The Pennsylvania Globe Gaslight Co.

Trademark Trial and Appeal Board

Aug 5, 1999

No. 75074295 (T.T.A.B. Aug. 5, 1999)

Paper No. 13
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG 5, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
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In re The Pennsylvania Globe Gaslight Company
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Serial No. 75/074,295
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William L. Feeney and John Kerins of Kerkan, Stoweel,
Kondracki & Clarke for applicant.
Thomas W. Wellington, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
____________
Before Hanak, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
The Pennsylvania Globe Gaslight Company has filed a
trademark application to register on the Supplemental
Register the mark REPLICA GASLIGHTS for “outdoor and indoor
gas and electric lighting fixtures; posts to support gas
and electric lighting fixtures; gas mantles.” 1

1 Serial No. 75/074,295, in International Class 11, initially filed on
the Principal Register on March 18, 1996, based on a bona fide
intention to use the mark in commerce. On March 11, 1997, applicant
filed an amendment to allege use, and specimens, alleging dates of
Serial No. 75/074,295
2
This application was originally filed as an intent-to-
use application on the Principal Register. The Examining
Attorney refused registration under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. 1052(e)(1), on the ground that
applicant’s mark is merely descriptive of the goods
identified in the application. Applicant responded by
filing its amendment to allege use and amending its
application to seek registration on the Supplemental
Register. The Examining Attorney then refused registration
on the ground that the mark is the generic name of the
goods identified in the application.
The Examining Attorney has finally refused
registration, under Section 23 of the Trademark Act, 15
U.S.C. 1091, on the ground that the subject matter of this
application, as used in connection with the identified
goods, is generic and, thus, incapable of identifying
applicant’s goods and distinguishing them from those of
others.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, and an oral hearing
was held.

first use and first use in commerce as of July 1, 1995. On the same
date applicant filed an amendment seeking registration on the
Supplemental Register.
Serial No. 75/074,295
3
With respect to genericness, the Office has the burden
of proving genericness by “clear evidence” thereof. In re
Merrill, Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). The critical
issue in genericness cases is whether members of the
relevant public primarily use or understand the term sought
to be registered to refer to the category or class of goods
in question. In re Women’s Publishing Co. Inc ., 23 USPQ2d
1876, 1877 (TTAB 1992). Our primary reviewing court has
set forth a two-step inquiry to determine whether a mark is
generic: First, what is the category or class of goods at
issue? Second, is the term sought to be registered
understood by the relevant public primarily to refer to
that category or class of goods? H. Marvin Ginn
Corporation v. International Association of Fire Chiefs,
Inc ., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
The Examining Attorney contends that the evidence of
record establishes that the class of goods is “replicas of
gaslights,” i.e., “gaslights which have been produced to
replicate historic or antique gaslights”; that it is
“common for the public to use the term ‘replica’
generically to refer to various products and, in
particular, to refer to the identified goods”; that it is
common for goods that have been replicated to be referred
Serial No. 75/074,295
4
to, generically, by the name of the goods preceded by the
word “replica”; and that REPLICA GASLIGHTS is one generic
name for lighting fixtures that are replicas of gaslights.
The Examining Attorney submitted excerpts of articles from
the LEXIS/NEXIS database in support of his position.
Applicant argues that the word “replica” is vague and
that “REPLICA GASLIGHTS does not indicate what it is a
replica of … [h]ow can one assume that [it] does not refer
to a gaslight that replicates plants, animals or something
else.” Additionally, applicant submitted copies, from an
unidentified source, of two registrations for marks
including the word “replica” for goods wholly unrelated to
the goods herein. Applicant argues that, since only one of
these registrations includes a disclaimer of REPLICA, these
registrations indicate that the Patent and Trademark Office
“has not previously considered [replica] to be generic in
contexts very similar to the present application.” 2
Applicant claims, further, that the phrases evidenced in
the excerpts submitted by the Examining Attorney, “replica

