ESTTA Tracking number:
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`ESTTA1346428
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`Filing date:
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`03/15/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`92081622
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`Party
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`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Attachments
`
`Plaintiff
`YG Entertainment Inc.
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`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
`
`Reply in Support of Motion
`
`Govinda M. Davis
`
`govinda.davis@dinsmore.com
`
`/Govinda M. Davis/
`
`03/15/2024
`
`YG Entertertainment v SM Beauty - YG Reply ISO Motion to Com-
`pel.pdf(521970 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
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`YG Entertainment, Inc.,
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`v.
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`SM Beauty, LLC,
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`Petitioner,
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`Respondent.
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`In the matter of:
`Registration No.: 5376449
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`For the mark: BLACKPINK
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`Cancellation No.: 92081622
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`)
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`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO COMPEL DISCOVERY AND
`TEST THE SUFFICIENCY OF RESPONDENT’S RESPONSES TO REQUESTS FOR
`ADMISSION
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`Petitioner YG Entertainment, Inc. (“Petitioner”) respectfully submits this Reply in Support of its
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`Motion to Compel and Test the Sufficiency of Respondent SM Beauty, LLC’s (“Respondent”) Discovery
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`Responses (“Motion”). In its brief in opposition to the Motion (“Opposition Brief”), Respondent rehashes
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`its position in regards to its own previously denied Motion to Compel, and fails to challenge the merits of
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`Petitioner’s Motion or to justify any of Respondent’s baseless objections to Petitioner’s discovery requests.
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`Notably, the Board recently denied Respondents’ request to file a counter-motion to compel, (see 22
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`TTABVUE), since the proceeding was suspended to all matters not germane to Petitioner’s Motion.
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`Nevertheless, the Opposition Brief merely attempts to rehash arguments already disregarded by the Board
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`in Respondent’s initial Motion to Compel, (see 15 TTABVUE), and also is an improper attempt to assert
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`arguments that Respondent would have asserted in a counter-motion to compel, which the Board has
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`already deemed procedurally improper, (see 22 TTABVUE).
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`Without citing a single rule in the Trademark Manual of Board Procedure (“TBMP”), the Federal
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`Rules of Civil Procedure, or the Trademark Rules, Respondent insists that whatever basis Petitioner had for
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`objecting to Respondent’s excessive discovery requests, it should be allowed to object to Petitioner’s
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`requests. Respondent spends the majority of the Opposition Brief characterizing objections Petitioner raised
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`to Respondent’s discovery requests, and Respondent spends no time explaining how the same objections
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`are applicable in response to Petitioner’s requests. Indeed, Respondent’s only argument is that “if
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`Petitioner’s objections are acceptable, so are Respondent’s.” 23 TTABVUE 5. This has simply been
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`Respondent’s war cry from the beginning – without any analysis or application of the rules to the situation
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`at hand. Thus, in its Opposition Brief, Respondent fails to explain how Petitioner’s discovery requests are
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`excessive, and when the parties have held multiple unfruitful met and confers on this issue without being
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`able to reach a resolution, the Board should compel compliance with the discovery obligations.
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`Further, Respondent failed to admit or deny several Requests for Admissions (“RFAs”) and
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`Petitioner outlined these deficiencies in its August 15, 2023 deficiency letter, (see 20 TTABVUE at Exhibit
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`E), and a good faith exchange on the RFAs could not be had when ad hominem attacks were persistently
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`lobbed against Petitioner and its counsel. When Respondent was sidetracked by its meritless counting
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`objections during all meet and confers and remained uncooperative to the point that RFAs could not be
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`discussed, the Board should also test the sufficiency of Respondent’s Responses to the Requests for
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`Admissions.
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`I.
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`The Board Should Disregard Respondent’s Opposition Brief Because Respondent Failed to
`Serve Petitioner with a Copy of the Brief.
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`At the outset, the Board should consider Respondent’s failure to serve its Opposition Brief as a
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`basis for completely disregarding Respondent’s Brief. “[E]very submission filed in the Office in inter partes
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`cases … must be served upon the other party or parties. Proof of such service must be made before the
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`submission will be considered by the Office.” Trademark Rule § 2.119; see also TBMP §§ 113; 502.02(a).
