Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1122131 Filing date: 03/22/2021
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 88432226 Applicant Stone Paper Global Technologies Ltd. Applied for Mark STONE - PAPER TREE FREE PHOTO DEGRADABLE Correspondence HOWARD LESLIE HOFFENBERG Address IP AND BUSINESS LAW OFFICES OF HOWARD L HOFFENBER 10940 WILSHIRE BOULEVARD SUITE 1600 LOS ANGELES, CA 90024 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected] 310-670-5825
Submission APPLICANT'S SUBMISSION OF EVIDENCE AND DECLARATIONS Attachments Evidentiary Submission Part I of II SN88432226 .pdf(4066480 bytes ) Evidentiary Submission Part II of II SN88432226.pdf(5540847 bytes ) Filer's Name Howard Hoffenberg Filer's email [email protected], [email protected], [email protected] Signature /Howard Hoffenberg, 32,239/ Date 03/22/2021 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Applicant: STONE PAPER GLOBAL TECHNOLOGIES LTD. Serial Number: 88432226 Filing Date: May 15, 2019 Mark: A composite mark comprised of the literal phrase "Stone - Paper" with the word "Stone" in gray and the word "Paper" in green separated by a gray hyphen, with there being above this literal phrase four stones of progressively smaller size with shadows in various shades of gray that are positioned in an arcuate array going from a foreground to a background with there being a leaf on top of the first stone in the foreground and two leaves adjacent to two stones in the midground where the leaves are of varying shades of green and there being beneath the literal phrase in side by side fashion a gray circle with a green tree inside of it and the words "Tree Free" beneath it; to the right of the tree icon is a gray circle depicted as an arrow with the tip of the arrow at the top of the open circle; inside the circle is a gray symbol depicting the sun; beneath are the words "Photo Degradable" in gray; the color white is for background purposes and is not a feature of the mark.
Examining Atty.: PENDLETON, CAROLYN A Law Office: 103
APPLICANT’S SUBMISSION OF EVIDENCE AND DECLARATIONS
Applicant, STONE PAPER GLOBAL TECHNOLOGIES LTD., sbmits evidence and declarations that it wishes to make of record.
Respectfully submitted,
Date: March 22, 2021 /Howard L. Hoffenberg, Reg. No. 32,239/ Howard L. Hoffenberg, Esq. IP and Business Law Offices of Howard L. Hoffenberg, Esq. 10940 Wilshire Boulevard, Suite 1600 Los Angeles, California 90024
DECLARATION OF SAM FARHANGI
I, Sam FARHANGI, declare:
Foundation
1. I am the Chairman and CEO of applicant, Stone Age Packaging, Inc.,
and am the Chairman and CEO of the current assignee, Stone Paper
Global Technologies Ltd.
2. The matters stated herein are of my own personal knowledge and I
can competently testify thereto. As to the opinions and evaluations of
consumer mind set stated herein and as for those opinions and
evaluations, I believe them to be true to reasonable high certainty.
3. As CEO of the applicant, I oversee and am familiar with all
aspects of applicant’s business from product design, to
manufacturing and through sales and marketing. More
particularly, as I declared in my January 20, 2020 declaration,
part of my job duties is to oversee a network of US distributors.
Another commitment within my job duties is to directly
interface with US end user customers to ensure quality
business performance.
Recognition of Stone Paper as a Brand in a Revised Two Sides Report
4. Two Sides is an independent environmental consulting firm out of
Chicago, Illinois. As the name implies, Two Sides challenge
organizations making misleading statements related to forestry related
industries and other environmental attributes. 5. Attached hereto as Exhibit A is a true and exact copy of a briefing
document by Two Sides entitled Stone Paper® (mineral paper) Revised
February 2021.
6. Having seen an earlier more complex version of this report, I
contacted Two Sides to complement their efforts in the fight against
greenwashing and public deception. They were mainly interested to
discuss the international presence of Stone Paper as a brand name.
