In CeramTec GmbH v. CoorsTek BIoceramics LLC, [2023-1502[(January 3, 2025), the Federal Circuit affirmed the TTAB’s cancellation of CeramTec’s trademark registrations on the pink color of ceramic hip components.

CeramTec manufactures artificial hip components used to replace damaged bone and cartilage in hip replacement procedures. The hip components are made from a zirconia toughened alumina (“ZTA”) ceramic originally developed for use in cutting tools. The ZTA ceramic contains, among other things, chromium oxide (chromia). The chemical composition of CeramTec’s products was the subject of CeramTec’s U.S. Patent 5,830,816 until January 2013, when the patent expired. The ’816 patent’s specification and prosecution history discuss how adding chromia enables the claimed composition to obtain unprecedented levels of hardness. Increased hardness levels enable the ZTA hip component to maintain its shape and resist deformation. The range of chromia claimed in the ’816 patent can produce ZTA ceramics in a variety of colors, such as pink, red, purple, yellow, black, gray, and white. CeramTec’s components contain chromia at a 0.33 weight percentage, which makes it pink.

A year before the expiration of its patent, CeramTec applied for two trademarks claiming protection for the color pink used in ceramic hip components, and two registrations issued on the Supplemental Register in April 2013:

:.

CoorsTek manufactures two ZTA ceramic materials for hip implants: (1) CeraSurf-p, which contains chromia, rendering it pink, and (2) CeraSurf-w, which does not contain chromia,
rendering it white. On March 3, 2014, CoorsTek filed a lawsuit in the District of Colorado and a cancellation petition with the Board, both seeking to cancel CeramTec’s trademarks on
the ground that the color pink claimed was functional.

At the Board, CeramTec argued that although it had once believed that adding chromia
provided material benefits to ZTA ceramics [upon the expiration of their patent] they discovered this belief was mistaken and has since been disproven. The Board nonetheless found in favor of CoorsTek and concluded that the color pink was functional as it relates to ceramic hip components. In doing so, the Board rejected CeramTec’s unclean hands defense, in which CeramTec argued that CoorsTek should be precluded from petitioning to cancel its trademarks on functionality grounds because CoorsTek had previously contended that chromia provided no material benefits to ZTA ceramics.

On appeal, CeramTec raised two main arguments: (1) that the Board’s finding that its trademarks are functional was infected by legal error and unsupported by substantial
evidence, and (2) that the Board erred by categorically precluding the defense of unclean hands in cancellation proceedings involving functionality.

The Federal Circuit noted that the Board analyzed the functionality of CeramTec’s trademarks in part under the four factors set out in Morton–Norwich:

(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.

Under the first Morton-Norwich factor, the Federal Circuit noted that the Board considered the claims, specification, and prosecution history of the ’816 patent to disclose the “functional
benefits of chromia with respect to the toughness, hardness, stability and suppression of brittleness of the ZTA ceramic.” The Board also considered CeramTec’s other patents and applications. Finally, the Board considered CeramTec’s concessions that the addition of
chromia causes ZTA ceramics to become pink and that CeramTec’s products practice at least one claim of the ’816 patent.

CeramTec contended that it was error for the Board to find that the patents disclose that chromia provides utilitarian advantages to ZTA ceramics in addition to increasing hardness, but CeramTec’s admission that it did increase hardness was enough for the Federal Circuit. The Federal Circuit als rejected the assertion that the Board misapplied TrafFix because its patents do not explicitly disclose material benefits for pink ZTA ceramics and do not discuss hip components, only cutting tools, noting nowhere does TrafFix hold that for a patent to be evidence of a claimed feature’s functionality, the patent must explicitly disclose that the claimed feature is functional. Nor does TrafFix state that for a trademark to be subject
to a TrafFix analysis it must be used for the goods described in the patent.

Under the second Morton-Norwich factor the Board considered promotional and technical literature, as well as submissions made to the FDA, in which CeramTec stated that chromia provides various functional benefits to ZTA ceramics. CeramTec did not challege the second factor.

