Complaint - CeramTec GMBH V C5 Medical Werks LLC

JS 44 (Rev.
12/12)
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JUDGE DOCKET NUMBER
DATE SIGNATURE OF ATTORNEY OF RECORD
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RECEIPT # AMOUNT APPLYING IFP JUDGE MAG. JUDGE
CERAMTEC GMBH C5 MEDICAL WERKS, LLC
Tiffany Geyer Lydon
Ashby &Geddes, 500 Delaware Avenue, Wilmington, DE 19801
(302) 654-1888
LanhamAct 15 U.S.C. Sections 1051 et seq., 15 U.S.C. 1125(a)
Action for violations of the LanhamAct, unfair competition and deceptive trade practices
1:14-cv-643-RBJ (D. Colo.)
R. Brooke J ackson
06/13/2014 /s/ Tiffany Geyer Lydon
Case 1:14-cv-00745-UNA Document 1-1 Filed 06/13/14 Page 1 of 1 PageID #: 13

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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

CERAMTEC GMBH,

Plaintiff,

v.

C5 MEDICAL WERKS, LLC,

Defendant.
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C.A. No.

COMPLAINT
Plaintiff CeramTec GmbH (CeramTec), by its attorneys, alleges for its Complaint
against Defendant C5 Medical Werks, LLC (C5 or Defendant) the following:
NATURE OF CASE
1. In this action, CeramTec asserts both Federal and State causes of action based on
Defendants infringement of CeramTecs trademarks as follows: (1) trademark infringement in
violation of the Lanham Act, 15 U.S.C. 1114; (2) unfair competition in violation of the
Lanham Act, 15 U.S.C. 1125(a); (3) unfair competition under Delaware common law as
codified in 6 Delaware Code Section 3312; and (4) deceptive trade practices under 6 Delaware
Code Section 2532.
JURISDICTION
2. The First and Second Claim for Relief arise under the Lanham Act of 1946, as
amended, 15 U.S.C 1051 et seq. This Court has jurisdiction over these Claims for Relief
under 15 U.S.C. 1121 and 28 U.S.C. 1131 and 1338(a).
3. The Third and Fourth Claims for Relief arise under Delaware statutory and
common law. This Court has jurisdiction over these Claims for Relief under 28 U.S.C.
Case 1:14-cv-00745-UNA Document 1 Filed 06/13/14 Page 1 of 12 PageID #: 1

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1338(b) in that these claims are joined with substantial and related claims brought under the
trademark laws (15 U.S.C 1051 et seq.) of the United States. This Court also has jurisdiction
over the state law claims under the doctrine of supplemental jurisdiction, 28 U.S.C. 1367,
because the federal and state claims are based on the same operative facts, and judicial economy,
convenience, and fairness to the parties will result if this Court assumes and exercises
jurisdiction over the state law claims.
VENUE
4. Venue is proper pursuant to 28 U.S.C. 1391(b) and 1391(c) because
Defendant is subject to personal jurisdiction in this district.
5. Upon CeramTecs information and belief, Defendant is a resident of this district
due to its legal incorporation in this state.
PARTIES
6. Plaintiff CeramTec is a company organized and existing under the laws of
Germany with its principal place of business in Plochingen, Germany. CeramTec manufactures
ceramic component products including but not limited to ceramic prosthetic components for the
medical industry. CeramTec manufactures these component parts and sells them to third parties
who incorporate such components into medical devices, including hip joint replacement systems,
and who in turn sell these systems to customers.
7. Defendant C5, upon information and belief, is a company organized and existing
under the laws of the State of Delaware, and has its principal place of business in Grand
J unction, Colorado. Upon further information and belief, Defendant C5s agent for service of
process in Delaware is CORP1, Inc. with an address at 28 Old Rudnick Lane, Dover, Delaware
19901.

