ESTTA Tracking number:
`
`ESTTA1380213
`
`Filing date:
`
`08/28/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92081622
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`YG Entertainment Inc.
`
`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
`
`Reply in Support of Motion
`
`Arlene L. Boruchowitz
`
`arlene.boruchowitz@dinsmore.com, trademarks@dinsmore.com,
`robin.bissantz@dinsmore.com, terri.boesing@dinsmore.com, kar-
`en.gaunt@dinsmore.com
`
`/Arlene L. Boruchowitz/
`
`08/28/2024
`
`2024.08.28 - Petitioner's Reply in Support of Mot. to Extend.pdf(170996 bytes )
`Ex. A - 2024.05.24 Email from Ms. Boesing.pdf(392408 bytes )
`Ex. B - 2024.05.26 Email from Mr. Lee.pdf(266160 bytes )
`Ex. C - 2024.06.04 Email from Ms. Boruchowitz.pdf(422681 bytes )
`Ex. D - 2024.06.13 - Email from Ms. Boruchowitz.pdf(430713 bytes )
`Ex. E - 2024.06.14 - Email from Ms. Boruchowitz.pdf(293001 bytes )
`Ex. F - 2024.06.14 Service Email from Ms. Boruchowitz.pdf(526362 bytes )
`Ex. G - 2024.07.12 Email from Mr. Lee.pdf(286500 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`YG Entertainment, Inc.,
`
`Petitioner,
`
`v.
`
`)
`)
`)
`)
`)
`)
`)
`)
`Respondent. )
`)
`)
`
`SM Beauty, LLC,
`
`
`
`
`
`In the matter of:
`Registration No. 5376449
`
`For the mark: BLACKPINK
`
`
`Cancellation No: 92081622
`
`
`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION FOR A THIRTY-DAY
`EXTENSION OF CASE DEADLINES
`
`Petitioner YG Entertainment, Inc. (“YG” or “Petitioner”) is admittedly perplexed by
`
`Respondent’s Response in Opposition to its Motion (33 TTABVUE) (“Opposition”). In particular,
`
`Petitioner does not understand the basis for Respondent’s apparent amnesia with respect to the
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`previously-stipulated deadline to take depositions outside of the discovery period.
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`As outlined herein, Respondent’s counsel not only agreed to that extension and the
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`September 20, 2024 deadline, but in fact requested that specific deadline himself due to his own
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`summer schedule. Accordingly, because Respondent’s Opposition appears to be primarily (if not
`
`wholly) based on the Respondent’s sudden loss of all memory concerning the previously-stipulated
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`deadline for taking depositions outside of the discovery period, Petitioner’s Motion should be
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`granted. However, to the extent Respondent otherwise takes issue with Petitioner’s extension
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`request, those objections should likewise be rejected for the reasons set forth herein, and
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`Petitioner’s Motion should be granted.
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`
`
`1
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`

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`I. RESPONDENT NOT ONLY AGREED TO THE SEPTEMBER 20 DEADLINE BY
`WHICH TO TAKE DEPOSITIONS, BUT IN FACT REQUESTED IT.
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`Petitioner was extremely confused by Respondent’s assertions that: (1) the Board’s
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`scheduling order “provided for no separate deadline to take depositions outside of the discovery
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`period (33 TTABVUE at 1, ¶ 1); (2) “Petitioner simply slipped in a proposed deadline to take
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`depositions outside the discovery deadline” (33 TTABVUE at 1, ¶ 4), (3) “[a]s for an extension on
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`a deadline to take depositions outside the discovery period, there was never any such deadline to
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`extend” (33 TTABVUE at 2, ¶ 6); (4) no good cause exists “for the slipped in, brand new proposed
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`deadline to take depositions outside the discovery period that expired a month and a half ago” (33
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`TTABVUE at 2, ¶ 9); (5) “Petitioner sought an agreement on extension on the date of the deadline
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`for its pretrial disclosure and then slipped in a proposed deadline to take depositions outside the
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`discovery period more than a month and a half after discovery closed” (33 TTABVUE at 2–3,
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`¶ 10); (6) Petitioner is seeking “an extension to take depositions outside the discovery period that
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`expired more than a month and a half ago” (33 TTABVUE at 3, ¶ 14); and (7) “adding in a new
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`deadline (to take depositions outside the discovery period) that never existed, would merely delay
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`this proceeding without good cause shown and further chill any settlement negotiations.” (33
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`TTABVUE at 4, ¶ 17).
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`As the Board is aware, and as was cited in Petitioner’s Motion to Extend, on July 3, 2024
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`the Board issued an order granting the Parties’ Joint Motion for a Limited Extension of the
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`Discovery Deadline to September 20, 2024 for the Taking of Depositions (30 TTABVUE)
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`(“Order”). In that Order, the Board specifically stated: “the Board construes [the parties’ joint
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`motion] as seeking to take depositions outside the discovery period and to keep trial dates as
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`2
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`

