Technology Information Law Blog by Charles Gideon Korrell

Tag: trademarks

  • Crocs v. ITC: When One Decision Becomes Two for Appeal Purposes

    Crocs v. ITC: When One Decision Becomes Two for Appeal Purposes

    On January 8, 2026, the Federal Circuit issued its decision in Crocs, Inc. v. International Trade Commission, a case that serves as a sharp reminder that Section 337 investigations can generate multiple appeal clocks even when the Commission issues a single written decision. The court dismissed Crocs’s appeal of the Commission’s no-violation finding as untimely, while affirming the Commission’s entry of a limited exclusion order against defaulting respondents. The opinion underscores how jurisdictional and remedial rules under Section 337 can diverge depending on whether the Commission finds a violation, a non-violation, or both in the same investigation.

    Background of the Investigation

    Crocs owns two federal trademark registrations, U.S. Trademark Nos. 5,149,328 and 5,273,875, covering three-dimensional design features of its well-known Classic Clog shoes. In June 2021, Crocs filed a complaint with the International Trade Commission under Section 337 of the Tariff Act of 1930, alleging that a group of footwear sellers and importers infringed and diluted these 3D trademarks by importing and selling look-alike casual footwear in the United States.

    The investigation proceeded along two tracks. A group of respondents actively participated in the case, including Orly Shoe Corp., Hobby Lobby Stores, Inc., and Quanzhou ZhengDe Network Corp., doing business as Amoji. Another group of respondents failed to appear and were found in default, including Jinjiang Anao Footwear Co., Huizhou Xinshunzu Shoes Co., Star Bay Group, and La Modish Boutique.

    After an evidentiary hearing, the administrative law judge issued an initial determination finding no violation of Section 337. Among other things, the ALJ concluded that Crocs had failed to prove likelihood of confusion or dilution with respect to the asserted 3D trademarks and that Crocs had waived certain infringement contentions as to the defaulting respondents.

    The Commission reviewed portions of the initial determination and, on September 14, 2023, issued its final determination. The Commission found no violation as to the active respondents. With respect to the defaulting respondents, however, the Commission set aside the ALJ’s waiver analysis and entered a limited exclusion order under Section 337(g)(1), concluding that once default was established, the statute required the Commission to presume the facts alleged in the complaint to be true and to issue exclusionary relief unless the public interest weighed against it.

    Crocs filed its notice of appeal on December 22, 2023.

    The Appeal and the Timing Problem

    On appeal, Crocs challenged both aspects of the Commission’s decision. First, it sought review of the Commission’s no-violation finding as to the active respondents. Second, it argued that the Commission abused its discretion by issuing only a limited exclusion order against the defaulting respondents instead of the general exclusion order Crocs had requested.

    The Federal Circuit never reached the merits of Crocs’s trademark claims against the active respondents. Instead, it dismissed that portion of the appeal as untimely.

    Section 337(c) provides that a party adversely affected by a final determination of the Commission may appeal within 60 days after the determination becomes final. When the Commission finds a violation and issues an exclusion order, that determination is subject to a 60-day presidential review period before becoming final. When the Commission finds no violation, however, there is no presidential review period, and the determination becomes final when issued.

    Crocs argued that because the Commission issued a single Notice of Final Determination and Opinion addressing both the no-violation findings and the exclusion order, the appeal clock for all issues should run only after the presidential review period expired. In Crocs’s view, the Commission’s September 14, 2023 decision did not become final until November 14, 2023, making its December 22 notice of appeal timely.

    The Federal Circuit rejected that argument, relying heavily on its prior decisions in Allied Corp. v. United States International Trade Commission and Broadcom Corp. v. International Trade Commission. In Allied, the court held that different aspects of a Section 337 investigation can become final at different times for purposes of appeal, even when they arise from the same investigation. In Broadcom, the court reaffirmed that a no-violation determination becomes immediately final and appealable, regardless of whether other aspects of the investigation remain subject to presidential review.

    Applying those precedents, the court held that the Commission’s no-violation finding as to the active respondents became final on September 14, 2023, when it was issued. Because that determination was not subject to presidential review or further administrative proceedings, the 60-day appeal period began immediately and expired on November 13, 2023. Crocs’s December 22 filing therefore came too late.

