The US Court of Appeals for the Federal Circuit affirmed Trademark Trial & Appeal Board rulings, finding that a previously generic term was not generic at the time registration was sought because at that time the mark, as used in connection with the goods for which registration was sought, had achieved secondary meaning. Bullshine Distillery LLC v. Sazerac Brands, LLC, Case Nos. 23-1682; -1900 (Fed. Cir. Mar. 12, 2025) (Moore, C.J.; Reyna, Taranto, JJ.)
In 2015 Bullshine sought to register the trademark BULLSHINE FIREBULL for its line of “[a]lcoholic beverages except beers.” Sazerac, the owner of the FIREBALL marks used for liqueurs and whiskey, opposed registration. Sazerac argued that the registration of BULLSHINE FIREBULL would likely cause consumer confusion due to its similarity to Sazerac’s FIREBALL marks. Bullshine counterclaimed, asserting that the term “fireball” had become generic and was commonly used to describe a type of alcoholic drink, thus invalidating Sazerac’s claim to exclusivity.
The Board found that the FIREBALL mark was not generic either at the time of registration nor at the time of trial, and that BULLSHINE FIREBULL was not likely to cause confusion with Sazerac’s marks. The Board determined that the FIREBALL mark was “commercially strong but conceptually weak,” that the respective marks of Sazerac and Bullshine were dissimilar when considered in their entireties, and that Bullshine did not act in bad faith in choosing its marks. The Board denied Sazerac’s opposition to the BULLSHINE FIREBULL mark as well as Bullshine’s counterclaim that the FIREBALL mark was generic. Both parties appealed.
Bullshine argued that the Board applied the incorrect legal standard in finding FIREBALL not generic and that consequently, the finding of non-genericness (upon consideration of secondary meaning) was erroneous. Bullshine argued that since “fireball” was a generic term prior to Sazerac’s registration (as both parties agreed), that fact should have precluded Sazerac’s registration, and the Board erred in considering evidence of secondary meaning. Bullshine argued that if a term was generic at any time prior to registration, it remains generic, regardless of how it might be understood at the time of registration (i.e., once generic, always generic). Sazerac argued that the time to assess genericness is at the time of registration. The Federal Circuit agreed with Sazerac.
The Federal Circuit explained that the genericness inquiry is ultimately guided by “what consumers would think at the time of registration,” and that this ruling is supported by the statutory scheme of the Lanham Act. The Court explained that the Lanham Act, in addition to preventing registration of generic terms, also provides for cancellations of marks “[a]t any time,” and even marks with incontestable statuses can be challenged based on genericness. Therefore, Congress intended that the analysis of whether a term is generic can change over time, and Bullshine’s argument was inconsistent with the statute. This conclusion follows from the legal premise that impression of consumers is “necessarily contemporaneous with the time of registration.”
Bullshine cited the 1961 CCPA decision in Weiss Noodle in support of its argument that a term cannot be registered regardless of the time interval between the finding of genericness and the registration. The Federal Circuit disagreed, noting that in Weiss Noodle, the mark for which registration was sought was the Hungarian word for noodles, and “no amount of secondary meaning would make the common name of a product registerable.”
The Federal Circuit also affirmed that the Board did not err in finding that the FIREBALL mark was not generic. The Board found that the record evidenced a preponderance of evidence against genericness, noting that record recipes related to the term “fireball” were from specialized publications and hence did not represent the impression of general consumers of whiskey and liqueurs.
On the likelihood of confusion issue, Sazerac argued that the Board made three errors in its analysis:
- Analyzing the fame of FIREBALL.
- Finding that the mark was conceptually weak.
- Not considering the sixth DuPont
The Federal Circuit rejected all three arguments.
The Federal Circuit found that the Board’s finding that FIREBALL was not famous was supported by substantial evidence. The primary reason for the Board’s finding was that there was no context for Sazerac’s sales and advertising figures and how those compared with other brands of whiskey and liqueurs. The evidence presented by Sazerac was mostly related to shots, a subset of the genus of identified goods. Moreover, since the Board held that (despite not finding fame) FIREBALL was commercially strong and entitled to a broad scope of protection, even if the Board erred in its fame analysis, the error would have been harmless.
The Board found the FIREBALL mark conceptually weak because it was highly suggestive. There was evidence that Sazerac had admitted in the past that its mark was “not inherently distinctive,” that the term was suggestive of the taste of Sazerac’s product, and that the term was used to describe recipes having whiskey/liqueur as ingredients. Sazerac also admitted that its product had the same flavoring as the “Atomic Fireball” candy, and that third parties widely used the term to denote flavor in items such as popcorn and liquid flavorings added to food and beverages. Even though Sazerac argued that it was an error to consider dissimilar goods (such as popcorn), it failed to persuasively explain its reasoning. The Federal Circuit pointed out that even if considering use of the mark in connection with dissimilar goods was an error, other record evidence satisfied the requirements of substantial evidence and hence supported the Board’s findings.
The Federal Circuit also rejected Sazerac’s arguments that the Board erred by not considering the sixth DuPont factor (number and nature of similar marks in use on similar goods). The Court explained that the Board found in favor of Sazerac regarding the sixth DuPont factor but determined that Sazerac’s mark was “so conceptually weak” that the two marks were too different for consumer confusion to occur.
Practice Note: Attorneys should not solely rely on historical evidence of genericness but should provide substantial evidence, including surveys and expert testimony (if possible), in support of genericness at the time registration is sought.
