ESTTA Tracking number:
`
`ESTTA1338840
`
`Filing date:
`
`02/07/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92081622
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`YG Entertainment Inc.
`
`GOVINDA M DAVIS
`DINSMORE & SHOHL LLP
`255 E FIFTH STREET SUITE 1900
`CINCINNATI, OH 45202
`UNITED STATES
`Primary email: govinda.davis@dinsmore.com
`Secondary email(s): trademarks@dinsmore.com
`513-977-8200
`
`Motion to Compel Discovery or Disclosure
`
`Govinda M. Davis
`
`govinda.davis@dinsmore.com
`
`/Govinda M. Davis/
`
`02/07/2024
`
`YG Entertainment v SM Beauty Petitioners Motion to Compel Discovery a nd
`Exhibits.pdf(2791480 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`YG Entertainment, Inc.,
`
`Petitioner,
`
`
`v.
`
`
`
`SM Beauty, LLC,
`
`
`
`
`)
`)
`)
`)
`)
`)
`
`
`
`)
`
`
`
`Respondent. )
`
`
`
`
`
`
`
`
`
`
`
`In the matter of:
`Registration No. 5376449
`
`For the mark: BLACKPINK
`
`Cancellation No: 92081622
`
`
`
`
`PETITIONER’S MOTION TO COMPEL DISCOVERY AND TEST THE SUFFICIENCY
`OF RESPONDENT’S RESPONSES TO REQUESTS FOR ADMISSION
`
`Petitioner YG Entertainment, Inc. (“Petitioner”) hereby respectfully submits this Motion
`
`(the “Motion”), pursuant to Federal Rule of Civil Procedure 33, 34 & 36, 37 C.F.R. §§ 2.120(d),
`
`(e), (f) and (i), to Compel Discovery and Test the Sufficiency of Respondent SM Beauty, LLC’s
`
`(“Respondent”) Responses to Requests for Admission. Petitioner requests an order: (1) compelling
`
`Respondent to provide written responses and documents in response to Petitioner’s First Set of
`
`Requests for the Production of Documents and Things (the “RFPs”) and Petitioner’s First Set of
`
`Interrogatories to Respondent (the “Interrogatories”) (collectively, the RFPs and Interrogatories
`
`are hereinafter referred to as the “Requests”); (2) determining that Respondent’s responses to
`
`Petitioner’s First Set of Requests for Admission to Respondent (the “RFAs”) were insufficient;
`
`and (3) compelling Respondent to serve amended answers to the RFAs.
`
`In support of the Motion, Petitioner’s submits this supporting memorandum, together with
`
`the accompanying Declaration of Govinda M. Davis (the “Davis Decl.”), Petitioner’s counsel,
`
`attached hereto as Exhibit 1 and the exhibits annexed thereto.
`
`
`
`1
`
`

`

`I.
`
`FACTUAL BACKGROUND
`
`As the Board is aware, this Cancellation proceeding arises out of Petitioner’s allegations
`
`that Respondent’s registration for its mark BLACKPINK, should be cancelled due to (1)
`
`abandonment, (2) misrepresentation of source, and (3) fraud on the United States Patent and
`
`Trademark Office (“USPTO”). (See Petition for Cancellation, TTABVUE Doc. No. 1.)
`
`By way of background, discovery in this case has been unnecessarily complicated and
`
`prolonged by Respondent’s combative conduct and ignorance of rudimentary U.S. Trademark Law
`
`Rules of Practice. For example, on March 28, 2023, Respondent served Petitioner with its first sets
`
`of discovery requests, including Interrogatories (see Respondent’s Motion to Compel, Exhibit A,
`
`8 TTABVUE) and Document Requests (see Respondent’s Motion to Compel, Exhibit B, 8
`
`TTABVUE), which exceeded the limit of discovery requests. On May 26, 2023, Petitioner
`
`responded by asserting general objections to both Respondent’s document requests and
`
`interrogatories, on the basis that both exceeded the permissible limits of 75 permitted under
`
`Trademark Rule 2.120, subsections (d) and (e), as was substantively proper and its procedural right
`
`to do. (See Respondent’s Motion to Compel, Exhibit C, 8 TTABVUE; Petitioner’s Opposition to
`
`Respondent’s Motion to Compel, 12 TTABVUE).
`
`In response to Petitioner’s procedurally proper (indeed, meritorious) general objections,
`
`Respondent’s counsel—in a barrage of vitriolic e-mails and letters to Petitioner’s counsel—
`
`incorrectly insisted that: (1) Petitioner improperly made the general objections; (2) Petitioner had
`
`waived all future substantive objections to Respondent’s discovery requests; (3) Petitioner was
`
`acting in bad faith; and (4) there was actually no limit on the number of document requests a party
`
`may serve. (See generally Respondent’s Motion to Compel, Exhibit D, 10 TTABVUE).
`
`Respondent called Petitioner’s general objections “frivolous” and demanded to know “[w]hat rule
`
`
`
`2
`
`