They heard what I had to say in regards to the problem of
greenwashing by a few independent international traders and
distributors, apparently, they did their research of the market
worldwide and upon their investigation agreed to render a more
complete report for both North America and Europe. Their
investigation from the content available on the public domain resulted
in the confirmation that the primary significance of Stone Paper to US
consumer is a brand name for mineral paper. On page 4 of this
briefing document, Two Sides wrote:
“What is Stone Paper®?
Stone Paper® is a widely used registered brand name for a
mineral paper-like material … The trademark, licenses and
manufacturing of Stone Paper® are owned and managed by
Stone Paper Global Technologies Inc. [i.e., applicant.]” …
[paragraphs] ….
Stone Paper Attached as Exhibit A(bis) is patent excerpts on our manufacturing process and attached hereto as Exhibit A(tris) are material safety sheets on raw materials. Response to Office Action, we submitted webpage https[...]agood.com
(our-factories), a Swedish finished product trader in the market for
mineral paper. In that webpage, the Swedish company called A Good
Company wrote “[w]e wouldn’t be what we are without our network of
ambitious suppliers. This phrase was followed by several captioned
pictures including the following:
Limestone is not an ingredient of the mineral paper they carry.
Mindset of US Consumers in Making a Purchasing Decision and Global Internet Sites
10. The prevailing perspective of US customers is that mineral
paper is not a technologically sophisticated product and
commensurately, US consumers generally do not utilize all
available internet resources, regardless of country of origin, to
learn about mineral paper. The mindset of US customers is a
visceral understanding as to the durability of mineral paper and
its ecological friendliness. US Customers purchasing decisions
predominantly focus upon the printability, yellowing and edge quality of the mineral paper. The mind set of US customers is to
process these factors at a Gestalt level; e.g., how good is the
mineral paper at printing, not yellowing and having a quality
edge. US Consumers do not customarily go to foreign websites
in a fever to assemble information on a technical product.
11. The above observation by myself on the mental state of US
consumers from interacting with them is reinforced by the
examiner’s own evidence; namely, February 17, 2020 Office
Actin, web pages https://markets.businessinsider
com/news/stocks/the-world-market-for-stone-paper-2024-14-
4-billion- opportunity-analvsis-by-application-reaion-
1028327923. This incomplete document which the examiner
selectively relied upon establishes that US consumers mindset
is such that mineral paper is a commodity product and not a
technologically sophisticated product.
12. The pages from foreign websites attached by the examiner are not
likely to have been viewed by any significant number of US consumers
and not relevant to the primary significance of the term stone paper to
US consumers.
A. Most recently, in the August 19, 2020 Request for
Reconsideration After Final Action Denied, the below pages from
foreign websites were attached by the examiner. None are likely
to have been viewed by any significant number of US consumers and are not relevant to the primary significance of
the term stone paper to US consumers:
a. Uzbekistan to produce paper from stone by foreign technologies Trend News Agency (Baku, Azerbaijan) May 29, 2019 Wednesday
b. https://agood.com
c. Reviving a Lost Art, One Wall at a Time The New York Times November 24, 2014 Monday, The International New York Times Copyright 2014 The New York Times Company Section: Section ; Column 0; Style Desk; Pg. Length: 884 words Byline: By FELICIA CRADDOCK Body TOURS, France - - During an interview in his paint- flecked workshop last month, Francois-Xavier Richard
B. In the August 6/7, 2019 Office Actions, the following pages
from foreign websites were attached by the examiner. None are
likely to have been viewed by any significant number of US
consumers and are not relevant to the primary significance of
the term Stone Paper to US consumers:
a. webpage https[…]karststonepaper.com;
b. https[…]www.stonepaper.co nz (about-rockstock);
c. https[…]wvw.treehugger.com (paper-notebook-made-
stone);
d. http[…]www.stonepapersz.com; e. https[…]paperontherocks.com (how-do-you-make-
stonepaper – However, while not relevant as surrogate
evidence of the primary significance of Stone Paper to US
consumers, the web page is a potent adverse admission
by the examiner that limestone is not an ingredient of
Stone Paper brand mineral paper. Written therein is the
observation that rich mineral paper is made from grinding
calcium carbonate and not stones. In particular, the
following is written: “The calcium carbonate is ground to
a fine powder and combined with the heated resin.”
f. https[…]paperontherocks.com (how-do-you-make-
stonepaper) and
g. https[…]imstoneqifts (qray-rock-book-l).
