Warranty or Guarantee of Repair

While the repair of the goods of others is a

recognized service, an applicant’s guarantee of repair of its own goods does not

normally constitute a separate service, because that activity is ancillary to and

normally expected in the trade.

In re Orion Research

Inc.

, 669 F.2d 689, 205 USPQ 688

(C.C.P.A. 1980) (guarantee of repair or replacement of applicant’s goods that is

not separately offered, promoted, or charged for is not a service);

In re Lenox,

Inc.

, 228 USPQ 966

(TTAB 1986) (lifetime warranty that is not separately offered, promoted, or

charged for is not a service).

However, a warranty that is offered or charged for

separately from the goods, or is sufficiently above and beyond what is normally

expected in the industry, may constitute a service.

In re Mitsubishi Motor Sales of

Am., Inc.

, 11 USPQ2d 1312

(TTAB 1989) (comprehensive automobile vehicle preparation, sales, and service

program held to be a service, where applicant’s package included features that

were unique and would not normally be expected in the industry);

In re Sun Valley Waterbeds

Inc.

, 7 USPQ2d 1825

(TTAB 1988) (retailer’s extended warranty for goods manufactured by others held

to be a service, where the warranty is considerably more extensive than that

offered by others);

In re Otis Eng'g

Corp.

, 217 USPQ 278

(TTAB 1982) (non-mandatory quality control and quality assurance services held

to constitute a registrable service even though the services were limited to

applicant’s own equipment, where the services were separately charged for, the

goods were offered for sale without services, and the services were not merely a

time limited manufacturer’s guarantee).

Providing warranties to consumers and retailers on

power-operated outdoor products was held to be a registrable service where the

warranty covered goods manufactured by applicant but sold under the marks of

third-party retailers

here the services were separately charged for, the

goods were offered for sale without services, and the services were not merely a

time limited manufacturer’s guarantee).

Providing warranties to consumers and retailers on

power-operated outdoor products was held to be a registrable service where the

warranty covered goods manufactured by applicant but sold under the marks of

third-party retailers. Noting that none of applicant’s trademarks appeared on the

goods or identified applicant as the source of the goods, the Board found that the

third-party retailers rather than applicant would be regarded as the manufacturer

of the products. Because purchasers would make a distinction between the provider

of the warranty and the provider of the goods, applicant’s warranty service would

not be regarded as merely an inducement to purchase its own goods. The Board also

noted that applicant’s activities constitute a service to the third-party

retailers, because applicant’s provision of warranties avoids the need of the

retailer itself to provide a warranty.

In re Husqvarna

Aktiebolag

, 91 USPQ2d 1436

(TTAB 2009) .

When an applicant offers a warranty on its own goods

or services, the identification of services must include the word “extended,” or

similar wording, to indicate that the warranty is “qualitatively different” from a

warranty normally provided ancillary to the sale of the applicant’s

goods/services. When an applicant offers a warranty on third-party goods, the

identification of services must so indicate.

See

In re Omega SA,

494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007)

(affirming that the USPTO has the discretion to determine whether and how a

trademark registration should include a more particularized identification of the

goods for which a mark is used).

The identification of services must also specify the

item(s) that the extended warranty covers, e.g., “providing extended warranties on

television sets.”

Id.

Extended warranty services are classified in Class

36.