No Bull Here: Federal Circuit Affirms Board’s Findings As To FIREBALL Mark And Holds On First Impression That Genericness Must Be Assessed At Time Of Registration

On March 12, 2025, the Federal Circuit affirmed the Trademark Trial and Appeal Board’s determinations that although Sazerac Brands, LLC’s FIREBALL mark was not generic for whiskey, Bullshine Distillery LLC’s BULLSHINE FIREBULL mark for alcoholic beverages was not likely to cause confusion with Sazerac’s FIREBALL mark.

The Board Decision

Sazerac opposed Bullshine’s application to register BULLSHINE FIREBULL for “alcoholic beverages except beer,” asserting a likelihood of confusion with Sazerac’s multiple FIREBALL registrations covering whiskey and liqueurs. Bullshine in turn brought a counterclaim to cancel Sazerac’s FIREBALL registrations on the ground that FIREBALL was generic for spicy alcoholic liquors such as cinnamon or hot sauce flavored whiskey. The Board denied both parties’ claims, finding the FIREBALL mark not generic either at the time of registration or trial, and finding confusion not likely based on, among other factors, the lack of conceptual strength of the FIREBALL mark for alcoholic liquors and the dissimilarities of the parties’ marks.

The Appeal

On appeal, Bullshine argued that a mark that is generic at any time prior to registration can never be registrable. As a matter of first impression, the Federal Circuit denied Bullshine’s “once generic always generic” argument and held that the relevant time period to assess whether a registered mark is generic is at the time of registration. The court grounded its conclusion in the language of Section 2(e) of the Lanham Act prohibiting registration of descriptive or generic marks, and Sections 14 and 15 allowing registrations (even incontestable registrations) to be challenged at any time on the basis of genericness, statutory indications that “generic[ness] is an inquiry that changes over time.” The court further explained that Bullshine’s rule would be inconsistent with the Lanham Act’s core aim to protect consumer confusion: “[t]he public is not protected by looking to what consumers thought of a term ten, fifty, or one-hundred years ago.” Rather, the purchasing public’s perception of a mark—as analyzed in the two-prong genericness inquiry, i.e., whether the relevant public understands the mark to refer to the genus of goods or services at issue—“is necessarily contemporaneous with the time of registration.”

As to the substance of Bullshine’s genericness counterclaim appeal, the court found substantial evidence supported the Board’s finding that FIREBALL was not generic for cinnamon whiskey at the time of Sazerac’s registrations, including no record evidence that competitors used the term “fireball” to refer to whiskey or liquor. The court also agreed with the Board that recipes from specialized publications were not probative of how relevant customers (i.e., purchasers of whiskey and liquor) perceived the mark.

Likewise, the court upheld the Board’s determination of no likelihood of confusion, finding substantial evidence that Sazerac’s FIREBALL mark was conceptually weak (noting in part Sazerac’s own admissions to the PTO and a federal court that its mark was not inherently distinctive) and not famous. As to the fame finding, the Federal Circuit reiterated that mark owners must provide relevant context for their proffered evidence of commercial success, and agreed with the Board that Sazerac should have contextualized FIREBALL whiskey’s ranking as the “#1 shot by volume in the U.S.” with testimony from the rankings provider or other relevant information.

Notably, this decision does not change the relevant time period for opposition actions against applications that have not registered yet, or for “genericide” cancellation actions asserting that a registration has become generic since registration because the relevant time to prove genericness would necessarily be after the registration date.

Bullshine Distillery LLC v. Sazerac Brands, LLC, No. 2023-1682 (Fed. Cir. Mar. 12, 2025).