Federal Circuit Affirms Cancellation of CeramTec’s Pink Ceramic Hip Component Trademarks

In a decision with significant implications for the medical device and trademark industries, the Federal Circuit Court of Appeals upheld the cancellation of CeramTec GmbH’s trademarks protecting the pink color of ceramic hip replacement components. The court’s ruling in CeramTec GmbH v. CoorsTek Bioceramics LLC, affirmed the findings of the Trademark Trial and Appeal Board (TTAB), which determined that the color pink is functional in this context and therefore ineligible for trademark protection.

Case Background

CeramTec, a German medical device manufacturer, had registered trademarks on the Supplemental Register in 2013 for the pink color of its zirconia-toughened alumina (ZTA) ceramic hip components marketed under the “Biolox Delta” brand. The pink color results from adding chromium oxide (chromia) to the ceramic composition, which contributes to the material’s increased hardness and resistance to deformation.

CeramTec’s competitor, CoorsTek Bioceramics LLC, challenged the trademarks, arguing that the pink color was functional because it stemmed from the addition of chromia, which enhances the ceramic’s material properties. CoorsTek filed a petition with the TTAB in 2014 to cancel the trademarks on the grounds of functionality. The TTAB ruled in favor of CoorsTek in December 2022, and CeramTec appealed the decision to the Federal Circuit.

The Federal Circuit’s Analysis

The Federal Circuit affirmed the TTAB’s decision, analyzing the functionality of the pink color under the Morton-Norwich factors, which evaluate whether a product feature serves a utilitarian purpose and is thus ineligible for trademark protection:

Existence of Utility Patents: The court agreed with the TTAB that CeramTec’s expired U.S. Patent No. 5,830,816 (“’816 patent”) provided strong evidence of functionality. The patent disclosed that chromia increases the hardness, toughness, and stability of ZTA ceramics. Since the addition of chromia produces the pink color, the court found a direct connection between the color and the material’s functional benefits.

Advertising Materials: CeramTec’s promotional materials touted the benefits of chromia in enhancing the mechanical properties of ZTA ceramics, further supporting the functionality argument.

Availability of Alternative Designs: The court found this factor neutral, as there was no probative evidence showing that ceramic hip components of other colors could achieve equivalent mechanical properties.

Impact on Manufacturing Cost: Conflicting evidence on whether the addition of chromia increased or decreased production costs led the court to consider this factor neutral as well.

The Federal Circuit also rejected CeramTec’s argument that the TTAB misapplied the functionality doctrine outlined in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001). The court clarified that utility patents are strong evidence of functionality, regardless of whether the patented feature is explicitly claimed as a design element.

Rejection of the Unclean Hands Defense

CeramTec argued that CoorsTek acted in bad faith by seeking to cancel the trademarks after previously asserting that chromia provided no functional benefits. The Federal Circuit disagreed, affirming the TTAB’s decision to reject the unclean hands defense, citing the overriding public interest in removing functional trademarks from the register.

Key Takeaways and Broader Implications

Strengthened Functionality Doctrine: The decision reinforces the principle that product features arising from functional characteristics, such as enhanced material properties, cannot be monopolized through trademark law.

Impact on Trademark Registrations: The ruling underscores the importance of thoroughly evaluating the functionality of design elements, particularly for industries where product features are closely tied to performance.

Medical Device Industry Considerations: Companies in the medical device sector must carefully assess whether features like color or shape can be considered purely aesthetic or if they serve a functional purpose tied to the product’s performance.

Conclusion

The Federal Circuit’s affirmation of the TTAB’s decision in CeramTec GmbH v. CoorsTek Bioceramics LLC highlights the challenges of securing trademark protection for features with functional underpinnings. The ruling serves as a reminder for businesses to consider the functionality doctrine when pursuing trademarks, especially in highly technical industries where product design and material composition are closely linked.

For more details, see CeramTec GmbH v. CoorsTek Bioceramics LLC, U.S. App. LEXIS 20338 (Fed. Cir. 2024).

To learn more about these issues, contact the author of this article, Arvind Jayakumar. Arvind is a brand protection attorney who counsels brands on how to prevent unfair competition, avoid unnecessary liability, and enforce their intellectual property rights. He has successfully litigated various commercial issues related to unfair competition, false advertising, trademark infringement, copyright infringement, breach of contract, and other business disputes. In addition to his litigation practice, Arvind boasts a robust trademark and copyright prosecution practice in which he helps brands register their intellectual property and secure IP rights.