CAFC Affirms TTAB: Pink Color De Jure Functional for Hip Joint Implants

The CAFC upheld the TTAB's decision [TTABlogged here] granting petitions for cancellation of two registrations on the Supplemental Register 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, Appeal No. 2023-1502 (Fed. Cir., January 3, 2025) [precedential].

Appellant CeramTec raised two principal arguments on appeal: (1) that the Board’s finding of functionality was infected by legal error and unsupported by substantial evidence, and (2) that the Board erred by categorically precluding the defense of unclean hands in cancellation proceedings involving functionality.

Functionality: The CAFC concluded that the Board correctly applied the Morton-Norwich factors in finding the color pink to be de jure functional for ceramic hip implant components. It observed that CeramTec's expired '816 patent, as well others of its patents, disclose the utilitarian advantages of adding Cr3+ ions to ZTA ceramic hip replacement component materials in order to increase levels of hardness. Ceramtek conceded that the addition of chromia causes a ZTA ceramic to become pink, and (2) that CeramTec practices at least one claim of its ’816 patent. Under the first Morton-Norwich factor, the Board correctly applied the Supreme Court's directive in TrafFix that "utility patents can be 'strong evidence' that the features therein claimed are functional, thus precluding trademark protection."

The Board's finding under the second Morton-Norwich factor was unchallenged: that CeramTec's advertising touted the utilitarian advantages of adding chromium oxide to ZTA ceramic compounds; this evidence also “constitute[s] strong evidence of functionality.” As to the third factor—the availability of functionally equivalent designs—the Board correctly deemed it to be neutral due to the lack of evidence of actual or potential alternative designs. The fourth factor—whether the designs result in a comparatively simple or cheap method of manufacture—was also correctly deemed neutral due to conflicting evidence.

Because substantial evidence supported the Board’s factual findings, the CAFC affirmed the Board’s conclusion that CeramTec’s proposed trademarks are functional under Section 2(e)(5).

Unclean Hands: The CAFC agreed with CeramTec that the Board was incorrect in stating that the defense of unclean hands is unavailable in Board functionality proceedings. CeramTec had contended that CoorsTek should be precluded from asserting that the proposed trademarks are functional because CoorsTek had long maintained that chromia provides no material benefits for ZTA ceramics.

The CAFC pointed out that Rule 2.114(b)(2) expressly provides that the defendant in a cancellation proceeding may "includ[e] the affirmative defense[] of unclean hands." However, any error by the Board in its broad pronouncement was harmless "because the Board adequately considered whether the unclean hands defense was available in this case, as illustrated by its statement that it was 'exercis[ing its] discretion' in view of the 'strong public policy interest in' cancelling ineligible marks."(citing Loglan Inst., Inc. v. Logical Language Grp., Inc., 962 F.2d 1038, 1042 (Fed. Cir. 1992) (“The Board did not err in declining to apply [equitable] defenses [in a cancellation proceeding], as the public interest . . . to rid the register of [an ineligible mark] transcends them.”)).

Conclusion: And so, the CAFC affirmed the Board's decision.

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TTABlogger comment: Although the court repeatedly speaks of "cancelling" CeramTec's marks, it is the registrations that are cancelled, not the marks. Maybe one could say the marks were "invalidated." Note also the court's use of "trademark" as a verb. All lawyers should know better.

Text Copyright John L. Welch 2025.