Technology & Information Law Blog by Charles Gideon Korrell

Category: Trademark Law

  • All Quiet on the IP Front: SCOTUS Declines Review in All But One IP Case in the 2024–2025 Term

    All Quiet on the IP Front: SCOTUS Declines Review in All But One IP Case in the 2024–2025 Term

    In a typical show of judicial restraint, the U.S. Supreme Court has closed the books on the 2024–2025 term without granting review in any patent, copyright, or trade secret case—and issuing only one decision in a trademark dispute. Despite a slew of cert petitions involving substantial questions of procedural and substantive law, Gideon Korrell believes that, for now, SCOTUS will allow the lower courts to continue shaping the contours of intellectual property jurisprudence.

    Gideon Korrell’s Observations: A Wave of Cert Denials Across Patent Law

    Patent litigants were especially active this term, but none were able to persuade the justices to weigh in. The Court denied certiorari in every patent-related petition it received, including several that raised persistent questions about procedural fairness and the scope of patent eligibility:

    CaseIssue on AppealStatus
    ParkerVision v. TCL (No. 24-518)Challenge to Rule 36 summary affirmance as violating 35 U.S.C. § 144Cert denied (Mar 25, 2025)
    Island IP v. TD Ameritrade (No. 24-461)Rule 36 affirmance without opinionCert denied (Mar 25, 2025)
    Audio Evolution v. USPTO (No. 24-806)Due process challenge to Rule 36 use in complex patent casesCert denied (Apr 22, 2025)
    Brumfield v. IBG (No. 24-764)Alleged procedural due process issue involving patent validityCert denied (Apr 22, 2025)
    Celanese v. ITC (No. 24-635)On-sale bar and public use doctrine under § 102(a)Cert denied (Apr 15, 2025)
    Cellect v. Vidal (No. 23-1231)Whether AIA eliminates obviousness-type double patentingCert denied (Apr 15, 2025)

    Trade Secrets: No Help for Cross-Border or Web Scraping Claims

    Gideon Korrell notes that two trade secret petitions were also rejected:

    • Hytera Communications Corp. v. Motorola Solutions, Inc.
      Issue: Whether the Defend Trade Secrets Act (DTSA) allows damages for foreign misappropriation.
      Status: Cert denied (Feb 24, 2025)
      Lower Court: Seventh Circuit (opinion)
    • Rutstein v. Compulife Software, Inc.
      Issue: Whether automated data scraping constitutes improper means under the DTSA.
      Status: Cert denied (Feb 24, 2025)
      Lower Court: Eleventh Circuit (opinion)

    Both cases raised important extraterritorial and digital enforcement issues under the DTSA, but the Court left the Federal Circuit and Eleventh Circuit rulings intact.

    Copyright Law: No Activity at the High Court

    As of May 2025, Gideon Korrell did not observe any copyright cases argued or granted review by the Supreme Court during the current term. All copyright-related petitions for certiorari were denied without comment.

    Trademark: One Decision, But No Blockbusters

    Charles Gideon Korrell did find where the Court weighed in on one trademark case—offering a limited but important clarification of Lanham Act remedies:

    • Dewberry Group, Inc. v. Dewberry Engineers Inc.
      Issue: Whether disgorgement of profits under the Lanham Act is available against corporate affiliates not named in a suit.
      Holding: No. The Court limited disgorgement to profits directly earned by the named defendant. (opinion)
      Decision Date: Feb 26, 2025
      Lower Court: Fourth Circuit (order)

    While the case resolved a narrow question of remedies, it fell far short of tackling larger trademark law issues such as First Amendment boundaries, reverse confusion, or platform liability.

    Charles Gideon Korrell’s Final Thoughts: A Quiet Term with Lingering Questions

    The 2024–2025 Supreme Court term will be remembered not for reshaping intellectual property law, but for allowing existing trends to stand. Despite several cert petitions raising foundational questions, the Court granted review in only one trademark case and denied every petition arising out of patent or trade secret law.

    This restraint leaves in place:

    • The Federal Circuit’s continued use of Rule 36 summary affirmances—even in complex patent cases
    • Ongoing uncertainty around the extraterritorial reach and digital enforcement of the Defend Trade Secrets Act
    • An incremental approach to trademark remedies under the Lanham Act

    The absence of any § 101 eligibility cases this term is notable, especially given ongoing disagreement among lower courts. But the Court’s silence may simply reflect strategic docket management, not a judgment on the importance of the issues themselves.