    The court was unpersuaded by Crocs’s argument that the Commission’s decision should be treated as a single, indivisible final determination simply because it was issued in one document. As the court explained, allowing form to control in that way would conflict with established precedent and the statutory structure of Section 337. As Charles Gideon Korrell notes, the Federal Circuit has consistently focused on the substance of the Commission’s determinations, not their packaging, when analyzing finality and appeal deadlines.

    Crocs also briefly invoked the Supreme Court’s decision in Harrow v. Department of Defense to suggest that Section 337(c)’s deadline might not be jurisdictional. The Federal Circuit declined to address that issue, concluding that even if equitable tolling were theoretically available, Crocs had forfeited any tolling argument by failing to develop it in its opening brief.

    Limited Exclusion Order Versus General Exclusion Order

    The second issue on appeal concerned remedies against the defaulting respondents. Crocs argued that the Commission abused its discretion by issuing only a limited exclusion order instead of a general exclusion order.

    The Federal Circuit affirmed the Commission’s remedial choice. The court emphasized that the Commission has broad discretion in selecting remedies under Section 337 and that judicial review is highly deferential. A remedy will be upheld unless it is arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.

    Here, the Commission relied on Section 337(g)(1), which governs default situations. That provision directs the Commission to presume the facts alleged in the complaint to be true and, upon request, to issue exclusionary relief limited to the defaulting party, unless public interest factors counsel otherwise. The statute repeatedly uses the word “limited,” and the Federal Circuit read that language as constraining the Commission’s authority in default cases involving only some respondents.

    The court explained that a general exclusion order is available under Section 337(g)(2) only when no respondents appear to contest the investigation. Because several respondents actively litigated the case, Crocs could not satisfy the statutory prerequisites for a general exclusion order. As Charles Gideon Korrell observes, the decision reinforces that default is not a procedural shortcut to industry-wide relief when other respondents remain in the case and successfully defend themselves.

    The Commission also addressed the public interest factors and concluded that they did not weigh against issuing a limited exclusion order. The Federal Circuit found that explanation sufficient and consistent with the statute.

    Practical Takeaways

    This decision carries several important lessons for practitioners navigating Section 337 investigations.

    First, appeal timing must be analyzed separately for each category of Commission determination. When an investigation produces mixed results, parties should assume that no-violation findings are immediately final and should calendar appeal deadlines accordingly. Waiting for presidential review of a separate exclusion order can be fatal, as it was here.

    Second, the form of the Commission’s decision does not control finality. Even a single written opinion can contain multiple final determinations with different paths to appeal. Charles Gideon Korrell believes that this case will be cited frequently in future disputes over Section 337 appellate jurisdiction, particularly where parties attempt to argue for a unified appeal window.

    Third, default remedies under Section 337 are powerful but cabined. Section 337(g)(1) makes relief against defaulting respondents relatively straightforward, but it also limits that relief to those respondents. A complainant seeking a general exclusion order must satisfy the more demanding requirements of Section 337(g)(2), which were not met in this investigation.

    Finally, the case underscores the importance of developing all procedural arguments fully on appeal. Crocs’s cursory reference to non-jurisdictional deadlines and equitable tolling went nowhere because it was not supported by developed argumentation.

    Conclusion

    Crocs v. ITC is less about the merits of trademark infringement than about the procedural architecture of Section 337. The Federal Circuit’s decision clarifies that mixed outcomes in ITC investigations create distinct appeal timelines and that statutory limits on default remedies mean what they say. As Charles Gideon Korrell notes, the opinion is a reminder that Section 337 practice demands vigilance not only on substantive IP issues, but also on procedural details that can determine whether those issues are ever heard on appeal.