Under the third Morton-Norwich factor the Board recognized, there was no “probative
evidence” that different-colored ceramic hip components were “equivalent in desired ceramic mechanical properties to those of CeramTec’s products. The Federal Circuit agreed, noting that for the third factor to weigh in favor of nonfunctionality, there must be evidence of actual or potential alternative designs “that work equally well” to the trademarked design. CeramTec argued that statements by CoorsTek about its white ceramic components and the’816 patent’s disclosure of ZTA ceramics in a variety of colors in addition to pink showed non-functionality, but the Federal Circuit did not find the evidence undisputeddly provide that CoorsTek’s white ceramic was better than CeramTec’s products. The Federal Circuit found that CeramTec’s arguments amount to a disagreement with the weight the Board assigned to the evidence, which it saw no reason to disturb.

Finally, under the fourth Morton-Norwich factor, the Board found this factor factor—whether the design results in a comparatively simple or cheap method of manufacturing the product—to be neutral. CeramTek argued that the Board overlooked undisputed evidence, but the Federal Circuit found that CeramTec mischaracterized the evidence as undisputed, and in light of the conflicting evidence, the Board reasonably found the factor to not weigh for or
against functionality.

On the issue of unclean hands, CeramTec argued to the Board that CoorsTek should be precluded from asserting that CeramTec’s trademarks are functional because CoorsTek had long expressed the opposite: that chromia provides no material benefits for ZTA ceramics. The Board disagreed, holding that the unclean hands defense is unavailable in Board functionality proceedings in view of the prevailing public interest in removing registrations of functional marks from the register and finding CeramTec’s unclean hands defense inapplicable.

The Federal Circuit agreed that the Board spoke too strongly by suggesting that the unclean hands defense was categorically unavailable in functionality proceedings, noting that the Board’s rules explicitly provide that the registrant in cancellation proceedings before the Board, may include the affirmative defense of unclean hands. However, the Federal Circuit said that it was not clear that the Board intended to announce a broad policy, as its conclusion is preceded by reference to its “discretion,” which is generally exercised case-by-case, and the Board did not designate its decision as precedential. If, however, the Board intended to bar an unclean hands defense from all functionality proceedings, the Federal Circuit said that would be error, but any such error was harmless in the present case because the Board adequately considered whether the unclean hands defense was available in this case, as illustrated by its statement that it was exercising its discretion in view of the “strong public policy interest in cancelling ineligible marks.

.

.

,

There are several reasons why a business might need to rebrand a product — to resolve a dispute over the brand; to continue after the termination or expiration of a license; or to refresh (or rehabilitate) the product’s image. Whatever the reason, rebranding requires careful planning and diligent execution.

1. Select a new brand. Define the unique selling proposition and core brand values. Brainstorm and generate brand name ideas. Shortlist brand name candidates, focusing on those that are easy to pronounce, spell, and remember. Research meanings of the candidate brands. If you plan to sell internationally, check for any potential issues in other languages or cultures. A name that’s great in one country might have unintended meanings in another. Screen for availability as domain names (for your website), trademarks (to protect intellectual property), and social media handles. Screen the candidates for legal availability. Test the remaining candidates with the target audience. Make your selection(s).
2. Develop the new brand. Revise the logo, color scheme, typography, and graphic elements. Create brand guidelines defining the rules for using brand elements to ensure consistency across all channels. Create a brand story with a compelling narrative that reflects the new brand identity and resonates with the target audience.
3. Refresh the product and packaging. Consider changes in product features, packaging, or benefits. Update the design to reflect the new brand identity, attract the target audience, and ensure consistency.
4. Protect the new brand, product, and packaging. File trademark applications on the new brand, pursue appropriate trademark, patent, and copyright applications on the product, packaging, and marketing materials.
5. Update company documentation: Ensure that internal documents (e.g., contracts, presentations) reflect the new brand.
6. Update Digital Presence & Online Assets. Update website and social media profiles, ensuring the new brand is reflected across digital platforms. Revise SEO and content strategy, optimizing the website and digital content to align with the new brand and improve search rankings. Ensure consistent messaging by updating content on blogs, social media, email templates, and digital ads to reflect the new brand. Update any e-commerce platforms, including product listings, descriptions, and images to match the new brand. Revise frequently asked questions and other support documents to match the new product identity.
7. Create new advertising. Develop new ads, brochures, and promotional content reflecting the new branding. Organize product relaunch events, online webinars, or media outreach. Collaborate with influencers and media.
8. Communicate with existing customers. Send out personalized communication (e.g., email or newsletters) informing customers about the rebrand. Ensure that brochures, product manuals, and customer support documents reflect the new brand. Address potential concerns about product quality or customer service during the transition.
9. Address legal and compliance considerations. Revise any licensing, distribution, or partnership agreements to reflect the rebranded product. Verify that all new packaging, advertising, and product claims comply with industry regulations and guidelines.

