CAFC Affirms TTAB's Dismissal of BULLSHINE FIREBULL Opposition Despite Commercial Strength of FIREBALL for Whisky
In a precedential opinion, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision (here) dismissing Sazerac Brand's opposition to registration of the mark BULLSHINE FIREBULL for "alcoholic beverages except beers." The Board found Sazerac's FIREBALL mark (for whisky and liqueurs) The Board found Sazerac's registered FIREBALL mark (for whisky and liqueurs) to be commercially strong but conceptually weak, and concluded that confusion is unlikely because of the differences in the marks. The CAFC ruled that the Board did not err in its conclusion. Bullshine Distillery LLC v. Sazerac Brands, LLC, 2025 USPQ2d 433 (Fed. Cir. 2025) [precedential].
Genericness: The court first dealt with Bullshine's appeal from the Board's denial of its counterclaim seeking to invalidate Sazerac's pleaded registrations on the ground of genericness. Bullshine argued that the Board applied an incorrect legal standard, that "fireball" was a generic term prior to registration by Sazerac, and that the Board therefore erred in considering subsequent evidence of acquired distinctiveness.
The court noted that the appropriate time period for assessing whether a term is generic is a question of first impression. Bullshine dubiously argued that a term that is generic at any time prior to registration, regardless of how it is perceived at the time of registration, remains generic forever. Sazerac argued that the time of registration is the appropriate focus. The CAFC agreed with Sazerac.
The CAFC looked to the statute, which "prevents registration of a generic term because it would deceive consumers as to the origin of the goods." [What? -ed.]. "This inquiry necessarily looks to what consumers would think at the time of registration." Moreover, Section 14 of the Act permits cancellation of a registration "at any time" if the mark becomes generic. Bullshine's position is thus inconsistent with the statute.
As to the Board's factual finding that FIREBALL was not generic, the court ruled that substantial evidence supported the Board's decision.
Likelihood of Confusion: Sazerac cross-appealed from the dismissal of its Section 2(d) likelihood of confusion claim. Sazerac contended that the Board had erred in its analysis of the fame of the FIREBALL mark, in finding the mark to be conceptually weak, and in not appropriately considering the lack of similar marks in use on similar goods under the sixth DuPont factor.
The court observed that most of Sazerac's fame evidence related to shots, which constitutes only a subset of the genus of goods. considered dissimilar goods like popcorn and beef jerky, but Sazerac failed to explain why it was error to discuss use of the term "fireball" to denote the same cinnamon flavor in dissimilar goods. In any event, other substantial evidence supported the Board's finding, including Sazerac's own admissions and prior statements.
Finally, as to the sixth DuPont factor, the Board found Sazerac’s FIREBALL mark to be commercially strong, but its “conceptual weakness essentially’ cancels out’ the mark’s commercial strength,” and so the mark was entitled to no more than a normal scope of protection. The Board then concluded that the marks FIREBALL and BULLSHINE FIREBULL are "too different in appearance and sound, and especially meaning and commercial impression, for confusion to occur."
Sazerac does not dispute that substantial evidence supports the Board’s findings with respect to the similarity of the marks, and we affirm the Board’s finding with respect to the mark’s conceptual weakness. On this record, we affirm the Board’s determination of no likelihood of confusion.
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TTABlogger comment: Not the most elegant or informative CAFC opinion I've ever read. Opposer Sazerac came on like a fireball but flamed out rather spectacularly. BTW: Section 14 says that a registration can be cancelled "[a]t any time if the registered mark becomes the generic name for the goods or services." What if the term does not "become" generic but was already generic when it was registered?
Text Copyright John L. Welch 2025.
posted by John L. Welch @ 3/13/2025
7 comments
7 Comments:
If the term was generic when the mark registered, then it can be cancelled. Registration should not have issued. MS faced a similar attack when they tried to enforce WINDOWS against LINDOWS. MS quickly settled the case after the judge made certain findings about WINDOWS during the PI hearing.
Settlement is not a court ruling.
When I read the opinion yesterday, I initially misread the mark as FIREBALL not FIREBULL - that speaks volumes about likelihood of confusion! I was also shocked that Bullshine argued "once generic, always generic" - did their counsel never hear of reverse genericide??? Singer, GoodYear, etc...
John, I am surprise you don't know the LINDOS case:-). The point is the Court denied MS the preliminary injunction based on LINDOWS challenge that the WINDOWS mark was generic prior to MS adoption, use and registration of the mark. This Court order was based on MS likelihood of success on the merits of its TM claim. " As early as 2002, a court rejected Microsoft's claims, stating that Microsoft had used the term "windows" to describe graphical user interfaces before the product, Windows, was ever released, and the windowing technique had already been implemented by Xerox and Apple many years before.[4] Microsoft kept seeking retrial, but in February 2004, a judge rejected two of Microsoft's central claims.[5] The judge denied Microsoft's request for a preliminary injunction and raised "serious questions" about Microsoft's trademark. Microsoft feared a court may define "Windows" as generic and result in the loss of its status as a trademark. In July 2004, Microsoft offered to settle with Lindows.[6] As part of this licensing settlement, Microsoft paid an estimated US$20,000,000 (equivalent to $33,294,574 in 2024), and Lindows transferred the Lindows trademark to Microsoft and changed their name to Linspire." https://en.wikipedia.org/wiki/Microsoft_Corp._v._Lindows.com,_Inc.
Rather disappointing that the Fed Circuit used "trademark" as a verb. It should know better.
I don't understand how the court calls this an issue of first impression. The Federal Circuit has decided exactly the opposite in several cases, holding that a generic term can never be appropriated as a trademark. E.g., In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569 (Fed. Cir. 1987) ("Generic terms, by definition incapable of indicating source, are the antithesis of trademarks, and can never attain trademark status."); TMEP 1209.01(c). Does the court mean we should just ignore the fact that FIREBALL was generic at any point before the application was filed? I feel like I'm missing something here - why isn't the court overruling/distinguishing these earlier cases?
Also, shouldn't the test be whether it was generic at the time of APPLICATION rather than, as the court says, at the time of REGISTRATION?
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