Sidley recently obtained a victory for CoorsTek Bioceramics, LLC in the U.S. Court of Appeals for the Federal Circuit. On January 3, 2025, the Federal Circuit issued its precedential decision confirming that the dominant player in the market for certain ceramic hip-implant components could not block competition by claiming a trademark in the color pink.
In the 1990s, CeramTec GmbH invented a new ceramic material for use in hip-implant components; a patented composition turned the new material a distinctive pink color. As CeramTec’s patents expired in 2013, CoorsTek prepared to enter the market with pink hip-implant components of its own. CeramTec sought to block such competition by asserting trademark rights in the use of the color pink in connection with such components.
CoorsTek filed parallel challenges to CeramTec’s U.S. trademark registrations in U.S. District Court for the District of Colorado and the Trademark Office. CoorsTek’s initial trial victory was vacated in a 2019 10th Circuit decision that the Colorado court lacked personal jurisdiction over CeramTec. (Sidley was not involved at that time.) Following that decision, the Trademark Trial and Appeal Board decided that the trademark registrations should be canceled because the claimed pink color was functional: it was the natural byproduct of following the teachings in CeramTec’s expired patent on its material. CeramTec appealed to the Federal Circuit. CoorsTek engaged Sidley to defend its Trademark Office victory.
Following an October 2024 oral argument, the Federal Circuit issued its precedential decision affirming the Trademark Office’s decision across the board. That decision confirms that CeramTec has no right to block competition in the market for pink hip-implant components by trademarking the natural byproduct of the recipe described in its long-expired patent.
The case has been widely covered in the press, and spotlights the dangers of limited supply sources for components in key critical-care markets, and the benefits for patients by allowing increased competition for these components.
This win was secured by Steven J. Horowitz and Caroline A. Wong (both in Chicago).