    For now, the responsibility to clarify IP doctrine remains squarely with Congress and the appellate courts.

    By Charles Gideon Korrell

  • In re Thomas D. Foster, APC: Trademark Refusal Reinforces Timing and False Connection Analysis Under the Lanham Act

    In re Thomas D. Foster, APC: Trademark Refusal Reinforces Timing and False Connection Analysis Under the Lanham Act

    In a recent decision, the Federal Circuit affirmed the TTAB’s refusal to register the trademark “US SPACE FORCE,” emphasizing critical considerations under § 2(a) of the Lanham Act related to false suggestions of a connection. This ruling highlights the significance of timing in trademark analysis and clarifies the factors influencing determinations of false associations with government entities.

    The appeal arose from Thomas D. Foster, APC’s attempt to register “US SPACE FORCE” (Nos. 87839062 and 87981611) following President Trump’s public announcement in March 2018 about creating a new military branch under this name. Shortly thereafter, Foster filed an intent-to-use trademark application. The examining attorney refused registration under § 2(a), alleging the mark falsely suggested a connection with the United States government, a decision subsequently upheld by the TTAB.

    Addressing the critical timing aspect, the Federal Circuit cited Piano Factory Group, Inc. v. Schiedmayer Celesta GmbH, where the court had previously determined that the relevant period for evaluating false connection claims is generally the time of registration. Here, because the matter concerned an application rather than an existing registration, the court clarified that for refusals, the relevant period extends up to the completion of the examination process. Thus, evidence arising during the examination period could properly be considered.

    Applying the four-part test articulated in Univ. of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co., the court analyzed:

    1. Whether the mark closely approximates the identity previously used by another entity;
    2. Whether it uniquely and unmistakably points to that entity;
    3. Whether the applicant is connected to the named entity; and
    4. Whether the entity’s fame or reputation would cause a presumed connection.

    Foster disputed the TTAB’s findings on the first two prongs, arguing primarily against the consideration of evidence developed after his filing date. However, substantial evidence—including extensive media coverage and official government announcements—demonstrated the public association between the “US SPACE FORCE” mark and the United States government, particularly as the name of an official military branch.

    In affirming the Board’s refusal, the Federal Circuit underscored that Foster’s arguments lacked substance against the compelling evidence that the mark unequivocally pointed to the United States government. This decision aligns with earlier precedent such as In re Geller and Bridgestone/Firestone Research, Inc., reinforcing robust protections under § 2(a) against trademarks that falsely suggest governmental connections.

    This ruling emphasizes two critical takeaways for practitioners:

    • Timing for evaluating false connection claims in application refusals is comprehensive, extending throughout the examination period.
    • Establishing a false suggestion of a connection involves assessing not only similarity but the public’s recognition and association of the mark with an existing entity.

    Practitioners should remain mindful of these considerations when advising on trademark strategies involving names potentially associated with prominent governmental entities or widely publicized initiatives.

    By Charles Gideon Korrell

  • In re PT Medisafe Technologies: Federal Circuit Affirms Color Mark as Generic

    In re PT Medisafe Technologies: Federal Circuit Affirms Color Mark as Generic

    In In re PT Medisafe Technologies, No. 23-1573 (Fed. Cir. Apr. 29, 2025), the Federal Circuit affirmed the PTAB’s refusal to register a dark green color mark for medical examination gloves, concluding that the color was generic and not eligible for trademark protection.

    Background

    Medisafe, a manufacturer and distributor of medical gloves, sought to register the color dark green (Pantone 3285 c) as applied to the entire surface of chloroprene examination gloves. The USPTO examining attorney rejected the application, finding the mark generic and lacking acquired distinctiveness. The PTAB affirmed, applying a tailored version of the classic genericness test for color marks.

    Legal Standard

    The Federal Circuit confirmed that the appropriate framework for assessing the genericness of color marks is the two-step inquiry articulated in Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019 WL 6522400 (T.T.A.B. Dec. 2, 2019), a slight variation on the test first set out in H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986):

    1. Identify the genus of goods or services at issue;
    2. Determine whether the relevant public primarily perceives the color as a type or category of trade dress for that genus.

    The Federal Circuit formally adopted the Milwaukee test, finding it consistent with Marvin Ginn and well-suited to evaluating color marks under trademark law principles.