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`The Board need not consider submissions when proper service is not made or when the proof of such service
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`is not provided. See, e.g., Hewlett-Packard Co. v. HopOne Internet Corp., 2001 TTAB LEXIS 791, n. 2
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`(TTAB Nov. 2, 2001) (“[B]ecause the reply is not accompanied by proof of service on counsel for opposer
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`as required by Trademark Rule 2.119 … it will not be considered by the Board….[S]trict compliance with
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`Trademark Rule 2.119 is required in all further papers filed with the Board.”) (emphasis added). Although
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`Respondent includes a Certificate of Service claiming its Opposition was served on Petitioner’s counsel via
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`email on February 26, 2024, this is false.
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`2
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`The Board should consider sanctioning Respondent by at least disregarding its Opposition Brief
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`when Respondent has previously failed to forward service copies in accordance with the Trademark Rules.
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`Although Trademark Rule 2.119 establishes that a signed certificate of service filed with a paper is prima
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`facie proof of service, this proof is undermined when a party repeatedly fails to forward service copies in
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`spite of its attestations in the certificates of service. See Patagonia, Inc. v. Azzolini, 2014 TTAB LEXIS 36,
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`at *4 (TTAB Feb. 28, 2014) Notably, Respondent failed to serve copies of both the Opposition Brief, (23
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`TTABVUE), and its Motion for Leave to File a Motion to Compel, (21 TTABVUE), on Petitioner. In fact,
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`the Board has granted default as a sanction when a party failed to meet certain discovery and procedural
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`obligations, including failing to provide service copies because “any sanction short of judgment would be
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`futile and unfair to petitioner, which brought this case well over a year ago and has been unable, despite
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`diligent efforts, to move it forward, due to respondent’s intransigence.” Id. at *14. When Petitioner is
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`similarly not able to move forward with its case brought over a year ago despite its diligent efforts because
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`Respondent continues to skirt the Trademark Rules, a sanction of disregarding the Opposition Brief, at
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`least, or an order of default judgement, at most, should be considered.
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`Notably, while the Board rejected Respondent’s previous motion to compel on the merits and not
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`based on the lack of service, the Board had to direct Respondent to “independently research” the Trademark
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`Rules after Respondent’s counsel has repeatedly taken the same cavalier attitude towards multiple rules of
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`practice before the TTAB. (See 15 TTABVUE 5). When the Board has already warned Respondent that its
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`derisive and dismissive tone is “potentially violative of Trademark Rule 2.192, 37 C.F.R. § 2.192, which
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`requires parties and their attorneys to conduct their business with decorum and courtesy” (see 15
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`TTABVUE), Respondent’s failure to comply with the Trademark Rules (and related antagonism of
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`Petitioner’s counsel) should not be tolerated. The Board should make clear that the Trademark Rules, on
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`service or otherwise, are not reserved for the “initiated few”, but are an expectation for all those who
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`practice or file before the Board. Respondent has violated Trademark Rule 2.119 and thus Respondent
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`should be sanctioned by at least having its Opposition Brief disregarded. See, e.g., Schott AG v. L’Wren
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`Scott, 2008 TTAB LEXIS 49, at n. 3 (TTAB Nov. 13, 2008) (“Actual forwarding of the service copy,
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`3
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`however, is the responsibility of the filer, as the ESTTA system does not effect service for the filer.”)
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`(emphasis added); Rickson Gracie, LLC v. Gracie, 2003 TTAB LEXIS 514, at n. 2 (TTAB June 20, 2003)
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`(“[S]trict compliance with Trademark Rule 2.119 is required in all further papers filed with the Board and
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`further papers filed herein without such proof of service will not be considered.”) (emphasis added).
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`II.
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`The Board Should Compel Respondent to Supplement its Discovery Responses and
`Production When Respondent Fails to Identify Any Violation of the Relevant Rules.