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`currently set. In view thereof, the parties’ motion is GRANTED to the extent that the parties may
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`take the noticed depositions after the close of discovery up to and including September 20, 2024.”
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`(30 TTABVUE at 1–2). The Parties’ Joint Motion for a Limited Extension of the Discovery
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`Deadline to September 20, 2024 for the Taking of Depositions was filed on June 14, 2024 (29
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`TTABVUE), and Respondent’s counsel provided email authorization for the filing on that date.
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`For the avoidance of any doubt as to Respondent’s counsel’s authorization for that motion,
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`Petitioner will wholly lay out the parties’ interactions leading up to that motion:
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`After the Board resumed proceedings in this matter on May 9, 2024, Petitioner re-noticed
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`depositions to Respondent, and noticed them for the week of June 24 to June 28, 2024. (See
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`2024.05.24 Email from Ms. Boesing, attached as Exhibit A hereto). Mr. Lee responded to the
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`deposition notices on May 26, 2024, and indicated that the proposed dates would not work for his
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`schedule. (See 2024.05.26 Email from Mr. Lee, attached as Exhibit B hereto). The parties (during
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`a meet and confer on May 31, 2024) discussed that, in light of the upcoming discovery deadline
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`on July 12 and Respondent’s counsel’s schedule, a joint motion to take depositions outside of the
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`discovery period would be needed. Accordingly, Petitioner’s counsel emailed counsel for
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`Respondent on June 4, 2024 with a proposed joint motion to extend. (See 2024.06.04 Email from
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`Ms. Boruchowitz, attached as Exhibit C hereto). In response, counsel for Respondent indicated
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`that the Motion should also allow for Respondent to take not-yet-noticed depositions by written
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`questions, and counsel for Petitioner revised the proposed motion accordingly and asked
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`Respondent’s counsel to fill in the names of the deponents for whom Respondent would be noticing
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`depositions. (See 2024.06.13 Email from Ms. Boruchowitz, attached as Exhibit D hereto). In
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`response, and in response to Petitioner’s counsel’s suggestion of August 30 for the deadline by
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`
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`3
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`

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`which to take the noticed depositions, Respondent’s counsel indicated that “mid-September is
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`more realistic re: deadline for deps” and indicated that: “with those [depositions] filled in (30 b 6
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`and Mirae Kim), you can sign for me.” (See 2024.06.14 Email from Ms. Boruchowitz, attached
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`hereto as Exhibit E, emphasis added). Counsel for Petitioner promptly indicated that she would
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`fill in the deponents, change the date to September 20, and get the joint motion filed. (Id.). Counsel
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`for Petitioner also served a copy of the filed motion on counsel for Respondent on June 14, 2024,
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`the day of filing. (See 2024.06.14 Service Email from Ms. Boruchowitz, attached hereto as Exhibit
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`F).
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`Counsel for Respondent did not respond to the service email raising any sort of issue with
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`the filed motion, and likewise did not reach out to counsel for Petitioner after the Board’s order
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`granting that motion on July 3, 2024. Rather, Respondent proceeded to serve written deposition
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`questions on July 12, 2024 (the day of the discovery deadline), in accordance with the parties’ Joint
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`Motion. (See 2024.07.12 Email from Mr. Lee, attached hereto as Exhibit G). If not for the Joint
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`Motion, Respondent’s service of the written deposition questions would not have been timely,
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`because the depositions would not have been completed during the discovery period. Accordingly,
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`Petitioner cannot understand how Respondent now denies the existence of the previously-
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`stipulated deadline for taking depositions outside of the discovery period.
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`Thus, since Respondent’s objections to Petitioner’s Motion to Extend appear to be
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`primarily (if not wholly) based on the Respondent’s apparent amnesia regarding the previously-
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`stipulated deadline for taking depositions outside of the discovery period, Petitioner’s Motion to
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`Extend should be granted.
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`
`
`4
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`