`

`allows you to do that?” (Id. at Exhibit D4.) Respondent’s counsel stated: “I cannot imagine a
`
`judicial system that would subscribe to such dilatory practices” as are clearly dictated by 37 C.F.R.
`
`§ 2.120, subsections (d) and (e). (Id. at Exhibit D1). Respondent also incorrectly stated that “[t]here
`
`is no limitation on [the number of document requests] (Id. at Exhibit D6.). Of course, Respondent’s
`
`assertions were completely inaccurate and border on negligent.
`
`Indeed, in that instance, in e-mail correspondence dated June 1, 2023, Petitioner pointed
`
`Respondent to Trademark Rule 2.120, subsections (d) and (e), the procedure of which it followed
`
`to the letter. (See Respondent’s Motion to Compel, Exhibit D, 8 TTABVUE). Regardless of the
`
`fact that YG Entertainment’s objections were proper, on June 15, 2023, Respondent moved to
`
`compel YG Entertainment to answer Respondent’s interrogatories and document requests
`
`(“Respondent’s Motion to Compel”). (See 8, TTABVUE, 9 TTABVUE, 10 TTABVUE).
`
`Naturally, YG Entertainment opposed this motion and laied out how YG Entertainment followed
`
`the correct procedure outlined in Trademark Rule 2.120, subsections (d) and (e) and outlined—in
`
`great detail—why Respondent’s discovery requests were excessive. (See YG Entertainment’s
`
`Opposition to Respondent’s Motion to Compel, & Exhibits A & B thereto, 12 TTABVUE).
`
`Respondent filed no reply in further support of its Motion to Compel. The Board subsequently
`
`issued its order on Respondent’s Motion to Compel on October 3, 2023, which rightfully indicated
`
`that YG Entertainment’s objections were procedurally proper. (See TTABVUE Doc. No. 15.)
`
`Specifically, the Board denied Respondent’s Motion to Compel and repeatedly highlighted the fact
`
`that counsel for Respondent’s intensely uncooperative and combative posture was unproductive,
`
`as well as the fact that his assertions were, substantively, incorrect. (See id. at 3-5.) The Board
`
`explained that, “a good faith exchange cannot be had when ad hominem attacks are being
`
`persistently lobbed at the other party during the course of the discovery dispute.” (Id. at 4.) The
`
`
`
`3
`
`

