ESTTA Tracking number:
`
`ESTTA1370802
`
`Filing date:
`
`07/12/2024
`
`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
`
`Defendant
`SM Beauty, LLC
`
`SANG LEE
`LAW OFFICES OF SANG LEE
`505 E GOLF RD STE H
`ARLINGTON HEIGHTS, IL 60005
`UNITED STATES
`Primary email: slee000@aol.com
`Secondary email(s): softbeeus@gmail.com, jlee@leebreenlaw.com,
`mlee@leebreenlaw.com
`847-208-8617
`
`Other Motions/Submissions
`
`JOHN Y LEE
`
`jlee@leebreenlaw.com
`
`/s/ JOHN Y LEE
`
`07/12/2024
`
`RESPONDENT WRITTEN DEPOSITION QUESTIONS TO RULE 30 b6 DE-
`SIGNEE and N otice of Dep.pdf(272450 bytes )
`RESPONDENT WRITTEN DEPOSITION QUESTIONS TO MS. MIRAE KIM and
`Notice of Dep .pdf(201926 bytes )
`
`
`
`ESTTA1370802
`
`Filing date:
`
`07/12/2024
`
`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
`
`Defendant
`SM Beauty, LLC
`
`SANG LEE
`LAW OFFICES OF SANG LEE
`505 E GOLF RD STE H
`ARLINGTON HEIGHTS, IL 60005
`UNITED STATES
`Primary email: slee000@aol.com
`Secondary email(s): softbeeus@gmail.com, jlee@leebreenlaw.com,
`mlee@leebreenlaw.com
`847-208-8617
`
`Other Motions/Submissions
`
`JOHN Y LEE
`
`jlee@leebreenlaw.com
`
`/s/ JOHN Y LEE
`
`07/12/2024
`
`RESPONDENT WRITTEN DEPOSITION QUESTIONS TO RULE 30 b6 DE-
`SIGNEE and N otice of Dep.pdf(272450 bytes )
`RESPONDENT WRITTEN DEPOSITION QUESTIONS TO MS. MIRAE KIM and
`Notice of Dep .pdf(201926 bytes )
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`Cancellation No. 92081622
`
`Mark: BLACKPINK
`
`Reg. No.5376449
`
`
`
`
`
`
`
`
`YG ENTERTAINMENT INC.,
`
` Petitioner,
`
` vs.
`
` SM BEAUTY, LLC,
`
` Respondent.
`
`
`
`Commissioner for Trademarks
`
`P.O Box 1451
`
`Alexandria, VA 22313-1451
`
`To: Arlene L. Boruchowitz
` Arlene.Boruchowitz@DINSMORE.COM
` Dinsmore & Shohl LLP
` 191 West Nationwide Blvd Suite 200
` Columbus, OH 43215
`
`
`RESPONDENT’S NOTICE
`OF RULE 30(b)(6) DEPOSITION OF YG ENTERTAINMENT INC
`
`Please take note that under Federal Rule of Civil procedure 30(b)(6) and 31, Respondent
`propounds written deposition questions on Petitioner’s Corporate representative most
`knowledgeable about:
`
`
`1. Petitioner’s use of any “BLAKCPINK” trademark in the United States (“U.S.”);
`2. Any sale of goods or services with the use of any “BLAKCPINK” trademark in the U.S.;
`3. Any publication of any “BLACKPINK” trademark in the U.S.;
`4. Any activity of K-Pop musical group “BLACKPINK” in the U.S.;
`5. Any allegations contained in the Petition in this matter;
`6. Any studies, tests, investigation or research in the U.S. marketplace relating to any
`“BLACKPINK” trademark;
`7. Any plans of Petitioner in the U.S. marketplace relating to the use of any “BLACKPINK”
`trademark; and
`
`
`
`1
`
`
`
`
`
`8. Any contracts Petitioner has or intends to enter into in the U.S. marketplace relating to
`any “BLACKPINK” trademark.
`
`
`
`
`Dated: July 12, 2024
`
`
`
`
` By: /s/John Y. Lee
` One of the Attorneys for Respondent SM Beauty
`John Y. Lee
`Attorney for Registrant
`jlee@leebreenlaw.com
`Lee & Breen LLC
`188 Industrial Drive, Suite 403
`Elmhurst, IL 60126
`Tel.: (312) 241-1420
`
`Sang Lee
`USPTO Reg. No. 67,541
`Attorney for Registrant
`slee000@aol.com,
` softbeeus@gmail.com
`Law Offices of Sang Lee
`505 E Golf Road, Suite H
`Arlington Heights, IL 60005
` Tel: 1-847-208-8617
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I, John Y. Lee, the undersigned, certify that the aforementioned document was served upon
`
`the above-named party via email on July 12, 2024.
