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`THIS ORDER IS NOT A
`PRECEDENT OF THE TTAB
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`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
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`October 3, 2023
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`Cancellation No. 92081622
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`YG Entertainment Inc.
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`v.
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`SM Beauty, LLC
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`
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`Yong Oh (Richard) Kim, Interlocutory Attorney:
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`This matter comes up on Respondent’s motion (filed June 15 and 19, 2023)1 to
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`compel responses to its first sets of interrogatories and requests for production of
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`documents and Respondent’s additional motion (filed June 27, 2023)2 to extend its
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`time to respond to Petitioner’s discovery requests. Both motions are contested.3
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`1 8 – 10 TTABVUE. In the suspension order of August 1, 2023, the Board noted that a
`second copy of the motion to compel was filed at 9 TTABVUE, that it was presumed such
`submission was intended to replace the first copy of the motion filed at 8 TTABVUE, and,
`as such, the entry at 8 TTABVUE would be given no consideration. 14 TTABVUE 1 n .1. To
`be clear, the Board’s non-consideration of the entry at 8 TTABVUE was limited to the
`briefing on the motion and not the exhibits that accompanied the motion. To the extent a
`third copy of the motion was filed on June 19, 2023, in connection with the Exhibit D that
`was omitted from Respondent’s original submissions of June 15, 2023, such copy has not
`been considered since it is presumably the same motion as the one at 9 TTABVUE based on
`the service date of June 15 shown on the certificate of service to the motion and since th ere
`is no indication that the motion has been amended.
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`2 11 TTABVUE.
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`3 12 TTABVUE and 13 TTABVUE.
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`

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`Cancellation No. 92081622
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`Background
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`A petition to cancel Registration No. 5376449 was filed on February 14, 2023,
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`and this cancellation proceeding was instituted on February 17, 2023. 4 Respondent
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`timely answered the petition for cancellation on March 27, 2023. 5 Pursuant to the
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`schedule in the notice of institution, discovery opened on April 28, 2023.6
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`On April 29, 20237, Respondent served Petitioner with its first sets of
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`interrogatories and requests for production of documents to which Petitioner served
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`on May 26, 2023, a general objection that the requests exceeded the limits imposed
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`by Trademark Rules 2.120(d) and (e), 37 C.F.R. § 2.120(d) and (e).8
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`On June 1, 2023, the parties held a meet and confer on the issue which
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`Respondent memorialized in correspondence to Petitioner. 9 That same day,
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`Petitioner served Respondent with its first set of written discovery requests. 10
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`On June 15, 2023, Respondent filed the present motions under consideration.
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`4 1 TTABVUE and 3 TTABVUE.
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`5 4 TTABVUE.
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`6 2 TTABVUE 3.
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`7 The certificates of service attached to Respondent’s discovery requests reflect a serv ice
`date of March 28, 2023. See 8 TTABVUE 13 and 27. Neither Respondent’s motion to compel
`nor Petitioner’s response thereto refers to the date of service of Respondent’s discovery
`requests. However, in its motion for extension, Respondent represents that the discovery
`requests were served on April 29, 2023. See 11 TTABVUE 2. As Petitioner has not objected
`thereto or otherwise raised the issue, the Board presumes either that the March 28 date
`shown in the certificate of service was a clerical error or, if accurate, that the parties had
`reached an agreement that the discovery requests would be deemed served as of the
`opening of discovery or in close approximation thereto. In any event, the Board has
`accepted, for purposes of this order, the April 29 date as the date of service of Respon den t’s
`discovery requests.
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`8 8 TTABVUE 28-37.
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`9 9 TTABVUE 3 and 10 TTABVUE 2-3.
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`10 11 TTABVUE 2 and 13 TTABVUE 2.
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`2
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`

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`Cancellation No. 92081622
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`Motion to Compel
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`As part of any motion to compel discovery, the moving party must support its
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`motion with a showing that a good faith effort was made to resolve with the other
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`party the issues presented in the motion but that it was unable to do so. See
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`Trademark Rule 2.120(f)(1), 37 C.F.R. § 2.120(f)(1).
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`Although not explicitly stated, Respondent suggests that it discharged the good
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`faith effort requirement by holding a meet and confer with Petitioner wherein it
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`was confirmed that Petitioner’s single objection going to the number of
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`interrogatories and requests for production of documents served by Respondent “is
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`the only basis for Petitioner to refuse to answer a single interrogatory or produce a
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`single document,” which position Respondent characterizes as “frivolous,”
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`“ridiculous” and made in “bad faith.”11
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`Respondent appears to be under the impression that simply holding a meet and
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`confer is sufficient to discharge the good faith effort requirement. It is not. The
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`purpose of the good faith effort requirement “is to promote a frank exchange between
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`counsel to resolve issues by agreement or to at least narrow and focus the matters
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`in controversy before judicial resolution is sought.” Amazon Techs., Inc. v. Wax, 93
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`USPQ2d 1702, 1705 (TTAB 2009) (emphasis in original) (quoting Dondi Props.
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`Corp. v. Commerce Savings and Loan Ass’n, 121 F.R.D. 284, 289 (N.D. Tex. 1988)
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`(construing a local rule less onerous than Trademark Rule 2.120(f)(1))). Thus, a
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`good faith effort, if properly made, will be “directed to understanding differences
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`11 9 TTABVUE 3.
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`3
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`