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`II. RESPONDENT’S OTHER OBJECTIONS TO PETITIONER’S MOTION SHOULD
`LIKEWISE BE REJECTED.
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`Respondent’s objections to Petitioner’s Motion to Extend appear to be primarily (if not
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`wholly) based on the Respondent’s sudden amnesia regarding the previously-stipulated deadline
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`for taking depositions outside of the discovery period, such that Respondent’s objections should
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`not be considered. Nonetheless, Petitioner will address in turn each other objection mentioned by
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`Respondent (even those primarily referenced in connection with the objections to the previously-
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`set deposition deadline).
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`First, Respondent complains that Petitioner did not seek an extension/Respondent’s consent
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`to the extension of Petitioner’s pretrial disclosure deadline until August 26, 2024. (33 TTABUVE
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`at 1–2, ¶¶ 3, 6, 10). As outlined more fully in Petitioner’s Motion to Extend, since early July
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`Petitioner’s counsel has encountered more delays than expected, including but not limited to
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`particular difficulties in coordinating schedules with an overseas client and Petitioner’s medical
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`absences throughout the month of August. (32 TTABVUE at 3–4). Respondent, in its Opposition,
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`casts aspersions on Petitioner’s claims, referring to “claimed ‘medical absences’” (33 TTABVUE
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`at 2–3, ¶ 10). If necessary for the consideration of the Motion, Petitioner’s counsel would be happy
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`to provide a doctor’s note and an affidavit confirming the details of said medical absences, but
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`Petitioner’s counsel would prefer to keep personal matters private.
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`Second, Respondent claims that Petitioner’s statements that “the parties have been working
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`diligently to resolve the discovery disputes between the parties and facilitate the scheduling of
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`depositions since the Board resumed proceedings on May 9, 2024” and “have had several meet-
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`and-confers to resolve outstanding discovery disputes” (32 TTABVUE at 3) are “false[.]” (33
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`
`
`5
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`

`

`TTABUVE at 2, ¶¶ 7–8). As an initial matter, the parties did meet and confer regarding discovery
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`disputes in May following the Board’s order resuming proceedings, as is even referenced in
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`Respondent’s Opposition. Between the parties’ last meet and confer on May 31, 2024 and the date
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`of Petitioner’s Motion, neither party requested any additional meet and confers. As such, there
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`was no need for further meet and confers during that time, and Respondent’s focus on the fact that
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`“[b]etween TTAB’s scheduling Order of 07/03/24…and the close of discovery on 7/12/24, the one
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`and only communication between Petitioner and Respondent was Respondent’s timely service of
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`written deposition questions” (33 TTABVUE at 2, ¶ 8) is irrelevant.
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`Finally, Respondent takes issue with Petitioner’s characterization of the parties’ May 31,
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`2024 discussion, during which Respondent proposed a form of settlement, claiming that
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`“Respondent has never made a settlement offer.” (33 TTABVUE at 3, ¶¶ 11–12). Respondent
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`claims it “is at a loss as to how that settlement discussion over the phone on 5/31/24 can be
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`characterized as a ‘settlement offer[.]’” (33 TTABVUE at 3, ¶ 14). Petitioner, on the other hand,
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`understood that a settlement proposal proposed by Respondent’s counsel and communicated by
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`Respondent’s counsel to Petitioner’s counsel during a meet and confer could fairly be characterized
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`as a settlement offer. Petitioner did not intend to misrepresent Respondent’s settlement position,
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`and in fact notes that, in Petitioner’s counsel’s August 26 email attached as Exhibit A to
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`Respondent’s Opposition, Petitioner referenced Respondent’s “proposed settlement”, to which
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`Respondent’s counsel raised no objection. (33 TTABVUE at Ex. A-3). On the other hand,
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`Respondent claims that Petitioner has ignored the May 31 “settlement discussion” (33 TTABUVE
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`at 4, ¶ 17). In fact, Petitioner never provided a substantive response to Respondent’s “settlement
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`discussion.” Further, it is understandable that Petitioner may have a renewed interest in the prior
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`
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`6
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`