Rebranding is a complex process that requires careful planning, collaboration, and a focus on consistency across all platforms. A well-executed rebrand can rejuvenate a product, attract new customers, and increase market share.

There is a surprisingly large industry that profits by scamming trademark owners by sending official-looking invoices that mention the recipient’s trademarks, and hoping that the recipient will be fooled into paying it.

How do you avoid getting scammed — often for several thousand dollars? Ask your trusted trademark counsel about any suspicious trademark invoice. What makes a trademark invoice suspicious? First and foremost, did it come from your trusted trademark counsel? Here as some other things to look for:

• Is the return address a post office box?
• Is the return address from a city remote from the USPTO?
• Is the return address from a foreign country?
• Does the document refer to an “offer” or “solicitation”?
• Does the document refer to “listing” your in a directory or publication?
• Is there a portion to clip and return?
• Does the URL or email address end in .org or.biz or another unusual domain?

Be careful and only deal with your trusted trademark counsel.

On November 22, 2022, Patagonia sued The Gap for trademark and trade dress infringement by selling a fleece pullover that Patagonia alleges infringe the design of its Snap-T design:

According to the Complaint, the design of the Snap-T pullover is constantly evolving. The one feature that does seem to be constant is a contrasting asymmetric pocket:

Given the changes in the design over time, and fact there are multiple versions of the current Snap-T design, precisely what is Pategonia’s trade dress is difficult to determine.

Some designs have a contrasting placket, some don’t; some designs have an asymmetric pocket flap, others don’t, and some don’t have pockets at all. There are even more variations when other lines of fleece pullovers are considered. Can Patagonia show that it has a protectable trade dress, and if so, what are its elements?

In its Complaint, Patagonia cited an on-line review that pointed out that Gap’s fleece was an “Obvious Patagonia ripoff,” but obvious suggests there is not a likelihood of confusion, and apparently Gap’s lablel did what it was supposed to do: identify the source of Gap’s fleece as a Gap product. However Gap did itself no favors with its label design. Sure, the Gap name is readily apparent, but the mountain background is almost provocative.

Plackets, pocket flaps, and chest labels are common features of fleece pullovers. Is Patagonia’s combination of these features unique enough that others can’t make a similar fleece pull over?

On February 28, 2022, The Real USFL, LLC sued Fox Sports in the Central District of California [2:22-cv-1350] for attempting to resurrect the United States Football League (USFL) — a football league that played for three seasons, 1983 through 1985. The league folded before its planned 1986 season, and all tolled had lost over US$163 million in its short life.

The plaintiff is not the original league, but an entity formed six days earlier, on February 22, 2022, but claims to be the holder of “all rights and interest” in the leagues’ trademarks. In its complaint, the plaintiff alleges the defendant Fox Sports has “no right to capitalize on the goodwill of the league.”

Plaintiff alleges that this goodwill was preserved, by among other things, organizing
league and team reunions, and authorizing and appearing in and ESPN 30 for 30
documentary; and entering into certain media licensing arrangements on behalf of the USFL for apparel, books, and other media.

