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 Appeal for the Federal Ciruit 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 whiskey and liqueurs) to be commercially strong but conceptually weak, that the goods were purchased without great care, and that Bullshine Distillery did not act in bad faith in choosing its mark. But the Board concluded that confusion is unlikely because of the differences in the marks. The CAFC ruled that the Board did not err in its conclusion. Sazerac Brands, LLC v. Bullshine Distillery LLC, Appeals Nos. 2023-1682 and 2023-1900 (Fed. Cir. March 12, 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 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 customers 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. Moreover, the Board accorded the FIREBALL mark a broad scope of protection, and so any error regarding fame was harmless.

With respect to the finding of weakness, Sazerac mainly argued that the Board should not have 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 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 in favor of Sazerac. Nonetheless, the Board decided that FIREBALL is so conceptually weak that the marks 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.