Pink or Orange: Colors That Are the By-Product of a Functional Improvement to a Product Are Not Entitled to Trade Dress Protection
On January 5, the U.S. District Court, District of Colorado ruled that ceramics company CeramTec GmbH is not entitled to trade dress protection for the pink color of its hip implant components. C5Med. Werks, LLC v. CeramTec GmbH, D. Colo., No 14-cv-00643-RBJ, 1517 decision highlights the limits of trade dress protection, which only extends to non-functional elements that serve to identify a product’s source.
The plaintiff, C5 Medical Werks LLC, brought suit to cancel CeramTec’s trademark registration for pink hip implant components on the basis that the pink color is functional and therefore not entitled to trade dress protection. After a bench trial, the court agreed. The court found that the hip implant components’ pink color is the natural result of adding chromium to the components. The court further found that the chromium increases hardness and thereby improves the components’ quality.
Among other factors, the court relied upon CeramTec’s expired utility patent related to the benefits of adding chromium and on CeramTec’s advertising touting the benefits of the added chromium to support its finding of functionality. Although CeramTec argued that the chromium itself, not the pink color, is functional, the court found that this was a distinction without a difference: the color cannot be separated from chromium’s function because the color is a natural result of the process. The court analogized CeramTec’s argument to an orange juice company claiming trade dress in the orange color of its juice:
If CeramTec is correct that the general appearance of a functional feature can be distinguished from the underlying functional object, then the “orange” color of orange juice can be distinguished from the orange fruit used to make it. By that logic, Tropicana, Minute Maid, or any other orange juice company could obtain trade dress protection on an “orange-colored” fruit juice made from oranges, asserting that while the orange fruits used to make the juice are functional, their attendant “orange color” is merely incidental. As a result, one orange juice company could prevent all others from producing “orange-colored” orange juice.
This case is distinguishable from other cases finding protectable trade dress in a product color where the color is not a byproduct of the manufacturing process. For example, in In re Owens-Corning Fiberglas Corp, 774 F.2d 1116 (Fed. Cir. 1985), the court held that the pink color of insulation materials was entitled to trade dress protection because it was chosen by the company and added specifically to identify its products. As such, the color did not impact the underlying quality of the product or serve any function other than as a source-identifier. By contrast, a color that is incidental to a functional product feature is not specifically chosen or added, and will likely be considered functional.