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`Cancellation No. 92081622
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`and actually investigating ways in which to resolve the dispute .” Hot Tamale
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`Mama…and more, LLC v. SF Invs., Inc., 110 USPQ2d 1080, 1081 (TTAB 2014).
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`Clearly, a good faith exchange cannot be had when ad hominem attacks are
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`being persistently lobbed at the other party during the course of the discovery
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`dispute. Constantly repeating that Petitioner’s positio n on the issue is “ludicrous”
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`and “outrageous” and made “in bad faith” 12 does not make it so, and such attacks
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`are counterproductive, unnecessary, and potentially violative of Trademark Rule
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`2.192, 37 C.F.R. § 2.192, which requires parties and their attorneys to conduct their
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`business with decorum and courtesy.
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`Additionally, there can be no good faith discussion when Respondent maintains
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`a wholly unsupported position on the issue of Petitioner’s single objection despite
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`being referred, at Respondent’s request, to the relevant statutory authority by
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`Petitioner, i.e., Trademark Rules 2.120(d) and (e), which clearly provide that “[i]f a
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`party upon which interrogatories [or requests] have been served believes that the
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`number of interrogatories [or requests] excee ds the limitation specified in this
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`paragraph, and is not willing to waive this basis for objection, the party shall,
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`within the time for (and instead of) serving answers [or responses] and specific
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`objections to the interrogatories [or requests], serve a general objection on the
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`ground of their excessive number.” Despite this plain language, Respondent, who
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`stated that it had “read those rules,” responded that “[t]hey say nothing about how
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`you described that by objecting on the number of interrogatories … you do not have
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`12 Id. and 10 TTABVUE 2-5 and 11.
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`4
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`

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`Cancellation No. 92081622
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`to respond so long as you object” and proceeded to further label Petitioner’s position
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`as frivolous, dilatory and in bad faith.13 Respondent, however, offered no
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`countervailing authority for its position, choosing instead to maintain a combative
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`posture which is no substitute for clear authority. If Respondent had any doubt as
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`to the propriety of Petitioner’s general objection, it was incumbent upon Respondent
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`to independently research the issue which would have readily borne out that the
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`procedure followed by Petitioner in objecting to Respondent’s interrogatories and
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`requests for production was proper. Indeed, the Board had previously observed in
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`2016 that “[t]his practice has been in place for over two decades and articulated in
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`the TBMP for many years. See [TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
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`PROCEDURE (TBMP)] § 410, and accompanying notes. It could scarcely be made any
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`clearer. When a party, in good faith, believes the interrogatories with which it has
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`been served exceed the limit and the party is not willing to waive this basis for
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`objection, the party shall, within the time for (and instead of) serving answers and
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`specific objections, serve a general objection on the ground of their excessive
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`number.” Emilio Pucci Int’l BV v. Sachdev, 118 USPQ2d 1383, 1385 (TTAB 2016).
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`Finally, that Respondent failed to engage in a good faith effort to resolve the
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`parties’ counting dispute is manifest in its refusal to even consider Petitioner’s
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`counting methodology or to attempt to understand the basis therefor, as well as in
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`its failure to offer or explain its own counting methodology other than to simply
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`stand firm on its own count based on how it chose to enumerate its discovery
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`13 10 TTABVUE 4-5.
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`5
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`

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`Cancellation No. 92081622
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`requests. See Kellogg Co. v. Nugget Distribs.’ Coop. of Am. Inc., 16 USPQ2d 1468
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`(TTAB 1990) (the number of discovery requests served are to be determined from
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`their substance rather than the propounding party’s own numbering system). The
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`purpose behind the Board’s procedure in requiring a party served with a single
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`general objection to the excessive number of written discovery requests “is to
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`advance the discussion between the parties as to the number and scope of the
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`[discovery requests], and to encourage them to discuss their respective counting
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`methods and earnestly attempt to resolve any dispute.” Emilio Pucci, 118 USPQ2d
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`at 1385. Respondent did not do so.
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`In view thereof, Respondent’s motion to compel is hereby DENIED without
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`prejudice to renew the motion as necessary should a dispute remain on the
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`question of whether Respondent’s discovery requests exceed the number allowed .
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`The Board expects that any count Respondent relies on will be based on a revie w o f
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`TBMP §§ 405.03 and 410 and the relevant cases cited therein and that any future
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`discussions will be conducted with decorum and in a professional manner.
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`Motion for Extension
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`On June 27, 2023, Respondent further moved to extend its time to respond to
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`Petitioner’s written discovery requests served on June 1, 2023. 14 As grounds
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`therefor, Respondent contends that “[t]here are significant amounts of documents
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`and information being gathered while Respondents’ [sic] counsel and employees are
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`14 11 TTABVUE. In accordance with Trademark Rules 2.120(a)(3) and 2.196, 37 C.F.R.
`§§ 2.120(a)(3) and 2.196, Respondent’s discovery responses would have been due on Ju ly 3,
`2023.
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`
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`6
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`