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8. Defendant C5, upon information and belief, is also a manufacturer of ceramic
component products, including but not limited to ceramic prosthetic components for the medical
industry, and C5s components are sold to third parties who incorporate such component hip
joint replacement systems that are then sold to customers.
FACTUAL BACKGROUND
9. CeramTec is the leading manufacturer of ceramic technology solutions for various
industries including ceramic components for use in hip joint replacement systems.
10. Among the various ceramic component products manufactured by CeramTec is
the BIOLOX DELTAline of hip replacement components.
11. The BIOLOX DELTA components are pink in color and, as a result of
CeramTecs continuous and exclusive use of the color pink in connection with its ceramic
components for use in hip joint replacement systems, CeramTec has acquired significant trade
dress rights in the color pink when used in connection with ceramic components for use in hip
joint replacement systems (Color Pink Trade Dress).
12. CeramTec has expended considerable effort and resources in promoting and
advertising the Color Pink Trade Dress. As a result of such efforts by CeramTec, the consuming
public widely recognizes and associates the Color Pink Trade Dress with CeramTec and its
ceramic components.
13. Indeed, CeramTec is the owner of two U.S. Supplemental Registrations for the
Color Pink Trade Dress, namely, U.S. Reg. Nos. 4,319,095 for and 4,319,096 for (the
Color Pink Registrations).
14. When the applications for Color Pink Registrations were pending before the
United States Patent and Trademark Office (USPTO), the USPTO considered whether the

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Color Pink Trade Dress was functional (and, hence, unregistrable on either the Principal or
Supplemental Registers) and concluded that it was not functional. The USPTO, however, did
find that CeramTec had not met its burden of showing that the Color Pink Trade Dress had
attained secondary meaning (which is a requirement for registration of single color marks on the
Principal Register) so it issued the registrations on the Supplemental Register where marks that
are capable of attaining secondary meaning are registered.
15. In making its inquiry into the issue of whether the Color Pink Trade Dress was
functional, the USPTO specifically inquired as to whether the pink color of the subject product
was a natural result of the manufacturing process. CeramTec responded that the color pink was,
indeed, a result of Applicants proprietary manufacturing process, but also explained that the
color pink is not a natural by-product result of the manufacturing process of implants generally.
16. The color pink of CeramTecs Color Pink Trade Dress is caused by the addition
of a certain amount of chromium oxide to the ceramics of CeramTecs BIOLOX DELTA
components. At one time it was thought that chromium oxide contributes to the hardness and
strength of such products. In addition, CeramTec obtained a utility patent for a sintering molded
ceramic product to be used primarily in connection with cutting tools having a composition
which included chromium oxide as one of many ingredients (CeramTec Patent). CeramTec
and the scientific community in this field have since learned that the addition of chromium oxide
in ceramics does not contribute to their hardness and strength. Thus, there is no competitive
need to use the Color Pink Trade Dress on ceramic component parts made for use in hip joint
replacement systems.
17. Further, the CeramTec Patent does not mention use of the patented technology in
connection with ceramic implants and nowhere mentions the color pink.

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18. Rather, and to the contrary, the Color Pink Trade Dress has come to serve as a
source-identifier as a result of CeramTecs continuous and exclusive use of the Color Pink Trade
Dress.
19. Upon information and belief, Defendant C5 has manufactured, offered to sell,
promoted, marketed, imported and/or distributed ceramic component parts for use in hip joint
replacement systems in interstate commerce which feature a trade dress confusingly similar to
the Color Pink Trade Dress.
20. Upon information and belief, Defendant C5 deliberately chose the color pink for
its ceramic components in an effort to trade off of the goodwill, reputation and success of
CeramTecs BIOLOX DELTAcomponents featuring the Color Pink Trade Dress.
21. Defendant C5 has no authority from CeramTec directly or indirectly to utilize the
Color Pink Trade Dress or to license others to do so.
22. Defendant C5 has filed petitions to cancel both of the Color Pink Registrations, as
well as a complaint in the United States District Court for the District of Colorado seeking, inter
alia, a declaratory judgment of non-infringement and alleging, inter alia, that the Color Pink
Trade Dress is functional in view of the expired CeramTec Patent.
23. CeramTec has filed a motion to dismiss Defendant C5s Colorado complaint for
lack of personal jurisdiction over CeramTec, and that motion is currently pending.
24. For the reasons set forth above, Defendant C5s activities infringe CeramTecs
rights in the Color Pink Trade Dress and Color Pink Registrations.

