TTAB - Trademark Trial and Appeal Board - *1 IN RE SUN VALLEY WATERBEDS, INC. Serial No. 611,444 June 28, 1988

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)



Serial No. 611,444

June 28, 1988


Nelson & Roediger for applicant



Hannah Fisher



Trademark Examining Attorney



Law Office 4



(Tom Lamone, Managing Attorney)



Before Sams, Rooney and Seeherman






Opinion by Seeherman






 Sun Valley Waterbeds, Inc. has applied to register 'S.M.A.R.T.' for warranty services for promoting the sale of waterbeds, asserting use in interstate commerce on or about May 1, 1986. [FN1] Registration was refused pursuant to Sections 3 and 45 of the Trademark Act, 15 U.S.C. 1053 and 1127, on the ground that the term does not function as a service mark.



 It is the Examining Attorney's position that 'S.M.A.R.T.' does not identify a service performed by the applicant, but instead designates an automatic warranty provided by applicant to induce sales of its own merchandise.



 The specimens submitted with the application are a warranty document used for five models of flotation mattresses. The designation 'S.M.A.R.T.' heads this document, and the term is indicated to be an acronym for 'Sun Valley Waterbeds' Mattress Assured Replacement To you'. The phrase 'S.M.A.R.T. LIFETIME WARRANTY' appears on the facsimile of a seal on the document. The front of the warranty also contains a space where the name of the salesperson is to be inserted, and bears the statement, 'We appreciate your business at Sun Valley Waterbeds and will continue to do everything we can to earn your trust.'



 The reverse side of the warranty includes the statement 'Sun Valley Waterbeds S.M.A.R.T.TM Warranty is designed to be used in conjunction with your Manufacturer's Warranty. . . .' There is also a section which indicates the mattress model number, the term of the manufacturer's warranty, and the 'S.M.A.R.T.' benefits, which extend from the end of the manufacturer's warranty through the life of the mattress and which entitled the owner to 50% of the manufacturer's current suggested retail price.



 While the record in this case is not crystal clear, we are able to conclude from the material submitted that applicant performs retail store services in the field of waterbeds, and that the waterbed mattresses which it sells are manufactured by others. Based on these conclusions, we find that applicant performs warranty services under the mark 'S.M.A.R.T.'



 As stated in In re Lenox, 228 USPQ 966 (TTAB 1986), there are numerous cases on the subject of whether or not a particular activity constitutes a service. 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. See, In re Orion Research Inc., 669 F.2d 689, 187 USPQ 485 (CCPA 1975); In re Lenox, supra; In re Otis Engineering Corp., 217 USPQ 278 (TTAB 1982). The rationale in these cases is that a warranty that one's own goods are fit for use is a normal duty of a merchandiser.



  *2 The case before us raises a somewhat different question, however, because applicant is not selling goods of its own manufacture. Accordingly, the warranty cannot be viewed as an inducement in the sale of its own goods. Moreover, applicant argues that its extended warranty is well over and above the norm of the industry, a claim which the Examining Attorney does not dispute. Thus, applicant is offering something additional to the customer beyond the normal guarantees required of or given by the manufacturers of the flotation mattresses and also more than would be expected of those providing retail store services.



 Section 45 of the Trademark Act defines a service mark as 'a mark used in the sale or advertising of services to identify and distinguish the goods of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown.'



 The distinction between activities rendered by a service business and those rendered by the purveyor of one's own goods was recognized in In re Dr Pepper Co., ___ F.2d ___, 5 USPQ2d 1207 (Fed. Cir. 1987). In that opinion, the Court specifically recognized that department stores and the like are service businesses and provide precisely the types of services intended to be brought under the Act.



 Applicant, too, is a service business and, in our view, the additional and extended warranty provided by applicant constitutes a service within the contemplation of the Act. This particular warranty service is one which a retailer itself performs. As such, it is wholly separate from a manufacturer's warranty that is ancillary to and an inducement in the sale of the manufacturer's own products.



 Decision: The refusal to register is reversed.



J. D. Sams



L. E. Rooney



E. J. Seeherman



Members, Trademark Trial and Appeal Board



FN1. Serial No. 611,444, filed July 25, 1986. Applicant subsequently attempted to amend the identification to instructional and replacement services in the field of waterbeds, but the Examining Attorney stated such a description was not appropriate because the specimens do not demonstrate that applicant renders instructional services under the mark. Accordingly, our determination is based on the original identification of services.


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