This case examines the application of trademark functionality doctrine in the medical device industry, specifically addressing whether the pink color of ceramic hip components can be protected as a trademark. The case provides important guidance on how courts evaluate functionality claims and the intersection between patent and trademark protection for product features.

Background

Ceramtec manufactures artificial hip components using zirconia-toughened alumina (“ZTA”) ceramic material containing chromium oxide (chromia). The chromia gives their products, marketed under the name “Biolox Delta,” a distinctive pink color. Prior to seeking trademark protection, Ceramtec held U.S. Patent 5,830,816 covering their ceramic composition, which expired in January 2013.

In January 2012, Ceramtec applied for two trademarks claiming protection for the color pink used in ceramic hip components. The marks were registered on the Supplemental Register in April 2013, covering both a “hip joint ball” and an “acetabular shell or fossa.”

Coorstek, a competitor in the medical implant market, manufactures two different ZTA ceramic materials: CeraSurf-p, which contains chromia and is pink, and CeraSurf-w, which does not contain chromia and is white. On March 3, 2014, Coorstek filed both a lawsuit in the District of Colorado and a cancellation petition with the Trademark Trial and Appeal Board (TTAB), arguing that the pink color was functional and therefore ineligible for trademark protection.

The TTAB ruled in favor of Coorstek, finding that the pink color was functional and cancelling Ceramtec’s trademark registrations. The Board based its decision on evidence from Ceramtec’s expired patent and their technical publications showing that chromia provided material benefits to the ceramic components. Ceramtec appealed this decision to the Federal Circuit, challenging both the Board’s functionality finding and its handling of the unclean hands defense.

Issue(s)

Whether the pink color of Ceramtec’s ceramic hip components is functional and thus ineligible for trademark protection.

Holding

The Federal Circuit affirmed the TTAB’s decision canceling Ceramtec’s trademarks, finding that the pink color was functional and therefore not eligible for trademark protection.

Reasoning

The Federal Circuit’s analysis centered on the Morton-Norwich factors, a four-part test established in In re Morton-Norwich Products, Inc. that courts use to determine whether a product feature is functional. These factors examine: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts its utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating the design results in a comparatively simple or cheap method of manufacturing.

Applying these factors to Ceramtec’s case:

1. The court found that Ceramtec’s expired patent disclosing the use of chromia in ZTA ceramics provided strong evidence that the pink color was functional, as it resulted from a feature that provided material benefits.
2. The court considered Ceramtec’s advertising materials and public communications, which disclosed that chromia provides material benefits to the ZTA ceramics, further supporting functionality.
3. Regarding the availability to competitors, the court found no evidence that alternative designs would work as well, making this factor neutral in the analysis.
4. The court determined that evidence about manufacturing costs and methods was inconclusive and treated this factor as neutral.

Particularly significant was the relationship between Ceramtec’s expired patent and their trademark claims. The court emphasized that features previously protected by a patent cannot later be protected through trademark law if they are functional, as this would effectively extend patent protection indefinitely.

The court also rejected Ceramtec’s argument that the Board improperly applied the “unclean hands” doctrine, finding that the Board properly considered the public interest in removing registrations for functional marks from the trademark register.

Through this decision, the Federal Circuit reinforced the principle that functional product features, even if they create a distinctive appearance, cannot be protected as trademarks when they serve a utilitarian purpose essential to the product’s use or manufacture.

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