The Federal Circuit affirmed a TTAB decision (previously blogged here) to cancel trademark registrations for the color pink applied to the entire surface of hip joint implants, on the ground of Section 2(e)(5) functionality. CeramTec GMBH v. CoorsTek Bioceramics LLC, No. 23-1502, 2025 WL 29252, -- F.4th -- (Fed. Cir. Jan. 3, 2025).   

CeramTec manufactures artificial hip components used to replace damaged bone and cartilage in hip replacement procedures. The hip components are made from a zirconiatoughened alumina (“ZTA”) ceramic that contains, among other things, chromium oxide (chromia). The amount of chromia in the ZTA ceramic affects its coloring. The range of chromia claimed in CeramTec's patent can produce a variety of colors, one of which is pink.  

In a cancellation proceeding, the TTAB analyzed the functionality of the marks under the four factors discussed in In re Morton–Norwich Products, Inc., 671 F.2d 1332, 1340–41 (C.C.P.A. 1982), and concluded that the color pink was functional as it relates to ceramic hip components. Applying the Morton–Norwich factors, the Board found that CeramTec's patents and public communications disclosed that the addition of chromia provides utilitarian advantages to ZTA ceramics, and therefore these two factors weighed in favor of functionality. Because there was no probative evidence as to whether the hip implants would work as well if made in colors apart from pink, the TTAB found this third factor regarding alternative designs to be neutral with respect to functionality. And because there was conflicting evidence as to whether chromia decreases the cost of manufacturing ceramic hip components, this fourth factor also was found to be neutral. 

The Federal Circuit noted that CeramTec had conceded that the addition of chromia causes a ZTA ceramic to become pink. Also, CeramTec's patent disclosed that the addition of chromia increases ZTA ceramic hardness (the addition of chromia “makes it possible for the first time to achieve hardness values such as have not previously been achieved”), and that its hip implants practiced at least one claim of that patent. Because utility patents are granted for “unique and useful” inventions, they are “strong evidence that the features therein claimed are functional,” TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29 (2001), which would preclude trademark protection. 

The functionality doctrine is premised on the public being “free to use the innovation” after a patent has expired—not merely a part of the innovation. Qualitex, 514 U.S. at 164. That CeramTec only seeks to prevent the public (i.e., CoorsTek) from practicing the narrow portion of its patents that claim a pink ZTA ceramic is beside the point. Permitting the public to use that innovation weighs in favor of finding functionality. 

The Federal Circuit also affirmed the TTAB's decision to discount certain experiments that were conducted in related German litigation, in which the addition of chromia at various levels (0.0, 0.1, 0.3, and 0.5% by weight) was found to have no effect on hardness or wear resistance, because it did not address the full range of chromia that produces pink ZTA ceramics as claimed by the CeramTec patent. 

Because substantial evidence supports the TTAB's factual findings, the Federal Circuit affirmed cancellation of CeramTec's trademarks for being functional under Section 2(e)(5).