`

`Board further explained “there can be no good faith discussion when Respondent maintains a
`
`wholly unsupported position on the issue of Petitioner’s single objection despite being referred, at
`
`Respondent’s request, to the relevant statutory authority by Petitioner.” (Id.) Despite being so
`
`referred—and as the Board correctly recognized—Respondent failed to engage in or even offer a
`
`substantive argument as to the issue of YG Entertainment’s counting methodology. (Id. at 5-6)
`
`(Respondent “ fail[ed] to offer or explain its own counting methodology other than to simply stand
`
`firm on its own count based on how it chose to enumerate its discovery requests”).
`
`Before Respondent filed its Motion to Compel, which suspended the proceedings, YG
`
`Entertainment served the Requests and RFAs on Respondent on June 1, 2023. See Davis Decl., ¶
`
`4, Exhibit A, Service E-mail, dated June 1, 2023; Davis Decl. ¶ 5, Exhibit B, the Requests and
`
`RFAs. Respondent’s responses to this discovery were due on July 1, 2023, which was a Saturday;
`
`the Board permitted the responses to be served on the next business day – July 3, 2023. While its
`
`motion to compel YG Entertainment’s discovery requests was pending and before YG
`
`Entertainment was able to respond to Respondent’s request for consent to such an extension,
`
`Respondent filed a motion for an extension of time in which to respond to YG Entertainment’s
`
`First Set of Discovery Requests by 21 days. (See TTABVUE Doc. No. 11). Respondent did serve
`
`deficient responses to the RFAs on June 29, 2023. See Davis Decl., ¶ 6, Exhibit C, Respondent’s
`
`Response to Petitioner’s First Request for Admission. While YG Entertainment generally had no
`
`objection to such an extension in principle, it presciently noted that it expected Respondent to
`
`engage in dilatory gamesmanship—as a misguided form of retaliation—and merely serve general
`
`objections pursuant to Trademark Rule 2.120, subsections (d) and (e), based on Respondent’s
`
`previous threat to do that the same. (See YG Entertainment’s Response to Respondent’s Motion
`
`for Extension, 13 3 (citing (10TTABVUE D2) (Respondent’s counsel threatening: “[w]e can parse
`
`
`
`4
`
`

`

`words too”) (emphasis added).) YG Entertainment indicated that it would not “agree to extend
`
`Respondent’s time to answer merely to permit Respondent to lodge baseless objections.” (13
`
`TTABVUE 4).
`
`Despite seeking an extension of its time to respond to discovery, predictably, on July 27,
`
`2023, Respondent refused to respond to the Requests and asserted only general objections
`
`(collectively, the “Objections”). See Davis Decl., ¶ 7, Exhibit D. Notably, Respondent lodged the
`
`Objections while its motion to compel YG Entertainment’s discovery responses based on a similar
`
`objection was pending before the Board. Therefore, Respondent’s objections are disingenuous, at
`
`best, and in bad faith and sanctionable at worst. Evidently, in the time between the meet and confer
`
`correspondence leading up to Respondent’s Motion to Compel (see Respondent’s Motion to
`
`Compel, Exhibit D, 10 TTABVUE) and July 27, 2023, Respondent became familiar with
`
`Trademark Rule 2.120, subsections (d) and (e) and decided to use these provisions to its perceived
`
`benefit.
`
`In addition, YG Entertainment explained in detail, in its Response to Respondent’s Motion
`
`for Extension, that Respondent had engaged in petty gamesmanship in connection with its
`
`objections to the RFAs. (See TTABVUE Doc. No. 13, at 4-5; see also Exhibit A thereto.)
`
`Respondent unreasonably objected to even the most common words and phrases, including
`
`rudimentary legal and trademark terms of art (e.g., “Federal Rules of Evidence,” “trademark
`
`BLACKPINK,” and “indicator of source,” inter alia. (Id.)
`
`Specifically, Respondent completely refused to answer RFA Nos. 1, 2, and 3. See Davis
`
`Decl., Exhibit C. Respondent’s failure to respond to RFA No. 1 is perplexing for multiple reasons.
`
`RFA No. 1 simply requested that Respondent “[a]dmit that all documents and things produced in
`
`response to any discovery request in this proceeding are authentic pursuant to the Federal Rules of
`
`
`
`5
`
`

`

`Evidence.” See Davis Decl., Exhibit B. First, Respondent—perhaps implying that it would never
`
`produce documents in connection with this matter—objected that “no documents or things sought
`
`to be authenticated accompanies this request.” See Davis Decl., Exhibit C. Respondent then
`
`objected that the straightforward terms “all documents and things produced in response to any
`
`discovery request” and “authentic” are vague and ambiguous. Id. As to RFA No. 2, Respondent
`
`objected by referring to its response to RFA No. 1 and further objecting to “part of the business
`
`records” and “kept in the normal course of” as vague and ambiguous. Id. As to RFA No. 3,
`
`Respondent objected by referring to its response to RFA No. 1 and further objecting to “admissible
`
`as evidence” or “ Federal Rules of Evidence” as vague and ambiguous. Id.
`
`In addition, Respondent objected to the following simple words and phrases as being vague
`
`and ambiguous:
`
` “use”
` “trademark BLACKPINK”
` “in connection with all”
` “provide goods”
`
` “under the mark”
` “in interstate commerce”
` “used”
` “indicator of source”
` “sponsorship”
` “association”
` “approved”
` “Petitioner’s Goods and [S]ervices”
` “goodwill”
` “assigned”
` “transfer”
` “specimen of use”
` “digital advertisement”
` “products”
` “sold under”
` “originate”
`
`
`
`
`6
`
`