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`Additionally, Petitioner’s Motion should be granted when Respondent fails to provide a counting
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`of the discovery requests it claims to be excessive, and when Respondent instead only describes
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`Petitioner’s methodology in counting Respondent’s discovery requests. The one portion of the
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`Opposition Brief in which Respondent addresses any counting involves a discussion of only Petitioner’s
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`methodology (based on an insistence that Petitioner’s objections necessarily may be copied by Respondent,
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`regardless of differences in their respective discovery requests):
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`[I]f Petitioner’s objections are acceptable, so are Respondent’s. Brazenly, Petitioner argues that
`the same rule and counting methodology used by both parties should be unacceptable if used by
`Respondent, but acceptable if used by Petitioner. There are three types of counting methodology
`that Petitioner used: (1) Petitioner claims that any time a disjunction or a conjunction of a comma
`is used, a request can be parsed out, and normal, customary requests can be turned into hundreds
`of different requests. (2) There are 4 trademarks at issue, 3 for Petitioner and 1 for Respondent. So
`if Respondent asks about communications between the parties regarding those trademarks,
`Petitioner turns that request into 4 separate requests. Using that very same methodology alone,
`Petitioner’s interrogatories and document requests exceed 75. (3) Respondent made a request about
`the allegations based on Petitioner’s “information and belief”. Apparently, Petitioner made such
`allegations in 42 paragraphs of the Petition. Therefore, Petitioner counts that one request as 42
`separate requests. That is how Petitioner claims it could take requests well under 75 to fashion
`more than 75, and as counsel for Petitioner boasted and threatened, she could create hundreds of
`requests out of any normal sets of requests. Petitioner drafts the Petition. If Petitioner drafted such
`“upon information and belief” allegations in 76 separate paragraphs, and Respondent made one
`discovery request about them, Petitioner can fashion it into 76 separate requests and absolutely
`stonewall Respondent. That is what Respondent means by Petitioner’s bad faith gamesmanship.
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`(23 TTABVUE 5) (emphasis added).
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`Respondent’s insistence on rehashing its claims of bad faith in regards to Petitioner’s objections
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`to Respondent’s discovery requests rather than addressing its own objections only further supports the
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`conclusion that Respondent’s objections were brought based on retaliation rather than merit. When
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`Petitioner brings this improper motive of retaliation to the Board’s attention, Respondent disingenuously
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`4
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`retorts that Petitioner wants to apply a rule while preventing Respondent from invoking the same rule. Yet,
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`Respondent does not once cite Trademark Rule 2.120, subsections (d) and (e), or any authority at all in the
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`Opposition Brief, but Petitioner raises no issue with Respondent’s ability to invoke Trademark Rule 2.120
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`but instead with Respondent’s failure to provide any explanation as to how Petitioner’s discovery requests
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`violate this rule.1
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`Further, Respondent’s objections and Opposition Brief indicate bad faith when Respondent has
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`made at least three inaccurate statements in order to discredit Petitioner. First, in addition to improperly
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`focusing on Petitioner’s methodology rather than its own, Respondent also inaccurately characterizes
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`Petitioner’s methodology in order to sully Petitioner’s reputation with the Board. Respondent insists that
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`Petitioner considered every conjunction and comma and parsed out Petitioner’s discovery requests to an
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`exorbitant degree in order to conclude Respondent’s requests were excessive (23 TTABVUE 5), yet
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`Petitioner displayed a thoughtful approach to counting and it was actually Respondent that offered inane
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`bases for breaking down its own requests in an attempt to undermine Petitioner’s objections. See, e.g., 23
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`TTABVUE Exhibit A (“You took a simple Rog seeking identity of a person(s) who gave you information
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`to answer the Rogs and parsed it into 3 Rogs, but when I pointed out that you could have turned it into
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`many more – because the Rog seeks not only name, but also address, and not only seeks the person
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`answering but also furnishing information, etc. Amazingly, you agreed.”) (emphasis added). In other words,
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`Petitioner not only provided a counting method but provided one that was reasonable and that did not exceed
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`the bounds of what Respondent even considered to be possible ways to parse its own requests, while
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`Respondent has failed to provide any counting method.
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`1 When Petitioner brings the Board’s attention to Respondent’s baseless objections to a number of words and phrases
`in Petitioner’s discovery requests that are common in trademark cases, Respondent half-heartedly retorts that
`“indicator of source” is “not so clear” because “[t]he Supreme Court recently made a ruling on indicator of source.”
`(see 23 TTABVUE 6). Respondent neither cites nor describes the purported Supreme Court case any further, and this
`unsubstantiated reference to some unidentified case law is the closest Respondent comes anywhere in its Opposition
`Brief to any citation to authority. Notably, Respondent’s only exhibit relates to Petitioner’s objections to
`Respondent’s requests. The Board should not take kindly to Respondent’s lack of legal or factual support for any of
`its claims.
