ESTTA Tracking number:
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`ESTTA1379982
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`Filing date:
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`08/27/2024
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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
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`Plaintiff
`YG Entertainment Inc.
`
`ARLENE L BORUCHOWITZ
`DINSMORE & SHOHL LLP
`191 W NATIONWIDE BLVD SUITE 200
`COLUMBUS, OH 43215
`UNITED STATES
`Primary email: arlene.boruchowitz@dinsmore.com
`Secondary email(s): trademarks@dinsmore.com,
`robin.bissantz@dinsmore.com, terri.boesing@dinsmore.com, kar-
`en.gaunt@dinsmore.com
`614-628-6880
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`Opposition/Response to Motion
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`JOHN Y LEE
`
`jlee@leebreenlaw.com
`
`/s/ John Y. Lee
`
`08/27/2024
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`Respondent Response to Petitioner Motion for a Thirty-Day Extension o f Case
`Deadlines.pdf(91956 bytes )
`Declaration of JYL.pdf(61613 bytes )
`Exhibit A.pdf(173254 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`YG ENTERTAINMENT INC.,
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` Petitioner,
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` vs.
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` SM BEAUTY, LLC,
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` Respondent.
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`
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`Cancellation No. 92081622
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`Mark: BLACKPINK
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`Reg. No.5376449
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`
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`
`
`
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`
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`RESPONDENT’S RESPONSE IN OPPOSITION TO PETITIONER’S MOTION FOR A
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`THIRTY-DAY EXTENSION OF CASE DEADLINES
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` Respondent, by its counsel, responds in opposition to Petitioner’s Motion for a Thirty-Day
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`Extension of Case Deadlines (32 TTABVUE) as follows:
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`1. TTAB set a scheduling Order (30 TTABVUE at 2), in which it ordered closure of discovery
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`on 07/12/24. Notably, that Order provided for no separate deadline to take depositions
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`outside of the discovery period.
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`2. In violation of TBMP Section 509.01, Petitioner has provided no good cause for the
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`requested extension to take depositions outside the discovery period.
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`3. On the date of Petitioner’s Pretrial Disclosure deadline, 08/26/24, Petitioner’s counsel
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`sought an agreement from Respondent on the Petitioner’s request for a 30-day
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`extension. That email string is attached as Exhibit A.
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`4. In its motion, Petitioner simply slipped in a proposed deadline to take depositions outside
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`the discovery deadline.
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`1
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`

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`5. Petitioner claims that its motion for extension is not necessitated by its own lack of
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`diligence or unreasonable delay (32 TTABVUE at 3).
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`6. That is false. Petitioner did not seek an extension until the date of the deadline for its
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`pretrial disclosure. As for an extension on a deadline to take depositions outside the
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`discovery period, there was never any such deadline to extend.
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`7. Petitioner claims that the parties have had “several meet-and-confers to resolve outstanding
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`discovery disputes” and that “the parties have been working diligently to resolve discovery
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`the discovery disputes”. (Id.)
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`8. That too is false. Between TTAB’s scheduling Order of 07/03/24 (30 TTABVUE at 2) and
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`the close of discovery on 07/12/24, the one and only communication between Petitioner
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`and Respondent was Respondent’s timely service of written deposition questions on
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`07/12/24, (See 31 TTABVUE), to which Petitioner’s only identified witness and corporate
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`representative still have not answered (nor sought an extension).
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`9. Then, Petitioner claims that “reality of summer schedules”, “more delays than expected,
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`including but not limited to coordinating with an overseas client,” and “medical absences”,
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`(32 TTABVUE at 3-4), are good cause for the slipped in, brand new proposed deadline to
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`take depositions outside the discovery period that expired a month and a half ago.
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`10. Summer schedules have always been summer schedules, and TTAB set the discovery
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`deadline in the early part of the summer. Respondent’s client has been overseas from day
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`one of this matter (which is why Respondent timely served written deposition questions,
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`which still go begging). And claimed “medical absences” cannot explain why Petitioner
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`sought an agreement on extension on the date of the deadline for its pretrial disclosure and
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`2
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`

