Fireball Frenzy: When First Registering a Mark, Genericness of a Mark Is Determined at the Time of Registration

Written by: Savannah J. Torborg and Kendall Loebbaka

BULLSHINE DISTILLERY LLC v. SAZERAC BRANDS, LLC

Before Moore, Reyna and Taranto.  Appeal from the Trademark Trial and Appeal Board.

Summary: In assessing genericness, the TTAB considers how the mark was understood at the time of registration, not some earlier time.

Bullshine Distillery LLC (“Bullshine”) applied to register the mark BULLSHINE FIREBULL for alcoholic beverages. Sazerac Brands, LLC (“Sazerac”) opposed, arguing a likelihood of confusion with its FIREBALL marks for whisky and liqueurs.  Bullshine counterclaimed, seeking cancellation of Sazerac’s marks on the basis that “fireball” is a generic term for whisky or liqueur-based drinks with a sweet/spicy cinnamon flavor. The Trademark Trial and Appeal Board (“TTAB”) ruled that FIREBALL was not generic at the time of registration or at the time of trial, but dismissed the opposition, determining that the BULLSHINE FIREBULL mark is not likely to cause confusion with the FIREBALL marks.  Both parties appealed.

Bullshine argued on appeal that the TTAB applied the wrong legal standard because, if a term is generic at any time prior to registration, the term remains generic and cannot be registered.  Sazerac argued the correct time frame in which to assess genericness is the time of registration, and the Federal Circuit agreed.  The Federal Circuit also affirmed the TTAB finding of no likelihood of confusion between the marks.  The Federal Circuit found substantial evidence supporting the TTAB’s conclusion that FIREBALL is not a famous mark, that the mark is conceptually weak because it is suggestive of the product’s flavor, and that the parties’ marks are different in appearance, sound, meaning and commercial impression.

Editor: Sean Murray