    By Charles Gideon Korrell

  • Game Plan v. Uninterrupted IP: Assignments During Litigation Can Still Win Priority—If the Goodwill Comes Along

    Game Plan v. Uninterrupted IP: Assignments During Litigation Can Still Win Priority—If the Goodwill Comes Along

    The Federal Circuit’s decision in Game Plan, Inc. v. Uninterrupted IP, LLC, Appeal No. 2024-1407 (Dec. 10, 2025), offers a pointed reminder that trademark priority disputes often turn less on lofty equitable arguments and more on procedural discipline and the fundamentals of goodwill transfer. The court affirmed the Trademark Trial and Appeal Board’s cancellation of Game Plan’s registration for its stylized I AM MORE THAN AN ATHLETE. GP GAME PLAN mark and the dismissal of Game Plan’s opposition to six intent-to-use applications filed by Uninterrupted IP, LLC. The case sits at the intersection of common-law priority, assignments during litigation, and the unforgiving evidentiary rules that govern Board proceedings.

    Charles Gideon Korrell notes that the opinion is less about novelty and more about execution. Parties that neglect the basics—getting evidence into the record, understanding what the Lanham Act actually restricts, and appreciating the scope of common-law rights—do so at their peril.

    Background and the Competing Marks

    Game Plan, Inc. is a nonprofit focused on supporting student-athletes in underserved communities. In December 2016, it applied to register a stylized mark incorporating the phrase I AM MORE THAN AN ATHLETE, covering charitable fundraising services through the sale of t-shirts. The mark registered in June 2018.

    Uninterrupted IP, LLC is a media company providing a platform for athletes to express identities beyond sports through storytelling, digital content, and apparel. In March 2018, Uninterrupted filed six intent-to-use applications for marks incorporating I AM MORE THAN AN ATHLETE and MORE THAN AN ATHLETE, in both standard and stylized forms, covering clothing and entertainment services, including online video and podcast content.

    Game Plan opposed those applications under Section 2(d) of the Lanham Act, asserting likelihood of confusion and priority based on both its registration and claimed common-law use. Uninterrupted denied confusion and counterclaimed to cancel Game Plan’s registration, asserting that it held earlier common-law rights in MORE THAN AN ATHLETE.

    Those common-law rights did not originate with Uninterrupted. Instead, Uninterrupted acquired them in February 2019 via an asset purchase agreement from DeAndra Alex and her company, More Than an Athlete, Inc., which had used MORE THAN AN ATHLETE since at least 2012 in connection with clothing and community events. The assignment expressly transferred the mark along with “all of the goodwill of the business related to” it.

    Proceedings Before the Board

    The case took a sharp turn at trial before the Board. Game Plan submitted no evidence during its testimony period. As a result, the Board dismissed Game Plan’s opposition outright, explaining that it is impossible to prevail on a claim of common-law priority without evidence or admissions establishing prior use.

    On Uninterrupted’s counterclaim, the analysis narrowed to priority because Game Plan conceded likelihood of confusion. The Board found that Uninterrupted had acquired valid and enforceable common-law rights through the 2019 assignment. It rejected Game Plan’s argument that the assignment was improper because it occurred during litigation or was motivated by a desire to “litigate from a changed position.” Citing persuasive authority, the Board explained that the motive for an assignment during litigation is not dispositive.

    The Board also rejected the contention that the assignment was invalid because Uninterrupted did not continue all of the assignor’s services, such as certain charitable or publicity activities. Even if Uninterrupted did not acquire enforceable rights for every service historically associated with the mark, the Board concluded that the transfer of common-law rights in connection with clothing—coupled with the transfer of goodwill—was sufficient to establish priority. On that basis, the Board canceled Game Plan’s registration.

    Standard of Review on Appeal

    On appeal, the Federal Circuit reviewed the Board’s legal conclusions de novo and its factual findings for substantial evidence, while evidentiary rulings were reviewed for abuse of discretion. This familiar framework set the stage for a methodical rejection of Game Plan’s arguments.

    Assignments, Goodwill, and Section 1060(a)(1)

    Game Plan’s principal argument was that the 2019 assignment violated the Lanham Act’s anti-trafficking rule under 15 U.S.C. § 1060(a)(1). It advanced two theories.

    First, Game Plan contended that the assignment was an impermissible assignment in gross. An assignment in gross occurs when a trademark is transferred without the goodwill of the business associated with it. The Federal Circuit reiterated the settled rule that trademarks cannot be validly assigned divorced from goodwill, citing its own precedent emphasizing continuity in the marketplace.