`
`
`
`
`
`
`
`/s/ John Y. Lee
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`YG ENTERTAINMENT INC.,
`
` Petitioner,
`
` vs.
`
` SM BEAUTY, LLC,
`
` Respondent.
`
`Commissioner for Trademarks
`P.O Box 1451
`Alexandria, VA 22313-1451
`
`
`Cancellation No. 92081622
`
`Mark: BLACKPINK
`
`Reg. No.5376449
`
`
`
`
`
`
`
`
`
`RESPONDENT’S WRITTEN DEPOSITION QUESTIONS
`TO PETITIONER’S RULE 30(B)(6) DESIGNEE
`
`Respondent SM Beauty, LLC (“SM”) hereby propounds, the following written deposition
`
`
`
`questions to be answered by Partitioner's Rule 30(b)(6) designee (See Notice of Deposition for
`
`subject areas):
`
`INTERROGATORIES
`
`What is your full name and address?
`
`What is your position at YG Entertainment?
`
`In detail, what is your job description at YG Entertainment?
`
`When did the K-pop group BLACKPINK debuted?
`
`Where did the K-pop group BLACKPINK debuted?
`
`When did the K-pop group BLACKPINK debuted in the United States (“U.S.)?
`
`Where did the K-pop group BLACKPINK debuted in the U.S.?
`
` What products or services were first advertised, marketed, published, or sold by
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Petitioner in the U.S. under any BlackPink trademark?
`
`
`
`1
`
`
`
`9.
`
`When was the first time any product or service was advertised marketed, published,
`
`or sold by Petitioner in the U.S. under any BLACKPINK trademark?
`
`10.
`
` What products or services were sold or marketed after the initial product or service
`
`sold by Petitioner in the U.S. under any BlackPink trademark?
`
`11.
`
` How much revenues have been generated by sale of goods or services by
`
`Petitioner with any Blackpink trademark in the U.S.?
`
`12.
`
` What are the itemized costs YG incurred for its activity identified in your
`
`previous answer?
`
`13.
`
` Did K-Pop group BlackPink make its U.S. debut on February 9, 2019, at
`
`Universal Music Group’s (“UMG”) Grammy Artist Showcase?
`
`14.
`
`15.
`
` Was that an invite-only event?
`
` How was that February 9, 2019 UMG Grammy Artist Showcase disseminated to
`
`the public in the U.S.?
`
`16. When was the February 9, 2019, UMG Grammy Showcase disseminated to the
`
`public at large in the U.S.?
`
`17.
`
` When did Petitioner first use the word “BLACKPINK” in any publication
`
`disseminated to the public in the U.S.?
`
`18.
`
` By what mode of communication did Petitioner first use the word
`
`“BLACKPINK” in any publication disseminated to the public in the U.S.?
`
`19.
`
` What itemized revenues were generated as a result of Petitioner’s activity
`
`identified in your previous answer?
`
`20.
`
` When did Petitioner first use the wors “BLACKPINK” in the U.S.?
`
`21.
`
` Where was it used?
`
`
`
`2
`
`
`
`22.
`
` How was it used?
`
`23.
`
` When was the first time Petitioner used the word “BLACKPINK” to sell any goods
`
`or services in the U.S.?
`
`24.
`
` What goods or services were advertised, marketed, published, or sold in
`
`coordination with or arising out of that first use of the word “BLACKPINK”?
`
`25.
`
` What itemized revenues were generated as a result of Petitioner’s activity
`
`identified in your previous answer?
`
`26.
`
`27.
`
` What are the itemize the “damages” alleged in Paragraph 23 of the Petition?
`
` What are the factual or informational bases upon which Petitioner made
`
`allegations based on “information and belief” in the Petition?
`
`28.
`
` What are the facts based upon which Petitioner made allegations of “fraud” in
`
`the Petition?
`
`29.
`
` What are the factual bases upon which Petitioner made allegation that
`
`Respondent has made a “business practice” of “trading on goodwill of others” in the Petition?
`
`30.
`
` What was use of the musical group Sistar’s or its management company’s use of
`
`any trademark or tradename in the U.S.?
`
`31.