`

`“settlement discussion” in the face of the opening of the trial period and the taking of numerous
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`noticed depositions. As such, Respondent’s position that Petitioner’s Motion should be denied
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`because Petitioner cannot seriously be considering Respondent’s “settlement discussion” should
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`be rejected.
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`Accordingly, for all the reasons set forth herein and in Petitioner’s Motion for a Thirty-Day
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`Extension of Case Deadlines (32 TTABUVE), Petitioner respectfully requests that its Motion be
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`granted.
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`
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`Dated: August 28, 2024
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`Respectfully Submitted,
`
`
`
`/s/ Arlene L. Boruchowitz
`Arlene L. Boruchowitz
`DINSMORE & SHOHL LLP
`191 W. Nationwide Blvd, Suite 200
`Columbus, OH 43215
`Telephone: 614-628-6880
`Facsimile: 614-628-6890
`arlene.boruchowitz@dinsmore.com
`
`Attorney for YG Entertainment, Inc.
`
`
`
`
`
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`7
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`

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`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that a copy of the foregoing Reply in Support was served on the
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`following via email, on August 28, 2024, as follows:
`
`Sang Lee
`Law Offices Of Sang Lee
`505 E Golf Rd Ste H
`Arlington Heights, IL 60005
`slee000@aol.com, softbeeus@gmail.com,
`
`John Y. Lee
`Lee & Breen LLC
`188 Industrial Drive,
`Suite 403 Elmhurst, IL 60126
`jlee@leebreenlaw.com
`mlee@leebreenlaw.com
`
`
`/s/ Arlene L. Boruchowitz
`Attorney for YG Entertainment, Inc.
`
`
`
`
`8
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`
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`

`

`EX. A
`EX. A
`2024.05.24 Email From Ms. Boesing
`2024.05.24 Email From Ms. Boesing
`
`

`

`From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Boesing, Terri
`slee000@aol.com; softbeeus@gmail.com; jlee@leebreenlaw.com; mlee@leebreenlaw.com
`Davis, Govinda; Boruchowitz, Arlene
`YG Entertainment, Inc. v. SM Beauty, LLC - Deposition Notices
`Friday, May 24, 2024 12:00:24 PM
`YG Entertainment v SM Beauty - Re-Notice of Rule 30b6 Deposition (May 2024).pdf
`YG Entertainment v SM Beauty - Re-Notice of Lee Deposition (May 2024).pdf
`YG Entertainment v SM Beauty - Re-Notice of Lew Deposition (May 2024).pdf
`
`Good afternoon,
`
`Please see the attached deposition notices in the above-referenced case.
`
`Thank you,
`Terri
`
`TERRI L. BOESING
`Legal Administrative Assistant
`Dinsmore & Shohl LLP • Legal Counsel
`255 East Fifth Street, Suite 1900
`Cincinnati, OH 45202
`T (513) 977-8408 • F (513) 977-8141
`E terri.boesing@dinsmore.com • dinsmore.com
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`YG Entertainment, Inc.,
`
`In the matter of:
`Registration No. 5376449
`
`For the mark: BLACKPINK
`
`Cancellation No: 92081622
`
`Petitioner,
`
`
`
`v.
`
`SM Beauty, LLC,
`
`
`
`)
`)
`)
`)
`)
`)
`)
`Respondent. )
` )
`
`PETITIONER’S RE-NOTICE OF RULE 30(b)(6)
`DEPOSITION OF SM BEAUTY, LLC
`
`PLEASE TAKE NOTICE that pursuant to the Federal Rules of Civil Procedure 30(b)(6)
`
`and TBMP 404.05, Petitioner, YG Entertainment (“YG Entertainment”), by its attorneys, will take
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`the oral deposition of the corporate designee of SM Beauty, LLC (“SM Beauty”), on a date to be
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`mutually agreed upon by the parties between June 24 and June 28, 2024, at the offices of Lee &
`
`Breen, 188 Industrial Drive, Ste 403, Elmhurst, IL 60126, or at another location to be mutually
`
`agreed upon by the parties. The deposition shall commence at 10:00 a.m. (Central Standard Time).
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`The deposition will be taken under oath until completed before a notary public or other
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`officer authorized by law to administer oaths and will be used for all purposes permitted under the
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`Federal Rules of Civil Procedure. The deposition will be recorded by stenographic means and may
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`be video recorded, and the noticing party reserves the right to use the instant visual display of the
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`testimony during the deposition. The deposition shall be taken with a translator or interpreter present,
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`upon agreement of the parties.
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`SM Beauty shall designate one or more officers, directors, managing agents, or other
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`representatives who consent to testify on its behalf about each of the subject matters of inquiry set
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`forth in Exhibit A attached hereto and, pursuant to Federal Rule of Civil Procedure 30 and 34, bring
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`any and all documents, communications, and things not previously produced that are related to the
`
`