`

`Id. Respondent also, perhaps sarcastically, noted that it “cannot determine precisely what happened
`
`on October 1, 2017” in response to RFA No. 9, which asked Respondent to “[a]dmit that Sang
`
`Lew did not provide goods in Class 003 under the mark depicted in U.S. Registration No.
`
`5,376,449 in interstate commerce on October 1, 2017. Id. These responses are clearly insufficient
`
`since SM Beauty asserts, in the trademark registration sought to be cancelled, that its first use and
`
`first use in commerce date were on October 1, 2017.
`
`Finally, it is unclear whether Respondent has admitted or denied several RFAs to which it
`
`responded only with a reference its own previous RFA response. For example, in response to RFA
`
`No. 8, Respondent answered “See Response to No. 7.” Id. Presumably, this means that
`
`Respondent—subject to its objections to RFA No. 7—admitted the facts contained in RFA No. 8;
`
`however, Respondent’s responses are not clear. Respondent’s responses to RFA Nos. 10 and 11
`
`also suffer from this lack of clarity. See Id. In light of SM Beauty’s blanket refusal to respond to
`
`the Interrogatories and RFPs, in a retaliatory fashion, and its insufficient RFA responses, on
`
`August 15, 2023, YG Entertainment sent a letter to Respondent outlining the deficiencies in its
`
`responses to YG Entertainment’s first set of discovery requests, namely, the improper Objections,
`
`the lack of document production and the insufficient responses to the RFAs (the “Deficiency
`
`Letter”). See Davis Decl., ¶ 8, Exhibit E, Deficiency Letter. YG Entertainment invited Respondent
`
`to discuss these deficiencies by phone and a telephone call was conducted on September 5, 2023.
`
`See Davis Decl., ¶¶ 9-10, Exhibit F, E-mail Correspondence. On the call counsel for Respondent,
`
`on several occasions, claimed that what is “good for the goose is good for the gander,” meaning,
`
`that if Petitioner objected to Respondent’s discovery requests because they were over the limit,
`
`then Respondent could do so as well. See Davis Decl., ¶ 11. Petitioner does not dispute that the
`
`rules would apply to both parties equally; however, when Respondent merely seeks to invoke the
`
`
`
`7
`
`

`

`rules in a retaliatory fashion, this is inappropriate since Petitioner’s Requests were not over the
`
`numerical limit. The parties were unable to resolve the issues during the September 5 call and
`
`Respondent’s counsel indicated that they would not be supplementing Respondent’s discovery
`
`responses as requested. Id. at ¶ 12.
`
`To put a fine point on Respondent’s discovery-related misconduct in this proceeding, in
`
`the same order in which the Board denied Respondent’s Motion to Compel, it also denied
`
`Respondent’s Motion for Extension. See 15 TTABVUE 6-9. The Board explained that Respondent
`
`did not meet its relatively light burden of showing good cause to support an extension, but, in any
`
`event, “in view of the amount of time Respondent has had during the pendency of its motions to
`
`review and gather the materials and information responsive to Petitioner’s discovery requests,
`
`Respondent is allowed until TEN DAYS from the mailing date of this order to serve Petitioner
`
`with its written responses and related production thereto.” Id. Accordingly, Respondent was
`
`obligated to provide its written responses and document production by October 13, 2023. At that
`
`point, Respondent had already served its improper responses despite being thoroughly admonished
`
`for its counsel’s conduct in the Board’s October 3, 2023 order and, indeed, specifically instructed
`
`to meaningfully participate in its discovery obligations by providing written responses and
`
`documents in response to the Requests. (See 15 TTABVUE). Thus, after the order was issued,
`
`Petitioner’s counsel contacted Respondent’s counsel to ask whether, in light of the board’s order,
`
`whether Respondent would supplement its discovery responses. See Davis Decl., ¶¶ 14-15 Exhibit
`
`G, E-mail Correspondence.
`
`Indeed, in further correspondence with counsel, Respondent has simply rejected the
`
`Board’s characterization of its misconduct, stating “[a]nd, by the way, I disagree with TTAB that
`
`I made any ad hominem attack. I never said you are ludicrous. I said your “illustrative purpose”
`
`
`
`8
`
`

