Pink Hip Implant Battle: The Grand Finale

CeramTec GmBH BIOLOX^® bioceramics are popular orthopedic products, but the German company has been tangled in a legal battle with U.S. competitor CoorsTek Medical LLC of Fort Worth, Texas for years—and not for reasons anyone would guess. It wasn’t a faulty product, impropriety or other juicy scandal but an argument over who gets to use the color pink for ceramic hip parts.

CoorsTek filed a lawsuit against CeramTec on March 3, 2014 in response to a cease and desist letter from CeramTec. CeramTec claimed, in the cease and desist letter dated in late 2013, to have a trademark and trade dress protection to exclusively use the color pink. CoorsTek answered with a lawsuit in hopes of being allowed to continue using a pink hue for similar, competing parts. The case was tried in autumn 2016 before U.S. District Judge R. Brooke Jackson. Finally, on January 5, 2017, U.S. District Court for the District of Colorado ruled in CoorsTek favor.

Can you trademark the color pink? Apparently not—at least in this case.

On January 17, 2017, CoorsTek formally announced their win. According to the order, CeramTec doesn’t have any trademarks for the color pink in the United States. As such, CoorsTek’s pink-hued CeraSurf^®-p ceramic parts aren’t infringing on CeramTec’s rights. The Court also put a stop to CeramTec’s attempts to prevent the marketing efforts for CoorsTek products to orthopedic device manufacturers in the U.S.

Tough Enough to Wear Pink?

Legal documents suggest that CoorsTek isn’t particularly enamored with the pink color. Instead, it’s simply a natural byproduct of using chromium oxide dopants in the complex ceramic matrix. These materials give ceramic hip implant parts necessary toughness for lasting durability. At one point prior to 2014, CeramTec did indeed have a patent regarding the exclusive usage of chromium oxide in implant parts. That patent expired, which allowed competitors like CoorsTek to start using it. CoorsTek’s CeraSurf^®-p was approved for use in hip implants by the Food and Drug Administration (FDA) in 2016. It’s considered the newest generation in advanced ceramic materials.

Court documents do note that CeramTec “controls roughly 95% of the market worldwide.” However, with the CoorsTek CeraSurf^®-p now on the market, that might change. Both CoorsTek and CeramTec are over 100 years old. CeramTec offers more than 10, 000 ceramic products (many of which are medical engineering tools including orthopedic parts). According to the CeramTec website, a BIOLOX^® product is implanted by doctors every 30 seconds. “Biocompatible and wear-resistance advanced ceramics enable doctors to provide patients with optimum care and help patients master the challenges of everyday life again, ” boasts the description.

CoorsTek doesn’t focus nearly as much on medical devices as they do on other industries. The company has “only” four types of medical devices available. Additional industries include chemicals, defense and security, equipment and machinery, food and agriculture, semiconductor, transportation, energy, and electronics.

CeramTec has scores of medical products available, complete with a special Orthopedics sub-division.

When CoorsTek’s CeraSurf^®-p received FDA approval, it may have further enflamed the competitive spark underneath CeramTec. The lawsuit was already well under way at the time of approval, and its possible CeramTec saw this newly approved product as serious competition in the U.S. With CeramTec controlling almost 100% of the U.S. market, any company (including CoorsTek) would surely love to get a bite of it.

As for CoorsTek, part of the company’s goals include competition and alternatives for customers. According to CoorsTek CEO Jonathan Coors, “The District Court’s ruling will ensure that a key component for the United States’ orthopedic market is fully opened to competition, which in turn should enable medical device manufacturers to develop efficiencies that benefit patients, hospitals, and surgeons.”

The 2017 Court’s move helps orthopedic devices companies connect with an alternative, high-quality source for ceramic components common in hip replacement procedures in the U.S. Ensuring CoorsTek can compete, even if that means using the same pink color, will open up competition, potentially lower prices or keep them in check, and simply offer more options to customers.

CoorsTek President Bryan McMillan says, “Limited alternatives and affordable care cannot coexist in today’s dynamic healthcare economy. We are honored to deliver an alternative, substantially equivalent medical grade ceramic material, which will continue to advance our mission of making the world and patients’ lives measurably better.”

Do You Like Yours Pink (Or Well Done)?