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`then slipped in a proposed deadline to take depositions outside the discovery period more
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`than a month and a half after discovery closed.
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`11. Petitioner then claims that more time is needed because it is considering Respondent’s
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`“settlement offer”. (32. TTABVUE at 4).
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`12. That too is false. Respondent has never made a settlement offer. Rather, on May 16, 2024,
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`Respondent sent an email to Petitioner that “in the interest of expediting this process and
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`saving time”, (See John Lee’s email to Arlene Burochowitz of 05/16/24 in Exhibit A), it
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`has ideas on a potential settlement. Shortly thereafter, on 05/31/24, counsel for both parties
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`had a telephone conversation, in which Respondent explained how given that Respondent’s
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`produced discovery materials conclusively establish that Respondent first used its
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`trademark prior to Petitioner’s (the musical group) debut in the United States --let alone
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`Petitioner’s first use or registration of its claimed trademark-- and Respondent continues
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`to do business under that trademark to date, Petitioner could potentially purchase a license
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`from Respondent.
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`13. That telephone conversation took place on 05/31/24, and since then, there has been no
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`settlement discussion. (See Declaration of John Lee, attached as Exhibit B).
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`14. Respondent is at a loss as to how that settlement discussion over the telephone on 05/31/24
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`can be characterized as a “settlement offer” or how it can be used almost three months later
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`to seek an extension to take depositions outside the discovery period that expired more than
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`a month and a half ago.
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`15. What is clear is that Petitioner cannot establish that its request for extension is not due to
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`its lack of diligence or unreasonable delay.
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`3
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`16. Petitioner concedes that it cannot submit “mere conclusory allegations lacking in factual
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`detail” to excuse its lack of diligence or unreasonable delay. (32 TTABVUE at 3).
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`17. Finally, Petitioner claims that granting its motion for extension would save time and
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`additional expenses and that not granting it would chill settlement negotiations. (32
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`TTABVUE at 4). That too is false, as precisely the opposite is true. Granting Petitioner’s
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`motion would obviously extend the schedule and add to the expenses of this
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`proceeding. Petitioner has ignored one settlement discussion that took place nearly 3
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`months ago. Extending the deadlines now, including adding in a new deadline (to take
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`depositions outside the discovery period) that never existed, would merely delay this
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`proceeding without good cause shown and further chill any settlement negotiations.
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`
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`For the foregoing reasons, TTAB should deny Petitioner’s Motion for a Thirty-Day Extension of
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`Case Deadlines.
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`
`
` By: /s/John Y. Lee
` One of the Attorneys for Respondent SM Beauty
`
`John Y. Lee
`Attorney for Registrant
`jlee@leebreenlaw.com
`Lee & Breen
`9114 Waukegan Rd #1419
`Morton Grove, IL 60053
`Tel.: (312) 241-1420
`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: 847-208-8617
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`
`CERTIFICATE OF SERVICE
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`4
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`

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`The undersigned hereby certifies that a copy of the foregoing Respondent's Response In
`Opposition to Petitioner's Motion for a Thirty-Day Extension was served on the following via
`email, on August 27, 2024, as follows:
`
`Govinda M. Davis, Esq.
`Dinsmore & Shohl, LLP
`255 East Fifth Street, Suite 1900
`Cincinnati, OH 45202
`Telephone: (513) 977-8200
`Facsimile: (513) 977-8141
`govinda.davis@dinsmore.com
`Attorneys for Petitioner YG Entertainment Inc.
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`
`
` /s/ John Y. Lee___
`
`5
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`