`

`same. Each designated person or persons shall be qualified and prepared to testify as to matters
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`known or reasonable available to SM Beauty regarding the subject matters described in Exhibit A
`
`and incorporated herein.
`
`Date: May 24, 2024
`
`
`
`Respectfully submitted,
`
`DINSMORE & SHOHL LLP
`
`B y: / Govi nda M . D avi s/ ____
`Govinda M. Davis
`Dinsmore & Shohl LLP
`255 E. Fifth Street
`Suite 1900
`Cincinnati, OH 45202
`Tel: (513) 977-8200
`Fax: (513) 977-8141
`govinda.davis@dinsmore.com
`Counsel for YG Entertainment, Inc.
`
`2
`
`

`

`I.
`
`DEFINITIONS.
`
`EXHIBIT A
`
`A.
`
`As used herein, the term “Respondent,” “SM Beauty,” “You” and “Your” includes
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`SM Beauty, LLC, its predecessors in interest, successors in interest, divisions, subsidiaries, and
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`related organizations, and the officers, directors, employees, agents and representatives thereof.
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`B.
`
`As used herein, the term “Petitioner” or “YG Entertainment” includes YG
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`Entertainment, Inc., its predecessors in interest, successors in interest, divisions, subsidiaries and
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`related organizations, and the officers, directors, employees, agents and representatives thereof.
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`C.
`
`As used herein, the term “Respondent’s Mark” refers to the subject of U.S.
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`Trademark Registration No. 5376449 in this proceeding.
`
`D.
`
`As used herein, the term “Petitioner’s Marks” refers to the BLACK PINK and
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`BLACKPINK word marks and the following design mark:
`
`.
`
`E.
`
`As used herein, the term “Respondent’s Goods” includes those goods which
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`Respondent offers for sale, offered for sale or plans to offer for sale in connection with
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`Respondent’s Mark, including, but not limited to, “body and beauty care cosmetics”.
`
`F.
`
`As used herein, the term “Petitioner’s Goods and Services” includes those goods
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`and services which Petitioner offers or plans to offer in connection with Petitioner’s Marks,
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`including but not limited to the goods and services listed in U.S. Trademark Registration No.
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`6488584, U.S. Trademark Registration No. 5440426, and U.S. Trademark Application No.
`
`79335161.
`
`G.
`
`The term “identify” as used herein means:
`
`1.
`
`in the case of a natural person, to state for each person his or her: (i) full
`
`name; (ii) present residence address and telephone number; (iii) present
`
`business address and telephone number; (iv) present position, business
`
`