C. In the February 7, 2020 Office Actions, the following pages from
foreign websites were attached by the examiner. None are likely
to have been viewed by any significant number of US
consumers and are not relevant to the primary significance of
the term stone paper to US consumers:
a. https://www. stone-paper,corn/en/whv-stone-paper;
b. https://fmdling.info/en/welcome/ and
c. https://www.linkedin. corn/cornpanv/the-stone-paper-
cornpanv-ltd 02/14/2020 07:05:04 PM. 13. From my grasp of the market for mineral paper, A good is a
Swedish company ordering finished products and has almost no sales
in the United States. Verbiage used by A good in their website is not
surrogate evidence of the primary significance of the phrase “stone
paper” to US consumers.
14. From my grasp of the market for mineral paper, I am unaware of
any sales of mineral paper from Uzbekistan, let alone to US
consumers. A news report by Trend News Agency (Baku, Azerbaijan)
published on the Internet is not surrogate evidence of the primary
significance of the phrase “stone paper” to US consumers.
Foreign Registrations in Rebuttal to the Examiner’s Foreign Websites
15. Of course, I agree with the Commissioner of Trademarks, and of
course, the Commissioner of Trademarks got it right, in writing in his
February 1, 2021 decision on petition that “[a]s to the additional
foreign registrations, petitioner submitted a Canadian registration
with its January 20, 2020 response which the examining attorney did
not find persuasive in light of the other evidence of record.
Furthermore, the Trademark Manual of Examining Procedure (TMEP)
is quite clear that third-party registrations, even from the USPTO, are
not conclusive on the question of descriptiveness. Each case must
stand on its own merits …”
16. With all due respect, the Commissioner of Trademarks, he
misapprehended the reason for, and probativeness of, the foreign registrations. The foreign registrations are being proffered in rebuttal
to the examiner’s pages from foreign websites. The theory being that
the official trademark authority of governments outside the United
States recognize our mark, Stone Paper, as a protectable trademark.
Accordingly, the examiner misses the point that the webpages from
foreign websites show merely descriptiveness (or genericness).
17. For this reason, I make of record more foreign registrations as
follows:
A. Attached hereto as Exhibit B is a true and exact copy of a notice of
a grant of protection in New Zealand.
B. Attached hereto as Exhibit C is a true and exact copy of a notice of
a grant of protection in Australia.
C. Attached hereto as Exhibit D is a true and exact copy of a notice of
a grant of protection in European Union
D. Attached hereto as Exhibit E is a true and exact copy of an Israeli
certificate of registration.
E. Attached hereto as Exhibit F is a true and exact copy of a notice of
a grant of protection in United Kingdom
F. Attached hereto as Exhibit G is a true and exact copy of a notice of
a grant of protection in Brazil
G. Attached hereto as Exhibit H is a true and exact copy of a notice of
a grant of protection in Singapore H. Attached hereto as Exhibit I is a true and exact copy of a notice of
acceptance of our application in United Arab Emirates finding no
grounds for refusal and still subject to an opposition period.
I. Attached hereto as Exhibit J is a true and exact copy from Trade
Marks Directory Services (CPA Global) watch notice notifying us of our
South Korean application publication and start of opposition period
following no grounds for refusal.
Policing the Market
18. With recent grant of protections worldwide, I attempt to police the
market for generizors.
19. Attached hereto as Exhibit K is a true and exact copy of an e-mail
string with shopify.com as a major US marketplace confirming they
know Stone Paper as a brand name and not as a generic term.
