ESTTA Tracking number:
`
`ESTTA1402669
`
`Filing date:
`
`12/17/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91294398
`
`Party
`
`Correspondence
`address
`
`Defendant
`Forgen AI, LLC
`
`JAMES DOUGLAS STEVENS JR
`REISING ETHINGTON P.C.
`755 WEST BIG BEAVER RD.
`SUITE 1850
`TROY, MI 48084
`UNITED STATES
`Primary email: james@reising.com
`248-689-3500 x173
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Answer
`
`Richard W. Hoffmann
`
`hoffmann@reising.com
`
`/Richard W. Hoffmann/
`
`12/17/2024
`
`Attachments
`
`Forgen AI Answer Final Signed.pdf(79662 bytes )
`
`
`
`ESTTA1402669
`
`Filing date:
`
`12/17/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91294398
`
`Party
`
`Correspondence
`address
`
`Defendant
`Forgen AI, LLC
`
`JAMES DOUGLAS STEVENS JR
`REISING ETHINGTON P.C.
`755 WEST BIG BEAVER RD.
`SUITE 1850
`TROY, MI 48084
`UNITED STATES
`Primary email: james@reising.com
`248-689-3500 x173
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Answer
`
`Richard W. Hoffmann
`
`hoffmann@reising.com
`
`/Richard W. Hoffmann/
`
`12/17/2024
`
`Attachments
`
`Forgen AI Answer Final Signed.pdf(79662 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`)
`) Opposition No. 91294398
`)
`) Application Serial No. 98/251656
`)
`
`)
`) Mark: FORGEN
`)
`)
`)
`)
`)
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`
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`
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`FORGEN, LLC,
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` Opposer,
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`
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`FORGEN AI, LLC,
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` Applicant.
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`
`
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`
`
`
`APPLICANT FORGEN AI, LLC’S ANSWER AND AFFIRMATIVE
`DEFENSES TO OPPOSER’S NOTICE OF OPPOSITION
`
`Applicant, Forgen AI, LLC (“Forgen AI”), a Michigan limited liability company having
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`an address at 636 Cherry Ct., Birmingham, MI 48009, by and through its attorneys of record, in
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`accordance with the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) and the
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`Federal Rules of Civil Procedure (“Fed. R. Civ. P.”), answers Opposer, Forgen, LLC’s (hereafter
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`“Opposer”) Notice of Opposition as follows:
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`1. Applicant seeks to register FORGEN as a service mark for technology consultation in
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`the field of artificial intelligence; technical consulting in the field of artificial intelligence (AI)
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`software customization; consulting services in the field of providing online, non-downloadable
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`software and applications; computer software consulting in the field of generative ai software;
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`research in the field of artificial intelligence technology; providing temporary use of online non-
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`downloadable computer chatbot software for simulating conversations; providing online non-
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`downloadable computer software platforms using generative ai for text generation; providing
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`
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`online non-downloadable computer software platforms using generative ai for text messaging and
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`word processing; software as a service (SAAS) services featuring software using ai for generating
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`text; SAAS services featuring software using ai large language models for understanding text input
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`from a user; SAAS services featuring computer chatbot software using ai for simulating
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`conversations (the “Class 42 Services”).
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`APPLICANT’S ANSWER: Applicant admits the allegations contained in Paragraph 1 of
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`the Notice of Opposition.
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`2. Applicant filed the application on November 2, 2023, based on Applicant’s alleged
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`bona fide intent to use the mark for the Class 42 Services.
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`APPLICANT’S ANSWER: Applicant admits the allegations contained in Paragraph 2 of
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`the Notice of Opposition.
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`3. Forgen is one of the largest self-performing environmental, geotechnical, flood
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`control, and ecosystem restoration contractors in the United States.
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to
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`form a belief as to the truth or falsity of the allegations contained in Paragraph 3 of the Notice of
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`Opposition and therefore denies same.
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`4. Forgen has been using the FORGEN mark in U.S. commerce since at least as early as
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`February 2020 and has established common law rights through its exclusive use in connection with
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`geotechnical and civil construction services, wild fire and disaster clean-up services, removal of
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`debris/soil/remediation, environmental remediation services, and technical consulting in the field
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`of disaster clean-up services, namely site assessments.
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to
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`- 2 -
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`form a belief as to the truth or falsity of the allegations contained in Paragraph 4 of the Notice of
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`Opposition and therefore denies same.
