Traffix Jam – Technical Functionality Prevents Trademark Protection for the Color Pink

Written by: Matthew Pham and Jacob R. Rosenbaum

CERAMTEC GMBH v. COORSTEK BIOCERAMICS LLC

Before Lourie, Taranto, and Stark.  Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board.

Summary: A utility patent may still be considered strong evidence of a claimed trade dress’s functionality even if the patent does not describe the same goods or explicitly discloses the trade dress in the claim.

Appellant CeramTec owned trademark registrations for the pink color of its ceramic hip replacement products. The hip replacement products are pink because the ceramic contains chromia. CeramTec’s competitor, Coorstek, petitioned the USPTO to cancel CeramTec’s registrations for being functional.  Coorstek argued the pink mark was functional because chromia improved mechanical properties of the ceramics like hardness and toughness.  Coorstek cited CeramTec’s own patent for ceramic cutting tools which claimed the use of chromia to increase hardness.  The Board applied the four-factor Morton‑Norwich functionality test, granted Coorstek’s petition, and cancelled the color registrations.  The Board held in part that the patent was “strong evidence” of functionality because the patent claimed adding chromia and thus claimed the color pink in the ceramics.

The Federal Circuit affirmed.  CeramTec argued that the patent was not “strong evidence” of functionality because the patent: 1) did not explicitly disclose material benefits of pink ceramics and 2) covered cutting tools, not hip replacement products.  The Federal Circuit disagreed, holding that the Supreme Court’s decision in Traffix does not require a patent “to explicitly disclose that [a] claimed feature is functional.”  The Federal circuit also held that a patent can be evidence of a mark’s functionality under Traffix even if the patent describes goods different from those to which the mark is affixed.  Because CeramTec did not dispute that chromia turns ceramic pink or that CeramTec’s products practiced claims of the patent at issue, the Board did not err in finding that the patent was strong evidence of functionality.

Editor: Sean Murray