2 The registrations are for the mark REPLICA for hip transplant
prostheses and FAIRWAY REPLICAS for sculpted plastic putting greens
(REPLICA disclaimed). As the Examining Attorney did not object to
these third-party registrations in the form submitted and, in fact,
addressed the merits of applicant’s contentions in this regard, we
consider this evidence to be part of the record. However, applicant’s
arguments pertaining to these two third-party registrations are
unpersuasive as each case must be decided on the facts therein and, in
particular, genericness must be determined in relation to the recited
goods.
Serial No. 75/074,295
5
of a gaslight” or “gaslight replica” are not relevant to
the mark herein, implying that the connotation is
different. Similarly, applicant argues that excerpts with
examples of “replica” preceding other product names (such
as lamp or automobile) are inapposite; and that those terms
are either generic due to the specific use in those fields
or used improperly.
It is clear from the record, and applicant does not
dispute, that the word “gaslight” is a generic term for a
category of lighting fixtures powered by gas and that such
goods are encompassed by the goods identified in the
application. The noun “replica” is defined in the record
as “any close reproduction or copy.” 3 The LEXIS/NEXIS
excerpts of record show the word “replica” preceding the
names of various products ( e.g., “replica automobiles,”
“replica lamps,” “replica chandeliers” and “replica gas
pipes”) to indicate that the products are reproductions of
earlier or antique models of those products. The excerpts
of record also show the word “replica” used in connection
with goods identified as “gaslights” to indicate that the
products are reproductions in the style of the gas-powered

3 Webster’s New World Dictionary of the American Language , 1979.
Serial No. 75/074,295
6
lights common at the turn of the century and earlier.4
These excerpts most commonly use the phrases “replicas of
gaslights” or “gaslight replicas,” although one excerpt
uses the phrase “replica gaslights.” 5
In its brief applicant appears to concede that the
phrases “gaslight replica” 6 and “replica of a gaslight” 7 are
generic names for the goods identified in the application.
At the oral hearing, applicant’s attorney expressly
conceded that these two terms are “the apt descriptive
names” for such goods. We find that the evidence of record

4 “… it might not be a good idea to push the parallel between the
replica gaslights in the new subdivision and the film, which is
something of a replica, too” [ The Boston Globe, October 20, 1995];
“…electric and telephone wires have been buried and replicas of 19th
century gaslights have been installed” [ Arkansas Democrat-Gazette,
April 8, 1995]; “[t]he development’s streets will feature replicas of
turn-of-the-century New England gaslights” [ Chicago Tribune, June 16,
1988].
5 It is unclear in most instances whether the product referenced is
powered by gas or electricity, but this distinction is immaterial as it
appears that replicas of gaslights may be powered by either gas or
electricity and the identified goods in the case before us encompass
both gas and electric fixtures.
6 Referring to the LEXIS/NEXIS evidence, applicant states in its brief
(p.2-3), “… some of the articles use the expression ‘gaslight replica,’
‘gas light replicas,’ etc., but that is not really relevant to the
present mark. Considering that ‘replica’ means ‘copy,’ the expression
‘gaslight replicas’ means ‘gaslight copies.’ ‘Gaslight copies’ would
arguably not be susceptible to registration on the supplemental
register because it is clear that this refers to copies of a gaslight.”
7 Referring to one of the LEXIS/NEXIS articles, applicant states in its
brief (p. 2), “the one article … referred to ‘replicas of 19 th century
gaslights,’ making it clear that reference is being made to a copy of
the a (sic) 19 th century gaslight. However, most importantly, the
present mark is not ‘replicas of a gaslight’ or similar expression. In
other words, the examples in the form of ‘replica of a gaslight’ or
‘replica of a ’ are not really relevant to the
present ‘REPLICA GASLIGHTS’ mark.”
Serial No. 75/074,295
7
supports this conclusion. The evidence also supports the
conclusion that the phrase REPLICA GASLIGHTS is, similarly,
a name for electric and/or gas light fixtures that are
reproductions of antique or historic models or styles of
gaslights. This class or category of goods is encompassed
by the identification of goods in this application. We see
nothing in this record or in the ordinary definitions of
the words “replica” and “gaslights” that would indicate
that the public would perceive REPLICA GASLIGHTS as having
a connotation that differs from the connotation of
“gaslight replica” or “replica of a gaslight.” To the
contrary, the evidence indicates that it is not uncommon
for the public to see in print the word “replica”
immediately preceding the name of the product to which it
refers. Further, there is no evidence in the record to
indicate that such a construction would be inappropriate,
or understood as having a different connotation, in
relation to gaslights. Thus, we find that the evidence
supports the conclusion that the relevant purchasers
understand the phrase REPLICA GASLIGHTS as referring to
this category of goods.
Serial No. 75/074,295
8
Decision: The refusal to register on the Supplemental
Register on the ground that the applied-for mark is generic
in connection with the identified goods is affirmed.
E. W. Hanak
C. E. Walters
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board