`
` What is the bases for Petitioner’s claim that Respondent’s products are “Korean
`
`cosmetic products” as alleged in Paragraph 74 of the Petition?
`
`32.
`
` When did the song “Touchdown” by the K-pop musical group BLACKPINK
`
`debuted in the U.S.?
`
`33.
`
` What are the factual bases for Petitioner’s allegations of “misrepresentation of
`
`source” or “likelihood of confusion” as alleged in Paragraph 84 of the Petition between any
`
`trademark of Petitioner and any of Respondent’s trademarks?
`
`
`
`3
`
`
`
`34.
`
` What are the steps taken by YG in the United States to protect its trademark
`
`rights against Respondents after January 25, 2019 other than the filing of the Petition?
`
` When were those steps taken?
`
` How were those steps communicated to the Respondent (other than filing of the
`
`35.
`
`36.
`
`Petition)?
`
`37.
`
` What are the Communications from or on behalf of Petitioner to Respondent
`
`after January 25, 2019?
`
`38.
`
` How did Petitioner become aware of any products advertised, marketed,
`
`published or sold by Respondent in the U.S. under the word “BLACKPINK”?
`
`39.
`
` When did Petitioner become aware of any products sold or marketed by
`
`Respondent in the U.S. under any “BLACKPINK” trademark?
`
`40.
`
` What did Petitioner do upon becoming aware of any products sold or marked
`
`by Respondent in the U.S. under the name “BLACKPINK”?
`
`41.
`
` What study or test, if any, has Petitioner done or had done by someone else
`
`related to any “BLACKPINK” trademark in the U.S.?
`
`42.
`
` What plans does Petitioner have to use any “BLACKPINK” trademark in the
`
`U.S.?
`
`43.
`
` What contracts does Petitioner intend to enter into related to any “BLACKPINK”
`
`trademark in the U.S.?
`
`44.
`
` What contracts has Petitioner entered into to use any “BLACKPINK” trademark
`
`in the U.S.?
`
`
`
`4
`
`
`
`45.
`
` What investigation or research did Petitioner conduct or had someone else
`
`conduct into any “BLACKPINK” trademark use in the U.S. before registering Petitioner’s own
`
`“BLACKPINK” trademark?
`
`46.
`
` What investigation or research did Petitioner conduct or had someone else conduct
`
`into Respondent’s use of “BLACKPINK” trademark in the U.S.?
`
`47.
`
` What customer comments or communications, whether written or oral, has
`
`Petitioner received related to any use of “BLAKCPINK” trademark in the U.S.?
`
`48.
`
`49.
`
` When did Petitioner receive such comments or communications?
`
`How or by what mode of communication did Petitioner receive such comments or
`
`communications?
`
`50. What are the factual bases for any actual confusion in the U.S. marketplace between
`
`Petitioner’s goods or services and Respondent’s goods or services?
`
`51. What are Petitioner’s trade channels or target marketing for the sale of goods or
`
`services under any “BLACKPINK” trademark?
`
`Dated: July 12, 2024
`
`
`
`
`
`
`John Y. Lee
`Attorney for Registrant
`jlee@leebreenlaw.com
`Lee & Breen LLC
`188 Industrial Drive, Suite 403
`Elmhurst, IL 60126
`Tel.: (312) 241-1420
`
`
`
`5
`
`SM Beauty, LLC
`
`
`
`
`By: /s/John Y. Lee
`One of the Attorneys for Respondent
`
`
`
`
`
`Sang Lee
`USPTO Reg. No. 67,541
`Attorney for Registrant
`Email: slee000@aol.com, softbeeus@gmail.com
`Law Offices of Sang Lee
`505 E Golf Road, Suite H
`Arlington Heights, IL 60005
`Tel: 1-847-208-8617
`
`
`
`
`
`
`6
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`YG ENTERTAINMENT INC.,
`
` Petitioner,
`
` vs.
`
` SM BEAUTY, LLC,
`
` Respondent.
