United States Court of Appeals for the Federal Circuit, Nos. 2023-1682, 2023-1900 (Decided March 12, 2025)
In this consolidated appeal from the Trademark Trial and Appeal Board, the Federal Circuit determined the timing requirements for analyzing genericness as a matter of first impression. The court affirmed the TTAB's holding that FIREBALL is not generic and that there is no likelihood of confusion between Sazerac's FIREBALL mark and Bullshine's BULLSHINE FIREBULL mark. Bullshine sought to cancel several of Sazerac's FIREBALL trademark registrations for being a generic term for cinnamon-flavored alcoholic drinks. Sazerac, on the other hand, opposed Bullshine's attempt to register the mark BULLSHINE FIREBULL, claiming a likelihood of confusion with its FIREBALL brand.
Genericness Analysis
The court decided as a matter of first impression that genericness is determined at the time of registration, not whether the term had been generic at any time before registration. This holding aligns with the Lanham Act's focus on consumer perception and the statute's structure, which allows for cancellation when a term becomes generic after registration.
Applying this standard, the Federal Circuit found that substantial evidence supported the Board's conclusion that FIREBALL was not generic when registered. While Bullshine pointed to recipes and third-party uses of "fireball" to describe spicy drinks, the Board reasonably concluded that the relevant purchasing public did not perceive the term as the generic name for whiskey or liqueur at the relevant times. The evidence instead showed that FIREBALL had been used as a distinctive brand name, particularly in association with Sazerac's well-known cinnamon whiskey product.
Likelihood of Confusion
The court also affirmed the Board's determination that Bullshine's proposed BULLSHINE FIREBULL mark was not likely to cause confusion with Sazerac's FIREBALL mark. While FIREBALL was deemed commercially strong, the Board found it conceptually weak, relying on Sazerac's own admissions and evidence that the term "fireball" evoked a flavor profile rather than a unique source identifier. Moreover, the marks were found to differ in appearance, sound, and commercial impression. Thus, the Federal Circuit concluded that substantial evidence, including the relevant DuPont factors, supported the TTAB's findings.
This decision reinforces the centrality of consumer perception in both genericness and confusion analyses, while clarifying that trademark validity must be evaluated based on the state of the marketplace at the time of registration.
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