`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
`
`January 18, 2025
`
`Opposition No. 91294398
`
`Forgen, LLC
`
`v.
`
`Forgen AI, LLC
`
`
`
`M. Catherine Faint,
`Interlocutory Attorney:
`
`
`Pursuant to Fed. R. Civ. P. 26(f) and Trademark Rules 2.120(a)(1) and (2), the
`
`parties held a timely discovery conference on January 16, 2025. See TRADEMARK TRIAL
`
`AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 401.01 (2024). At Opposer’s
`
`request, a member of the Board participated in the conference. See Trademark Rule
`
`2.120(2)(i). Participating were Amy L. Kramer, Atty., appearing on behalf of Forgen
`
`LLC (Opposer), and Richard W. Hoffmann, Atty., appearing on behalf of Forgen AI,
`
`LLC (Applicant).
`
`I.
`
`General Rules and Guidelines
`
`The Board apprised the parties of general procedural rules and guidelines that
`
`govern inter partes proceedings, including:
`
`• the Board’s liberal granting of motions to suspend for settlement efforts;
`
`• the requirement that a party serve its initial disclosures pursuant to Fed.
`R. Civ. P. 26(a)(1)(A)(i) and (ii) prior to serving discovery requests or a
`
`
`
`

`

`Opposition No. 91294398
`
`
`
`
`motion for summary judgment (see Trademark Rules 2.120(a)(3) and
`2.127(e)(1), 37 C.F.R. § 2.120(a)(3) and 2.127(e)(1));
`
`• the requirement that a motion to compel initial disclosures must be filed
`within thirty days after the deadline therefor (see Trademark Rule
`2.120(f)(1). 37 C.F.R. § 2.120(f)(1));
`
`• the requirement that all discovery requests must be served early enough to
`allow for responses prior to the close of discovery. Trademark Rule
`2.120(a)(3), 37 C.F.R. § 2.120(a)(3). The Board has clarified that this means
`31 days prior to the close of discovery. Estudi Moline Dissey, S.L. v. BioUrn,
`Inc., No. 92061508, 2017 TTAB LEXIS 238, at *6 (discovery requests must
`be served with at least thirty-one days remaining in the discovery period,
`including date of service, regardless of whether day of service falls on
`weekend or holiday).1 The duty to supplement discovery responses
`continues even after the close of discovery;
`
` the requirement under Fed. R. Civ. P. 26(b)(5)(A)(i)-(ii) that a party
`withholding documents on the basis of a claim of privilege must, “(i)
`expressly make the claim; and (ii) describe the nature of the documents,
`communications, or tangible things not produced or disclosed – and do so in
`a manner that, without revealing information itself privileged or protected,
`will enable other parties to assess the claim.” The most common way to do
`this is by using a privilege log which identifies each document withheld,
`information regarding the nature of the privilege/protection claimed, the
`name of the person making/receiving the communication, the date and
`place of the communication, and the document’s general subject matter; see
`TBMP § 406.04(c);
`
` •
`
`
`
`
`1 As part of an internal Board pilot citation program on broadening acceptable forms of legal
`citation in Board cases, citations in this order are in the form recommended in TBMP § 101.03
`(2024). This order cites decisions of the U.S. Court of Appeals for the Federal Circuit and the
`U.S. Court of Customs and Patent Appeals by the page(s) on which they appear in the Federal
`Reporter (e.g., F.2d, F.3d, or F.4th). For orders of the Board, this order employs citations to
`the Lexis legal database and cites only precedential decisions. Practitioners should also
`adhere to the practice set forth in TBMP § 101.03. Precedential decisions of the Board, and
`precedential decisions of the Federal Circuit involving Board decisions that issued January
`1, 2008, or after may be viewed in TTABVUE by entering the proceeding number, application
`number, registration number, expungement/reexamination number, mark, party, or
`correspondent. Many precedential Board decisions that issued from 1996 to 2008 are
`available online from the TTAB Reading Room by entering the same information. Most TTAB
`decisions that issued prior to 1996 are not available in USPTO databases.
`
`
`
`
`2
`
`