    Application to Medisafe’s Mark

    The Board identified the genus as “chloroprene medical examination gloves” and rejected Medisafe’s attempt to limit the genus to sales through “authorized resellers.” Citing In re i.am.symbolic, LLC, 866 F.3d 1315 (Fed. Cir. 2017), the court affirmed that applicants cannot unilaterally redefine the genus to narrow the inquiry.

    At the second step, the Board concluded that the dark green color was so commonly used for chloroprene gloves across the industry that consumers would perceive it as a standard feature rather than an indicator of source. Supporting evidence included:

    • Screenshots showing numerous third-party sales of similarly colored gloves.
    • Customer declarations that were few, formulaic, and unpersuasive.
    • A customer survey administered by Medisafe’s counsel, deemed flawed due to leading questions, a small respondent pool (only three responses), and lack of expert oversight.

    The PTAB found the cumulative evidence sufficient to show that Medisafe’s color mark was generic.

    Statutory Interpretation: “Generic Name” and Trade Dress

    Medisafe argued that under 15 U.S.C. § 1064(3), only “generic names” could be deemed generic, and that a color mark was not a “name.” The Federal Circuit rejected this argument, relying on Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322 (Fed. Cir. 1999), which held that “generic name” should be interpreted broadly to encompass trade dress, including colors, that fails to function as a source identifier.

    Burden of Proof

    The court clarified that there is no “clear and convincing evidence” burden on the USPTO to show genericness during ex parte examination. Instead, the examining attorney must make a prima facie case, shifting the burden to the applicant to rebut it, consistent with In re Pacer Tech., 338 F.3d 1348 (Fed. Cir. 2003).

    Conclusion

    The Federal Circuit affirmed the Board’s decision, holding that substantial evidence supported the finding that Medisafe’s dark green color was generic for chloroprene medical examination gloves and therefore ineligible for registration on either the Principal or Supplemental Register. Because the mark was found to be generic, the court did not reach Medisafe’s arguments concerning acquired distinctiveness.

    Key Takeaway: For color marks, the Federal Circuit has now endorsed a tailored two-step genericness test that focuses on whether the color is perceived by consumers as a type or category of trade dress for a genus of goods. Applicants must be prepared to overcome a significant evidentiary hurdle to establish that a color functions as a source indicator, rather than as a generic feature of the product category.

    By Charles Gideon Korrell

  • Heritage Alliance v. American Policy Roundtable: Descriptive Marks Without Acquired Distinctiveness Can’t Block Later Applications

    Heritage Alliance v. American Policy Roundtable: Descriptive Marks Without Acquired Distinctiveness Can’t Block Later Applications

    In Heritage Alliance v. American Policy Roundtable, No. 24-1155 (Fed. Cir. Apr. 9, 2025), the Federal Circuit affirmed the TTAB’s refusal to block registration of “iVoters” and “iVoters.com” despite evidence of earlier use of “iVoterGuide” and “iVoterGuide.com” by the challenger. The court agreed with the Board that Heritage’s marks were highly descriptive and had not acquired distinctiveness as of the relevant date, and therefore could not serve as the basis for a § 2(d) opposition.

    The Facts and Procedural Posture

    Heritage had been using “iVoterGuide” and “iVoterGuide.com” since at least 2008 to publish online voter guides. In 2019, the American Policy Roundtable (APR) applied to register “iVoters” and “iVoters.com” for providing public policy and political campaign information. Heritage opposed the applications under 15 U.S.C. § 1052(d), asserting a likelihood of confusion with its own prior-used marks.

    APR effectively conceded likelihood of confusion by not contesting the issue. However, the TTAB found that Heritage’s marks lacked protectability due to their highly descriptive nature and failure to acquire secondary meaning. The Federal Circuit affirmed.

    Key Holdings

    1. Highly Descriptive Marks Require More Than Length of Use

    The court upheld the Board’s finding that “iVoterGuide” and “iVoterGuide.com” are “highly descriptive.” The prefix “i” was reasonably understood to mean “Internet,” and “VoterGuide” plainly described the services provided. Importantly, the court emphasized that even a combination of descriptive elements must be considered as a whole to determine whether it creates a distinctive source-identifying impression. Relying on Oppedahl & Larson LLP, 373 F.3d 1171 (Fed. Cir. 2004), and Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334 (Fed. Cir. 2015), the court concluded there was no such impression here.