`
`
`
`
`
`
`
`
`
`
`Cancellation No. 92081622
`
`Mark: BLACKPINK
`
`Reg. No.5376449
`
`
`
`
`
`
`
`
`Commissioner for Trademarks
`P.O Box 1451
`Alexandria, VA 22313-1451
`
`To: Arlene L. Boruchowitz
` Arlene.Boruchowitz@DINSMORE.COM
` Dinsmore & Shohl LLP
` 191 West Nationwide Blvd Suite 200
` Columbus, OH 43215
`
`
`RESPONDENT’S NOTICE OF DEPOSITION OF MIRAE KIM
`
`Please take note that under Federal Rule of Civil procedure 30(b)(6) and 31, Respondent
`propounds written deposition questions on Mirae Kim:
`
`
`
`Dated: July 12, 2024
`
`
`
`
` By: /s/John Y. Lee
` One of the Attorneys for Respondent SM Beauty
`John Y. Lee
`Attorney for Registrant
`jlee@leebreenlaw.com
`Lee & Breen LLC
`188 Industrial Drive, Suite 403
`Elmhurst, IL 60126
`Tel.: (312) 241-1420
`
`
`
`1
`
`
`
`
`
`Sang Lee
`USPTO Reg. No. 67,541
`Attorney for Registrant
`slee000@aol.com,
` softbeeus@gmail.com
`Law Offices of Sang Lee
`505 E Golf Road, Suite H
`Arlington Heights, IL 60005
` Tel: 1-847-208-8617
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I, John Y. Lee, the undersigned, certify that the aforementioned document was served upon
`
`the above-named party via email on July 12, 2024.
`
`
`
`
`
`
`
`/s/ John Y. Lee
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Cancellation No. 92081622
`
`Mark: BLACKPINK
`
`Reg. No.5376449
`
`
`YG ENTERTAINMENT INC.,
`
` Petitioner,
`
` vs.
`
` SM BEAUTY, LLC,
`
` Respondent.
`
`Commissioner for Trademarks
`P.O Box 1451
`Alexandria, VA 22313-1451
`RESPONDENT’S WRITTEN DEPOSITION QUESTIONS
`TO MS. MIRAE KIM
`
`Respondent SM Beauty, LLC (“SM”) hereby propounds, the following written deposition
`
`
`
`
`
`
`
`questions to be answered by Ms. Mirae Kim:
`
`INTERROGATORIES
`
`What is your full name and address?
`
`What is your position at YG Entertainment?
`
`In detail, what is your job description at YG Entertainment?
`
`When did the K-pop group BLACKPINK debuted?
`
`Where did the K-pop group BLACKPINK debuted?
`
`When did the K-pop group BLACKPINK debuted in the United States (“U.S.)?
`
`Where did the K-pop group BLACKPINK debuted in the U.S.?
`
` What products or services were first advertised, marketed, published, or sold by
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Petitioner in the U.S. under any BlackPink trademark?
`
`
`
`1
`
`
`
`
`
`9.
`
`When was the first time any product or service was advertised marketed, published,
`
`or sold by Petitioner in the U.S. under any BLACKPINK trademark?
`
`10.
`
` What products or services were sold or marketed after the initial product or service
`
`sold by Petitioner in the U.S. under any BlackPink trademark?
`
`11.
`
` How much revenues have been generated by sale of goods or services by
`
`Petitioner with any Blackpink trademark in the U.S.?
`
`12.
`
` What are the itemized costs YG incurred for its activity identified in your
`
`previous answer?
`
`13.
`
` Did K-Pop group BlackPink make its U.S. debut on February 9, 2019, at
`
`Universal Music Group’s (“UMG”) Grammy Artist Showcase?
`
`14.
`
`15.
`
` Was that an invite-only event?
`
` How was that February 9, 2019 UMG Grammy Artist Showcase disseminated to
`
`the public in the U.S.?
`
`16. When was the February 9, 2019, UMG Grammy Showcase disseminated to the
`
`public at large in the U.S.?
`
`17.
`
` When did Petitioner first use the word “BLACKPINK” in any publication
`
`disseminated to the public in the U.S.?
`
`18.
`
` By what mode of communication did Petitioner first use the word
`
`“BLACKPINK” in any publication disseminated to the public in the U.S.?
`
`19.
`
` What itemized revenues were generated as a result of Petitioner’s activity
`
`identified in your previous answer?
`
`20.
`
` When did Petitioner first use the wors “BLACKPINK” in the U.S.?
`
`21.
`
` Where was it used?
`
`
`
`2
`
`
`
`
`
`22.
`
` How was it used?
`
`23.
`
` When was the first time Petitioner used the word “BLACKPINK” to sell any goods
`
`or services in the U.S.?
`
`24.
`
` What goods or services were advertised, marketed, published, or sold in
`
`coordination with or arising out of that first use of the word “BLACKPINK”?
`
`25.
`
` What itemized revenues were generated as a result of Petitioner’s activity
`
`identified in your previous answer?