20. Attached hereto as Exhibit L is a true and exact copy of a web page
by a well-known US seller on the internet entitled The MICHELIN
Guide invites you to join our virtual Family Meal. This publisher
recognizes Stone Paper as a brand for mineral paper.
21. News reports on the Internet are difficult to police because, as the
Board knows, news reporters enjoy First Amendment rights that are
not enjoyed by vendors.
The Examiner’s Dozen News Reports do Not Equate with the Primary Significance of the Term to US Consumers
Exhibit M(bis) is a redacted check payable to Stone Paper and banks will only checks payable to brands and not generic or merely descriptive terms certification institute based out of Oakland, California where the
manager recognizes Stone Paper as a brand of mineral paper.
27. Most recently, the below news reports attached by the examiner to
the August 19, 2020 Request for Reconsideration After Final Action
Denied. These new reports are not likely to have been viewed by any
significant number of US consumers to shape their thinking and are
not relevant to the primary significance of the term stone paper to US
consumers:
a. Making gift wrap sustainable; On the Money: Making gift wrap sustainable Winston-Salem Journal (North Carolina) December 1, 2019 Sunday Copyright 2019 Media General Communications Holdings, LLC All Rights Reserved Section: C; Pg. 2 Length: 721 words Byline: DEEANN DURBIN The Associated Press
b. On the Money: Making gift wrap sustainable Missoulian November 27, 2019 Wednesday Copyright 2019 ProQuest Information and Learning All Rights Reserved Copyright 2019 Missoulian Nov 27, 2019 Section: ISSN: 07464495 Length: 737 words Byline: DEE-ANN DURBIN AP Business Writer Dateline: Missoula, Mont
c. Eco Friendly Gift Options CBS - 7 WSPA (Greenville-Spartanburg, South Carolina) April 5, 2019 Friday Copyright 2019 Media General Communications Holdings, LLC Distributed by Newsbank, Inc. All Rights Reserved Section: ENTERTAINMENT Length: 216 words Byline: Tammy Jones
Copyright 2018 The Washington Post All Rights Reserved The Washington|Post washingtonpost.com Distribution: Every Zone Section: METRO; Pg. C03 Length: 724 words Byline: John Kelly Body d. Two groups plan weekend rally against proposed Spicewood rock crusher and quarry The River Cities Daily Tribune (Marble Falls, Texas) September 6, 2018 Thursday Copyright 2018 The River Cities Daily Tribune, Victory Publishing Co., Ltd. Distributed by Newsbank, Inc. All Rights Reserved Section: SPICEWOOD Length: 446 words e. Court ruling limits future discharges into Clark Fork from former Smurfit pulp mill Missoulian August 8, 2017 Tuesday Copyright 2017 ProQuest Information and Learning All Rights Reserved Copyright 2017 Missoulian Aug 8, 2017 Section: ISSN: 07464495 Length: 501 words Byline: Rob Chaney Dateline: Missoula, Mont. f. Clifton School District's fix list includese roofs, boilers northjersey.com April 3, 2015 Friday Copyright 2015 northjersey.com, North Jersey Media Group, Inc. Distributed by Newsbank, Inc. All Rights Reserved Section: EDUCATION Length: 678 words Byline: Maggie Katz g. EARTH-FRIENDLY TOYS Herald News (Passaic County, NJ) February 26, 2011 Saturday, AE Edition Copyright 2011 North Jersey Media Group Inc All Rights Reserved Section: LIFE; Pg. E01 Length: 1039 words Byline: Colleen Diskin, Staff Writer E-mail: [email protected] h. Eyecatehers The Atlanta Journal-Constitution November 8, 2009 Sunday, Main Edition Copyright 2009 The Atlanta Journal-Constitution The AtlantaJournal-Constitution ajc.com Section: FEATURES; Pg. 16E Length: 296 words Byline: Nedra Rhone, Sabine Morrow i. Eco-friendly cosmetic bags look pretty, too Fort Worth