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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.

© Copyright 2019 Squire Patton Boggs (US) LLP

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About this Author

Allyson Madrid, Squire Patton Boggs Law Firm, Trademark Prosecution Attorney
Associate

Allyson Madrid is an associate based in the firm’s San Francisco office. She represents business entities across a variety of industries in connection with trademark prosecution, trademark portfolio management and brand protection. Allyson also advises clients in consumer protection and other advertising matters. She is a graduate of University of California, Hastings and Tulane University, B.A.

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Joseph Grasser IP Lawyer Squire Patton Boggs
Senior Associate

Joseph Grasser’s practice focuses on federal and state court litigation with emphasis on intellectual property matters and unfair competition claims.

Joseph also advises domestic and international clients on matters relating to trademarks, copyrights and trade secret matters. His experience includes all phases of litigation from initial motion practice through jury trial and appeal.

Prior to joining Squire Patton Boggs, Joseph served as a judicial extern for The Honorable Robert Dondero formerly of the Superior Court for the City and County of San Francisco, now with the California Court of Appeal, District 1. Before attending law school, Joseph was a paralegal with Squire Patton Boggs. As a paralegal he assisted in discovery, dispositive motion practice and trial preparation in patent infringement suits in US district courts on behalf of Japan-based and Taiwan-based manufacturers.

Joseph is listed in Northern California Super Lawyers – Rising Stars, which recognizes attorneys who are age 40 or younger, or in the practice of law 10 years or less.

Experience

  • Representing the famous Muirfield Village Golf Club, securing a TRO, preliminary injunction and, ultimately, a permanent injunction in S.D. Ohio, preventing a Texas LLC from claiming exclusive rights to Muirfield’s 40+ year old trademark for its annual PGA Tour tournament.

  • Representing Venture Corporation Ltd and Venture Design Services, Inc. Following a two-week jury trial in N.D. Cal., the jury (i) confirmed our clients’ ownership of patents that a former employee claimed to have invented before his employment commenced, and (ii) rejected the former employee’s counterclaims seeking US$52-103 million in damages. Venture Corp. Ltd v. Barrett, No. 5:13-CV-03384-PSG, 2015 U.S. Dist. LEXIS 165809, 2015 WL 8479475 (N.D. Cal. Dec. 9, 2015). After the Court of Appeals affirmed, Venture Corp. Ltd v. Barrett, Case No. 15-17439, 2017 U.S. App. LEXIS 14174 (9th Cir. Aug. 2, 2017), the district court awarded our clients more than US$1.4 million in attorneys’ fees and related expenses.

  • Representing a Korea-based maker of ramen noodle products and its US subsidiary in a class action dispute alleging violation of US antitrust laws.

  • Representing Zippo Manufacturing Co. in enforcing one of Zippo’s trademark families in an infringement action in C.D. Cal. and assisting with parallel litigation in the German Regional Court of Frankfurt am Main and in the High Court of Justice in London. All three actions resolved by settlement on the eve of trial in C.D. Cal.

  • Representing Zippo Manufacturing Co. in infringement actions in California, Colorado and Pennsylvania, enforcing Zippo’s registered trade dress that protects the shape of its famous flip-top lighter. All cases resulted in a stipulated permanent injunction or otherwise settled on Zippo’s terms.

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