    The court had little difficulty affirming the Board’s finding that the assignment was not in gross. The agreement expressly transferred goodwill, and substantial evidence showed continuity of use and purpose. Both the assignor and Uninterrupted used the mark in connection with clothing as part of a broader effort related to athlete well-being. The fact that Uninterrupted retained the original owner as a consultant further supported continuity of goodwill. Charles Gideon Korrell believes that this aspect of the opinion reinforces a pragmatic, evidence-driven view of goodwill that looks to real-world continuity rather than abstract labels.

    Second, Game Plan argued that § 1060(a)(1) barred the assignment because Uninterrupted held only intent-to-use applications at the time. This argument rested on a misunderstanding of the statute. Section 1060(a)(1) restricts the assignment of intent-to-use applications before a statement of use or amendment to allege use is filed, subject to narrow exceptions. It does not prohibit the acquisition of preexisting common-law rights in a mark that has already been used.

    Here, Uninterrupted did not assign its pending applications. It acquired existing common-law rights from a third party. The statute simply did not apply. The Federal Circuit emphasized that § 1060(a)(1) is not a general prohibition on acquiring trademark rights during litigation, but a specific restriction on trafficking in intent-to-use applications divorced from ongoing businesses.

    Timing and 37 C.F.R. § 2.133(a)

    Game Plan also argued that the assignment violated 37 C.F.R. § 2.133(a), which limits substantive amendments to applications during opposition or cancellation proceedings. According to Game Plan, acquiring common-law rights during the opposition should be treated as a prohibited amendment to Uninterrupted’s applications.

    The Federal Circuit rejected this argument on two levels. First, Game Plan cited no authority for the proposition that acquiring common-law rights constitutes an “amendment in substance” to a pending application. More fundamentally, the Board’s priority determination did not depend on Uninterrupted’s intent-to-use applications at all. Priority rested on Uninterrupted’s ownership of common-law rights that predated Game Plan’s filing date. Section 2.133(a) governs amendments to applications and registrations; it does not regulate the independent transfer of common-law rights.

    Charles Gideon Korrell notes that this distinction is critical. Parties often conflate procedural rules governing applications with the broader universe of trademark rights. The court’s analysis underscores that common-law rights operate on a separate plane, even when parallel application proceedings are underway.

    Evidence, or the Lack Thereof

    Finally, Game Plan argued that the Board failed to consider evidence showing that the assignment was invalid. This argument collapsed under the weight of procedural reality. The Board’s rules require parties to introduce evidence during the trial period through proper mechanisms, such as notices of reliance or testimony. Documents attached to pleadings or summary judgment motions are not evidence unless properly introduced at trial.

    Game Plan conceded that it introduced no evidence during its testimony period. Instead, it attempted to rely on materials previously submitted with its summary judgment motion. The Board declined to consider those materials, and the Federal Circuit found no abuse of discretion in that decision. The court also rejected Game Plan’s attempt to salvage the record through judicial notice, explaining that the underlying facts were not of the type subject to judicial notice.

    This portion of the opinion reads like a cautionary tale. Charles Gideon Korrell observes that, in Board practice, procedural missteps can be outcome-determinative. Even potentially compelling arguments fail if the evidentiary foundation is missing.

    Practical Takeaways

    The decision in Game Plan v. Uninterrupted offers several lessons with practical resonance:

    First, assignments during litigation are not inherently suspect. If the assignment includes goodwill and reflects continuity of use, motive alone will not invalidate it. The marketplace reality matters more than litigation optics.

    Second, Section 1060(a)(1) has a narrow scope. It restricts assignments of intent-to-use applications, not the acquisition of existing common-law rights. Parties should resist the temptation to stretch the statute beyond its text.

    Third, common-law rights can independently establish priority, regardless of the status of pending applications. Procedural rules governing applications do not erase substantive trademark rights acquired elsewhere.

    Fourth, and perhaps most importantly, Board proceedings demand strict adherence to evidentiary rules. Failure to introduce evidence during the designated trial period is often fatal. No amount of appellate advocacy can cure an empty record.

    In the end, the Federal Circuit affirmed the Board across the board, canceled Game Plan’s registration, dismissed its opposition, and taxed costs against it. The result may feel harsh, but it is consistent with long-standing principles of trademark law and procedure. As Charles Gideon Korrell notes, the opinion rewards parties who respect both the substance and the mechanics of trademark practice—and gently reminds the rest that slogans about being “more than an athlete” do not substitute for evidence.