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`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
`
`
`
`
`
`
`
`
`
`
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`John Lee, upon being duly sworn and on penalty of perjury, declares as follows:
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`DECLARATION OF JOHN LEE
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` 1.
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`I am the lead counsel for Respondent in this matter.
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` 2.
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`On May 16, 2024, I sent an email to schedule a potential settlement discussion to
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`Petitioner's counsel Arlene Burochowitz. That email is part of Exhibit A to Respondent's
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`Response In Opposition to Petitioner's Motion for a Thirty Day Extension.
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` 3.
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`On May 31, 2024, the settlement discussion I sought in the abovementioned email took
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`place between Ms. Burchowitz and myself over the telephone.
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` 4.
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`Since then, there is been no settlement discussion of any kind between Petitioner and
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`Respondent.
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`Dated: August 27, 2024
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`
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`
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`SM Beauty, LLC
`
`
`
`
`By: /s/John Y. Lee
`One of the Attorneys for Respondent
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`

`

`Exhibi A (declaration of JL)1
`
`From: Boruchowitz, Arlene <Arlene.Boruchowitz@DINSMORE.COM>
`Sent: Monday, August 26, 2024 10:09 AM
`To: John Lee <jlee@leebreenlaw.com>
`Cc: Monica Lee <mlee@leebreenlaw.com>; Gaunt, Karen <Karen.Gaunt@DINSMORE.COM>
`Subject: RE: YG Entertainment v SM Beauty - Extension Request
`
`Understood. Thanks, John.
`
`
`
`Arlene L. Boruchowitz
`Attorney
`Dinsmore & Shohl LLP • Legal Counsel
`191 West Nationwide Blvd
`Suite 200
`Columbus, OH 43215
`T (614) 227-4211 • F (614) 628-6890
`E Arlene.Boruchowitz@DINSMORE.COM • dinsmore.com
`
`
`From: John Lee <jlee@leebreenlaw.com>
`Sent: Monday, August 26, 2024 11:07 AM
`To: Boruchowitz, Arlene <Arlene.Boruchowitz@DINSMORE.COM>
`Cc: Monica Lee <mlee@leebreenlaw.com>; Gaunt, Karen <Karen.Gaunt@DINSMORE.COM>
`Subject: RE: YG Entertainment v SM Beauty - Extension Request
`
`Arlene:
`
`Ok. When he travels, sometimes to remote places in SE Asia (looking for lower cost of goods), it’s not so easy to get
`ahold of him.
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`
`1
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`

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`Exhibi A (declaration of JL)2
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`John Y. Lee
`
`Lee & Breen
`
`Jlee@leebreenlaw.com
`
`Office: 312-241-1420
`Mobile: 312-804-8601
`
`
`THIS COMMUNICATION MAY BE PROTECTED BY THE ATTORNEY-CLIENT PRIVILEGE OR THE WORK PRODUCT
`DOCTRINE OR OTHER PRIVILEGES OR CONFIDENTIALITY. IF YOU ARE AN UNINTENDED RECIPIENT, USING, COPYING,
`FORWARDING OR DISSEMINATING THIS EMAIL IS PROHIBITED; PLEASE ERADICATE THIS EMAIL AND ALERT THE
`SENDER. THANK YOU.
`
`
`From: Boruchowitz, Arlene <Arlene.Boruchowitz@DINSMORE.COM>
`Sent: Monday, August 26, 2024 10:05 AM
`To: John Lee <jlee@leebreenlaw.com>
`Cc: Monica Lee <mlee@leebreenlaw.com>; Gaunt, Karen <Karen.Gaunt@DINSMORE.COM>
`Subject: RE: YG Entertainment v SM Beauty - Extension Request
`
`Thanks for quick reply, John. Presuming that it will take you as long as you expect to hear from your client,
`I plan to file a (currently) unconsented motion to extend with the Board around 4:30PM this afternoon to
`preserve the deadline, and if/when your client consents to the extension, then I will update the Board
`accordingly.
`
`Thanks,
`Arlene
`
`
`
`Arlene L. Boruchowitz
`Attorney
`Dinsmore & Shohl LLP • Legal Counsel
`191 West Nationwide Blvd
`Suite 200
`Columbus, OH 43215
`T (614) 227-4211 • F (614) 628-6890
`E Arlene.Boruchowitz@DINSMORE.COM • dinsmore.com
`
`
`From: John Lee <jlee@leebreenlaw.com>
`Sent: Monday, August 26, 2024 10:56 AM
`To: Boruchowitz, Arlene <Arlene.Boruchowitz@DINSMORE.COM>
`Cc: Monica Lee <mlee@leebreenlaw.com>; Gaunt, Karen <Karen.Gaunt@DINSMORE.COM>
`Subject: RE: YG Entertainment v SM Beauty - Extension Request
`
`Arlene:
`
` I
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` will get back to you after I communicate with my client. I believe he is in Asia right now, so this might take a day or
`two.
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`John Y. Lee
`
`Lee & Breen
`
`Jlee@leebreenlaw.com
`
`2
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`