`

`Opposition No. 91294398
`
`
`• the requirement that motions to compel discovery, motions to test the
`sufficiency of responses or objections, and motions for summary judgment
`must be filed prior to the deadline for pretrial disclosures for the first
`testimony period as originally set or as reset. See Trademark Rules
`2.120(f)(1) and 2.127(e)(1), 37 C.F.R. 2.120(f)(1) and 2.127(e)(1); and Asustek
`Comput., Inc. v. Chengdu Westhouse Interactive Entm’t Co., No. 91225271,
`2018 TTAB LEXIS 391, at *6 (reconsideration of Board order denying
`untimely motion to compel filed on deadline for pretrial disclosures denied);
`and
`
` that testimony may be submitted in the form of an affidavit or declaration.
`Trademark Rules 2.121, 2.123 and 2.125.
`
` •
`
`
`
`II. Conference Summary
`
`The Board inquired as to whether there are any related proceedings and whether
`
`the parties had engaged in settlement discussions. The parties informed the Board
`
`that there is no related federal or state court proceeding.
`
`The parties did have brief settlement discussions, and would continue those
`
`discussions after the teleconference.
`
`III. Email Service/Response Deadlines
`
`Pursuant to Trademark Rule 2.119(b), 37 C.F.R. § 2.119(b), service of papers must
`
`be made via email unless otherwise stipulated by the parties. Deadlines for
`
`submissions to the Board that are initiated by a date of service are 20 days.
`
`Trademark Rule 2.127, 37 C.F.R. § 2.127. Responses to motions for summary
`
`judgment are 30 days, while reply briefs are 20 days. Deadlines for responses to
`
`discovery requests are 30 days. Trademark Rule 2.120(a)(3), 37 C.F.R. § 2.120(a)(3).
`
`IV. Board’s Standard Protective Order
`
`The Board’s Standard Protective Order (SPO) is automatically imposed in this
`
`proceeding pursuant to Trademark Rule 2.116(g), unless the parties, by stipulation
`
`
`
`3
`
`

`

`Opposition No. 91294398
`
`
`approved by the Board, agree to an alternative order, or a motion by a party to use
`
`an alternative order is granted by the Board. If the parties choose to modify the terms
`
`of the Board’s standard protective order and enter into their own stipulated protective
`
`order, a copy of the executed agreement should be filed with the Board. The Board
`
`will acknowledge receipt of the agreement, but the parties should not wait for the
`
`Board’s acknowledgement to conduct themselves in accordance with the terms of
`
`their agreement. Intercont’l Exch. Holdings, Inc. v. New York Mercantile Exch., Inc.,
`
`No. 91235909, 2021 TTAB LEXIS 357, at *2 (Board’s standard protective order may
`
`be modified by stipulation of parties, approved by Board, or upon motion granted by
`
`Board).2
`
`The parties did not wish to submit a signed version of the SPO.
`
`V.
`
`Review of the Pleadings
`
`A. Notice of Opposition
`
`Reviewing the notice of opposition, Opposer claims likelihood of confusion with its
`
`common law rights in the identical mark for geotechnical and civil construction
`
`services. Opposer also claims ownership of four pending trademark applications for
`
`the identical standard character mark, and a design mark incorporating FORGEN,
`
`for services in International Classes 37, 39 and 40. Opposer attached TSDR database
`
`printouts for its claimed applications to the pleading for Application Serial Nos.
`
`98121907, 98121911, 98121916 and 98121918. The standard character mark in
`
`
`2 The parties may not use an amended protective order to circumvent paragraph (d) and (e)
`(public availability of records) of Trademark Rule 2.27, 37 C.F.R. § 2.27. See TBMP §
`412.02(a).
`
`
`
`4
`
`

`

`Opposition No. 91294398
`
`
`Application Serial No. 98121918 and the design mark in Application Serial No.
`
`98121916, for the services in Classes 39 and 40, have since registered. While Opposer
`
`will not need to amend its pleading to claim ownership of the registrations, Opposer
`
`will need to make status and title copies of those registrations of record at summary
`
`judgment or trial, if Opposer wishes to rely on them for establishing entitlement to a
`
`statutory cause of action.
`
`Opposer alleges likelihood of confusion with its registered and common law marks.
`
`A likelihood of confusion determination under Trademark Act § 2(d), 15 U.S.C. §
`
`1052(d), is based on an analysis of the priority of use claim and of all of the facts in
`
`evidence that are relevant to the factors bearing on the likelihood of confusion issue
`
`(the duPont factors). In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
`
`563 (CCPA 1973). There are thirteen duPont factors, however, not all of the duPont
`
`factors are relevant or of similar weight in every case. In re Dixie Rests., Inc., 105
`
`F.3d 1405, 1406-07 (Fed. Cir. 1997). The burden will be on Opposer to prove likelihood
`
`of confusion, as well as any other relevant factors.
`
`
`
`B. Answer
`
`Applicant has answered the petition to cancel denying the salient allegations, or
`
`stating that it is without sufficient information to admit or deny them, which serves
`
`as a denial. The answer is sufficient.
`
`Applicant alleges as a single affirmative defense, that Opposer cannot
`
`demonstrate any likelihood that the public will be confused or misled as to the source
`
`of Applicant’s goods or that Applicant’s goods are associated with or endorsed by
`
`
`
`5
`
`