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`5
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`Second, although the Motion seeks to comply with responses to Petitioner’s discovery requests,
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`Respondent repeatedly claimed that it was never provided a counting method for Petitioner’s objections to
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`Respondent’s discovery requests and thus Petitioner would not provide a counting method for requests
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`propounded on it. This reasoning implies that Respondent planned to merely borrow Petitioner’s counting
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`method rather than independently count Petitioner’s discovery requests. Nevertheless, this claim is false
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`because Petitioner long provided its counting method. In fact, Petitioner went as far as identifying each of
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`Respondent’s separate requests, providing a document enumerating each separate request as an exhibit in
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`its opposition to Respondent’s Motion to Compel. (See 12 TTABVUE Exhibit A). Respondent is displaying
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`bad faith in now claiming to have never received a count when Petitioner even pointed Respondent to the
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`public and served court filings including the exhibit, and attached another courtesy copy. (See 22
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`TTABVUE Exhibit I) (“Petitioner provided its counting methodology in opposition to Respondent’s motion
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`to compel, which was filed with the TTAB on July 3, 2023. We have attached the exhibits here for your
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`convenience. We look forward to receiving a counting methodology from Respondent to facilitate a
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`meaningful meet and confer.”
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`In contrast, Respondent’s counsel all but admitted that Respondent, on the other hand, had not
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`counted Petitioner’s requests before lodging its improper objections:
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`I will send you my counting methodology, instead of your “illustrative purposes” methodology.
`You send me yours. Then we can have a meet and confer to go over how you counted and how I
`counted. If I use your “illustrative purposes” counting, I am sure your requests are over the
`allowable numbers, and since you believe your “illustrative purposes” counting was in good faith,
`no doubt what is good for the goose is good for the gander using the same methodology you used.
`In other words, you cannot use your “illustrative purposes” counting methodology to count ours,
`but somehow exempt yours from the same methodology.
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`(See id. at October 12, 2023 Email) (emphasis added). It appears that Respondent’s counsel planned to use
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`Petitioner’s methodology that was tailored to Respondent’s requests and blindly apply it to Petitioner’s
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`requests, and the Board should thwart these dilatory actions.
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`Third, although Respondent suggests that its first time being asked for its counting method was
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`December 5, 2023, the reality is that the parties’ counsel discussed Respondent providing its method for
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`counting Petitioner’s discovery requests months earlier. In fact, Respondent’s counsel offered to provide
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`its counting, leaving no reason for Petitioner’s counsel to ask for what Respondent’s counsel committed to
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`providing. Indeed, Respondent’s counsel stated “I will send you my counting methodology” and proposed
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`“a written exchange of counting methodology and then we can hold a meet and confer” on October 12,
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`2023. (See 22 TTABVUE at Exhibit K). Respondent’s counsel even confirmed multiple times that the
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`parties had met and conferred on this issue (though critiquing the substantive discussion during the
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`meetings). (See 22 TTABVUE Exhibit K) (Respondent’s counsel explaining that he hoped “the meet and
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`confer is more efficient and not a waste of time like the last one in which you articulated different
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`standards” and alluding to purported disagreement on counting methods in regards to the parties’ respective
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`requests). Thus, any claim that the parties had not discussed counting methods until December is patently
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`false when the parties had exchanged multiple communications and met and conferred, and when
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`Respondent’s counsel himself committed to providing a method months earlier.
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`Ultimately, the Board should compel Respondent to supplement its responses to Petitioner’s
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`document requests and interrogatories when Respondent’s objections to Petitioner’s discovery requests
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`were unwarranted and merely lodged to retaliate against Petitioner for properly objecting to Respondent’s
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`interrogatories and requests for documents since such requests exceeded the number of requests required
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`by the rules. (15 TTABVUE 5) (“Respondent failed to engage in a good faith effort to resolve the parties’
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`counting dispute… in its failure to offer or explain its own counting methodology other than to simply stand
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`firm on its own count based on how it chose to enumerate its discovery requests.”).
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`III.
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`The Board Should Test the Sufficiency of Respondent’s Responses to the RFAs When
`Respondent Has Failed to Admit or Deny Several Requests and Respondent Made a Good
`Faith Exchange Impossible.
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`The Board should test the sufficiency of the RFAs when Respondent’s only argument in opposition
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`is to challenge whether the meet and confer efforts were sufficient, but Respondent’s ad hominem attacks
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`and demeanor made any good faith exchanges on the RFAs impossible. “Clearly, a good faith exchange
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`cannot be had when ad hominem attacks are being persistently lobbed at the other party during the
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`course of the discovery dispute. Constantly repeating that Petitioner’s position on the issue is ‘ludicrous’
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`and ‘outrageous’ and made ‘in bad faith’ does not make it so, and such attacks are counterproductive,
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`unnecessary, and potentially violative of Trademark Rule 2.192, 37 C.F.R. § 2.192, which requires parties
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`and their attorneys to conduct their business with decorum and courtesy.” (See 15 TTABVUE 4).