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`5. Forgen owns U.S. App. No. 98121907 for FORGEN in International Class 37 for
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`geotechnical construction services, namely deep foundations, including slurry walls, soil
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`stabilization, and soil improvement; civil construction services, namely earth work including
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`grading, dam and levee construction, wetlands, stream and channel restoration; excavation
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`services; construction project management services; wild fire clean-up services; disaster clean-up
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`services, namely environmental remediation, removal and stabilization of soil, environmental
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`containment of soil, localization and consolidating of soil, site assessments (TSDR record attached
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`as Exhibit 1).
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to
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`form a belief as to the truth or falsity of the allegations contained in Paragraph 1 of the Notice of
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`Opposition and therefore denies same.
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`6. Forgen owns U.S. App. No. 98121918 for FORGEN in International Class 39 for
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`disaster response services, namely, removal of debris, soil, and vegetation and International Class
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`40 for environmental remediation services, namely, treatment of soil (TSDR record attached as
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`Exhibit 2).
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to
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`form a belief as to the truth or falsity of the allegations contained in Paragraph 6 of the Notice of
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`Opposition and therefore denies same.
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`7. Forgen owns U.S. App. No. 98121911 for
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` in International Class 37 for
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`geotechnical construction services, namely deep foundations, including slurry walls, soil
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`- 3 -
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`
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`stabilization, and soil improvement; civil construction services, namely earth work including
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`grading, dam and levee construction, wetlands, stream and channel restoration; excavation
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`services; construction project management services; wild fire clean-up services; disaster clean-up
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`services, namely environmental remediation, removal and stabilization of soil, environmental
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`containment of soil, localization and consolidating of soil, site assessments (TSDR record attached
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`as Exhibit 3).
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to
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`form a belief as to the truth or falsity of the allegations contained in Paragraph 7 of the Notice of
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`Opposition and therefore denies same.
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`8. Forgen owns U.S. App. No. 98121916 for
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` in International Class 39 for
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`disaster response services, namely, removal of debris, soil, and vegetation and International Class
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`40 for environmental remediation services, namely, treatment of soil (TSDR record attached as
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`Exhibit 4).
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to
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`form a belief as to the truth or falsity of the allegations contained in Paragraph 8 of the Notice of
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`Opposition and therefore denies same.
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`9. 9. U.S. App. Nos. 98121907, 98121918, 98121911, and 98121916 were all filed
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`before the Application was filed and all claim first use dates of February 2020. The services
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`identified in U.S. App. Nos. 98121907, 98121918, 98121911, and 98121916 and in ¶5 are
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`collectively referred to as “Forgen’s Services.”
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to
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`form a belief as to the truth or falsity of the allegations contained in Paragraph 9 of the Notice of
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`- 4 -
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`
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`Opposition and therefore denies same.
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`10. Through its continuous and exclusive use in commerce and as a result of marketing,
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`promotion, advertising, and sales activity, Forgen’s distinctive FORGEN mark has achieved
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`recognition among the consuming public, has come to symbolize Forgen’s goodwill and
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`reputation, and is strongly associated with Forgen.
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to
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`form a belief as to the truth or falsity of the allegations contained in Paragraph 10 of the Notice of
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`Opposition and therefore denies same.
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`11. Forgen’s common law rights in the FORGEN mark predate the Application’s filing
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`date by over four years.
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to
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`form a belief as to the truth or falsity of the allegations contained in Paragraph 11 of the Notice of
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`Opposition and therefore denies same.
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`12. As a result of Forgen’s efforts, years before Applicant filed the Application, Forgen’s
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`FORGEN mark was substantially recognized by the public as a strong indicator of Forgen’s
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`Services.
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`APPLICANT’S ANSWER: Applicant is without sufficient information upon which to
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`form a belief as to the truth or falsity of the allegations contained in Paragraph 12 of the Notice of
`
`Opposition and therefore denies same.
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`13. Applicant’s applied-for FORGEN mark is confusingly similar in sight, sound, and
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`commercial impression to Forgen’s FORGEN mark because it is identical.
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`APPLICANT’S ANSWER: Applicant denies the allegation contained in Paragraph 13
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`- 5 -
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`
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`of the Notice of Opposition.
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`14. The applied-for Class 42 Services are related to Forgen’s Services because Forgen
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`provides technical consultation as part and parcel of its engineering and disaster response services
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`including site assessments, for example. Additionally, the Class 42 services are of a type that can
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`be used in conjunction with or in the provision of Forgen’s Services. For example, “technology
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`consultation in the field of artificial intelligence” can be used for the purpose of improving the
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`construction services and environmental remediation services Forgen renders. This is especially
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`true because most companies are currently incorporating artificial intelligence into their goods and
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`services.
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`APPLICANT’S ANSWER: Applicant denies the allegation contained in Paragraph 14
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`of the Notice of Opposition.
