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