January 22, 2025

The Federal Circuit in CeramTec GmbH v. CoorsTek Bioceramics LLC, ---F.4th---, 2025 WL 29252 (Fed. Cir. Jan. 3, 2025), affirmed the Trademark Trial and Appeal Board’s cancellation of two trademark registrations for the pink color of hip implant components marketed by CeramTec after finding the pink color functional.  An image depicting pink hip implant components covered by the registrations is included in the Court’s opinion. See 2025 WL 29252, at *1 (showing a pink hip joint ball and a pink acetabular shell or fossa).  The components are made from a zirconia-toughened alumina (“ZTA”) that, among other things, contains chromium oxide (chromia). Id.  The pink color results from the amount of chromia in the ZTA ceramic. Id.  The chemical composition, including the addition of chromia, was the subject of a U.S. patent granted to CeramTec that expired in 2013. Id.  The patent specification and prosecution history disclose how adding chromia enables the claimed composition to achieve unprecedented levels of hardness, and that increased hardness levels allow the ZTA hip component to maintain its shape and resist deformation. Id.

The Court’s opinion provides a good discussion of the functionality doctrine and the Board’s analysis, including under the four factors addressed in In re Morton–Norwich Products, Inc., 671 F.2d 1332, 1340–41 (C.C.P.A. 1982), i.e., “(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 the design's utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing

the product.” 2025 WL 29252, at *3.

The opinion also explains that, in the context of the first Morton-Norwich factor and contrary to CeramTec’s arguments, TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 121 S. Ct. 1255 (2001), does not “hold that for a patent to be evidence of a claimed feature’s functionality, the patent must explicitly disclose that the claimed feature is functional” or “state that for a trademark to be subject to a TrafFix analysis it must be used for the goods described in the patent.” 2025 WL 29252, at *4 (reasoning that the “central advance” language in TrafFix, 532 U.S. at 29-31, 121 S. Ct. at 1260-61, CeramTec relied on was used to “illustrate why the patent in that case was particularly strong evidence that the design feature at issue was functional”).

The Court further clarified that the unclean hands defense is not categorically unavailable in functionality proceedings and noted the Board’s rules explicitly provide that the defendant in a cancellation proceeding can raise the affirmative defense of unclean hands. 2025 WL 29252, at *7 (citing 37 C.F.R. § 2.114(b)(2)).