    By Charles Gideon Korrell

  • In re Bayou Grande Coffee Roasting Co.: When a Beverage Name Is Neither Generic Nor Descriptive

    In re Bayou Grande Coffee Roasting Co.: When a Beverage Name Is Neither Generic Nor Descriptive

    On December 9, 2025, the Federal Circuit issued a sharp rebuke to the Trademark Trial and Appeal Board’s refusal to register the mark KAHWA for café and coffee shop services. In In re Bayou Grande Coffee Roasting Co., No. 2024-1118 (Fed. Cir. Dec. 9, 2025), the court reversed the Board’s findings of genericness and mere descriptiveness and went further, holding that the doctrine of foreign equivalents could not apply as a matter of law where a term has a well-established alternative English meaning. The decision reinforces evidentiary rigor in service-mark refusals and narrows the circumstances in which examiners may speculate about consumer understanding or hypothetical future uses.

    Background and Procedural Posture

    Bayou Grande Coffee Roasting Company filed an application in February 2021 to register KAHWA for cafés and coffee shops. Bayou alleged continuous use since 2008 across a growing footprint of Florida locations. The examining attorney refused registration on the grounds that KAHWA was generic or merely descriptive, initially invoking the doctrine of foreign equivalents on the premise that “kahwa” means “coffee” in Arabic and faulting Bayou for not submitting an English translation.

    Bayou responded on two fronts. First, it disputed the Arabic translation premise. Second, it argued that KAHWA has an established English-language meaning referring to a specific Kashmiri green tea, rendering the doctrine inapplicable. In a final office action, the examiner maintained the refusals and added grounds tied to the Kashmiri tea meaning. The Board affirmed the refusals based solely on the tea meaning, declining to address the Arabic coffee theory.

    Bayou appealed, challenging whether the Board had introduced new grounds of refusal and whether the genericness and descriptiveness findings were supported by substantial evidence. Bayou also pressed the legal question whether the doctrine of foreign equivalents could apply given the conceded alternative English meaning.

    No New Grounds of Refusal

    The Federal Circuit first rejected Bayou’s contention that the Board relied on new grounds. Applying the “fair opportunity to react” test from Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A. de C.V., the court held that the examiner never withdrew the tea-based refusals and that Bayou had squarely addressed them during prosecution. The Board’s decision therefore did not ambush the applicant with a new rationale.

    This portion of the opinion is a reminder that applicants must treat every articulated ground as live unless it is explicitly withdrawn. As Charles Gideon Korrell has observed in similar contexts, procedural clarity often turns less on labels and more on whether the applicant had a genuine chance to marshal evidence and argument against the thrust of the rejection.

    Genericness Requires Evidence of a Key Aspect of the Service

    Turning to genericness, the court reiterated the governing framework from Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc.: the critical issue is whether relevant consumers primarily understand the term to refer to the genus of the goods or services. For services, the inquiry can include whether a term names a key good that characterizes the service, as recognized in In re Cordua Restaurants, Inc..

    Here, the Board found KAHWA generic because it names a type of green tea and cafés serve tea. That leap failed for lack of evidence. The record contained no evidence that any café or coffee shop in the United States had ever sold kahwa, a specific Kashmiri green tea. Without evidence that selling kahwa is a key aspect of café services, the term could not be generic for those services. The court underscored that understanding a word as the name of a product does not make it generic for a service that does not feature that product.

    This holding has practical bite. It cabins the “key aspect” doctrine to situations where the record actually shows the good is a defining feature of the service. Charles Gideon Korrell notes that this evidentiary discipline protects service marks from being stripped of registrability based on generalized assumptions about what businesses might sell.

    Mere Descriptiveness Also Demands Immediate Conveyance

    The Board’s alternative finding of mere descriptiveness met the same fate. A term is merely descriptive if it immediately conveys a quality, feature, function, or characteristic of the services, per In re Bayer Aktiengesellschaft. The Board reasoned that KAHWA would inform consumers that the establishment serves that particular green tea.

