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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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`May 9, 2024
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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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`Mary Beth Myles, Interlocutory Attorney:
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`This proceeding now comes before the Board for consideration of Petitioner’s
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`combined motion (filed February 7, 2024) to compel discovery responses and test the
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`sufficiency of Respondent’s responses to requests for admission. The motion is fully
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`briefed.
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`As an initial matter, in its reply brief, Petitioner states that, notwithstanding
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`Respondent’s signed certificate of service attached to its response brief, Petitioner
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`was not, in fact served with a copy of the brief. 24 TTABVUE 3-5.1 Petitioner argues
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`that the Board should not consider Respondent’s brief in response to the motion,
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`because it was not served as required by Trademark Rule 2.119(a). Id. At this
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`juncture, the Board accepts Respondent’s signed certificate of service as prima facie
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`1 Citations to the record or briefs in this order include citations to the publicly available
`documents on the Board’s electronic docketing system, TTABVUE. The number preceding
`“TTABVUE” corresponds to the docket entry number; the number(s) following “TTABVUE”
`refer to the page number(s) of that particular docket entry, if applicable.
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`Cancellation No. 92081622
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`proof of service and considers Respondent’s response brief. See Trademark Rule
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`2.119(a), 37 C.F.R. § 2.119(a). Nevertheless, the Board may refuse to consider any
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`future filing if it is not served in compliance with Trademark Rule 2.119 and
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`Respondent is advised that where proof of service is rebutted by other evidence, the
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`Board may require submission of an affidavit establishing proof of service. Cf. S.
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`Indus. Inc. v. Lamb-Weston Inc., 45 USPQ2d 1293, 1295 (TTAB 1997).
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`I.
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`Petitioner’s Combined Motion to Compel and Test the Sufficiency
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`The Board has considered the parties’ briefs on the contested motion, but does not
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`repeat or discuss all of their arguments, except as necessary to explain the Board’s
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`order. Guess? IP Holder LP v. Knowluxe LLC, 116 USPQ2d 2018, 2019 (TTAB 2015).
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`Petitioner’s combined motion is timely inasmuch as it was filed prior to the day of
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`the deadline for Petitioner’s pretrial disclosures. See Trademark Rule 2.120(f)(1). As
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`a threshold matter, however, the Board will evaluate whether Petitioner has satisf ied
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`its obligation under Trademark Rule 2.120(f)(1) to make a good faith effort to resolve
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`the discovery dispute herein prior to seeking Board intervention.
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`By way of background, Petitioner served its first set of interrogatories, document
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`requests, and requests for admission on Respondent on June 1, 2023. 20 TTABVUE
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`22, 26-56. Respondent served its responses to Petitioner’s requests for admission on
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`June 29, 2023. Id. at 22, 58-65. On July 27, 2023, Respondent served a general
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`objection to both Petitioner’s interrogatories and document requests on the ground
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`that the requests exceeded the 75 number limitation of Trademark Rule 2.120(d) and
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`2
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`Cancellation No. 92081622
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`(e).2 Id. at 22, 67-77. On August 15, 2023, Petitioner sent Respondent a letter
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`detailing perceived deficiencies in Re spondent’s responses and objections to the
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`requests for admission and contesting Respondent’s counting of the interrogatories
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`and document requests. Id. at 22, 79-82. Counsel for the parties held a telephone
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`conference on September 5, 2023 regarding the counting of interrogatories and
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`document requests. Id. at 22. The parties’ counsel then exchanged numerous emails
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`and held another telephone conference on February 6, 2024 regarding Respondent’s
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`objections to the interrogatories and document requests. Id. at 22-24, 89-134. In its
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`response brief, Respondent states that the parties’ counsel did not discuss the
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`requests for admission at any time during the telephone conferences. 23 TTABVUE
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`6-7. In its reply brief, Petitioner acknowledges that the parties did not discuss the
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`requests for admission, but contends that the failure to address the requests for
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`admission was the result of Respondent’s counsel’s conduct, who was allegedly
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`“uncooperative to the point that RFAs could not be discussed… .” 24 TTABVUE 3.