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`Exhibi A (declaration of JL)3
`
`
`Office: 312-241-1420
`Mobile: 312-804-8601
`
`
`THIS COMMUNICATION MAY BE PROTECTED BY THE ATTORNEY-CLIENT PRIVILEGE OR THE WORK PRODUCT
`DOCTRINE OR OTHER PRIVILEGES OR CONFIDENTIALITY. IF YOU ARE AN UNINTENDED RECIPIENT, USING, COPYING,
`FORWARDING OR DISSEMINATING THIS EMAIL IS PROHIBITED; PLEASE ERADICATE THIS EMAIL AND ALERT THE
`SENDER. THANK YOU.
`
`
`From: Boruchowitz, Arlene <Arlene.Boruchowitz@DINSMORE.COM>
`Sent: Monday, August 26, 2024 9:48 AM
`To: John Lee <jlee@leebreenlaw.com>
`Cc: Monica Lee <mlee@leebreenlaw.com>; Gaunt, Karen <Karen.Gaunt@DINSMORE.COM>
`Subject: YG Entertainment v SM Beauty - Extension Request
`
`Mr. Lee,
`
` I
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` write to you with regards to today’s deadline in the above-referenced cancellation matter (the Plaintiff’s
`Pretrial Disclosure deadline). My client is considering your proposed settlement (referenced below), and
`would like additional time to consider your coexistence proposal. Accordingly, would you be amenable to a
`30-day extension of all deadlines (including the September 20 deadline by which the parties must take
`depositions) to allow my client additional time to consider? If so, please let me know as soon as possible.
`
`Thanks,
`Arlene
`
`
`
`Arlene L. Boruchowitz
`Attorney
`Dinsmore & Shohl LLP • Legal Counsel
`191 West Nationwide Blvd
`Suite 200
`Columbus, OH 43215
`T (614) 227-4211 • F (614) 628-6890
`E Arlene.Boruchowitz@DINSMORE.COM • dinsmore.com
`
`
`From: John Lee <jlee@leebreenlaw.com>
`Sent: Thursday, May 16, 2024 2:55 PM
`To: Boruchowitz, Arlene <Arlene.Boruchowitz@DINSMORE.COM>; Davis, Govinda
`<Govinda.Davis@DINSMORE.COM>
`Cc: Monica Lee <mlee@leebreenlaw.com>
`Subject: RE: YG Entertainment v SM Beauty - Discovery Meet and Confer
`
`Ms. Boruchowitz:
`
`This is written under Fed. R of Evid 408. SM can and will (when it has any burden of proof) that it has been using its
`TM since the summer of 2017 and continuously to date, but in the interest of expediting this process and saving
`time, it has ideas on how this dispute may be resolved. Do you have time on coming Mon or Tue when I can call
`you? I am good on Mon until early afternoon and good on Tuesday after 11 AM my time.
`
`John Y. Lee
`
`Lee & Breen
`
`
`3
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`