    Again, the absence of evidence proved fatal. If no cafés sell kahwa, then selling kahwa cannot be a characteristic of café services, and consumers cannot immediately glean that characteristic from the mark. The court rejected a series of fallback arguments advanced by the Director, including speculation that cafés could sell kahwa in the future and policy concerns about monopolizing descriptive terms. Speculation, the court reminded, is not substantial evidence.

    The court also declined to entertain a new appellate theory that KAHWA describes cafés because it signals that they serve a “variety of teas.” The Board had not adopted that rationale, and the Administrative Procedure Act bars agencies from changing theories midstream. Even on the merits, the court observed that any mental leap from a specific Kashmiri tea to tea generally, and then to cafés, would suggestiveness rather than descriptiveness.

    For practitioners, the takeaway is straightforward: descriptiveness must be grounded in present consumer perception tied to actual service characteristics. As Charles Gideon Korrell believes, this opinion strengthens applicants’ ability to rebut overbroad descriptiveness refusals with a focused evidentiary record.

    The Doctrine of Foreign Equivalents and Alternative English Meanings

    Perhaps the most consequential aspect of the decision lies in the court’s treatment of the doctrine of foreign equivalents. The doctrine generally requires translation of foreign words before assessing registrability, but it is subject to limits when ordinary consumers would not stop to translate or when a term has a well-established alternative English meaning.

    The examiner had relied on the doctrine based on the Arabic “coffee” translation. The Board acknowledged the dispute but declined to reach it. On appeal, the Federal Circuit addressed the legal question de novo, citing In re Vetements Group AG, Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, and In re Spirits Int’l, N.V.. Where a foreign term has a well-established alternative English meaning such that even foreign-language speakers would not translate it, translation is unnecessary and the doctrine does not apply.

    Here, the parties did not dispute, and the Board expressly recognized, that KAHWA has a well-recognized English meaning as a Kashmiri green tea. Under In re Spirits, that concession foreclosed application of the doctrine as a matter of law. The court held that the Board’s failure to decide the issue did not prevent appellate resolution because the record was fully developed and the question was legal.

    This holding will resonate beyond cafés and tea. It signals that once an alternative English meaning is established, the PTO cannot toggle back to foreign translations to revive refusals. Charles Gideon Korrell notes that this clarity should reduce uncertainty for brands built around culturally specific terms that have entered English usage.

    Practical Implications

    Several practical lessons emerge:

    1. Evidence matters. Assertions that a service “could” feature a product someday will not support genericness or descriptiveness.
    2. Service-mark analysis is contextual. Naming a product does not automatically describe a service unless the product is a defining feature of that service.
    3. Procedural rigor persists. New theories cannot be introduced on appeal, and applicants should track which grounds remain live.
    4. Foreign equivalents are constrained. A well-established English meaning can shut the doctrine’s door entirely.

    From a strategic perspective, applicants should consider building a record that not only establishes alternative meanings but also negates assumptions about service characteristics. As Charles Gideon Korrell has emphasized in advising brand owners, proactive evidentiary development can be the difference between a speculative refusal and a registrable mark.

    Conclusion

    The Federal Circuit’s reversal in In re Bayou Grande Coffee Roasting Co. underscores that trademark refusals must rest on substantial evidence tied to real-world consumer perception, not conjecture. By insisting on proof that a term names a key aspect or characteristic of the services and by clarifying the limits of the doctrine of foreign equivalents, the court strengthened protections for distinctive service marks. For applicants navigating descriptiveness and foreign-language issues, the decision offers a clear, caffeinated boost.

    By Charles Gideon Korrell

  • Top Brand LLC v. Cozy Comfort Company LLC: Federal Circuit Reverses $18.5M Infringement Verdict Based on Design Patent Disclaimer and Weak Trademark Use

    Top Brand LLC v. Cozy Comfort Company LLC: Federal Circuit Reverses $18.5M Infringement Verdict Based on Design Patent Disclaimer and Weak Trademark Use

    In a significant ruling that underscores the Federal Circuit’s evolving approach to design patent claim scope and the evidentiary burden in trademark cases, the court in Top Brand LLC v. Cozy Comfort Company LLC, No. 24-2191 (Fed. Cir. July 17, 2025), reversed a jury’s $18.5 million verdict for design patent and trademark infringement. Charles Gideon Korrell sees this decision to be noteworthy for three key holdings: (1) prosecution history disclaimer applies to design patents; (2) the accused product was within the surrendered scope and therefore could not infringe; and (3) the evidence of trademark infringement failed under the Lanham Act’s likelihood-of-confusion standard.