    2. Five Years of Use Does Not Guarantee Distinctiveness

    Heritage argued that more than five years of continuous use should have sufficed under § 2(f) to demonstrate acquired distinctiveness. But the court reaffirmed that for highly descriptive marks, the TTAB is not required to treat this as prima facie evidence of distinctiveness. Citing In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316 (Fed. Cir. 1990), In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005), and Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358 (Fed. Cir. 2018), the panel held that the Board did not abuse its discretion in requiring more compelling evidence.

    3. Declarations from Insiders Carry Limited Weight

    The declarations Heritage submitted came from internal volunteers rather than neutral consumers, lacked detail, and represented a small segment of the marketplace. The court cited In re Pacer Tech., 338 F.3d 1348 (Fed. Cir. 2003), to underscore that such conclusory statements—especially from affiliated individuals—are insufficient to prove secondary meaning.

    Practical Implications

    This decision serves as a reminder that the burden to prove distinctiveness is high—especially for descriptive marks. Even longstanding use and internal endorsements may not tip the scale without broader market recognition or evidence such as consumer surveys or significant media coverage. When pursuing or opposing trademark registrations based on prior common-law rights, parties must marshal persuasive evidence of source-identifying significance, especially if the mark plainly describes the goods or services offered.

    Moreover, while the Board acknowledged a conceded likelihood of confusion, it was irrelevant in the absence of protectable rights in the opposing mark. That finding also raises questions about whether the PTO may revisit registration decisions under § 1052(e) or § 1064 where the applicant’s own mark may also be merely descriptive.

    Conclusion

    Heritage reinforces a fundamental trademark principle: descriptiveness is not destiny, but it is a hurdle. Overcoming that hurdle requires more than use—it requires clear evidence that the mark has become associated in the minds of consumers with a single source. Without that, even priority of use won’t carry the day.

    By Charles Gideon Korrell

  • Dollar Financial v. Brittex: Trademark Cancellation on Priority, Likelihood of Confusion, and the Zone of Natural Expansion

    Dollar Financial v. Brittex: Trademark Cancellation on Priority, Likelihood of Confusion, and the Zone of Natural Expansion

    In Dollar Financial Group, Inc. v. Brittex Financial, Inc., the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB) partial cancellation of two MONEY MART trademark registrations, addressing critical issues in trademark law, including priority of use, the likelihood of confusion, and the limitations of the zone of natural expansion doctrine. This case highlights key legal principles that businesses should consider when expanding the scope of their trademarks.

    Background of the Case

    Dollar Financial Group, Inc. (DFG) has operated loan financing and check cashing services under the MONEY MART mark since the 1980s. In 2013, DFG registered two trademarks covering pawn brokerage and pawn shop services. Brittex Financial, Inc., which had used MONEY MART PAWN and MONEY MART PAWN & JEWELRY since 1993 for pawn services, petitioned to cancel DFG’s registrations, arguing that they created a likelihood of confusion under the Lanham Act § 2(d).

    The TTAB initially ruled in favor of DFG, holding that its longstanding use of MONEY MART for loan financing encompassed pawn services. However, the Federal Circuit reversed and remanded, leading the TTAB to ultimately rule that Brittex had priority. DFG appealed the TTAB’s decision, arguing that it was entitled to priority based on the zone of natural expansion and that the Board improperly found a likelihood of confusion.

    Key Legal Issues and the Court’s Analysis

    1. Priority of Use in Trademark Law

    Trademark rights are fundamentally based on first use in commerce. While DFG argued that its use of MONEY MART for loan financing should establish priority over Brittex’s pawn shop services, the Federal Circuit disagreed.

    The court reaffirmed that priority is determined based on the specific goods or services for which the mark was first used. Since Brittex had been using MONEY MART PAWN for pawn services since 1993, while DFG only expanded into pawn services in 2012, Brittex’s common law rights took precedence.

    2. The Zone of Natural Expansion Doctrine: A Defensive, Not Offensive, Shield

    One of DFG’s key arguments was that pawn brokerage and pawn shop services were a natural expansion of its existing loan financing services. However, the Federal Circuit rejected this argument, emphasizing that the zone of natural expansion is a purely defensive doctrine that cannot be used offensively to retroactively establish priority.