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`While Petitioner raised the issue of the requests for admission in a letter, the
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`parties never had a discussion regarding the responses or objections. A single letter
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`regarding the requests for admission is insufficient to meet the good faith effort
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`requirement. See Hot Tamale Mama…and More, LLC v. SF Investments, Inc., 110
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`USPQ2d 1080, 1081-82 (TTAB 2014). The purpose of the good faith effort requirement
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`is to “promote a frank exchange between counsel to resolve issues by agreement or to
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`2 Petitioner filed a motion to extend its time to respond to Respondent’s discovery requests
`on June 27, 2023. 11 TTABVUE. The Board denied Respondent’s motion to extend in its
`October 3, 2023 order, but found that the denial of the motion to extend would n ot operate as
`a waiver of objections for Respondent. 15 TTABVUE 8.
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`3
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`Cancellation No. 92081622
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`at least narrow and focus the matters in controversy before judicial resolution is
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`sought.” Amazon Tech., Inc. v. Wax, 93 USPQ2d 1702, 1705 (TTAB 2009), quoting
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`Dondi Properties Corp. v. Commerce Savings and Loan Ass’n, 121 F.R.D. 284, 289
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`(N.D. Tex. 1988) (construing a local rule less demanding than Trademark Rule
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`2.120(f)(1)). Inasmuch as the parties never had a substantive discussion regarding
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`the responses to Petitioner’s requests for admission, the Board finds that Petitioner
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`has failed to satisfy the good faith effort requirement with respect to the requests for
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`admission and Petitioner’s motion to test the sufficiency of Respondent’s responses to
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`requests for admission is denied, without prejudice.3
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`The Board finds, however, that Petitioner made a sufficient good faith effort to
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`resolve the parties’ dispute regarding the numbering of Petitioner’s interrogatories
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`and document requests prior to filing its motion to compel. The Board therefore
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`considers the motion to compel Respondent’s responses to Pe titioner’s interrogatories
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`and document requests.
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`The total number of interrogatories or document requests must not exceed 75
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`each, including subparts. Trademark Rules 2.120(d) and (e). See also One Jeanswear
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`Grp. Inc. v. Yogaglo, Inc., 127 USPQ2d 1793, 1795 (TTAB 2018) (citing Kellogg Co. v.
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`Nugget Distrib. Coop. of Am. Inc., 16 USPQ2d 1468, 1469 (TTAB 1990). The Board is
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`not bound by the serving party’s numbering, but instead considers “the substance of
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`each [request] to identify whether it actually asks multiple distinct questions (e.g.,
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`3 Notwithstanding the foregoing, Respondent is reminded that is required to make a good
`faith effort to meet the discovery needs of its adversary and to cooperate in the discovery
`process with courtesy and decorum. See Panda Travel Inc. v. Resort Option Enters., Inc., 94
`USPQ2d 1789, 1791 (TTAB 2009). See also Trademark Rule 2.192.
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`4
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`Cancellation No. 92081622
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`sales figures and advertising figures), in which case each question is counted as a
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`separate [request], or whether it asks a single question, or all relevant facts and
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`circumstances concerning a single issue, applicable to all pleaded marks or all
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`asserted goods and services (such as, sales figures for each of a party’s marks for
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`multiple years), in which case it is counted as a single [request].” One Jeanswear Grp.
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`Inc., 127 USPQ2d at 1796 (citing Jan Bell Mktg., Inc. v. Centennial Jewelers, Inc., 19
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`USPQ2d 1636, 1637 (TTAB 1990)).
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`Respondent’s brief in response to the motion to compel is largely unhelpful,
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`because it fails to address the issues raised in Petitioner’s motion to compel in any
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`meaningful manner. Respondent has done little to explain its basis for objecting to
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`the requests as exceeding the 75-limitation of Trademark Rules 2.120(d) and (e),
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`apart from Respondent’s vague assertion that Respondent was employing “the same
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`counting methodology” as Petitioner by counting each request separated by commas
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`or regarding the “trademarks” as separate requests. 23 TTABVUE 5. Nor has
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`Respondent explained its counting methodology, identified which of Petitioner’s
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`requests purportedly contain subparts, or explained how each category of requests
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`purportedly exceeds 75. Rather, Respondent devotes the majority of its brief to re -
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`arguing its own previously denied motion to compel and Petitioner’s objections to
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`Respondent’s discovery requests. These issues are not before the Board and any
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`arguments that the parties purportedly use the “same” counting methodology for non-
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`identical discovery requests is entirely unavailing and unpersuasive .