`

`affiliation, and job description; and (v) if any of the information set forth in
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`(i)-(iv) is unknown, so state and set forth the corresponding last known
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`information;
`
`2.
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`in the case of a corporation or other business entity, to state for each
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`corporation or business entity: (i) its full name, (ii) its legal form (i.e.,
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`corporation, partnership, etc.) and state of incorporation or legal formation;
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`(iii) its address and principal place of business; (iv) the identity of officers
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`or other persons having knowledge of the matter with respect to which the
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`corporation or entity is name; and (v) the connection to Respondent’s
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`response; and
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`3.
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`in the case of a document, to state for each document: (i) the identity of the
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`person(s) originating and preparing it and the sender; (ii) its general type
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`(e.g., letter, memo, report, invoice, etc.) title, identifying number and the
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`general nature of its subject matter; (iii) the identity of the addressees and
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`distributes, if any; (iv) its date of preparation; (v) its date and manner of
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`transmission, distribution and publication, if any; (vi) the location of each
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`copy (including title, index number and location of the file in which it is
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`kept or from which it was removed) and the identity of the present custodian
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`or persons responsible for its filing or other disposition; and (vii) the identity
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`of the persons who can authenticate or identify it.
`
`H.
`
`As used herein, “and” as well as “or” shall be construed disjunctively and
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`conjunctively as necessary in order to bring within the scope of the request all documents which
`
`2
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`

`

`might otherwise be construed to be outside its scope. Further, “all” or “each” shall be construed as
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`“all and each.”
`
`I.
`
`As used herein, the singular shall include the plural and the present tense shall
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`include the past tense and vice versa in order to bring within the scope of the request all information
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`which might otherwise be construed to be outside its scope.
`
`J.
`
`“Communication(s)” means any of the following: (i) any letter, memorandum, or
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`e-mail; (ii) any telephone call between two or more persons (whether such was by chance or
`
`prearranged, formal or informal); (iii) any conversation or discussion or meeting between two or
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`more persons (whether such conversation was by chance or prearranged, formal or informal); and
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`(iv) any other transmittal of information (in the form of facts, ideas, suggestions, inquiries,
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`responses or otherwise) between two or more persons.
`
`K.
`
`“Document(s)” has the broadest meaning consistent with the usage of this term in
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`Federal Rule of Civil Procedure 34(a). “Document” includes, without limitation, any written,
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`printed, typed, stored, photographed, recorded, or otherwise reproduced communication,
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`compilation, or reproduction, including computer or electronically generated or stored information
`
`or data, whether asserted privileged or not. A draft or non-identical copy is a separate document
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`within the meaning of this term. “Document” specifically includes all forms of electronically
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`stored information or data.
`
`L.
`
`“Relate,” “related,” and “relating to” mean referring to, describing, evidencing,
`
`constituting, or discussing the subject matter with respect to which the terms are used. The terms
`
`encompass any and all information, documents and things relied upon, considered or reviewed in
`
`connection with the subject matter.
`
`II.
`
`TOPICS.
`
`1.
`
`All studies, tests, documents and opinions relating to the use of Petitioner’s Marks.
`3
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`

`

`2.
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`All studies, tests, documents and opinions relating to the sale or offering of
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`Petitioner’s Goods and Services.
`
`3.
`
`4.
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`SM Beauty’s use and/or intended use in commerce of Respondent’s Mark.
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`SM Beauty’s advertising plans and strategies and advertisements of Respondent’s
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`Goods in any and all media outlets.
`
`5.
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`SM Beauty’s advertisement of Respondent’s Goods in any and all media outlets
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`prior to the commencement of this action.
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`6.
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`All third party relationships related to the distribution and or/advertisement of
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`Respondent’s Goods.
`
`7.
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`The circumstances and communications, whether written or oral, relating to SM
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`Beauty’s selection, adoption, and revisions of Respondent’s Mark or any variation thereof to date.
`
`8.
`
`9.
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`All searches ran before the development and selection of Respondent’s Mark.
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`All factual information supporting SM Beauty’s rights to Respondent’s Mark,
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`including, but not limited to, first use, any/all trademark application filings, relevant customers,
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`geographic areas, channels of trade and channels of distribution.
`
`10.
`
`All customer comments and opinions, whether written or oral, related to
`
`Respondent’s Mark and/or Respondent’s Goods.
`
`11.
`
`The first time SM Beauty became aware of Petitioner and/or Petitioner’s Marks,
`
`including the circumstances and communications, whether written or oral, relating thereto.
`
`12.
`
`SM Beauty’s inspection and research, if any, into Petitioner and/or Petitioner’s
`
`Marks.
`
`13.
`
`All factual information and documents supporting SM Beauty’s claim that
`
`Petitioner is neither the first nor exclusive user of the term “BLACKPINK” in connection with
`
`goods or services in Class 03.
`
`4
`
`