Plaintiff raises claim of trademark infringement, false advertising, false association, unfair competition, and cancellation of trademarks, Plaintiff seems most concerned by Fox’s characterization of its efforts as a “reboot” of the defunct league, when Fox has no direct connection with the original league. However, it is not clear that a reboot excludes such a situation, and is it even more unclear that the old USFL has any rights left to complain. It should be an interesting case. If nothing else we will learn what it takes to maintain rights in a trademark, and what constitutes abandonment.

In Galperdi, Inc., v. Galperti S.R.L., [2021-1011] (November 12, 2021), the Federal Circuit vacated and remanded the TTAB’s finding no falsity of Galperti S.R.L.’s exclusive use from 2002 to 2007, the Board committed two legal
errors: requiring Galperti Inc. to establish its own proprietary rights to the mark and disregarding third party use of the mark.

Galperti S.r.l., to support its application to register GALPERTI, told the PTO that, in the five preceding years, its use of the mark was “substantially exclusive.” In response ,the USPTO issued Reg. No. 3411812. Galperti Inc. petitioned the PTO to cancel the registration, arguing, among other things, that the registration was obtained by fraud because Galperti S.r.l. statement of substantially exclusive use was false and, indeed, intentionally so. When the PTO dismissed the cancellation petition, the Federal Circuit affirmed as to the non-fraud issues but vacated the Board’s rejection of the fraud charge and remanded for further consideration of that charge. On remand the PTAB again dismissed the cancellation proceeding.

GALPERTI is “primarily merely a surname” and, so, without more, could not be registered. Lanham Act § 2(e)(4), 15 U.S.C. § 1052(e)(4). Galperti-S.r.l. obtained a registration of GALPERTI on the Principal Register under Section 2(f) alleging “substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.” 15 U.S.C. § 1052(f).

While in the prior appeal. the Federal Circuit approved the Board’s conclusion that Galperti S.r.l.’s mere “‘knowledge of other players in the marketplace’” was insufficient to make its statement to the PTO “‘per se false,’” id., it held that the Board had erred in stopping at that point, because the absence of “per se” falsity does not imply the absence of falsity. What was needed was an inquiry, on remand, into whether the uses to which Galperti Inc. pointed as showing the falsity of Galperti S.r.l.’s representation to the PTO were significant or, instead, inconsequential.

Galperti Inc. contended on appeal that the Board’s analysis of falsity includes two legally incorrect premises. One is that
Galperti Inc. had to have trademark-protected rights in its use of the mark at issue (in 2002–2007)—specifically,
secondary meaning (i.e., acquired distinctiveness)—in order for that use to count as significant in assessing the falsity of Galperti-Italy’s assertion of “substantially exclusive use.” The other is that uses by third parties do not count
in the substantially-exclusive-use assessment unless the third parties were in privity with Galperti Inc. The Federal Circuit agreed with Galperti Inc. on both counts.

Third party use does not have to be as a trademark to impact the determination of whether a mark has become distinctive of an applicant. The Federal Circuit said that a significant amount of marketplace use of a term not as a source identifier for those users still tends to undermine an applicant’s assertion that its own use has been substantially exclusive so as to create a prima facie case that the term has come to acquire distinctiveness as a source identifier for the applicant.

Further third party use is not limited to third parties who are in privity with the petitioner or opposer. Thus, the Federal Circuit said that the Board also erred in its related requirement that Galperti Inc. had to demonstrate privity with other users of the mark to rely on those uses to show falsity of Galperti S.r.l.’s claim of substantially exclusive use. “Any” use may frustrate a claim for substantially exclusive use, without limiting that use to the party challenging registration.

In Quiktrip West, Inc., v. Weigel Stores, Inc.,[2020-1304] (January 7, 2021), the Federal Circuit affirmed the dismissal of Quiktrip’s opposition to registration of Weigel’s W WEIGEL’S KITCHEN NOW OPEN:

in view of QuikTrip’s QT KITCHENS mark:

The Board evaluated the likelihood of confusion between the marks by referencing the factors set forth in In re E. I. DuPont de Nemours & Co. It first found that the parties’ identical-in-part goods and related services, overlapping trade channels, overlapping classes of customers, and similar conditions of purchase pointed to a likelihood of confusion finding. However, the Board found that the dissimilarity of the marks weighed against a likelihood of confusion. In conducting its similarity analysis, the Board acknowledged that both marks include the word “KITCHEN(S)” but determined that customers would not focus on that word for source identification because it is “at least highly suggestive, if not descriptive.

