by Dennis Crouch
The Federal Circuit has affirmed the Trademark Trial and Appeal Board (TTAB) cancellation of CeramTec’s trademark registrations for the pink color of its ceramic hip implants, and also providing an important analysis of functionality doctrine and its intersection with expired utility patents. CeramTec GmbH v. CoorsTek Bioceramics LLC, No. 2023-1502 (Fed. Cir. Jan. 3, 2024). The cautionary outcome here is unsubstantiated statements in the utility patent left the patentee unable to later claim trade dress protection for the distinctive feature. Patent attorneys should consider a trade dress discussion with their clients prior to filing a utility application that covers potentially distinctive trade dress. I discussed the case while it was pending. See Dennis Crouch, Pink Ceramic Hip Implants: When Functionality Trumps Trade Dress, Patently-O (October 2024).
Writing for a unanimous panel, Judge Lourie explained that the color pink as used in CeramTec’s products results from adding chromium oxide to the ceramic material. The patent claims included Cr2O3 as part of the ceramic compound and also indicated in the specification that its addition provided material benefits. After the patent expired CeramTec offered evidence that Cr2O3 actually provided no benefit and thus should not block associated trade dress protection. Ultimately, the TTAB and Federal Circuit found the evidence insufficient to overcome the powerful functionality statements from the issued patent (both literal and inferred). The court’s decision here reinforces the principle that trademark law cannot be used to extend patent-based monopolies over functional features.
The Patent-Trademark Intersection
The Supreme Court has long held that trademark protection cannot be used to monopolize functional product features, as that would effectively extend patent rights indefinitely. As the Court explained in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164-65 (1995), “[i]t is the province of patent law, not trademark law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time . . . after which competitors are free to use the innovation.”
Here, CeramTec had obtained U.S. Patent 5,830,816 covering ceramic hip implants containing chromium oxide, which gave the implants their distinctive pink color that has become well known to orthopedists for their quality and particular features. Although the patent did not claim the pink color, it did expressly claim the use of chromium oxide (particularly the molar ratio between zirconia and chromia). And, CeramTec has admitted that additive is the source of the color.
The patent expired in 2013 and CeramTec sought to maintain control over the pink color for its fake bones through trademark registrations. The company subsequently obtained two Supplemental Register trademark registrations in 2013 for the color pink in ceramic hip components. The Supplemental Register, as opposed to the Principal Register, is for marks that are capable of acquiring distinctiveness but haven’t yet done so.
CoorsTek mounted a two-pronged challenge to these registrations — both a declaratory judgment action in Colorado federal court and cancellation petitions withe the USPTO seeking to cancel CeramTec’s trademark registrations on functionality grounds. The federal court case was ultimately dismissed by the 10th circuit for lack of personal jurisdiction. C5 Med. Werks, LLC v. CeramTec GmbH, 937 F.3d 1319 (10th Cir. 2019). The TTAB sided with the challenger CoorsTek and ordered the cancellation of the registrations — leading to this appeal.
The Functionality Analysis
The Federal Circuit affirmed the TTAB’s finding of functionality based on the factors set out in In re Morton-Norwich Products, Inc., 671 F.2d 1332, 1340-41 (C.C.P.A. 1982). These factors examine: (1) the existence of utility patents disclosing the feature’s advantages; (2) advertising touting those advantages; (3) availability of alternative designs; and (4) manufacturing efficiency/cost benefits.
Particularly significant was the court’s treatment of CeramTec’s argument regarding the Supreme Court’s decision in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001). CeramTec argued that TrafFix only treats expired utility patents as evidence of functionality when:
- the patent explicitly claims the trademarked feature, and
- the goods are the “central advance” of the patent.
Here, if you recall, the pink color was not claimed, and and CeramTec offered evidence that the advance presented in the patent was not tied directly to the chromium. However, the Federal Circuit firmly rejected this interpretation of TrafFix, holding that the precedent doesnot require such explicit claiming or centrality. Instead, the court focused on whether there’s a clear connection between the patented feature and the trademark claim – even if that connection is indirect. This nexus was established through CeramTec’s two key concessions:
- The addition of chromium oxide causes the ceramic to become pink
- That CeramTec’s product (the source of TM commercial use and market distinctiveness) practices at least one claim of the ‘816 patent
The broader reading of TrafFix means that patent claims covering components or compositions that inherently produce distinctive features can bar subsequent trademark protection of those features. The also court explained that TrafFix directs tribunals to examine “the patent [specification] and its prosecution history to see if the feature in question is shown as a useful part of the invention.”
Experimental Evidence and Burden of Proof
The court also rejected CeramTec’s attempt to rely on recent testing suggesting chromium oxide did not actually provide the claimed functional benefits. The Federal Circuit deferred to the TTAB’s assessment that this testing was methodologically flawed and incomplete. This illustrates the difficulty of overcoming functionality evidence from a patent through subsequent technical studies. However, it does leave the door open for subsequent cases where the patentee is truly able to marshal sufficient evidence.
Importantly, the court clarified that while TrafFix states that trademark owners face a “heavy burden” when features were previously claimed in a patent, this does not shift the overall burden of proof. The challenger in a cancellation proceeding still bears the burden of proving functionality by a preponderance of the evidence — but this is a fairly easy task when the feature is claimed and discussed as useful within a utility patent.
Unclean Hands Defense
Finally, the court addressed whether the doctrine of unclean hands can be raised as a defense in trademark functionality proceedings. While disagreeing with the TTAB’s suggestion that such defenses are categorically barred, the Federal Circuit found any error harmless because the TTAB had properly exercised its discretion to reject the defense based on the “strong public policy interest” in cancelling ineligible marks.
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The case was argued by Jessica Lynn Ellsworth of Hogan Lovells for CeramTec and Steven J. Horowitz of Sidley Austin for CoorsTek. The Federal Circuit panel consisted of Judges Lourie, Taranto, and Stark.