`

`14.
`
`SM Beauty’s communications, if any, internally or with any third party about
`
`Petitioner and/or Petitioner’s Marks.
`
`15.
`
`All studies, tests, documents, and opinions related to Petitioner, Petitioner’s Marks,
`
`and/or Petitioner’s Goods and Services.
`
`16.
`
`Actual confusion in the marketplace between any products sold by SM Beauty and
`
`Petitioner.
`
`17.
`
`18.
`
`Actual confusion in the marketplace between SM Beauty and Petitioner.
`
`The past, present, and intended future marketing activities made or intended to be
`
`made by SM Beauty in connection with Respondent’s Mark.
`
`19.
`
`20.
`
`The market interface between SM Beauty and Petitioner.
`
`SM Beauty’s sales of Respondent’s Goods in connection with Respondent’s Mark,
`
`including any financial documents related thereto.
`
`21.
`
`SM Beauty’s internal profit and loss statements, balance sheets, income statements,
`
`projections, forecasts, business plans, cost accounting methods, contract bid documents, proposals,
`
`and sales relating to Respondent’s Mark and/or Respondent’s Goods.
`
`22.
`
`SM Beauty’s trade channels and target marketing for the sale of the Respondent’s
`
`Goods.
`
`23.
`
`SM Beauty’s consumer demographics and target consumer demographics related
`
`to the sale of Respondent’s Goods.
`
`24.
`
`The circumstances under which SM Beauty first became aware of Petitioner’s
`
`Mark.
`
`25.
`
`All discussions, information, and documents that refer or relate to any or all of the
`
`claims or defenses in this proceeding.
`
`5
`
`

`

`25.
`
`SM Beauty’s discovery responses and document production served in this
`
`proceeding, including but not limited to the relevance and substance of all documents produced by
`
`SM Beauty in this proceeding.
`
`26.
`
`The circumstances under which Sang Lew assigned or purportedly assigned U.S.
`
`Trademark Application No. 87215031 to SM Beauty.
`
`27.
`
`All documents related to the assignment or purported assignment of U.S.
`
`Trademark Application No. 87215031 from Sang Lew to SM Beauty.
`
`28.
`
`Corporate ownership and organizational structure (including affiliated companies),
`
`including all officers, directors, and executives and their respective roles at SM Beauty, as well as
`
`its parent corporations, subsidiaries and related entities.
`
`Date: May 24, 2024
`
`
`
`Respectfully submitted,
`
`DINSMORE & SHOHL LLP
`
`B y: / Govi nda M . D avi s/ _____
`Govinda M. Davis
`Dinsmore & Shohl LLP
`255 E. Fifth Street
`Suite 1900
`Cincinnati, OH 45202
`Tel: (513) 977-8200
`Fax: (513) 977-8141
`govinda.davis@dinsmore.com
`Counsel for YG Entertainment, Inc.
`
`6
`
`

`

`CERTIFICATE OF SERVICE
`I hereby certify that a true and correct copy of the foregoing PETITIONER’S RE-
`
`NOTICE OF RULE 30(b)(6) DEPOSITION OF SM BEAUTY LLC has been served upon the
`
`following by e-mail on May 24, 2024:
`
`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/__________
`
`7
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`YG Entertainment, Inc.,
`
`Petitioner,
`
`
`
`v.
`
`SM Beauty, LLC,
`
`
`
`)
`)
`)
`)
`)
`)
`)
`Respondent. ) Cancellation No: 92081622
`)
`
`In the matter of:
`Registration No. 5376449
`
`For the mark: BLACKPINK
`
`PETITIONER’S RE-NOTICE OF DEPOSITION OF SANG LEE
`
`TO ALL PARTIES AND TO THEIR ATTORNEYS OF RECORD:
`PLEASE TAKE NOTICE
`that Petitioner, YG Entertainment, LLC
`
`(“YG
`
`Entertainment”), pursuant to Federal Rule of Civil Procedure 30(b)(1), will take the deposition
`
`upon oral examination of Mr. Sang Lee of Law Offices of Sang Lee commencing on a date to be
`
`mutually agreed upon by the parties between June 24 and June 28, 2024, at the offices of Law
`
`Offices of Sang Lee, 505 E Golf Road, Suite H, Arlington Heights, IL 60005, or at another location
`
`to be mutually agreed upon by the parties. The deposition shall commence at 10:00 a.m. (Central
`
`Standard Time).
`
`The deposition will be taken under oath before a certified court reporter or notary public duly
`
`authorized to administer oaths. The deposition will be recorded by stenographic means and may be
`
`video recorded, and the noticing party reserves the right to use the instant visual display of the
`
`testimony during the deposition.
`
`