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`5
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`Cancellation No. 92081622
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`Upon review, the Board finds that Petitioner’s interrogatories and document
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`requests, including subparts, are each below the 75 number limitation of Trademark
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`Rules 2.120(d) and (e). Respondent’s failure to support its objections, explain its
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`counting methodology, or provide any legal citation or support for its position is
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`concerning and suggests Respondent’s objections were not made in good faith. Indeed,
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`very few of Petitioner’s requests even arguably contain subparts and, “under no
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`counting method do the [requests] served exceed seventy-five in number, including
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`subparts.” Emilio Pucci Inter’l BV v. Sachdev, 118 USPQ2d 1383, 1387 (TTAB 2016)
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`(finding Applicant’s motion for a protective order “troubling” because it contained no
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`legal citations or arguments). In particular, requests seeking information concerning
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`“Petitioner’s Marks” are not counted as separate requests; rather a request
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`“applicable to all pleaded marks” is counted as a single request. One Jeanswear Grp.
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`Inc., 127 USPQ2d at 1796.
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`Accordingly, Petitioner’s motion to compel is granted to the extent that
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`Respondent must serve, within thirty days of the date of this order, responses to
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`Petitioner’s first set of interrogatories and document requests. 4
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`The parties are required to make a good faith effort to meet and confer in a
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`substantive, meaningful, and respectful manner on any outstanding discovery
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`disputes before either party may file any further motions to compel.
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`II.
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`Schedule
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`Proceedings are resumed. Dates are reset as follows:
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`4 The Board’s review of the requests for purposes of the motion to compel is limited to a
`determination as to whether the interrogatories or document requests exceed 75.
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`6
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`Cancellation No. 92081622
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`6/12/2024
`Expert Disclosures Due
`7/12/2024
`Discovery Closes
`8/26/2024
`Plaintiff's Pretrial Disclosures Due
`10/10/2024
`Plaintiff's 30-day Trial Period Ends
`10/25/2024
`Defendant's Pretrial Disclosures Due
`12/9/2024
`Defendant's 30-day Trial Period Ends
`12/24/2024
`Plaintiff's Rebuttal Disclosures Due
`1/23/2025
`Plaintiff's 15-day Rebuttal Period Ends
`3/24/2025
`Plaintiff's Opening Brief Due
`4/23/2025
`Defendant's Brief Due
`5/8/2025
`Plaintiff's Reply Brief Due
`Request for Oral Hearing (optional) Due 5/18/2025
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`Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
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`taken and introduced out of the presence of the Board during the assigned testimony
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`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, the
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`manner and timing of taking testimony, matters in evidence, 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. Trial briefs shall be
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`submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
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`final hearing will be scheduled only upon the timely submission of a separate notice
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`as allowed by Trademark Rule 2.129(a).
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`TIPS FOR FILING EVIDENCE, TESTIMONY, OR LARGE DOCUMENTS
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`The Board requires each submission to meet the following criteria before it will be
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`considered: 1) pages must be legible and easily read on a computer screen; 2) page
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`orientation should be determined by its ease of viewing relevant text or evidence, for
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`example, there should be no sideways or upside-down pages; 3) pages must appear in
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`7
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`Cancellation No. 92081622
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`their proper order; 4) depositions and exhibits must be clearly labeled and numbered
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`– use separator pages between exhibits and clearly label each exhibit using sequential
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`letters or numbers; and 5) the entire submission should be text -searchable.
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`Additionally, submissions must be compliant with Trademark Rules 2.119 and 2.126.
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`Submissions failing to meet all of the criteria above may require re -filing. Note:
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`Parties are strongly encouraged to check the entire document before filing. 5 The
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`Board will not extend or reset proceeding schedule dates or other deadlines to allow
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`time to re-file documents. For more tips and helpful filing information, please visit
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`the ESTTA help webpage.
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`5 To facilitate accuracy, ESTTA provides previews of each page before submitting.
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`8
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