    Background: Oversized Hoodies and the D788 Design Patent

    Cozy Comfort markets a popular oversized wearable blanket called “The Comfy,” protected by U.S. Design Patent No. D859,788 (“D788 patent”) and two federal trademark registrations for “THE COMFY.” Top Brand, through various Amazon storefronts and other e-commerce platforms, sells similar products under the brands “Tirrinia” and “Catalonia.”

    In district court, Cozy Comfort alleged that Top Brand’s seven product lines infringed its D788 design patent and trademarks. Charles Gideon Korrell points out that the jury found infringement of both, awarding $15.4 million in disgorged profits for the design patent claim and $3.08 million for trademark infringement. The district court denied Top Brand’s motion for judgment as a matter of law (“JMOL”), and Top Brand appealed.

    Design Patent: The Federal Circuit Applies Prosecution History Disclaimer

    Judge Dyk, writing for the unanimous panel, held that the district court erred in failing to apply prosecution history disclaimer to the design patent. Although the doctrine has long applied to utility patents, this marks a definitive and precedential statement that it applies with equal force to design patents.

    The court relied on Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 F.3d 694 (Fed. Cir. 2014), which recognized disclaimer by amendment in a design patent context, and extended the rationale to disclaimer by argument. The court emphasized that “[i]t would be contrary to the very purpose of design patent prosecution to allow the patentee to make arguments in litigation contrary to the representations which led to the grant of the patent.”

    Charles Gideon Korrell notes that Cozy Comfort had narrowed the scope of the D788 patent during prosecution to overcome prior art (specifically, the White reference) by distinguishing its design based on four features:

    1. A marsupial pocket that was narrow and square-like,
    2. Pocket placement beneath the armholes,
    3. A downward-sloping bottom hemline,
    4. A different armscye-pouch vertical alignment.

    Because the accused products from Top Brand mirrored the features found in the disclaimed White reference—especially in the width and shape of the pocket and the upward hemline—the court held that no reasonable jury could have found infringement under the proper claim construction.

    This decision reaffirms Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), and illustrates how prosecution statements that “distinguish” the claimed design can limit scope in infringement proceedings.

    Trademark: Descriptive Use of “Comfy” Not Likely to Confuse

    The Federal Circuit also reversed the jury’s trademark infringement verdict, finding insufficient evidence under the Ninth Circuit’s Sleekcraft factors. Most notably, the court concluded:

    • “THE COMFY” is a weak mark, given the descriptive nature of “comfy” for wearable blankets.
    • Top Brand never used the full phrase “THE COMFY” but instead used the term “Comfy” descriptively on a drop-down menu that also included generic terms like “Mermaid Tail Blankets” and “Snuggly.”
    • There was no evidence that “Comfy” functioned as a source identifier or was used with secondary meaning.
    • Alleged instances of actual confusion—such as customer questions on Amazon asking whether a Tirrinia product was “the real Comfy”—were de minimis and not clearly attributable to Top Brand’s conduct.

    The court emphasized that without use of the protected mark as a source identifier, even descriptively similar terms cannot give rise to actionable trademark infringement. It cited KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004), and Booking.com B.V., 591 U.S. 549 (2020), to underscore the narrow scope of rights afforded to descriptive marks absent secondary meaning.

    Strategic Implications

    This decision contains several important takeaways:

    1. Design Patentees Must Live With Prosecution History: Just as in utility patents, representations made to the USPTO can and will be used to limit design patent claim scope. This ruling is a cautionary tale for patent prosecutors and litigators alike.
    2. Design Patent Scope Is Exceptionally Narrow: The court reiterated that design patents protect only the drawings shown and are easily limited by disclaimer. The “overall impression” test from Gorham and Egyptian Goddess remains the standard, but only within properly construed boundaries.
    3. Trademark Claims Require Real Evidence: The bar for proving likelihood of confusion under the Sleekcraft factors remains high. Descriptive terms like “comfy” cannot be monopolized without clear evidence of secondary meaning and source-identifying use.
    4. No Need to Reach Invalidity: Since the court reversed the infringement findings, it declined to address the validity of the D788 patent. This follows CloudofChange, LLC v. NCR Corp., 123 F.4th 1333 (Fed. Cir. 2024), and Cardinal Chemical Co. v. Morton Int’l, Inc., 508 U.S. 83 (1993), reinforcing that courts need not reach invalidity if it is conditionally abandoned and no longer relevant to the outcome.