    To support its ruling, the CAFC cited several key cases:

    • Jackes-Evans Manufacturing Co. v. Jaybee Manufacturing Corp., 481 F.2d 1342 (C.C.P.A. 1973)
      • This landmark case established that the zone of natural expansion doctrine is defensive only. It prevents a junior user from claiming a mark in a related field but does not allow a senior user to retroactively claim priority over an intervening user.
      • Applying Jackes-Evans, the CAFC ruled that DFG could not override Brittex’s prior use of MONEY MART PAWN simply by claiming pawn services were a natural extension of its loan financing business.
    • Orange Bang, Inc. v. Ole Mexican Foods, Inc., 116 U.S.P.Q.2d 1102 (T.T.A.B. 2015)
      • This TTAB decision reinforced that the first user of a mark has superior rights over later users expanding into related areas. However, if an intervening user has already established rights in the new area, the original owner cannot retroactively claim priority.
      • The CAFC applied this principle to reject DFG’s argument that its long-standing MONEY MART registration for loan financing should allow it to later claim priority for pawn services.
    • American Hygienic Laboratories, Inc. v. Tiffany & Co., 12 U.S.P.Q.2d 1979 (T.T.A.B. 1989)
      • In this case, Tiffany & Co.’s trademark for jewelry did not give it priority over another company’s use of “TIFFANY” for cosmetics.
      • The Federal Circuit used this precedent to reject DFG’s claim that its existing MONEY MART registrations automatically extended to pawn services.

    3. Likelihood of Confusion Under the DuPont Factors

    The CAFC upheld the TTAB’s finding that DFG’s trademarks posed a likelihood of confusion with Brittex’s common law marks. The court applied the DuPont factors, emphasizing:

    • Similarity of the Marks: The court found that MONEY MART and MONEY MART PAWN were highly similar, especially since the term “pawn” was descriptive.
    • Overlap in Services and Trade Channels: Both parties offered pawn-related financial services, targeting similar consumers.
    • Brittex’s Prior Use: Since Brittex had been using its mark for pawn services since 1993, DFG’s later use in 2012 did not override Brittex’s priority.

    DFG also argued that its prior incontestable registrations for loan financing should have been considered. However, the CAFC distinguished the case from In re Strategic Partners, Inc., explaining that DFG’s earlier registrations did not cover pawn services and were therefore irrelevant.

    Final Takeaways

    The Federal Circuit’s decision in this case provides critical lessons for businesses navigating trademark expansion:

    1. First Use in Commerce Controls – Priority is based on actual use for specific goods/services, not potential expansion.
    2. The Zone of Natural Expansion is Defensive – This doctrine cannot be used offensively to claim priority over an intervening user.
    3. Likelihood of Confusion is Key – Even long-standing brands can face cancellation if they expand into areas where others have prior rights.
    4. Proactive Trademark Registration is Essential – To avoid legal disputes, businesses should register trademarks for all anticipated services early.

    For businesses looking to expand their trademarks into new markets, this case underscores the importance of conducting thorough clearance searches and filing trademark applications early.

    By Charles Gideon Korrell

  • Trademark Showdown: Bullshine Distillery v. Sazerac Brands and the FIREBALL Controversy

    Trademark Showdown: Bullshine Distillery v. Sazerac Brands and the FIREBALL Controversy

    On March 12, 2025, the Federal Circuit handed down its decision in Bullshine Distillery LLC v. Sazerac Brands, LLC, a case that highlights fundamental principles in trademark law, particularly the concepts of genericness and likelihood of confusion under the Lanham Act. The court affirmed the Trademark Trial and Appeal Board’s (TTAB) ruling that Sazerac’s FIREBALL trademark is not generic and that there is no likelihood of confusion between FIREBALL and Bullshine’s proposed BULLSHINE FIREBULL mark.

    Background of the Case

    The dispute arose when Bullshine Distillery applied to register the mark BULLSHINE FIREBULL for alcoholic beverages. Sazerac, the owner of the well-known FIREBALL mark for whiskey and liqueurs, opposed the registration, claiming that the mark would likely cause confusion among consumers. Bullshine responded with a counterclaim, arguing that “fireball” was a generic term for whiskey or liqueur-based drinks and, as such, should not have been registered as a trademark.

    Key Legal Issues and the Court’s Analysis

    1. Genericness – When Is a Trademark Too Common to Register?

    Bullshine’s primary argument on appeal was that “fireball” had been used generically before Sazerac registered its mark. Under trademark law, a generic term cannot function as a trademark because it refers to the general category of goods rather than a specific brand.