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`In spite of the fact that the Board’s October 3, 2023 order admonished Respondent’s counsel for
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`calling Petitioner’s positions “ludicrous” and other inflammatory descriptions, (see 15 TTABVUE 4),
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`Respondent’s counsel chose to double down and to continue to incite conflict between the parties well after
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`the Board issued its order. (See 22 TTABVUE at Exhibit L) (“And, by the way, I disagree with TTAB that
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`I made any ad hominem attack. I never said you are ludicrous. I said your “illustrative purpose” counting
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`methodology was ludicrous, and I stand by that.”) (emphasis added). When Respondent’s counsel’s more
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`recent correspondence and conversations with Petitioner’s counsel includes similar attacks, it is impossible
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`to have good faith exchanges with Respondent’s counsel. Indeed, the Board made clear that these repeated
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`inflammatory attacks on Petitioner’s position, not just its counsel, could violate the Trademark Rules and
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`would not be tolerated. (15 TTABVUE 4).
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`With the context of Respondent’s counsel still seeking to revisit arguments discussed in order that
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`was previously decided by the Board’s order, it was impossible for Petitioner to engage Respondent in good
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`faith exchanges, specifically on the RFAs.2 Petitioner’s August 15, 2023, deficiency letter to Respondent
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`did cite several deficiencies in the RFAs, (see 22 TTABVUE at Exhibit E), but it was impossible for the
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`various conversations between the parties to reach any issues beyond Respondent’s improper, incessant and
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`unsubstantiated objections on the number of Petitioner’s interrogatories and document requests. Ultimately,
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`when many of Respondent’s claims that terms were ambiguous did not justify Respondent’s failure to admit
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`or deny requests, the Board should test the sufficiency of Respondent’s responses. See, e.g., Payless
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`Shoesource Worldwide, Inc. v. Target Corp., No. 05-4023, 2007 U.S. Dist. LEXIS 47918, at *44-45 (D.
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`Kan. June 29, 2007) (overruling “vague and ambiguous objections” because a party must “exercise reason
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`and common sense to attribute ordinary definitions to terms and phrases utilized”); see also 37 C.F.R. §
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`2 Although not at issue in the Motion, Petitioner does note that Respondent’s requests for admissions did not appear
`to surpass the numerical limit set by the Board and Petitioner did serve substantive responses to the same.
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`8
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`2.120(i); TBMP § 524; Fed. R. Civ. P. 36(a). Therefore, an order testing the sufficiency of such responses
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`is warranted.
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`IV. Conclusion
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`For the foregoing reasons, the Board should grant Petitioner’s Motion. Respondent should be
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`compelled to supplement its responses to Petitioner’s First Set of Interrogatories and Document Requests
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`when it has not substantiated its objection to the number of the requests and when the parties have met and
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`conferred and are unable to reach a resolution. The Board should test the sufficiency of Respondent’s
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`responses to Petitioner’s First Set of Requests for Admissions when Respondent has failed to admit or deny
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`a number of requests and Respondent’s counsel’s antagonism during the parties’ exchanges shows that
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`meet and confers on the issue would be futile.
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`Dated: March 15, 2024
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`Respectfully submitted,
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`/s/ Govinda M. Davis/
`Govinda M. Davis
`Dinsmore & Shohl LLP
`255 E. Fifth Street
`Suite 1900
`Cincinnati, OH 45202
`govinda.davis@dinsmore.com
`Counsel for YG Entertainment, Inc.
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`9
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing REPLY IN SUPPORT OF
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`PETITIONER’S MOTION TO COMPEL DISCOVERY AND TEST THE SUFFICIENCY OF
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`RESPONDENT’S RESPONSES TO REQUESTS FOR ADMISSIONS has been served upon the
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`following by e-mail this 15th day of March, 2024:
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`Sang Lee
`Law Offices Of Sang Lee
`505 E Golf Rd Ste H
`Arlington Heights, IL 60005
`slee000@aol.com
`softbeeus@gmail.com,
`jlee@leebreenlaw.com,
` mlee@leebreenlaw.com
`
`
`
`John Y. Lee
`Lee & Breen LLC
`188 Industrial Drive,
`Suite 403 Elmhurst, IL 60126
`jlee@leebreenlaw.com
`
`
`
`
`/Govinda M. Davis/
`
`Govinda M. Davis
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`Attorney for YG Entertainment, Inc.
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`10
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