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COUNT 1
Federal Trademark Infringement
15 U.S.C. 1114(1)

25. CeramTec incorporates by reference paragraphs 1 through 24 in support of this
count.
26. CeramTec owns the Color Pink Registrations.
27. Defendants use of the color pink in connection with its ceramic components is
likely to cause confusion or mistake with the marks that are the subject of the Color Pink
Registrations, or to deceive as to source, affiliation, or sponsorship with CeramTec, in violation
of the Lanham Act, 15, U.S.C. 1114.
28. CeramTec has been, and will continue to be damaged by Defendants
infringement in an amount to be determined at trial.
29. Defendants acts have been committed with knowledge of CeramTecs exclusive
rights and goodwill in the Color Pink Registrations. Upon information and belief, Defendants
conduct is willful, deliberate, intentional, and in bad faith.
30. As a result of Defendants trademark infringement, Defendant has caused, and
will continue to cause, irreparable harm to CeramTec and to the goodwill associated with the
marks that are the subject of the Color Pink Registrations. CeramTec has no adequate remedy at
law and is entitled to injunctive and other relief.
COUNT 2
Federal Unfair Competition
15 U.S.C. 1125(a)

count.

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32. CeramTec has common law and federal trademark rights in its Color Pink Trade
Dress, which is uniquely associated with CeramTec as a source of goods offered in connection
with the Color Pink Trade Dress.
33. Defendants use of the color pink in connection with its ceramic components is
likely to cause confusion or mistake with the Color Pink Trade Dress, or to deceive as to source,
affiliation, connection, association, or sponsorship of Defendants with CeramTec, in violation of
the Lanham Act, 15 U.S.C. 1125(a).
34. Defendants actions as alleged herein constitute unfair competition and CeramTec
has been, and will continue to be, damaged by Defendants acts in an amount to be determined at
trial.
35. Upon information and belief, Defendants conduct is willful, deliberate,
intentional, and in bad faith.
36. Defendants acts of unfair competition have caused, and will continue to cause,
irreparable harm to CeramTec and to the goodwill associated with the Color Pink Trade Dress,
for which CeramTec has no adequate remedy at law. Thus, CeramTec is entitled to injunctive
and other relief.
COUNT 3
Deceptive Trade Practices
6 Del. C. 2531, et seq.

count.
38. Defendant is knowingly making a false representation as to the source,
sponsorship, approval or certification of goods through its unauthorized use of the Color Pink
Trade Dress and the marks that are the subject of the Color Pink Registrations in connection with

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its ceramic components. Further, Defendant is knowingly making a false representation as to
affiliation, connection, or association with or certification by CeramTec through its unauthorized
use of the Color Pink Trade Dress and the marks that are the subject of the Color Pink
Registrations.
39. Defendant is using CeramTecs Color Pink Trade Dress and the marks that are the
subject of the Color Pink Registrations in connection with, inter alia, the promotion and sale of
products without authorization from CeramTec.
40. The public and relevant consumers associate the Color Pink Trade Dress and the
marks that are the subject of the Color Pink Registrations with CeramTec and its goods, namely
ceramic components.
41. CeramTec has expended significant resources in the development, promotion, and
protection of the Color Pink Trade Dress and marks that are the subject of the Color Pink
Registrations.
42. Defendants unauthorized use of the Color Pink Trade Dress and the marks that
are the subject of the Color Pink Registrations falsely signals to the general public that
CeramTec has approved the goods offered by Defendant in connection with the Color Pink Trade
Dress and the marks of the Color Pink Registrations, which it has not.
43. Such acts occur in the course of Defendants business and constitute deceptive
trade practices in violation of 6 Del. C. 2531, et seq.
44. Defendants unauthorized use of the Color Pink Trade Dress and the marks that
are the subject of the Color Pink Registrations causes a likelihood of confusion or
misunderstanding as to source, sponsorship, approval, and/or certification of the goods and/or

