Husqvarna Aktiebolag

Trademark Trial and Appeal Board

Jul 17, 2009

No. 78899587 (T.T.A.B. Jul. 17, 2009)

Mailed:
July 17, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Husqvarna Aktiebolag
________

Serial No. 78899587
_______

Michael W. Garvey of Pearne & Gordon LLP for Husqvarna
Aktiebolag

Michael Webster, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney)
_______

Before Seeherman, Walters and Rogers, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Husqvarna Aktiebolag (applicant) has appealed from the
refusal of the trademark examining attorney to register HOP
as a service mark for “providing warranties to consumers
and retailers on power-operated outdoor products, namely,
power-operated chain saws, edgers, string trimmers,
tillers, hedge trimmers, brush cutters, blowers for yard
debris, blower/vacuum combinations, lawn mowers, lawn and
garden tractors, snow throwers, pressure washers, sweepers,
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser No. 78899587
2
stump grinders, ice augers, generators, utility vehicles,
pole saws, aerators, power rakes/dethatchers, seeders, sod
cutters, concrete planers, grinders, groovers, masonry
saws, concrete saws, metal cut-off saws, wall saws, wire
saws, drills, floor saws, masonry saws, and file saws.”1
The examining attorney refused registration pursuant to
Sections 1, 2, 3 and 45 of the Trademark Act, 15 U.S.C.
§§1051, 1052, 1053 and 1127, on the ground that the
activities set forth in the identification do not
constitute a service within the meaning of the Trademark
Act. In particular, the examining attorney asserts that
offering a standard warranty for one’s own products is not
a separate service but is merely an activity that is
incidental or ancillary to the sale of the goods.
Preliminarily, we note that applicant filed a request
for reconsideration on November 7, 2007 and a notice of
appeal on November 9, 2007. However, the Board was not
aware of the request for reconsideration when it instituted
the appeal on November 9 and therefore, in the order
instituting the appeal, advised applicant that it had sixty
days to file its appeal brief; applicant did so on January

1 Application Serial No. 78899587, filed June 2, 2006, based on
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b) (intent-to-
use).

Ser No. 78899587
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7, 2008. On January 14, 2008, apparently unaware of the
filing of either the notice of appeal or the appeal brief,2
the examining attorney issued a non-final Office action
denying the request for reconsideration. This action
stated that applicant’s identification of services was
unacceptable because it did not identify a service, and
suggested that applicant amend its identification to
reflect that it was offering extended warranties.
Applicant declined to do so, and the examining attorney
issued another final refusal requiring an amendment of the
identification of services and refusing registration on the
basis that “the activities recited in the identification of
services are not registrable services as contemplated by
the Trademark Act.” This action stated that the
application would be returned to the Board for resumption
of the appeal. Applicant then submitted a second brief,
requesting that, since there had been additional
prosecution of the application subsequent to the filing of
its initial brief, the new brief be considered. The second
appeal brief is therefore considered the operative brief in
this appeal.

2 The TTABVUE database shows that the Board forwarded the
electronic record of the application file to the examining
attorney on January 7, 2008 for preparation of his brief.
Ser No. 78899587
4
We point out that, although the examining attorney
stated in the second final Office action that he was
requiring an amendment of the identification, this
requirement in fact is part of the substantive refusal that
applicant’s activities do not constitute a service, and the
suggested amendment to the identification was merely to
have applicant identify its activities in a manner that
would be acceptable so that its mark would be registrable
as a service mark. This was confirmed by the examining
attorney’s appeal brief, which discusses only whether
applicant’s activities constitute a service. Accordingly,
the only issue on appeal is whether applicant’s activities,
as set forth in its identification of services, constitute
a service for which a service mark registration can be
issued.
In In re Betz Paperchem, Inc., 222 USPQ 89, 90 (TTAB
1984), the Board noted with approval the criteria set forth
in the Trademark Manual of Examining Procedure for
determining whether an activity constitutes a service: (1)
a service is the performance of some activity; (2) the
activity must be for the benefit of someone other than the
applicant; and (3) the activity must be recognizable as a
separate activity, that is, it cannot be merely incidental
Ser No. 78899587
5
or necessary to applicant's larger business.3 There have
been several cases that have considered whether providing a
warranty constitutes a service. In In re Orion Research,
Incorporated, 669 F.2d 689, 187 USPQ 485, 486 (CCPA 1975),
the Court held that the applicant’s “guaranteeing
instrument replacement” for goods of its own manufacture
was not a separate service: the warranty was not separately
offered apart from the sale of the goods, it was for a
limited period of time, the applicant did not sell the same
goods without the warranty at a lower price, and the
applicant did not promote the warranty separately. Looking
at the cumulative effect of these factors, the Court found
that the applicant “merely guarantees or warrants the
performance of its own goods, rather than provides a
service contemplated by the Lanham Act (Act). Such
guarantee or warranty may serve as an inducement in the
sale of Orion's goods, but does not constitute a service
separate therefrom.”