    However, the Federal Circuit rejected Bullshine’s argument, clarifying that the proper time to assess genericness is at the time of trademark registration, not based on historical usage.

    The Weiss Noodle Argument: “Once Generic, Always Generic”

    To support its case, Bullshine relied on the 1961 decision in Weiss Noodle Co. v. Golden Cracknell & Specialty Co., which had denied trademark registration for “haluska”, the Hungarian word for noodles. The court in Weiss Noodle held that a common name for a product can never gain trademark protection, no matter how strongly it becomes associated with a specific brand.

    Bullshine argued that if “fireball” had ever been used generically for an alcoholic drink, it should be forever barred from trademark protection under this principle.

    However, the Federal Circuit rejected this rigid approach, explaining that:

    • Genericness must be assessed at the time of registration, not based on historical use. Even if a word had once been generic, it could later acquire distinctiveness as a brand name.
    • Consumer perception controls – A term’s meaning can evolve, and what matters is how consumers understood the term when Sazerac registered it in 2001 and 2008.
    • The Lanham Act allows for cancellation of trademarks that later become generic (15 U.S.C. § 1064(3)), but it does not impose a “once generic, always generic” rule.

    Thus, because there was no strong evidence that “fireball” was understood as generic in 2001 or 2008, the court upheld Sazerac’s trademark rights. This aligns with recent Supreme Court precedent in Booking.com v. USPTO, which rejected rigid rules in favor of evaluating actual consumer perception.

    2. Likelihood of Confusion – Can FIREBALL and FIREBULL Coexist?

    Sazerac also cross-appealed, arguing that the TTAB erred in finding that BULLSHINE FIREBULL was not likely to cause confusion with FIREBALL.

    The likelihood of confusion analysis is based on the DuPont factors, which consider various elements such as the similarity of the marks, the strength of the senior mark, and the nature of the goods.

    The court found:

    • FIREBALL is commercially strong but conceptually weak – While FIREBALL is widely recognized, the term is suggestive of a product’s cinnamon flavor, making it less distinctive.
    • The marks are dissimilar in overall impression – The addition of “BULLSHINE” and the reversal of word order made BULLSHINE FIREBULL visually and phonetically distinct from FIREBALL.
    • No evidence of actual confusion – There was no significant evidence that consumers would confuse the two brands in the marketplace.

    Thus, the court affirmed the TTAB’s ruling that there was no likelihood of confusion.

    Key Takeaways from the Decision

    1. Genericness is assessed at the time of registration – A term’s prior usage does not automatically make it generic for all time.
    2. The “once generic, always generic” rule was rejected – The court refused to apply the rigid approach from Weiss Noodle and instead focused on consumer perception at the time of registration.
    3. Strength of a trademark depends on commercial and conceptual distinctiveness – Even a well-known mark like FIREBALL can be conceptually weak if it is descriptive of a product’s attributes.
    4. Trademark disputes require a careful likelihood of confusion analysis – Minor differences in a mark’s wording, order, and overall impression can be enough to distinguish it from an established brand.

    Final Thoughts

    This case serves as a reminder that trademark law is about consumer perception, not just historical technicalities. The decision ensures that while brand owners can enforce their rights, competitors still have room to create new branding without unnecessary restrictions. It also reinforces a modern, flexible approach to trademark law, ensuring that consumer understanding at the time of registration—not outdated historical use—controls the validity of a trademark.ictions.

    By Charles Gideon Korrell

  • Functionality and Trademark Law: The Federal Circuit’s Decision in CeramTec GmbH v. CoorsTek Bioceramics LLC

    In a significant ruling on the intersection of patent and trademark law, the U.S. Court of Appeals for the Federal Circuit recently upheld the cancellation of CeramTec GmbH’s trademarks for the pink color of ceramic hip components. The court affirmed the decision of the Trademark Trial and Appeal Board (TTAB), finding that the color pink was functional and therefore ineligible for trademark protection. This decision reinforces long-standing principles regarding the limits of trademark rights when applied to functional product features.

    Background of the Case

    CeramTec, a manufacturer of ceramic hip implants, had obtained trademarks for the pink color of its zirconia-toughened alumina (ZTA) ceramic hip components, marketed as Biolox Delta. The pink coloration resulted from the addition of chromium oxide (chromia) to the ceramic, a practice that CeramTec had also covered in prior patents. However, once its patent on the composition expired, CeramTec sought to use trademark law to prevent competitors from producing similarly colored ceramic implants.