    Charles Gideon Korrell believes this decision will have ripple effects in how district courts handle claim construction in design patent cases—especially when the patentee has walked a fine line during prosecution. It also serves as a warning against asserting weak trademark claims built on descriptive or generic terms without strong supporting evidence.

    By Charles Gideon Korrell

  • Curtin v. United Trademark Holdings, Inc.: No Standing for Consumers to Oppose Trademark Registrations Absent Commercial Interest

    Curtin v. United Trademark Holdings, Inc.: No Standing for Consumers to Oppose Trademark Registrations Absent Commercial Interest

    In Curtin v. United Trademark Holdings, Inc., No. 23-2140 (Fed. Cir. May 22, 2025), the Federal Circuit affirmed the dismissal of a consumer’s opposition to a trademark registration, holding that an individual lacking a commercial interest does not have statutory standing under 15 U.S.C. § 1063 to oppose trademark registration. Applying the Lexmark zone-of-interests and proximate cause framework—previously used in Lanham Act false advertising and cancellation contexts—the court clarified that opposition proceedings are reserved for parties asserting commercial harm.

    Background

    United Trademark Holdings (UTH) applied to register the mark RAPUNZEL for dolls and toy figures. Rebecca Curtin, a law professor and doll collector, filed a notice of opposition, asserting that the mark was generic, merely descriptive, and failed to function as a trademark. She claimed harm as a consumer who values access to a competitive marketplace for fairy tale-themed dolls.

    The TTAB dismissed her opposition, finding that she failed to demonstrate entitlement to bring the proceeding. Curtin appealed, arguing that the Board erred by applying the Lexmark framework instead of the Federal Circuit’s earlier test from Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999), which focused on whether the opposer had a “real interest” and a “reasonable basis” for believing they would be damaged.

    Federal Circuit’s Holding

    The Federal Circuit upheld the TTAB’s decision and confirmed that Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), governs the analysis of who is entitled to bring opposition proceedings under § 1063. The court reasoned that Lexmark provides the correct interpretive framework for determining whether a party falls within the statutory cause of action. It also reiterated its earlier ruling in Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020), which applied Lexmark to cancellation proceedings under § 1064.

    In Curtin, the court saw no reason to distinguish § 1063 from § 1064, especially given the parallel statutory language: both provisions authorize action by any person “who believes that he would be damaged” by a trademark registration. The court rejected Curtin’s argument that opposition proceedings are purely administrative and thus not subject to the same statutory cause-of-action analysis.

    Zone of Interests and Proximate Cause

    Applying the Lexmark test, the court held that Curtin’s interest—as a consumer—fell outside the zone of interests protected by the statutory provisions she invoked (genericness, descriptiveness, and failure to function as a mark). These provisions, the court explained, are designed to protect commercial interests and promote fair competition, not consumer choice or expression per se.

    The court also found Curtin’s alleged harms—such as reduced marketplace diversity, higher prices, and diminished access to “classic” Rapunzel dolls—to be too remote. These effects, it held, were speculative and derivative of any direct harm to commercial actors (e.g., doll manufacturers or sellers) and thus insufficient to establish proximate causation under Lexmark.

    Notable Precedents

    Takeaway

    Curtin reinforces that only parties with a commercial interest may invoke § 1063 to oppose trademark registration on grounds such as genericness or descriptiveness. While consumers may be indirectly affected by trademark registrations, those harms do not suffice under the Lanham Act unless they directly relate to a commercial interest. The ruling narrows the scope of opposition proceedings and aligns § 1063 with the broader statutory cause-of-action framework developed in Lexmark and its progeny.

    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

  • 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