`

`counting methodology was ludicrous, and I stand by that.” See Davis Decl., ¶ 16 Exhibit H, E-
`
`mail Correspondence. This despite the Board’s clear finding that Respondent had failed to meet
`
`its duty to confer in good faith, and not only because of counsel’s ad hominem attacks, but also
`
`because Respondent failed to even attempt to understand the differences of opinion or investigate
`
`ways to resolve the dispute. (See 15 TTABVUE). Despite the fact that Petitioner has repeatedly
`
`explained its counting methodology to Respondent, most clearly by literally marking every
`
`individual compound request with a red pen and submitting it as an exhibit in opposition to
`
`Respondent’s Motion to Compel (see 12 TTABVUE Exhibit A), Respondent continues to suggest
`
`“[y]ou did not even bother to ask me how I counted, nor did you advise me as to how you counted”
`
`and “I will send you my counting methodology, instead of your “illustrative purposes”
`
`methodology. You send me yours.” See Davis Decl. at Exhibit H. As if to do the Board’s work
`
`for it and underline for the Board that Respondent’s Objections are farcical, Respondent said “[i]f
`
`I use your ‘illustrative purposes’ counting, I am sure your requests are over the allowable
`
`numbers.” (Id. (emphasis added.) Respondent has literally admitted that it has not even conducted
`
`a good faith counting of Petitioner’s Requests.
`
`When Petitioner explained that it had, in fact, already shared its counting methodology,
`
`Respondent stated, “I will take this as a request for our methodology in counting, regarding which
`
`you and I have never held a meet and confer. You never even asked about it.” See Davis Decl., ¶
`
`17, Exhibit I, E-mail Correspondence. However, that is simply not the case.—Petitioner has been
`
`requesting that Respondent to explain its counting methodology since, at least August 15, 2023,
`
`when it sent Respondent a deficiency letter about the Objections. See Davis Decl., Exhibit E,
`
`Deficiency Letter (explaining, in detail, why the Objections were without merit and clearly
`
`
`
`9
`
`

`

`motivated by bad faith.) Evidently, Respondent chose not to take this, or any of the myriad
`
`intervening opportunities to explain itself, as “a request for [its] methodology in counting.”
`
`Nearly a month and a half went by after Petitioner provided its counting methodology again
`
`and Petitioner did not receive a response from Respondent or its method for counting Petitioner’s
`
`discovery requests; therefore, Petitioner’s counsel contacted Respondent’s counsel on December
`
`5, 2023. See Davis Decl., ¶ 18, Exhibit J, E-mail Correspondence. In response, Respondent’s
`
`counsel indicated that the parties could have their meet and confer after Respondent provided its
`
`counting methodology. See Davis Decl., ¶ 19, Exhibit K.
`
`Although Respondent is represented by more than one attorney, Respondent’s counsel
`
`indicated that a medical problem was the reason for the delay in responding and recommend that
`
`the parties hold their meet and confer after the new year. See Davis Decl., ¶ 20, Exhibit L, E-mail
`
`Correspondence. Counsel for Respondent suggested a meet and confer once both parties had the
`
`chance to review their counting methodology for the opposing parties’ discovery requests. See Id.
`
`Notably, at that time, Respondent had still not provided its counting methodology for Petitioner’s
`
`discovery requests. Id. The parties finally held their second meet and confer on both parties’
`
`respective discovery requests on February 6, 2024. See Davis Decl., ¶ 21. In the meet and confer,
`
`Respondent’s counsel took every opportunity to claim that Petitioner’s objections to Respondent’s
`
`discovery requests were in bad faith and that if Petitioner could object based on exceeding the
`
`numerical limit of allotted requests, so could Respondent. See Davis Decl., ¶ 22.
`
`Petitioner has made a good faith effort to resolve this dispute with Respondent. While the
`
`parties discussed many of the discovery requests served by both parties, both Petitioner and
`
`Respondent maintained their positions that the opposing parties’ respective discovery requests
`
`were over the numerical limit provided by the Board. See Davis Decl., ¶ 23. Petitioner maintained
`
`
`
`10
`
`