3 At the time of the decision this criteria was found in TMEP
§1301.01; currently it appears in §1301.01(a), and has been
reformulated slightly to: (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.

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Similarly, in In re Lenox, Inc., 228 USPQ 966 (TTAB
1986), the Board held that “guaranty and warranty services
offered in connection with retail jewelry store services”
did not constitute a separate service for which service
mark registration could be obtained, finding that repair
and replacement services as to defective merchandise was
within the sphere of Orion, and that applicant’s additional
diamond resetting and trade-in “privileges,” which were not
separately offered, promoted or charged for, were no more
than an inducement to buy.
On the other hand, in In re Sun Valley Waterbeds Inc.,
7 USPQ2d 1825 (TTAB 1988), the Board found “warranty
services for promoting the sale of waterbeds” was a service
within the contemplation of the Act. This was because the
applicant, a retail store, was not selling goods of its own
manufacture, and therefore the warranty was not viewed as
an inducement in the sale of the applicant’s own goods. In
addition, the extended warranty offered by the applicant
was over and above the norm of the industry. And in In re
Otis Engineering Corporation, 217 USPQ 278 (TTAB 1982), the
Board found that the applicant’s quality control and
quality assurance services, including testing and
certification, was a service within the contemplation of
Section 3 of the Act, rather than an activity incidental to
Ser No. 78899587
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the sale of its goods, notwithstanding that the applicant
certified only its own goods. This was because of the
additional factors that there was a separate charge for the
certification services, the applicant's equipment and
products were offered for sale without these services, and
the certification services were not a time-limited
manufacturer's guarantee.
As stated in In re Sun Valley Waterbeds, Inc., 7
USPQ2d at 1826:
With respect to those cases which
pertain to warranties, the general rule
which emerges is that guaranteeing or
warranting the performance of the goods
of one's own manufacture is not
normally considered a service within
the contemplation of the Lanham Act
unless, for example, the guaranty is
offered or charged for separately from
the goods, or is sufficiently above and
beyond what is normally expected so
that the warranty is raised to the
status of a separate service activity.

