Providing Warranty Services With One's Own Goods is not a Recognizable Service Under the Trademark Act
The Board upheld Examining Attorney Barbara Kim's refusal to register the mark EVERYDAY PROMISE for “Providing extended warranty services by the manufacturer for the lifetime of kitchen and bath fixtures and accessories, namely, sinks, and faucets," on the ground that the recited services do not constitute services that fall within the Trademark Act. In re Thompson Traders, Inc., Serial No. 97852613 (May 30, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).
In determining what constitutes a recognizable service under the Act, the following criteria apply: "(1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service." The third element was at issue here.
The Board found that applicant’s warranty "is standard with its goods. It is not a separate service." That, according to the Board "is the key to this inquiry."
The Board distinguished the current situation from that in Otis Engineering., where the applicant provided certification service to some of its elevator customers, but with a separate charge for those services.
In essence, the applicant in the Otis Engineering case was providing ongoing services separate and apart from selling elevators. Some customers obtained such services from the applicant, but others did not. These services were billed and paid entirely separately from the cost of the original elevator. *** The services, therefore, were separate from the goods.
Here, there was no separate cost or fee for the warranty services: they are available to every buyer. No third-party goods are covered by the services. The Board found "absolutely nothing about Applicant’s warranty that is separate from the goods themselves."
We find Applicant’s warranty services are part of what Applicant provides to customers of its goods. Whether the warranty provided is limited to what is required by law is not the key issue. The real question is whether the warranty services are sufficiently separate from the purchase of the goods to constitute a separate and distinct service. They are not. The refusal must be affirmed.
Read comments and post your comment here.
TTABlogger comment: WYHA?
Text Copyright John L. Welch 2025.
posted by John L. Welch @ 6/03/2025
7 comments
7 Comments:
what is the point of this "rule"? what harm will occur if the applicant got a registration for this mark?
I would have appealed and I think this decision is wrong. I don't know of any good or service where a lifetime warranty is standard for the product, and certainly isn't for plumbing fixtures. IMO it's a separate feature of the product.
If all you're doing is warranting your own products, why do you need a separate registration? Is someone else going to warrant them under your mark for plumbing fixtures?
Why not simply apply for it for the goods themselves, i.e. the sinks?
Because of the way the PTO examines registrations. It's a good mark for a warranty and for a 2(d) refusal of a later application the examiner is going to ignore that it's for plumbing and say that all warranties are related. Any who knows, maybe plumbing fixtures are a cutthroat industry with a lot of copying.
@Miriam I expect because it's not a trademark for the fixtures, it's for the warranty program https://www.sinkology.com/warranty/
I would add in that, in the context of infringement, lack of warranty service can be a "material difference" which renders the goods infringing. There have been quite a few cases like that. The highest court to rule that way is Beltronics USA, Inc. v. Midwest Inventory Distrib., LLC, 562 F.3d 1067, 1073 (10th Cir. 2009).
If an item is considered a materially different product because it lacks a manufacturer's warranty, that suggests that the warranty is merely a feature of the product.
Post a Comment
<< Home