`

`Opposition No. 91294398
`
`
`Opposer. This is not a true affirmative defense but the Board construes it as an
`
`amplification of Applicant’s denials. As such it is permitted to give Opposer fuller
`
`notice of the position which Applicant plans to take in defense of its marks. See
`
`Morgan Creek Prods., Inc. v. Foria Int’l, Inc., No. 9173806, 2009 TTAB LEXIS 445,
`
`*3.; Humana Inc. v. Humanomics, Inc., No. 91071097, 1987 TTAB LEXIS 59, at * 2
`
`n.5 (allegations under heading “affirmative defenses” were arguments in support of
`
`denial of claim rather than true affirmative defenses and were treated as such).
`
`VI. Accelerated Case Resolution (ACR)
`
`The Board briefly explained the availability and features of the “accelerated case
`
`resolution” (“ACR”) process and noted that this case may be suitable for an ACR
`
`proceeding. For further information, the Board referred the parties to TBMP §§
`
`528.05(a)(2), 702.04 and 705, as well as the link on the Board’s web page to ACR
`
`information and exemplary ACR proceedings. Counsel expressed some interest in the
`
`use of ACR, but were not willing to stipulate to ACR at this point.
`
`The parties may leave open the possibility of ACR at a future date after some more
`
`discussion regarding settlement. The parties may telephone the Interlocutory
`
`Attorney at any time to set up a teleconference to discuss ACR.
`
`VII. Discovery
`
`The discovery conference was held on January 16, 2025, the opening date for discovery
`
`as set by the Board’s Institution Order.3
`
`3 2 TTABVUE 3.
`
`
`
`
`
`6
`
`

`

`Opposition No. 91294398
`
`
`Requests for production of documents and requests for admission, as well as
`
`interrogatories, are each limited to 75. Trademark Rule 2.120, 37 C.F.R. § 2.120. While
`
`the Board in its discretion may allow additional discovery requests, such may be granted
`
`only upon a showing of good cause or upon stipulation of the parties. See TBMP §§
`
`405.03(c), 406.05(c) and 407.05(c). Such a determination is made on a case-by-case basis.
`
`See, e.g., Spliethoff's Bevrachtingskantoor B.V. v. United Yacht Transp. LLC, No.
`
`91219179, 2020 TTAB LEXIS 200, at *8 (TTAB 2020) (discussing what constitutes good
`
`cause to exceed limitations on discovery requests).
`
`The parties are directed to TBMP § 414 regarding the discoverability of various
`
`categories of information in Board proceedings. The parties are reminded that the Board
`
`is an administrative tribunal that determines the registrability of trademarks. If the case
`
`should progress so far, the parties should be mindful when submitting trial evidence to
`
`the Board that the better practice is to focus on supporting, only to the extent required
`
`by the pertinent burden of proof, the facts to be established.
`
`In discussing the use of electronically stored information (ESI), the parties did not
`
`think there would be significant issues regarding its use in this proceeding.
`
`VIII. Schedule
`
`Dates remain as set in the Board’s institution order, as copied below.
`
`Deadline for Discovery Conference
`
`Discovery Opens
`
`Initial Disclosures Due
`
`Expert Disclosures Due
`
`Discovery Closes
`
`Plaintiff's Pretrial Disclosures Due
`
`1/16/2025
`
`1/16/2025
`
`2/15/2025
`
`6/15/2025
`
`7/15/2025
`
`8/29/2025
`
`Plaintiff's 30-day Trial Period Ends
`
`10/13/2025
`
`
`
`7
`
`

`

`Opposition No. 91294398
`
`
`Defendant's Pretrial Disclosures Due
`
`10/28/2025
`
`Defendant's 30-day Trial Period Ends
`
`12/12/2025
`
`Plaintiff's Rebuttal Disclosures Due
`
`12/27/2025
`
`Plaintiff's 15-day Rebuttal Period Ends 1/26/2026
`
`Plaintiff's Opening Brief Due
`
`Defendant's Brief Due
`
`Plaintiff's Reply Brief Due
`
`3/27/2026
`
`4/26/2026
`
`5/11/2026
`
`Request for Oral Hearing (optional) Due 5/21/2026
`
`
`Important Trial Briefing Instructions
`
`
`
`Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
`
`taken and introduced out of the presence of the Board during the assigned testimony
`
`periods. The parties may stipulate to a wide variety of matters, and many
`
`requirements relevant to the trial phase of Board proceedings are set forth in
`
`Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
`
`manner and timing of taking testimony, matters in evidence, and the procedures for
`
`submitting and serving testimony and other evidence, including affidavits,
`
`declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
`
`submitted in accordance with Trademark Rules 2.128(a) and (b). Such briefs should
`
`utilize citations to the TTABVUE record created during trial, to facilitate the Board’s
`
`review of the evidence at final hearing. See TBMP § 801.03. Oral argument at final
`
`hearing will be scheduled only upon the timely submission of a separate notice as
`
`allowed by Trademark Rule 2.129(a).
`
`***
`
`
`
`8
`
`