CAFC says patent claims need not explicitly disclose material benefits for Trademark Functionality Doctrine
The Federal Circuit decision highlights the importance of utility patent claims to trademark functionality doctrine, even when those claims don’t explicitly disclose the utilitarian advantage of the design registered as a trademark. The Federal Circuit decision underscores the importance of utility patent claims to trademark functionality doctrine even when those claims don’t explicitly disclose the utilitarian advantage of the design registered as a trademark.
CeramTech markets artificial hip components branded as Biolox Delta composed from a zirconia-toughened alumina (ZTA) ceramic that includes chromium oxide, or chromia. CeramTech obtained patent protection for Biolox Delta’s chemical composition in U.S. Patent No. Sintered Molding, 5830816. The patent, which expired on October 13, discloses that adding chromia in different amounts can color the ZTA composition red, purple, yellow, black or gray. The patent also discloses that adding chromia in different amounts can color the ZTA composition red, purple, yellow, black or gray.[CeramTech’s]CeramTech Concedes Material Benefits of Chromia in First Morton-Norwich Factor[]In April 2013, two trademark registrations were added to the Supplemental Register to protect the pink coloring of CeramTech’s ceramic hip components. Coorstek, a rival firm, then filed proceedings in March 2014 at the TTAB as well as in U.S. District Court to cancel CeramTech’s registrations because they claimed functional features for those hip components. The TTAB used the four-factor functionality tests laid out by the Federal Circuit predecessor, the U.S. Court of Customs and Patent Appeals in In re Morton-Norwich Products (CCPA), to determine that the pink color was functional. This was due largely because CeramTech’s public communications revealing the benefits of chromia and its patents. The TTAB also discredited experimental testing from related German patent litigation on chromia’s lack of benefits submitted by CeramTech due to flawed methodology, and also rejected CeramTech’s unclean hands defense based on Coorstek’s previous representations on chromia’s lack of material benefits in ZTA ceramics.
Much of CeramTech’s appeal focused on the first Morton-Norwich factor, which looks at patents disclosing the utilitarian advantages of the trademarked design. CeramTech argued, on this point, that the TTAB erred in attributing functional benefits other than hardness to chromia, and that it improperly applied U.S. Supreme Court precedence on trademark functionality, TrafFix Devices v. Marketing Displays (2002). The Federal Circuit determined that the TTAB correctly applied the Supreme Court’s ruling in TrafFix Devices. CeramTech conceded that adding chromia turns ZTA ceramic pink and that the 816 patent protects Biolox Delta. “These concessions establish that the ‘816 patent claims a feature
,’ the color pink, which CeramTec has trademarked,” the Federal Circuit wrote, noting that this conclusion was further supported by other CeramTech patents and patent applications disclosing chromia’s impact on ZTA ceramic’s hardness.
CeramTech had also challenged the TTAB’s application of the third and fourth factors of Morton-Norwich, which inquire into the availability of functionally equivalent designs for competitors, and facts indicating that the design results in comparatively cheap and easy manufacture. The TTAB determined that these factors had no bearing on the mark’s functionality. In affirming those conclusions, the Federal Circuit found that CeramTech mischaracterized evidence of functionally equivalent ZTA ceramic compositions as undisputed, reiterating testimony from a Coorstek employee who spoke both to the composition’s increased hardness and that its manufacturing costs were similar to other ZTA ceramics.
TTAB Wrong to State That Unclean Hands Defense is Unavailable in Functionality Cases
The Federal Circuit also found that the TTAB properly rejected the German test results, which purported to show that the addition of chromia in ZTA ceramics up to 0.5% by weight had no effect on hardness or wear resistance for Biolox Delta. The Federal Circuit noted that CeramTech’s experiments showed that ZTA ceramics exhibit a pink hue when the composition contains more than 0.5% chromia. While CeramTech had argued that Biolox Delta contains 0.33% of chromia by weight, within the range analyzed by the German test, the Federal Circuit noted that the trademark registration is not tied to a specific amount of chromia but rather the pink color of the composition.
After the Federal Circuit found that the TTAB properly placed the burden of proving functionality on Coorstek, the appellate court concluded that the TTAB committed harmless error in foreclosing CeramTech’s unclean hands argument. The appellate court agreed with the Board that it was too strong in saying that an unclean-hands defense is not available in functionality proceedings because of the strong public interest to remove functional marks from trademark register. However, the Federal Circuit found that the TTAB has discretion to reject defenses on a case-by-case basis and that the Board’s decision, which was not marked precedential, didn’t seem to announce a new policy broadly applicable to all TTAB proceedings involving functionality.[]Steve Brachmann
Steve Brachmann graduated from the University at Buffalo School of Law in May 2022, earning his Juris Doctor. He served as the president of the Intellectual