When CeramTec was first sued by CoorsTek on March 3, 2014, the company moved for a dismissal on May 6, 2014. That request was denied by Judge R. Brooke Jackson on September 8, 2014.

In the Order Denying Defendant’s Motion to Dismiss, a key issue was CeramTec’s lack of presence in Colorado (where CoorsTek has a branch). Judge Jackson notes CeramTec “has no physical presence in Colorado. Its website is, obviously, available worldwide, but it lacks any Colorado-specific content.” When Judge Jackson asked CeramTec’s attorneys about presence in Colorado, they said the company didn’t solicit business in the state, conduct company business in Colorado, or send agents to Colorado to solicit business.

Judge Jackson notes, “The dispute between the two companies boils down to the following…after the expiration of the patent, other companies began using chromium oxide.” When the patent for using chromium oxide expired, CeramTec tried to file a new patent with the U.S. Patent and Trademark Office (USPTO) for the color pink in medical devices. Since chromium oxide turns materials pink, Judge Jackson says that move was “an improper attempt to continue to reap the benefits of a patent on chromium oxide.”

Trademark Troubles

Ultimately, the USPTO denied CeramTec’s request to list the second patent on the Principal Register. However, the USPTO did allow the “pink trademark” on the Supplemental Register. CeramTec used that allowance as the basis for their cease and desist letter against CoorsTek. There are big differences between the USPTO’s Principal and Supplemental Registers.

According to the International Trademark Association (ITA), the Principal Register is an online site for the “registration of marks that are distinctive, by virtue of either their unique characteristics of their long and exclusive use.” Being on the Principal List comes with evidence of ownership and acknowledgement of its exclusive, continuous use. After five years on this list, the person/company may be eligible for incontestable status. In order to qualify for the Principal Register, “basic requirements for trademark registration” must be met.

Admittedly, the ITA says “The Supplemental Register is an enigma to most. Often, it is first heard about and then understood when, during the prosecution of an application for registration on the Principal Register, the USPTO examining attorney issues an office action refusing registration on the ground that the mark is ‘merely descriptive’.”

There are some benefits to the Supplemental Register, of course. It comes with that “trademarked” symbol in trademark searches and lets the owner use the ® symbol. Registration numbers on the Principal and Supplemental Registers look the same, and a person cannot determine which register the trademark is on via registration numbers alone. The Supplemental Register can also help with other types of registrations in foreign countries.

Court documents detail that when CeramTec tried to patent the color pink, the company pointed out that it had been selling “its pink product” in various U.S. states for over ten years. Plus, it had “widely displayed and promoted” its products around the nation.

The 2013 cease and desist letter that CeramTec sent CoorsTek, which kick started the lawsuit, wasn’t the first time the two companies butted heads. The cease and desist letter complained of CoorsTek’s “continued production of pink ceramic implants” and promised to keep defending CeramTec’s “worldwide intellectual property rights.” Earlier in 2013, CeramTec seized some of CoorsTek’s products during a tradeshow in Paris, France. CoorsTek claims that CeramTec has attended three conferences in Colorado touting its pink products and intent to file a patent. According to CeramTec, their intention was never to specifically target Colorado businesses and consumers, nor did they promote their intent to trademark products—they just happened to attend conferences in Colorado.

Untangling the He Said/She Said

In the March 4, 2014 lawsuit filed by CoorsTek, the company claimed three causes of action: Two were to cancel trademarks on the Supplemental Register. One was in hopes of a legal declaration that although CoorsTek product is pink and made with chromium oxide, it’s not an infringement on CeramTec trademarks.

When CeramTec filed for the May 6, 2014 dismissal, the company claimed that the Court doesn’t have jurisdiction over CeramTec. After all, it’s a German-based company vehemently denying that it has ever targeted Colorado businesses.

Ultimately, Judge Jackson decided that CoorsTek suffered thanks to “CeramTec’s purposeful availment of Colorado.” Evidence that CeramTec “sent agents to Colorado, repeatedly, to promote its products at national conferences” secured the notion that CeramTec was indeed active in Colorado, and thus under the jurisdiction of the local law.

As CoorsTek celebrates the legal victory, customers and businesses that purchase such devices are given a choice beyond CeramTec for the first time in several years. Is there enough room in this very niche market for two? Perhaps a pinky swear of playing nicely is in order.