The leading U.S. case on the question of trademark registration for the color of a product is Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995). In this landmark decision, the Supreme Court held that a single color can qualify for trademark protection under the Lanham Act if it has acquired secondary meaning and serves to identify and distinguish the goods or services of one seller from those of others.
The Court rejected the argument that color alone could not function as a trademark. A color, however, must have acquired secondary meaning, meaning consumers associate the color with a particular source of goods or services. In addition, the color must not serve a functional purpose (e.g., a color that improves a product’s efficiency or quality cannot be trademarked).
On January 3, 2025, the Federal Circuit issued a decision, in the case of Ceramtec GmbH. v. Coorstek Biocermaics, LLC, in an appeal from the USPTO’s Trademark Trial and Appeal Board (ATTAB@), which affirmed the cancellation of two trademark registrations for the color pink used in ceramic hip components. The marks were registered on the Supplemental Register.
On January 3, 2025, the Federal Circuit issued a decision, in the case of Ceramtec GmbH. v. Coorstek Biocermaics, LLC, in an appeal from the USPTO’s Trademark Trial and Appeal Board (ATTAB@), which affirmed the cancellation of two trademark registrations for the color pink used in ceramic hip components. The marks were registered on the Supplemental Register.
 Registration No. 4319095 (hip joint ball) |
 Registration No. 4319096 (acetabular shell or fossa) |
The Court concluded that the marks were functional. In determining functionality of a trademark, the following four factors are analyzed:
(1) the existence of a utility patent disclosing the utilitarian advantages of the design;
(2) advertising materials in which the originator of the design touts the design’s utilitarian advantages;
(3) the availability to competitors of functionally equivalent designs; and
(4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.
The product is pink due to the addition of chromium during the manufacturing process. A patent can be strong evidence that the features claimed therein are functional, thereby precluding trademark protection. With respect to the first factor, the chemical composition used was the subject of an expired patent owned by CeramTec. The patent itself did not claim color but disclosed the use of chromia to increase the ceramic hardness and, also, that the addition of chromia to a ceramic is particularly suitable for medical applications. This finding satisfied the first factor in the functionality analysis.
The TTAB found that the second factor B advertising material in which the originator of the design touts the design’s utilitarian advantages B also constitutes strong evidence of functionality. Promotional and technical literature of CeramTec indicated that chromia provided various functional benefits to ceramics. CeramTec did not contest this finding on appeal.
The Court also accepted the TTAB’s finding that there was no probative evidence indicating different-colored ceramic hip components were equivalent in desired mechanical properties. That lack of evidence was critical B for the third factor to weigh in favor of non-functionality, there must be evidence of actual or potential alternative designs that work equally well to the trademark design.
Given conflicting evidence, the Court determined that the TTAB’s conclusion that the fourth factor, whether the design provides a simpler or cheaper manufacturing method, was neutral and supported by substantial evidence.
Key Takeaway
The presence of utility patents and promotional claims emphasizing functional benefits are significant hurdles to securing and maintaining trademark protection for the color of a product.