Star-Telegram (Texas) October 29, 2009 Thursday Copyright 2009 Fort Worth Star-Telegram All Rights Reserved Found on DFW•com Section: E; Pg. 5 Length: 147 words j. Playing in the world of Harry Potter at summer camp Sun Journal (Lewiston, Maine) July 18, 2009 Saturday Copyright 2009 ProQuest Information and Learning All Rights Reserved ProQuest SuperText Copyright 2009 Sun Journal Section: LEWISTON/AUBURN Length: 514 words Byline: Bonnie Washuk, By Bonnie Washuk, Staff Writer k. SOME ENCHANTED EVENINGS The Gazette (Colorado Springs, Colorado) April 15, 2008 Tuesday Copyright 2008 ProQuest Information and Learning All Rights Reserved ProQuest SuperText Copyright 2008 Freedom Newspapers, Inc. Section: LIFE; Pg. LI1 Length: 2799 words Byline: MELISSA CASSUTT
l. in addition to being referenced above, Uzbekistan to produce paper from stone by foreign technologies Trend News Agency (Baku, Azerbaijan) May 29, 2019 Wednesday
m. in addition to being referenced above, Reviving a Lost Art, One Wall at a Time The New York Times November 24, 2014 Monday, The International New York Times Copyright 2014 The New York Times Company Section: Section ; Column 0; Style Desk; Pg. Length: 884 words Byline: By FELICIA CRADDOCK Body TOURS, France - - During an interview in his paint-flecked workshop last month, Francois-Xavier Richard
28. I had no clue about a mineral paper bath-time coloring set, until
examiner’s office action. From my perspective, the referenced
merchant is insignificant in market with meniscal consumer visibility.
The verbiage used by the merchant in conducting business that is
reported in The Record (Bergen County, NJ) on February 26, 2011 is
not surrogate evidence of the primary significance of the phrase “stone
paper” to US consumers.
29. The three news reports which refer to Alicia Silverstone – i.e., Plain
Dealer (Cleveland, OH), December 2, 2009; The Atlanta Journal-
Constitution November 8, 2009 and Fort Worth Star-Telegram (Texas),
October 29, 2009 - appear to come out of press release(s). I had no
clue about Alicia Silverstone’s activities, until examiner’s office action.
Alicia Silverstone’s activities are insignificant in market with meniscal consumer visibility. The verbiage used by the journalists in 2009 in
connection with Alicia Silverstone’s press releases is not surrogate
evidence of the primary significance of the phrase “stone paper” to US
consumers.
30. The below news reports attached by the examiners February 17,
2020 USPTO Official Notice, are not likely to have been viewed by any
significant number of US consumers to shape their thinking. They are
reflective of news reporters being incentivized to use our brand name
of Stone Paper, as opposed to the generic term mineral paper, to boost
readership of their news reports and are not reflective of the primary
significance of the term stone paper to US consumers:
d. https://markets.businessinsider com/news/stocks/the-
world-market-for- stone-paper-2024-14-4-billion-
opportunity-analvsis-bv-application-reaion-1028327923;
e. https://www. greenerpackage. com/renewable
resources/bright future stone paper
f. https://www. qrandviewresearch. com/industrv-
analysis/stone-paper-market
Examiner’s Webpage Attachments that are Not Currently on the Internet
31. I cannot navigate to the below webpage attachments by the
examiner and I suspect that the web pages are no longer on the
Internet:
a. https://lockergnome. com/2012A34/D2/stone-paper/ and b. http://www. getfiberstone.com
The Stone Graphic Component of Our Logo
32. In the August 19, 2020 Request for Reconsideration After Final
Action Denied, the examiner exhaustively attaches pages from our
websites featuring our logo and imagery.