`
`26.
`
`27.
`
` What are the itemize the “damages” alleged in Paragraph 23 of the Petition?
`
` What are the factual or informational bases upon which Petitioner made
`
`allegations based on “information and belief” in the Petition?
`
`28.
`
` What are the facts based upon which Petitioner made allegations of “fraud” in
`
`the Petition?
`
`29.
`
` What are the factual bases upon which Petitioner made allegation that
`
`Respondent has made a “business practice” of “trading on goodwill of others” in the Petition?
`
`30.
`
` What was use of the musical group Sistar’s or its management company’s use of
`
`any trademark or tradename in the U.S.?
`
`31.
`
` What is the bases for Petitioner’s claim that Respondent’s products are “Korean
`
`cosmetic products” as alleged in Paragraph 74 of the Petition?
`
`32.
`
` When did the song “Touchdown” by the K-pop musical group BLACKPINK
`
`debuted in the U.S.?
`
`33.
`
` What are the factual bases for Petitioner’s allegations of “misrepresentation of
`
`source” or “likelihood of confusion” as alleged in Paragraph 84 of the Petition between any
`
`trademark of Petitioner and any of Respondent’s trademarks?
`
`
`
`3
`
`
`
`
`
`34.
`
` What are the steps taken by YG in the United States to protect its trademark
`
`rights against Respondents after January 25, 2019 other than the filing of the Petition?
`
` When were those steps taken?
`
` How were those steps communicated to the Respondent (other than filing of the
`
`35.
`
`36.
`
`Petition)?
`
`37.
`
` What are the Communications from or on behalf of Petitioner to Respondent
`
`after January 25, 2019?
`
`38.
`
` How did Petitioner become aware of any products advertised, marketed,
`
`published or sold by Respondent in the U.S. under the word “BLACKPINK”?
`
`39.
`
` When did Petitioner become aware of any products sold or marketed by
`
`Respondent in the U.S. under any “BLACKPINK” trademark?
`
`40.
`
` What did Petitioner do upon becoming aware of any products sold or marked
`
`by Respondent in the U.S. under the name “BLACKPINK”?
`
`41.
`
` What study or test, if any, has Petitioner done or had done by someone else
`
`related to any “BLACKPINK” trademark in the U.S.?
`
`42.
`
` What plans does Petitioner have to use any “BLACKPINK” trademark in the
`
`U.S.?
`
`43.
`
` What contracts does Petitioner intend to enter into related to any “BLACKPINK”
`
`trademark in the U.S.?
`
`44.
`
` What contracts has Petitioner entered into to use any “BLACKPINK” trademark
`
`in the U.S.?
`
`
`
`4
`
`
`
`
`
`45.
`
` What investigation or research did Petitioner conduct or had someone else
`
`conduct into any “BLACKPINK” trademark use in the U.S. before registering Petitioner’s own
`
`“BLACKPINK” trademark?
`
`46.
`
` What investigation or research did Petitioner conduct or had someone else conduct
`
`into Respondent’s use of “BLACKPINK” trademark in the U.S.?
`
`47.
`
` What customer comments or communications, whether written or oral, has
`
`Petitioner received related to any use of “BLAKCPINK” trademark in the U.S.?
`
`48.
`
`49.
`
` When did Petitioner receive such comments or communications?
`
`How or by what mode of communication did Petitioner receive such comments or
`
`communications?
`
`50. What are the factual bases for any actual confusion in the U.S. marketplace between
`
`Petitioner’s goods or services and Respondent’s goods or services?
`
`51. What are Petitioner’s trade channels or target marketing for the sale of goods or
`
`services under any “BLACKPINK” trademark?
`
`Dated: July 12, 2024
`
`
`
`
`
`
`John Y. Lee
`Attorney for Registrant
`jlee@leebreenlaw.com
`Lee & Breen LLC
`188 Industrial Drive, Suite 403
`Elmhurst, IL 60126
`Tel.: (312) 241-1420
`
`
`
`5
`
`SM Beauty, LLC
`
`
`
`
`By: /s/John Y. Lee
`One of the Attorneys for Respondent
`
`
`
`
`
`
`
`Sang Lee
`USPTO Reg. No. 67,541
`Attorney for Registrant
`Email: slee000@aol.com, softbeeus@gmail.com
`Law Offices of Sang Lee
`505 E Golf Road, Suite H
`Arlington Heights, IL 60005
`Tel: 1-847-208-8617
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