The Federal Circuit agreed that the Board correctly analyzed the marks as a whole, saying that it is not improper for the Board to determine that, for rational reasons, it should give “more or less weight to a particular feature of the mark” provided that its ultimate conclusion regarding the likelihood of confusion rests on a consideration of the marks in their entireties.  The Federal Circuit said that the Board properly found that, when evaluating the similarity of the marks, it should accord less weight to the shared term KITCHEN(S) because “kitchen” is a “highly suggestive, if not descriptive” word.  The Federal Circuit added that the Board was entitled to afford more weight to the dominant, distinct portions of the mark.

15 USC 1115(b)(4) provides that the use of a registered term, otherwise than as a mark, which is descriptive of, and used fairly and in good faith only to describe your goods or services, is not trademark infringement. The Northern District of California in Freelancer International Pty. Ltd. v. Upwork Global, Inc. [20-cv-06132-SI]https://trademarks.harnessip.com/wp-admin/upload.php?item=511, recently provided some helpful guidance on what qualifies as a permissible descriptive use.

Freelancer Technology Pty Limited sued Upwork for infringement of U.S. Reg. No. 4,284,314 on FREELANCER, complaining about Upworks’ use of Freelance in connection with its software:

Defendants argued they use the plain meaning of the word “freelancer” on their app display names and elsewhere to describe the appropriate users: freelancers. Defendants further argued they use the word “freelancer” in good faith because they trade on Upwork’s own considerable goodwill and have not sought to trademark the words “Freelance” or “Freelancers.” Finally, defendants argue they use the word “freelancer” “otherwise than as a mark” and rely on defendants’ own Upwork trademark.

The court noted that the Ninth Circuit has identified at least two factors to consider when determining whether a term is being used as a mark: (1) “whether the term is used as a symbol to attract public attention, which can be demonstrated by the lettering, type style, size and visual placement and prominence of the challenged words”; and (2) “whether the allegedly infringing user undertook precautionary measures such as labeling or other devices designed to minimize the risk that the term will be understood in its trademark sense.”

The Court found that all of Upwork’s uses of Freelancer were proper and descriptive. The court specifically said it was not “persuaded that bold font and a capital letter are sufficient to show defendants use “Freelancer” as a mark versus a descriptive term – especially when Upwork’s distinctive lime green logo or coloring is placed directly alongside the various notifications.” The Court Defendants do not list the word “Freelancer” among defendants’ own publicly listed trademarks, nor do defendants implement a stylized font or “TM” symbol when using the word “Freelancer.”

The case is notable for its guidance that merely capitalizing the word, or using a bold typeface does not turn a descriptive use into a trademark use. However, it is advisable to avoid a distinctive typeface, and obviously avoid identifying the mark with a TM.

Topps Co. sued Koko’s Confectionery & Novelty for patent infringement and trade dress infringement.

The district court granted summary judgment of non-infringement of the patent, and of non-infringement of the trade dress.

As to the trade dress infringement claim, the district court said no reasonable jury could find that the trade dresses of the Juicy Drop Pop and the Squeezy Squire Pop are confusingly similar because the lack of similarity between the two products is “overwhelming.” The district court noted that (1) in SSP, the nozzle cap and candy handle are adjacent to each other, while the nozzle and the handle in JDP are located on opposite ends, (2) SSP’s nozzle cap has a plastic “geyser” of the liquid candy in the same color as the nozzle cap, whereas JDP lacks an analogous feature and its nozzle and nozzle cap are a different color from that of the rest of the trade dress. (3) SSP’s nozzle cap and handle are far larger and in different shapes from those of JDP. (4) Lastly, SSP’s bottle has an oval-shaped compressible portion with concentric ovals; JDP ‘s compressible bottle has a round compressible portion with a swirl design. The district court said “[t]aking these features into account, the overall impression of the two products are dissimilar.