`

`its objections and indicated that it would not serve additional responses to the Respondent’s
`
`discovery requests, as served. Respondent indicated that it would not serve any supplemental
`
`responses. See Davis Decl., ¶ 24. Based on the tenor and tone of discussions and correspondence
`
`so far; Petitioner believes that the parties are at an impasse and further attempts to confer would
`
`be unfruitful; therefore, Petitioner thus seeks the Board’s intervention. See Davis Decl., ¶ 25.
`
`In any event, as will be shown in greater detail below, the Objections remain without merit,
`
`clearly motivated by nothing more nuanced than a desire to retaliate against Petitioner for properly
`
`objecting to Respondent’s written discovery. Simply put, there is no conceivable way of counting
`
`Petitioner’s Requests that puts it over the limits set by Trademark Rule 2.120, subsections (d) and
`
`(e). Further, Respondent’s responses to several of the RFAs are similarly insufficient, as further
`
`discussed below.
`
`THE BOARD SHOULD COMPEL RESPONDENT TO MAKE SUBSTANTIVE
`RESPONSES TO THE REQUESTS, PRODUCE RESPONSIVE DOCUMENTS,
`AND PROVIDE SUFFICIENT RESPONSES TO THE RFAS
`
`II.
`
`
`
`A.
`
`Applicable Law: Excessive Discovery Requests.
`
`Trademark Rule 2.120, subsections (d) and (e) specify limits of 75 requests for production
`
`and interrogatories, including subparts. The Trademark Trial and Appeal Board Manual of
`
`Procedure (“TBMP”), Section 405.03(d), provides guidance with respect
`
`to counting
`
`interrogatories and document requests. “[T]he Board will count each subpart within an
`
`interrogatory as a separate interrogatory, regardless of whether the subpart is separately designated
`
`(i.e., separately numbered or lettered).” TBMP § 405.03(d) (collecting cases). To be sure, “the
`
`Board will not be bound by the propounding party’s numbering or designating system. Rather, the
`
`Board will look to the substance of the interrogatories, and count each question as a separate
`
`interrogatory.” Id. (citing Jan Bell Marketing, Inc., 19 USPQ2d at 1637. “If an interrogatory
`
`
`
`11
`
`

`

`requests information concerning more than one issue, such as information concerning both ‘sales
`
`and advertising figures,’ or both ‘adoption and use,’ the Board will count each issue on which
`
`information is sought as a separate interrogatory.” TBMP § 405.03(d).
`
`“In determining whether the number of requests for production served by one party on
`
`another exceeds the limit specified in 37 CFR. § 2.120(e), requests will be counted in the same
`
`manner as interrogatories.” TBMP § 406.05(d) (citing TBMP § 405.03(d); Miscellaneous Changes
`
`To Trademark Trial And Appeal Board Rules Of Practice, 81 Fed. Reg. 69950, 69962 (October 7,
`
`2016)).1
`
`
`
`B.
`
`The Requests Were Not Excessive By Any Conceivable Reasonable Method Of
`Counting.
`
`
`
`Respondent has certainly made good on its promise to “[p]arse words.” The Requests are
`
`easily within the limits set by Trademark Rule 2.120, subsections (d) and (e). Indeed, 37 C.F.R. §
`
`2.120, subsections (d) and (e) are ever top of mind when litigating before the Trademark Trial and
`
`Appeal Board, as these are a frequently litigated rules.
`
`
`
`Indeed, because Trademark Rule 2.120(d) was at the top of Petitioner’s counsel’s mind,
`
`Petitioner’s Interrogatories contain only 31 individual questions. Petitioner was careful to ensure
`
`that the Interrogatories are not compound in nature. For illustrative purposes, take Petitioner’s
`
`Interrogatory No. 12, which asks Respondent to “Identify each person with information concerning
`
`Respondent’s present use of Respondent’s Mark.” (Exhibit B.) By contrast, take Respondent’s
`
`own similar Interrogatory No. 1: “[1] State the full name and address of the person answering or
`
`furnishing any information for the answers to these interrogatories and [2] for each such person
`
`
`1 Most of the case law regarding counting discovery requests relates to interrogatories since, prior to the Trademark
`Rule change of 2016, interrogatories were limited to 75 and document requests and admissions were were limited to
`75. Each category of discovery is now limited to only 75, the same counting principles to each. See TBMP § 406.05(d).
`This is a development of which Respondent appears to have been unaware. (See 10 TTABVUE Exhibit D4.)
`
`
`
`12
`
`