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Defendants affiliation, connection, and/or association with or certification by CeramTec, and
constitutes deceptive trade practices in violation of 6 Del. C. 2531, et seq.
45. Defendants deceptive trade practices have had and will continue to have a
significant negative impact on the public, as actual and potential consumers of CeramTec goods
who are likely to be confused or deceived by Defendants unauthorized use of the Color Pink
Trade Dress and the marks that are the subject of the Color Pink Registrations.
intentional, and in bad faith, and Defendant has acted with willful, deliberate intent to trade on
CeramTecs reputation and benefit from the extensive goodwill associated therewith.
47. Defendant has engaged in unlawful and unfair business practices that have
harmed and will continue to harm the goodwill associated with the Color Pink Trade Dress and
Color Pink Registrations and CeramTecs business, reputation, and goodwill.
48. CeramTec has been, and will continue to be damaged by Defendants deceptive
trade practices in an amount to be determined at trial, as recoverable under 6 Del. C. 2531, et
seq.
49. Defendants acts in violation of 6 Del. C. 2531, et seq. have directly and
indirectly caused, and will continue to cause irreparable harm to CeramTec and to the goodwill
and reputation associated with the Color Pink Trade Dress and Color Pink Registrations, for
which CeramTec has no adequate remedy at law. Thus, CeramTec is entitled to injunctive and
other relief.
COUNT 4
Unfair Competition Under Delaware Common Law

count.

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51. CeramTec has common law rights in the Color Pink Trade Dress, which are
uniquely associated with CeramTec as a source of goods offered in connection with the Color
Pink Trade Dress.
52. CeramTec has expended significant resource in the development, promotion, and
protection of the Color Pink Trade Dress.
53. Defendant is currently using the Color Pink Trade Dress in commerce in
connection with, inter alia, the promotion and sale of products without authorization from
CeramTec.
54. CeramTec has not authorized, and objects to Defendants current use of the Color
Pink Trade Dress.
55. Defendants unauthorized use of the Color Pink Trade Dress is likely to cause
confusion, mistake and/or deceive consumers as to source, affiliation, or sponsorship with
CeramTec, in violation of the common law of unfair competition in Delaware.
56. Defendants unauthorized use of the Color Pink Trade falsely signals to the
general public that CeramTec has approved the goods offered by Defendant featuring the Color
Pink Trade Dress, which it has not.
57. CeramTec has been, and will continue to be, damaged by Defendants
infringement and acts of unfair competition in an amount to be determined at trial.
intentional, and in bad faith.
59. Defendants acts of unfair competition have directly and indirectly caused, and
will continue to cause immediate and irreparable harm and injury to CeramTec, and to the

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goodwill associated with the Color Pink Trade Dress, for which CeramTec has no adequate
remedy at law. CeramTec is therefore entitled to injunctive and other relief.

PRAYER FOR RELIEF
WHEREFORE, CeramTec respectfully requests that this Court:
a. Enter judgment in favor of CeramTec, and against Defendant, on all counts.
b. Permanently enjoin Defendant from directly or indirectly engaging in any further
trademark infringement, unfair competition, or deceptive trade practices against
CeramTec, and from aiding, abetting, encouraging, or inducing another to do so.
c. Order an accounting and order Defendant to pay over to CeramTec:
i. All monetary gains, profits, and advantages derived by Defendant from the
acts complained of herein;
ii. Damages incurred by CeramTec, including enhanced damages (up to
treble damages) as authorized by 15 U.S.C. 1117;
iii. Punitive and exemplary damages to be determined by the Court after a full
hearing on the merits; and
iv. CeramTecs costs and disbursements in this action, including reasonable
attorneys fees and prejudgment and post-judgment interest.
d. Require Defendant to deliver to CeramTec any and all labels, packaging, advertising,
signage, promotional material, and any other materials bearing infringing or deceptively
similar marks in Defendants possession or under its control that are subject to the
injunctive order of this Court.
e. Award CeramTec any other or further relief that the Court deems just or appropriate.

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Of Counsel:

Raymond A. Kurz
Anna Kurian Shaw
HOGAN LOVELLS US LLP
555 Thirteenth Street, N.W.
Washington, D.C. 20004
(202) 637-5600

Dated: J une 13, 2014
ASHBY & GEDDES

/s/ Tiffany Geyer Lydon
_____________________________
Steven J . Balick (#2114)
Tiffany Geyer Lydon (#3950)
Andrew C. Mayo (#5207)
500 Delaware Avenue, 8
th
Floor
P.O. Box 1150
Wilmington, Delaware 19899
(302) 654-1888
[email protected]
[email protected]
[email protected]

Attorneys for Plaintiff
CeramTec GmbH


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