    CoorsTek, a competitor in the medical implant market, challenged these trademarks, arguing that the pink coloration was functional and not protectable under trademark law. The TTAB agreed, ruling that the pink color was functional and canceling CeramTec’s marks. CeramTec appealed this decision to the Federal Circuit.

    Key Legal Issues Addressed

    The Federal Circuit’s opinion primarily addressed two major intellectual property law issues: trademark functionality and the interaction between patents and trademarks in determining the protectability of product features.

    1. The Functionality Doctrine in Trademark Law

    The court emphasized the functionality doctrine, which prevents a manufacturer from using trademark law to claim exclusive rights over functional features of a product. The doctrine is based on the idea that trademark law should not inhibit competition by allowing a company to monopolize useful product features.

    The court applied the four-factor test established in In re Morton-Norwich Products, Inc. to determine functionality:

    • Existence of a Utility Patent: CeramTec’s expired patent explicitly disclosed that the addition of chromia provided material benefits, including increased hardness and durability.
    • Advertising that Promotes a Functional Advantage: CeramTec’s promotional and technical materials, as well as regulatory filings, repeatedly stated that chromia improved the physical properties of its ceramics.
    • Availability of Alternative Designs: The court found no compelling evidence that other ceramic hip implant colors would work equally well.
    • Impact on Manufacturing Cost and Simplicity: Conflicting evidence on whether chromia made manufacturing cheaper led the court to treat this factor as neutral.

    Given the strong evidence under the first two factors, the court concluded that the pink coloration was functional and not eligible for trademark protection.

    2. The Role of Patents in Trademark Functionality Analysis

    One of the most critical aspects of this decision was the role of CeramTec’s expired patent in proving functionality. Under the Supreme Court’s ruling in TrafFix Devices, Inc. v. Marketing Displays, Inc., a utility patent that claims a particular product feature is strong evidence that the feature is functional and cannot be protected as a trademark.

    The court dismissed CeramTec’s argument that the TrafFix standard did not apply because the patent did not explicitly claim the color pink. The Federal Circuit held that because CeramTec’s patent claimed the addition of chromia—directly responsible for the pink coloration—it was clear that the pink color was a byproduct of a functional process. The ruling reinforces that patent disclosures about functional advantages can be fatal to later trademark claims on those same features.

    Unclean Hands and Equitable Defenses

    CeramTec also attempted to raise an unclean hands defense, arguing that CoorsTek had previously asserted that chromia provided no functional benefits and should be barred from now arguing the opposite. The court rejected this defense, emphasizing that public interest in eliminating functional marks outweighed any concerns about inconsistencies in CoorsTek’s prior statements.

    Implications for Trademark and Patent Holders

    This decision serves as a stark reminder that companies cannot use trademark law to extend monopoly rights over expired patents. Once a patent expires, competitors are free to use the disclosed innovation, and trademark law cannot be used as a backdoor method of restricting competition.

    Key Takeaways for IP Practitioners:

    1. Be Cautious with Trademarking Functional Features
      If a product feature serves a functional purpose, securing a trademark may not be a viable long-term strategy for exclusivity.
    2. Prior Patents Can Undermine Trademark Claims
      A company’s own patents can serve as strong evidence that a feature is functional, making it difficult to later argue for trademark protection.
    3. Marketing and Regulatory Filings Matter
      Statements in advertising, promotional materials, and regulatory filings that tout a feature’s functional benefits can be used as evidence against trademark validity.
    4. The Functionality Doctrine Is a Strong Barrier to Color Trademarks
      While colors can sometimes be trademarked (as in Qualitex Co. v. Jacobson), courts will closely scrutinize whether the color serves a functional purpose before granting protection.

    Conclusion

    The Federal Circuit’s decision in CeramTec GmbH v. CoorsTek Bioceramics LLC reinforces core principles of trademark law by preventing the use of trademarks to monopolize functional product features. By reaffirming that expired patents serve as strong evidence of functionality, the ruling ensures that competitors can lawfully use previously patented innovations once patent protection ends. This case serves as a valuable lesson for companies looking to balance patent and trademark strategies in protecting their intellectual property.

    By Charles Gideon Korrell