`

`identify each interrogatory for which he/she provided information for the answer and [3] what
`
`information was provided.” It is clear that Petitioner’s Interrogatory No. 12 is asking a single
`
`question, while Respondent’s Interrogatory No. 1 is compound (asking at least three distinct
`
`questions). (See Petitioner’s Opposition to Respondent’s Motion to Compel, Exhibit A, 12
`
`TTABVUE).
`
`The RFPs and Petitioner’s own document requests tell a similar story. There are 57 requests
`
`contained in the RFPs. Because Petitioner’s counsel was aware of Rule 2.120(e), they are carefully
`
`written so as to only make a single request in each numbered request. For illustrative purposes,
`
`take Petitioner’s RFP No. 1, requesting “[a]ll documents and things which were identified or
`
`referenced in preparing Respondent’s Answer to Petitioner’s Petition for Cancellation.” By
`
`contrast, take Respondent’s own similar request for production No. 1 requesting: “[1] All
`
`Documents You referenced or identified in response to any Interrogatory, [2] all Documents You
`
`referred to or reviewed in responding to any Interrogatory, [3] and all documents that contain
`
`information supporting or relating to, arising out of, referring to, reflecting any response to any
`
`Interrogatory.” (See Petitioner’s Opposition to Respondent’s Motion to Compel, Exhibit B, 12
`
`TTABVUE). Again, it is clear that Petitioner’s RFP No. 1 make a single request, while
`
`Respondent’s is compound.
`
`Frankly, it is obvious why Respondent’s discovery requests were compound and excessive.
`
`Respondent was completely unaware of Trademark Rule 2.120, subsections (d) and (e) until the
`
`present dispute, as evidenced by, inter alia, its mistaken belief that “[t]here is no limitation on [the
`
`number of document requests]” and its statements like “[y]ou keep mentioning some rule without
`
`identifying it. What rule allows you to do that?” (TTABVUE Doc. No. 10 at D6). (See generally,
`
`
`
`13
`
`

`

`Correspondence between counsel, TTABVUE Doc. No. 10.) Whatever the reason, Respondent’s
`
`discovery requests were excessive, while Petitioner’s Requests suffer from no similar defect.
`
`Of note, Board case law explains that in disputes regarding allegedly excessive discovery
`
`requests, the parties should discuss their respective counting methods in an attempt to resolve the
`
`dispute. See Emilio Pucci International BV v. Sachdev, 118 USPQ2d 1383, 1385, 1387 (TTAB
`
`2016). Here, Respondent’s counsel informed Petitioner that “what’s good for the goose is good for
`
`the gander,” and explained that if Petitioner can make an objection as to the excessiveness of
`
`discovery requests, so could Respondent. See Davis Decl., ¶ 10. Of course, this position ignores
`
`the important matter of the merits of the parties’ contentions and Petitioner disagrees that
`
`Respondent has properly counted Petitioner’s discovery request and subparts.
`
`In light of the foregoing, Respondent should be compelled to provide substantive responses
`
`to the Requests and to produce relevant responsive documents.
`
`C.
`
`Applicable Law: Testing The Sufficiency of RFA Responses.
`
`Federal Rule of Civil Procedure 36(a)(6) (“Motion Regarding the Sufficiency of an Answer
`
`or Objection”) provides:
`
`The requesting party may move to determine the sufficiency of an
`answer or objection. Unless the court finds an objection justified, it
`must order that an answer be served. On finding that an answer does
`not comply with this rule, the court may order either that the matter
`is admitted or that an amended answer be served.
`
`See also 37 C.F.R. § 2.120(i); TBMP § 524 (“If a propounding party is dissatisfied with a
`
`responding party’s answer or objection to a request for admission, and wishes to obtain a ruling
`
`on the sufficiency thereof, the propounding party may file a motion with the Board to determine
`
`the sufficiency of the response”).
`
`If the Board, upon motion to test the sufficiency of a response to a
`request for admission, determines that an answer does not comply
`
`
`
`14
`
`