`

`Date: May 24, 2024
`
`
`
`Respectfully submitted,
`
`DINSMORE & SHOHL LLP
`
`
`
`B y: / Gov i nda M . Dav i s/
`Govinda M. Davis
`Dinsmore & Shohl LLP
`255 E. Fifth Street
`Suite 1900
`Cincinnati, OH 45202
`Tel: (513) 977-8200
`Fax: (513) 977-8141
`govinda.davis@dinsmore.com
`Counsel for YG Entertainment, Inc.
`
`2
`
`

`

`CERTIFICATE OF SERVICE
`I hereby certify that a true and correct copy of the foregoing PETITIONER’S RE-
`
`NOTICE OF DEPOSITION OF SANG LEE has been served upon the following by e-mail on
`
`May 24, 2024:
`
`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/_________________
`
`3
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`YG Entertainment, Inc.,
`
`Petitioner,
`
`v.
`
`SM Beauty, LLC,
`
`)
`)
`)
`)
`)
`)
`)
`)
`Respondent. )
`)
`)
`
`In the matter of:
`Registration No. 5376449
`
`For the mark: BLACKPINK
`
`Cancellation No: 92081622
`
`PETITIONER’S RE-NOTICE OF DEPOSITION OF SANG LEW
`
`TO ALL PARTIES AND TO THEIR ATTORNEYS OF RECORD:
`
`PLEASE TAKE NOTICE
`
`that Petitioner, YG Entertainment, LLC
`
`(“YG
`
`Entertainment”), pursuant to Federal Rule of Civil Procedure 30(b)(1), will take the deposition
`
`upon oral examination of Mr. Sang Lew of SM Beauty, LLC (“SM Beauty”) commencing on a
`
`date to be mutually agreed upon by the parties between June 24 and June 28, 2024, at the offices
`
`of Lee & Breen, 188 Industrial Drive, Ste 403, Elmhurst, IL 60126, or at another location to be
`
`mutually agreed upon by the parties. The deposition shall commence at 10:00 a.m. (Central
`
`Standard Time).
`
`The deposition will be taken under oath before a certified court reporter or notary public duly
`
`authorized to administer oaths. The deposition will be recorded by stenographic means and may be
`
`video recorded, and the noticing party reserves the right to use the instant visual display of the
`
`testimony during the deposition.
`
`

`

`Date: May 24, 2024
`
`
`
`Respectfully submitted,
`
`DINSMORE & SHOHL LLP
`
`B y: / Govi nda M . D avi s/ _____
`Govinda M. Davis
`Dinsmore & Shohl LLP
`255 E. Fifth Street
`Suite 1900
`Cincinnati, OH 45202
`Tel: (513) 977-8200
`Fax: (513) 977-8141
`govinda.davis@dinsmore.com
`Counsel for YG Entertainment, Inc.
`
`2
`
`

`

`CERTIFICATE OF SERVICE
`I hereby certify that a true and correct copy of the foregoing PETITIONER’S NOTICE
`
`OF DEPOSITION OF SANG LEW has been served upon the following by e-mail on May 24,
`
`2024:
`
`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/______________
`
`3
`
`

`

`B
`EX. B
`6
`r Lee
`2024.05.26 Email From Mr. Lee
`
`

`

`From:
`To:
`Cc:
`Subject:
`Date:
`
`John Lee
`Boesing, Terri; slee000@aol.com; softbeeus@gmail.com; Monica Lee
`Davis, Govinda; Boruchowitz, Arlene
`RE: YG Entertainment, Inc. v. SM Beauty, LLC - Deposition Notices
`Sunday, May 26, 2024 6:50:12 PM
`
`Arlene and Govinda:
`
`I can tell you that the period you picked is not good for me. I have an arbitration heari