`Law Office
`Assigned:
`
`LAW OFFICE 113
`
`File Location
`
`Current Location: TMO LAW OFFICE 113
`
`Date in Location: Sep. 11, 2024
`
`Proceeding
`Number
`
`

`

`
`
`
`
`
`
`
`
`
`
`Exhibit 4
`Exhibit 4
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Generated on: This page was generated by TSDR on 2024-10-07 17:53:35 EDT
`
`Mark: F FORGEN
`
`US Serial Number: 98121916
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Aug. 08, 2023
`
`LIVE/APPLICATION/Under Examination
`
`The trademark application has been accepted by the Office (has met the
`minimum filing requirements) and that this application has been assigned to
`an examiner.
`
`Status: Review prior to publication completed.
`
`Status Date: Sep. 16, 2024
`
`Publication Date:Oct. 22, 2024
` 
`
`Mark Information
`
`Mark Literal
`Elements:
`
`F FORGEN
`
`Standard Character
`Claim:
`
`No
`
`Mark Drawing
`Type:
`
`Description of
`Mark:
`
`3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S) /NUMBER(S)
`
`The mark consists of a capital letter "F" embedded in a diamond appears on the left, and the term "FORGEN" appears to the right.
`
`Color(s) Claimed: Color is not claimed as a feature of the mark.
`
`Design Search
`Code(s):
`
`26.07.21 - Diamonds that are completely or partially shaded
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: disaster response services, namely, removal of debris, soil, and vegetation
`
`International
`Class(es):
`
`039 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 100, 105
`
`For: environmental remediation services, namely, treatment of soil
`
`International
`Class(es):
`
`040 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Feb. 2020
`
`U.S Class(es): 100, 103, 106
`
`Use in Commerce: Feb. 2020
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`

`

`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Forgen, LLC
`
`Owner Address: 6025 S Quebec Street, Suite 300
`Centennial, COLORADO UNITED STATES 80111
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney Name: Amy L. Kramer
`
`Docket Number: 216939010100
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`gtipmail@gtlaw.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Amy L. Kramer
`GREENBERG TRAURIG, LLP
`1144 15TH STREET, SUITE 3300
`DENVER, COLORADO United States 80202
`
`Phone: 303-572-6500
`
`Fax: 303-572-6540
`
`Correspondent e-
`mail:
`
`gtipmail@gtlaw.com amy.kramer@gtlaw.com van
`dykek@gtlaw.com strackk@gtlaw.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Oct. 02, 2024
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`Sep. 12, 2024
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Sep. 11, 2024
`
`EXAMINER'S AMENDMENT ENTERED
`
`Sep. 11, 2024
`
`NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`
`Sep. 11, 2024
`
`EXAMINERS AMENDMENT E-MAILED
`
`Sep. 11, 2024
`
`EXAMINERS AMENDMENT -WRITTEN
`
`Aug. 29, 2024
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`Aug. 29, 2024
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Aug. 29, 2024
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`Jul. 09, 2024
`
`APPLICATION EXTENSION GRANTED/RECEIPT PROVIDED
`
`Jul. 09, 2024
`
`APPLICATION EXTENSION TO RESPONSE PERIOD - RECEIVED
`
`Apr. 09, 2024
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Apr. 09, 2024
`
`NON-FINAL ACTION E-MAILED
`
`Apr. 09, 2024
`
`NON-FINAL ACTION WRITTEN
`
`Apr. 09, 2024
`
`ASSIGNED TO EXAMINER
`
`Sep. 07, 2023
`
`NOTICE OF DESIGN SEARCH CODE E-MAILED
`
`Sep. 06, 2023
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`
`Aug. 11, 2023
`
`NEW APPLICATION ENTERED
`TM Staff and Location Information
`
`TM Attorney: WILLIS, ALLYSON
`
`TM Staff Information
`
`Law Office
`Assigned:
`
`LAW OFFICE 113
`
`File Location
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Sep. 16, 2024
`
`Proceeding
`Number
`
`

`

`