`

`Cancellation No. 92081622
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`juggling their summer schedules” and therefore it “needs more time to respond …
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`which will allow it to complete its searches.” 15
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`Fed. R. Civ. P. 6(b)(1)(A) requires a showing of good cause to extend a prescribed
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`period prior to its expiration. The Board is generally liberal in granting extensions
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`of time before the period has expired so long as the moving party has not been
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`guilty of negligence or bad faith and the privilege of extensions has not been abused.
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`See Am. Vitamin Prods., Inc. v. Dow Brands Inc., 22 USPQ2d 1313, 1314 (TTAB
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`1992). However, the party seeking the extension bears “the burden of persuading
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`the Board that it was diligent in meeting its responsibilities and should therefore be
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`awarded additional time.” Nat’l Football League v. DNH Mgmt, LLC, 85 USPQ2d
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`1852, 1854 (TTAB 2008). To meet this burden, a motion for extension must set forth
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`with particularity the facts said to constitute good cause; mere conclusory
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`allegations that lack factual detail are insufficient to support a motion for
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`extension. See SFW Licensing Corp. v. Di Pardo Packing Ltd., 60 USPQ2d 1372,
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`1373 (TTAB 2001).
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`Respondent’s two-page motion for extension is sparse in detail and sets forth
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`nothing more than a conclusory claim that “[t]here are significant amounts of
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`documents and information” along with a vague assertion that more time is needed
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`due to a “juggling” of the “summer schedules” of counsel and related employees.
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`Irrespective of whether Respondent is referring to a scheduling or staffing issue
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`faced by counsel over the course of the summer, no information is provided as to
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`15 Id. at 2.
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`7
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`

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`Cancellation No. 92081622
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`whether counsel was unavailable or otherwise faced difficulty in efforts to res pond
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`to Petitioner’s discovery requests during the relevant period of time, i.e., in the
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`month of June 2023, as opposed to other summer months.
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`While the Board generally takes a liberal approach to granting extensions of
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`time, the good cause standard is not so permissive as to allow an extension based
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`simply on a generalized claim that Respondent has “significant amounts of
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`documents and information” to search through. More is needed to demonstrate the
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`requisite good cause for an extension of time, which de tails Respondent has failed to
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`provide.
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`Accordingly, Respondent’s motion for extension is DENIED. However, this
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`denial will not operate as a waiver of objections for Respondent. In that regard , and
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`in view of the amount of time Respondent has had during the pendency of its
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`motions to review and gather the materials and information responsive to
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`Petitioner’s discovery requests, Respondent is allowed until TEN DAYS from the
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`mailing date of this order to serve Petitioner with its written responses and re late d
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`production thereto.
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`Resumption of Proceedings
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`Proceedings herein are RESUMED in accordance with the following schedule:
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`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures Due
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures Due
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures Due
`Plaintiff's 15-day Rebuttal Period Ends
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`
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`8
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`1/12/2024
`2/11/2024
`3/27/2024
`5/11/2024
`5/26/2024
`7/10/2024
`7/25/2024
`8/24/2024
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`

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`Cancellation No. 92081622
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`Plaintiff's Opening Brief Due
`Defendant's Brief Due
`Plaintiff's Reply Brief Due
`Request for Oral Hearing (optional) Due
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`Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony
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`10/23/2024
`11/22/2024
`12/7/2024
`12/17/2024
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`is taken and introduced out of the presence of the Board during the assigned
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`testimony periods. The parties may stipulate to a wide variety of matters, and many
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`requirements relevant to the trial phase of Board proceedings are set forth in
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`Trademark Rules 2.121 through 2.125. These include pretrial disclosures, matters
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`in evidence, the manner and timing of taking testimony, and the procedures for
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`submitting and serving testimony and other evidence, including affidavits,
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`declarations, deposition transcripts and stipulated evidence.
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`Trial briefs shall be submitted in accordance with Trademark Rules 2.128(a) and
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`(b). The briefs should cite to the TTABVUE record created during trial by
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`docket entry and page number—e.g., 8 TTABVUE 3—to facilitate the
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`Board’s review of the evidence at final hearing. See TBMP § 801.03. Oral
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`argument at final hearing will be scheduled only upon the timely submission of a
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`separate notice as allowed by Trademark Rule 2.129(a).
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`* * *
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`9
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