Supreme Court Asked to Revisit Trademark Functionality Test for Features Disclosed in Utility Patents

By Emily R. Parker

The long-running dispute between CeramTec GmbH and CoorsTek Bioceramics LLC over the color pink for ceramic hip-joint components has reached the U.S. Supreme Court. CeramTec recently filed a petition for certiorari challenging a Federal Circuit decision in CeramTec GmbH v. CoorsTek Bioceramics LLC. There, the Federal Circuit affirmed cancellation of CeramTec’s registered color marks on the ground that the color was “functional” because it “results from” the company’s expired utility patents. If the Supreme Court grants review, it could resolve a growing circuit split over the interpretation of the Court’s 2001 ruling in TrafFix Devices v. Marketing Displays, and the so-called “TrafFix presumption.”  

In TrafFix, the Supreme Court held that when features are claimed in a utility patent, this constitutes “strong evidence” that those claimed features are functional and therefore ineligible for trademark protection. This “TrafFix presumption” is intended to prevent patent holders from using trademark law to extend their exclusive rights over functional product features after the patent expires. Under TrafFix, a party seeking trademark protection must carry the “heavy burden” of showing that the feature is not functional, but merely an “ornamental, incidental, or arbitrary” aspect of the product.

CeramTec manufactures ceramic hip implants using a zirconia-toughened alumina (ZTA) ceramic, covered by now-expired patents. These patents included the use of chromia, a compound added to enhance the strength of the ceramic, which also gives the ceramic its distinctive pink color. CeramTec spent years promoting the pink coloration as a source identifier and obtained federal trademark registrations.

When CoorsTek began selling similar pink implants, it challenged CeramTec’s trademarks before the Trademark Trial and Appeal Board (TTAB), arguing the color pink was functional. The TTAB ruled in CoorsTek’s favor, concluding that CeramTek’s trademarks on the color pink as applied to hip-joint components were functional. In reaching its decision, the TTAB relied in large part on CeramTec’s expired utility patents, finding that the TrafFix presumption applied because the patents “disclose[d] the utilitarian advantages of [chromia],” and the color pink was “a natural byproduct” of the chromia. The Federal Circuit affirmed, holding that a feature (pink coloration) that could result from practicing an expired patent was presumptively functional under TrafFix, even if the patent did not specifically claim any utility tied to the color.    

In its petition, CeramTec argues that the Federal Circuit’s decision conflicts with decisions of the Third, Fourth, and Seventh Circuits, which have held that only features that are the focus of the patent’s claimed utility—not arbitrary or incidental byproducts—should be presumed functional under TrafFix. CeramTec contends the Federal Circuit improperly broadened the presumption to cover any feature that results from practicing a patent, regardless of whether it was the main focus or benefit of the patent.

CoorsTek’s response to the petition is due this fall. If the Court accepts the case, argument would likely occur in the first half of 2026. This is an important case to follow, as it could have wide-reaching implications for the intersection of patent and trademark law. It also serves as an important reminder for companies and IP practitioners: disclosing a product feature in a utility patent—even incidentally—could later impact the ability to claim trademark rights in that feature.