Product Features Can Be an Important Aspect of your Brand … and Sometimes Not
by Michael Antone, Counsel
Product features, such as color, shape, texture, and other sensory aspects of your product and services can serve as important aspects of your brand development and marketing strategy.
However, not all product features can be used for branding. Only those features that are ornamental and not functional in nature can be protected.
The case of Ceramtec Gmbh v. Coorstek Bioceramics LLC (US Fed Ct No. 2023-1502, January 3, 2025) provides a good reminder of this distinction and that even color may be not protectable as a trademark if the color is or results from a function feature.
In April 2013, Ceramtec filed two US TM applications to register the color pink for hip implants in January 2012, which were registered as US TM Reg Nos. 4319095 and 4319096 (“Pink Registrations”). Notably, Ceramtec had also previously received US Patent No. 5,830,816 (“the ’816 patent”) for hip implants that include chromia (chromium oxide), which was asserted by Ceramtec to improve mechanical properties of the implants.
In November 2013, Ceramtec sent Coorstek, a competitor of Ceramtec, a cease and desist letter demanding that Coorstek stopping using the color pink in its hip implant alleging infringement of the Pink Registrations. Coorstek responded by filing a declaratory judgment action in the United States District Court for the District of Colorado (Case No. 1:14-cv-00643-RBJ) seeking to prevent the enforcement of the Pink Registrations and also filing petitions in the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office (“USPTO”) to cancel the Pink Registrations, see 92058781 and 92058796.
In the declaratory judgment and cancellation actions, Coorstek argued that the color pink resulted from the addition of chromia to the implant composition to alter the mechanical properties of the implant, and is thus a functional feature of the product that can not be protected under trademark law.
In January 2017, the District Court issued a decision that “pink color of chromium,” as used in Respondent’s BIOLOX Delta ceramic hip implant components, is functional.” As such, the color is not protectable under trademark law as argued by Coorstek.
In December 2022, the TTAB agreed with Coorstek and canceled the Ceramtek registrations. In reaching its decision, the TTAB looked to the disclosure in the Ceramtec’s ‘816 patent and marketing materials touting the performance of their products that include chromia.
Ceramtec appealed the TTAB decision to the US Federal Circuit of Appeals, which upheld the decision. Ceramtec then further appealed to the US Supreme Court. In October 2025, the US Supreme Court denied Ceramtec’s petition for a writ of certiorari appealing the decision.
Thus, after more than a decade of litigating, the Pink Registrations now stand cancelled and Coorstek and other competitors of Ceramtec are now free to use the color pink for their implants.
For marketing professionals and business executives, this case is a costly reminder that before investing heavily in branding around a specific product feature, such as color, shape, or materials, and enforcement of trademark rights in a brand, it is important to determine whether the product feature can be protected as a brand.
Related FAQs
1. What is the difference between a functional feature and an ornamental feature in trademark law?
A functional feature is one that affects how a product works, how it is made, how much it costs, or how well it performs. An ornamental feature exists primarily to identify the brand or to enhance appearance rather than performance. Trademark law generally protects only ornamental, source-identifying features.
2. Why does trademark law refuse to protect functional product features?
Trademark law is designed to protect brand identity, not technical advantages. Allowing trademarks to cover functional features would prevent competitors from offering products with the same useful characteristics.
3. Can a product feature be distinctive but still unprotectable as a trademark?
Yes. A feature can be visually distinctive and strongly associated with a company yet still be considered functional if it serves a practical purpose. Distinctiveness alone does not overcome functionality.
4. How do patents and trademarks protect different aspects of a product?
Patents provide exclusivity to how a product works or is made, and that protection lasts for a limited time. Trademarks protect features that identify the source of a product and can last indefinitely as long as the trademark is used.
5. Why should marketing teams care whether a feature is functional?
If a feature is functional, it is unlikely to qualify for trademark protection, even if it becomes central to a brand’s identity. Understanding this early helps marketing teams avoid building long-term branding strategies around features that competitors may legally adopt.
6. Can colors, shapes, or materials be protected as trademarks?
Yes, except features that are functional in nature, such as those impacting product performance or cost, can not be protected.
7. Does promoting performance benefits of a feature affect trademark rights?
It can. Statements highlighting performance or efficiency may later be used as evidence that a feature is functional rather than ornamental. This does not mean marketing should avoid performance claims, but it mean that business should separate marketing of product and service performance features from trademarks.
8. What should businesses consider before branding a product feature?
Businesses should ask whether the feature exists to improve performance or to signal brand identity. If it is tied to engineering or manufacturing choices, it may not be protectable as a trademark and therefore, businesses may not want to invest resources in branding that feature.
