Utility Patent on a Trademarked Feature Can Lead to Trademark Cancellation

In CeramTec GMBH v. CoorsTek Bioceramics LLC, No. 2023-1502 (Fed. Cir. Jan. 3, 2024), the Federal Circuit affirmed the TTAB’s cancellation of two of CeramTec’s trademarks, Registration Nos. 4319095 and 4319096, which claimed protection for use of the color pink in ceramic hip components.

CoorsTek filed actions against CeramTec in both federal district court and the TTAB, seeking to cancel CeramTec’s trademarks because they were functional. Applying the four Morton-Norwich factors, the TTAB found that the claimed color pink was functional, and therefore ineligible for trademark protection. The Morton-Norwich factors consider whether: (1) a utility patent discloses the utilitarian advantages of the design; (2) the originator’s advertising materials tout the design’s utilitarian advantages; (3) functionally equivalent designs exist and are available to competitors; and (4) the design enables a comparatively simple or cheap method of manufacturing the product. The TTAB also rejected an unclean hands defense raised by CeramTec, finding the defense inapplicable and further holding that such a defense was unavailable in functionality proceedings. CeramTec appealed.

On appeal, CeramTec challenged the Board’s analysis of Morton-Norwich factors (1), (3), and (4).The Federal Circuit affirmed the Board’s findings. Factor (1) was met because CeramTec had patented this technology (U.S. Patent No. 5,830,816), claiming the aspect of the chemical composition which gave rise to the trademarked pink color. Factor (3) was neutral because there was no probative evidence that different-colored ceramic hip components were equivalent in desired mechanical properties. Factor (4) was neutral because the cost of producing the pink components was similar to white components. The Federal Circuit held that the TTAB “spoke too strongly by suggesting” the defense was categorically unavailable in functionality proceedings but held that this was harmless because the PTAB adequately considered whether the defense was available in this case.