`

`with the requirements of Fed. R. Civ. P. 36(a), it may order either
`that the matter is deemed admitted or that an amended answer be
`served. If the Board determines that an objection is not justified, it
`will order that an answer be served.
`
`TBMP § 524.01.
`
`
`D.
`
`The Board Should Determine That Respondent’s Responses To The RFAs Are
`Insufficient, And Compel Respondent To Make Sufficient Responses.
`
`Respondent’s responses to the RFAs are deficient. Specifically, Respondent refused to
`
`provide responses (i.e., admit or deny) to RFA Nos. 1, 2, and 3. Respondent’s reasons for so
`
`refusing are frivolous, as are its myriad objections to various common words and phrases used in
`
`the RFAs.
`
`Egregiously, Respondent objected to the word “authentic” as being vague and ambiguous,
`
`as a basis for not responding to RFA No. 1. Notably this is a commonly use term in litigation and
`
`in discovery. RFA No. 1 simply asked Respondent to “[a]dmit that all documents and things
`
`produced in response to any discovery request in this proceeding are authentic pursuant to the
`
`Federal Rules of Evidence.” (Davis Decl., Exhibit B.) This is an extremely straightforward request,
`
`and Respondent’s response thereto suggests: (1) it has no plans to produce documents in this
`
`matter, and/or (2) simple obstinacy. In any event, Respondent’s response to RFA No. 1 is
`
`insufficient.
`
`Respondent similarly objected to the common phrases “part of the business records” or
`
`“kept in the normal course of” as a basis for not responding to RFA No. 2. See Davis Decl., Exhibit
`
`C. Respondent also objected to the terms “admissible as evidence” and “Federal Rules of
`
`Evidence” as a basis for not responding to RFA No. 3. Id. Frankly, these are elementary legal terms
`
`of art that any lawyer should be able to understand.
`
`
`
`15
`
`

`

`Likewise, Respondent unreasonably objected—also on grounds of vagueness and
`
`ambiguity—to other common and seemingly impossible-to-misinterpret terms, including but not
`
`limited to:
`
` “trademark BLACKPINK”
` “in interstate commerce”
` “indicator of source”
` “specimen of use”
`
`
`(Id.) Notably, these are all commonly used terms during the course of TTAB and Trademark Office
`
`practice. Frankly, an attorney practicing trademark law should understand the meaning of
`
`“trademark BLACKPINK,” or “indicator of source,” or “specimen of use.”
`
`When, as is the case here, a party responding to discovery speciously objects on the basis
`
`of vagueness and ambiguity of a clearly defined or easily understood term, an answer may be
`
`compelled. See, e.g., Gross v. Guzman, No. 11-23028, 2013 U.S. Dist. LEXIS 200100, at *24
`
`(S.D. Fla. Jan. 25, 2013) (finding objections that the term “Gross’ Mark” was vague, ambiguous
`
`specious and ordering plaintiff to answer requests for admission); see also Payless Shoesource
`
`Worldwide, Inc. v. Target Corp., No. No. 05-4023, 2007 U.S. Dist. LEXIS 47918, at *44-45 (D.
`
`Kan. June 29, 2007) (overruling defendants’ objections that terms of document request were
`
`“vague and ambiguous” where defendants failed to “exercise reason and common sense to attribute
`
`ordinary definitions to terms and phrases utilized”).
`
`Therefore, it is respectfully submitted that Respondent’s responses to the RFAs are
`
`insufficient, and Petitioner requests that the Board issue an order compelling Respondent to
`
`provide sufficient responses to the RFAs, including, but not limited to, RFA Nos. 1 to 12, 14, and
`
`22 to 24.
`
`
`
`
`
`
`
`16
`
`

`

`III. CONCLUSION
`
`The Requests do not e