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`15. Applicant’s FORGEN-branded services will directly compete with Forgen’s
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`FORGEN-branded services and will be offered to the same types of consumers.
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`APPLICANT’S ANSWER: Applicant denies the allegation contained in Paragraph 15
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`of the Notice of Opposition.
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`16. Applicant’s FORGEN-branded services will be provided through the same trade
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`channels as Forgen’s FORGEN-branded services.
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`APPLICANT’S ANSWER: Applicant denies the allegation contained in Paragraph 16
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`of the Notice of Opposition.
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`17. Because the marks are identical and the Applicant’s services are related to Forgen’s
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`Services, the public is likely to incorrectly believe that Applicant’s FORGEN-branded services are
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`connected to Forgen. This confusion will cause irreparable harm to Forgen.
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`- 6 -
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`APPLICANT’S ANSWER: Applicant denies the allegation contained in Paragraph 17
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`of the Notice of Opposition.
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`18. Any dissatisfaction with Applicant’s Class 42 Services will reflect negatively upon
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`and irreparably damage Forgen’s reputation and the goodwill embodied in its FORGEN mark.
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`APPLICANT’S ANSWER: Applicant denies the allegation contained in Paragraph 18
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`of the Notice of Opposition.
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`19. Applicant’s use and registration of the applied-for mark is likely to cause confusion,
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`mistake, and deception as to the source of Applicant’s Class 42 Services within the meaning of 15
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`U.S.C. §§ 1114 and 1125(a).
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`APPLICANT’S ANSWER: Applicant denies the allegation contained in Paragraph 19
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`of the Notice of Opposition.
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`20. Applicant’s use and registration of the applied-for mark will injure and damage Forgen
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`and the goodwill and reputation symbolized by Forgen’s FORGEN mark within the meaning of
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`15 U.S.C. § 1063(a).
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`APPLICANT’S ANSWER: Applicant denies the allegation contained in Paragraph 20
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`of the Notice of Opposition.
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`21. Applicant’s applied-for mark is not registrable under 15 U.S.C. § 1052(d), because it
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`resembles a mark previously used in the United States by Forgen and is likely to cause confusion,
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`mistake, or to deceive.
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`APPLICANT’S ANSWER: Applicant denies the allegation contained in Paragraph 21
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`of the Notice of Opposition
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`- 7 -
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`22. Forgen respectfully requests that this opposition be sustained and registration of U.S.
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`Application Serial No. 98251656 be refused.
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`APPLICANT’S ANSWER: Applicant denies that Forgen is entitled to any relief.
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`
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`AFFIRMATIVE DEFENSES
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`1. Opposer cannot demonstrate any likelihood that the public will be confused or misled
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`as to the source of Applicant’s goods, or that Applicant’s goods are associated with or endorsed
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`by Opposer.
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`
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`PRAYER FOR RELIEF
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` WHEREFORE, Applicant, Forgen AI, respectfully prays that:
`
`a)
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` the Opposition be dismissed and that this Opposition be sustained in favor of the
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`Applicant and that Applicant’s mark, Application Serial No. 98/251656, be permitted to proceed
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`to registration; and
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`b)
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`it be awarded such further relief as this Board deems just and proper.
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`
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`
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`Date: December 16, 2024
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`Respectfully submitted,
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`
`
`By: /Richard W. Hoffmann/
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`RICHARD W. HOFFMANN (MI Bar No. P42352)
`JAMES D. STEVENS JR. (MI Bar No. 82081)
`Reising Ethington P.C.
`755 West Big Beaver Road, Suite 1850
`Troy, Michigan 48084
`Telephone: 248-689-3500
`Facsimile: 248-689-4071
`hoffmann@reising.com
`
`
`
`Attorneys for Applicant Forgen AI
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`- 8 -
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that on the 17th day of December 2024, the APPLICANT FORGEN
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`AI, LLC’S ANSWER AND AFFIRMATIVE DEFENSES TO OPPOSER’S NOTICE OF
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`OPPOSITION ; and CERTIFICATE OF SERVICE were served on the following:
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`
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`
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`By: Email to:
`gtipmail@gtlaw.com
`Amy.Kramer@gtlaw.com
`vandykek@gtlaw.com
`strackk@gtlaw.com
`
`
`Amy L. Kramer, Esq
`GREENBERG TRAURIG, LLP
`1144 15TH Street,Suite 3300
`Denver, CO 80202
`Telephone: (303) 572-6500
`
`
`
`
`
`
`/Richard W. Hoffmann/
`RICHARD W. HOFFMANN
`
`
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`- 9 -
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