Bullshine Distillery LLC v. Sazerac Brands, LLC
130 F.4th 1025 (2025)
Rule of Law:
For a term to be deemed generic and thus ineligible for federal trademark registration, its meaning to the relevant consumers must refer to the genus of goods or services at issue at the time of registration. A term's prior genericness, if not generic at the time of registration, does not prevent its registration.
Facts:
- In 2015, Bullshine Distillery LLC (Bullshine) applied to register the mark BULLSHINE FIREBULL for alcoholic beverages, specifically "[a]lcoholic beverages except beers."
- Sazerac Brands, LLC (Sazerac) holds multiple registered trademarks for FIREBALL, including for liqueurs (Reg. No. 2852432) and whisky (Reg. Nos. 3550110, 3734227), registered in 2001 and 2008 respectively.
- Bullshine contended that "fireball" was a generic term for a common alcoholic drink containing a spicy flavoring element like cinnamon or hot sauce, existing prior to Sazerac's registrations.
- Evidence included recipes for "fireball" cocktails/shots/shooters that sometimes combined whisky or cinnamon liqueur with Tabasco sauce.
- Many of the "fireball" drink recipes did not consistently use whisky, liqueur, or replicate the taste of ATOMIC FIREBALL candy or FIREBALL cinnamon whisky.
- ATOMIC FIREBALL candy, a spicy and sweet cinnamon candy product, has been sold since 1954 and is known to share a similar flavoring with Sazerac's product.
- The term "fireball" has been used by third parties to denote flavor in various dissimilar goods, such as popcorn, ice cream, beef jerky, and liquid flavorings.
Procedural Posture:
- Bullshine Distillery LLC (Bullshine) applied to register the mark BULLSHINE FIREBULL on the Principal Register with the United States Patent and Trademark Office (USPTO) in 2015.
- Sazerac Brands, LLC (Sazerac) filed a Notice of Opposition against Bullshine's application, alleging a likelihood of confusion with several of its existing FIREBALL marks.
- Bullshine filed its operative Third Amended Answer and Counterclaims, denying likelihood of confusion and seeking cancellation of Sazerac’s FIREBALL registrations, arguing the term "fireball" was generic.
- The Trademark Trial and Appeal Board (Board) found that "fireball" was not generic either at the time of registration of Sazerac’s marks or at the time of trial.
- The Board also determined there was no likelihood of confusion under Section 2(d) of the Lanham Act between the FIREBALL marks and Bullshine’s proposed BULLSHINE FIREBULL mark.
- The Board denied both Bullshine’s counterclaims for cancellation and Sazerac’s opposition to Bullshine’s mark.
- Bullshine appealed the Board's decision regarding genericness, and Sazerac cross-appealed the Board's determination of no likelihood of confusion, to the United States Court of Appeals for the Federal Circuit.
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Issue:
Is the genericness of a trademark, for purposes of initial registration, to be assessed based on the public's understanding of the term at the time of registration, or based on whether the term was generic at any point prior to registration?
Opinions:
Majority - Moore, Chief Judge
Yes, the genericness of a trademark for purposes of initial registration is to be assessed based on the public's understanding of the term at the time of registration. The court affirmed that the Lanham Act's language and purpose, as well as prior caselaw, support this temporal assessment. Section 2(e) of the Lanham Act prevents registration of descriptive or generic marks to avoid consumer deception regarding origin, an inquiry that "necessarily looks to what consumers would think at the time of registration." The Act's provision for cancellation of marks that become generic "at any time" (15 U.S.C. § 1064(3)) demonstrates Congress' understanding that genericness is an inquiry that changes over time, contradicting Bullshine's "once generic always generic" argument. The Act aims to protect the public from confusion at the time of purchase, not based on historical perceptions. Precedents like Application of G. D. Searle & Co. and Weiss Noodle Co. similarly focused on public understanding at the time registration was sought. The Board correctly applied this standard by identifying the genus of goods and relevant public, then assessing consumer perception of "fireball" at the times of Sazerac's registrations. The court also affirmed the Board's factual finding that FIREBALL was not generic at the times of registration, concluding it was supported by substantial evidence. While Bullshine presented evidence of "fireball" recipes and Sazerac's past arguments, the Board found this evidence did not predominantly show "fireball" was a generic term for whisky/liqueur among relevant consumers. Many recipes lacked consistent ingredients or taste, and were often from specialized publications. The Board noted that "FIREBALL" was known by relevant consumers more as a trademark (for candy or Dr. McGillicuddy's) and found no evidence of competitors using the term at the time of registration. Regarding Sazerac's cross-appeal on likelihood of confusion, the court affirmed the Board's findings that FIREBALL was not famous and was conceptually weak. The Board's fame finding was supported by substantial evidence because Sazerac failed to provide sufficient context for its sales and advertising figures relative to the broader market, and much evidence was limited to "shots" rather than the full category of goods. The conceptual weakness finding was supported by Sazerac's own admissions and the term's high suggestiveness of its flavor, as "fireball" has been used to describe the flavor in various goods. The Board considered the relevant DuPont factors, finding Sazerac's mark commercially strong but conceptually weak, and noting the dissimilarity of the marks' appearance, sound, meaning, and commercial impression. Despite finding in favor of Sazerac regarding the sixth DuPont factor (number and nature of similar marks), the Board concluded that the other factors, particularly the conceptual weakness of "FIREBALL" and the overall dissimilarity between FIREBALL and BULLSHINE FIREBULL, outweighed it, leading to a determination of no likelihood of confusion.
Analysis:
This case establishes a clear temporal boundary for assessing trademark genericness, holding that the inquiry focuses on consumer perception at the time of registration rather than any prior historical usage. This ruling allows for the possibility that a term, once generic, might become registrable if public perception evolves. It reinforces the Lanham Act's consumer-protection aim, emphasizing the prevention of source confusion at the point of sale. For future cases, this means that challengers to a mark's validity must present contemporaneous evidence of genericness, and mark holders may defend by showing that public perception, despite historical usage, had shifted by the time of registration. The decision also highlights the importance of comprehensive, contextualized evidence when asserting a mark's fame in likelihood of confusion disputes.