33. As I declared above, Stone Paper brand mineral paper is not made
by crushing limestone; rather, we make Stone Paper brand mineral
paper from mined virgin calcium carbonate mineral. As a side note,
eggshell is composed of 97% pure calcium carbonate, but we don’t
declare our paper is made from eggshell.
34. We introduced to the market the stone graphic as part of our logo.
Prior to our introduction of the stone graphic as part of our logo, the
stone graphic had no significance in the mineral paper industry. From
my interacting with US consumers, the primary significance of the
stone graphic in our logo is an indication of the smoothness,
luxuriousness and the spa type comfort vibe transmitted to
consumers generated by the mineral paper which comes from our
company. The mind set of US consumers is NOT to think that the
stone graphic in our logo is limestone, that limestone is made from
calcium carbonate and the stone graphic component of our logo is
descriptive of an ingredient of mineral paper just as the apple imagery
of Apple Computers is not an indicative that the new compostable or biodegradable Apple Computer casing is made from anything related
to cellulose fiber coming from an apple tree.
35. Attached hereto as exhibit O is a signed declaration from Hsien Ho
Liang (English name Henry Liang) of Taiwan Lung Meng Advanced
Material Co designated as the Original Design Manufacturer (ODM)
declaring that Stone Paper mineral paper is not manufactured from
any limestone. Furthermore, he declares that Stone Paper is a
proprietary name accompanied by the proprietary logo mark
containing elliptical smooth stone shape images for the mineral paper
they manufacture.
Wrap-up
36. This declaration by myself is just one component of our case that
the examiner’s position is frivolous. I have already submitted another
declaration with attached exhibits. Further, exhibits have been
submitted and arguments have been made in a response to office
action, after final response to office action and requests for
reconsideration.
37. The examiner has attached several dozen webpages to office
actions out of the billions of pages on the World Wide Web (Internet).
Just because somebody puts something in writing on the Internet
does not mean that it is so. The moniker of our times is fake news.
38. The primary significance to US consumers of Stone Paper is a
brand for mineral paper. The statements herein are made with knowledge that willful false
statement and the like so made are punishable by fine or imprisonment,
or both, pursuant to 18 USC 1001 and that such willful false statements
may jeopardize the validity of the trademark application and any
registration issued thereon.
Executed this 3rd day of March in the year 2021 in Vancouver,
British Columbia, Canada subject to the penalties of perjury of the
United States of America.
______Sam Farhangi EXHIBIT A
REVISED - FEBRUARY 2021
® Stone Paper (mineral paper)
BRIEFING DOCUMENT PREPARED BY TWO SIDES
Page 1 Briefing Document: Stone Paper
Briefing Document: Stone Paper®
Revised February 2021
Contents
Editors comments ...... 3 Summary ...... 3 What is Stone Paper®? ...... 4 Manufacturers, Distributors and Brands...... 4 Stone Paper ...... 4 Limex ...... 5 Green Claims ...... 5 Environmentally friendly raw materials...... 5 Making use of waste...... 6 Saving water...... 7 No harmful chemicals...... 7 Significantly lower Carbon Footprint...... 7 Recyclability ...... 8 Degradability...... 9 Certifications...... 9 Two Sides and Regulator Activity...... 10 Australia ...... 10 France ...... 10 Netherlands ...... 10 UK ...... 11 Conclusions ...... 11 Appendix: Full list of Stone Paper traders and brands...... 12
Page 2 Briefing Document: Stone Paper
Editors comments
This briefing document has been researched from information available in the public domain and prepared for Two Sides by Truffula, an independent environmental consultancy, in response to statements being made about the environmental benefits of mineral paper.
There is no intention to denigrate this type of mineral based material in any manner, only to challenge some of the misleading and inaccurate statements being made by independent traders and distributors.
In this document, the term mineral paper is used to describe all its various brands which are made from a mix of calcium carbonate and high-density polyethylene and sold as an alternative paper-like material to traditional paper made from cellulose-fiber (trees).
Two Sides will review or update this briefing paper should new or more detailed information emerge or be provided.
Summary