The examining attorney has, in attempting to show that
the present situation falls within the general rule,
submitted evidence that third parties offer warranties for
the same types of tools that applicant warranties. See,
for example, the website for BOSCH power tools, which
features a 3 year warranty, www.bosch-pt.com/warranty, and
the website for RIDGID power tools, which features a three
Ser No. 78899587
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year warranty and 90-day satisfaction guarantee policy,
www.ridgid.com.
However, applicant argues that there are factual
differences between its activities and those cases in which
an applicant was found not to be rendering a cognizable
service. Applicant has explained that it manufactures
numerous power-operated outdoor products, some of which may
be sold with applicant’s Husqvarna trademark and some of
which may be sold under the brands and marks of third-party
retailers, i.e., private-labeled. Applicant gives as an
example that many of its products are sold through Sears
and bear Sears’ CRAFTSMAN trademark. Its warranty,
identified by the mark HOP, is used, inter alia, for these
private-labeled goods. However, aside from the HOP mark
that identifies the warranty service, none of applicant’s
trademarks appears on the goods or identifies applicant as
the source of the goods. “Applicant is not the owner of
the … mark on the goods (i.e., the mark branding the
product as presented to the consuming public).” Response
filed July 14, 2008. As a result, according to applicant,
those cases in which it was held that the offering of a
warranty by the manufacturer of the goods is not a service
are inapposite because, in terms of the ultimate consumers,
the third-party sellers would be regarded as the
Ser No. 78899587
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manufacturers of the products, rather than applicant.
“[T]he warranty is provided by the Applicant as separate in
identity from the good sold as labeled by the
merchandiser….” Id. Therefore, the mark HOP would
identify the source of the warranty, the service provided
by applicant, while the private-label mark would identify a
different source for the goods. “[T]he consuming public
would seek warranty service from HOP as the warranty
provider.” Response filed Nov. 7, 2007. Or as applicant
puts it, “the provider of the warranty is different from
the entity identified as selling the product to the
consuming public.” Brief, p. 10.
We agree that under this scenario there is a
sufficient distinction between the warranty service and the
goods that applicant’s warranty service would not be
regarded as merely an inducement to purchase its goods
because, in effect, the goods are not applicant’s but are
those of the company for whom applicant makes the private-
labeled products. Because purchasers would make a
distinction between the provider of the warranty and the
provider of the goods, the warranty services are not merely
ancillary to the sale of the goods. Just as the sources of
the goods and the warranty would be understood to be
separate, the warranty services would be viewed as separate
Ser No. 78899587
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and distinct as well, and not as merely incidental to the
sale of the goods.
Applicant also identifies retailers as the
beneficiaries of its services. Such retailers would
include the companies for whom it private-labels the goods
and who then sell them under their own brands. These
retailers would, of course, be aware that applicant is both
the manufacturer of the goods and the source of the
warranty, so the distinction discussed above would not
apply to them. We must therefore consider whether
applicant’s activities constitute a service vis-à-vis
retailers.
Applicant has explained that some of the aspects of
its service include “handling all of the claims that arise
with the consuming public so that no claim are [sic] to be
routed to the private label marketer, providing a call-in
center to again avoid having anything routed to the private
label market, settle with the consuming public concerning
such claims, and in general provide support to the
consuming public.” Response filed July 14, 2008. Because
applicant’s provision of warranties avoids the need of the
retailer to provide a warranty itself, and because
applicant essentially handles the work involved in managing
Ser No. 78899587
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warranty claims, applicant’s activities constitute a
service that applicant renders to retailers.
Thus, we find that the activities as identified in the
application constitute a cognizable service under the
Lanham Act.
We must point out that in the cases cited by both
applicant and the examining attorney as to whether the
identification recites a cognizable service the Board and
the Courts have had the opportunity to determine this
through an examination of the specimens submitted with the
application. However, in the present case applicant filed
its application based on an intent to use the mark, and it
has not filed an amendment to allege use. Therefore, we do
not have any specimens upon which we can base a
determination as to whether applicant is actually
performing a service, and must rely on the statements made
by applicant describing what its activities are.
Accordingly, although we find on the basis of these
statements that applicant’s warranties to consumers and
retailers constitute the rendering of services within the
meaning of Section 3 of the Trademark Act, if the specimens
applicant submits with its statement of use fail to show
that the mark is used for services as described by
applicant, it would be appropriate for the examining
Ser No. 78899587
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attorney, at the time he examines the statement of use, to
refuse registration on this basis.4
Decision: The refusal of registration is reversed.

4 Moreover, if a registration were to issue for the identified
services and applicant were to cease using the mark for warranty
services as described during the prosecution of this application,
e.g., if applicant were to use the mark HOP only for warranties
in connection with goods it manufactures and sells under its own
marks rather than third-party or private-label brands, such
registration would be vulnerable to cancellation because
applicant is not using the mark on cognizable services.