March 12, 2025 — U.S. Court of Appeals for the Federal Circuit, No. 23-1682
In a pivotal trademark decision, the U.S. Court of Appeals for the Federal Circuit issued a precedential ruling in Bullshine Distillery LLC v. Sazerac Brands LLC that sharpens critical aspects of trademark law, particularly the analysis of genericness and the likelihood of consumer confusion in contested trademark registrations.
Background
The dispute began when Bullshine Distillery LLC applied in 2015 to register the trademark BULLSHINE FIREBULL for “alcoholic beverages except beers.” Sazerac Brands LLC, owner of multiple FIREBALL marks for cinnamon-flavored liqueurs and whiskey, opposed Bullshine’s application on the grounds of likely confusion with its established FIREBALL trademarks. Bullshine counterclaimed, seeking cancellation of Sazerac’s FIREBALL registrations by asserting that “fireball” is a generic term for a class of alcoholic drinks.
Before the Trademark Trial and Appeal Board (TTAB), both sides fell short: the Board determined that Sazerac’s FIREBALL marks were not generic at the time of their registration and no likelihood of confusion existed between the marks. Both parties appealed that conclusion to the Federal Circuit.
Key Legal Questions
The Federal Circuit reviewed two central issues:
- Whether a term once deemed generic can be registered later if consumer perception changes; and
- Whether Bullshine’s proposed mark is likely to cause consumer confusion with Sazerac’s FIREBALL marks.
Rejecting “Once Generic, Always Generic”
Bullshine argued that if “fireball” was generic at any point in the past, that status should permanently bar trademark registration. The Federal Circuit emphatically rejected this “once generic, always generic” argument, holding that genericness must be evaluated based on consumer perception at the time of registration. Under the Lanham Act, genericness is not static; even historically generic terms can become protectable if they have acquired distinctiveness with consumers by the time registration is sought. The Court’s interpretation aligns with the statutory framework that allows marks to be challenged and canceled “at any time” if they later become generic.
This clarification is significant because it confirms that trademark eligibility depends on consumer understanding at the point in time when the mark is registered, not on historical usage alone.
Affirming Non-Generic Status
On the factual record, the Federal Circuit held that substantial evidence supported the TTAB’s finding that “fireball” was not generic at the relevant times of registration, despite evidence that the term had been used in recipes or product names historically. The Court noted that many recipes cited by Bullshine did not involve whiskey or liqueur, and that relevant consumers were more likely to associate the term with existing branded products (including Sazerac’s FIREBALL) than with a generic category.
Likelihood of Confusion Analysis
On cross-appeal, Sazerac challenged the TTAB’s conclusion that Bullshine’s mark would not cause confusion. The Federal Circuit again upheld the Board’s ruling, finding that:
- Sazerac’s FIREBALL mark, while commercially strong, was conceptually weak — meaning it was suggestive and minimally distinctive — based on evidence including Sazerac’s own admissions and widespread third-party use of “fireball” in various contexts.
- The marks differed sufficiently in appearance, sound, meaning, and commercial impression to weigh against confusion.
- The TTAB properly considered factors like fame, similarity of the goods, and market context under the DuPont multi-factor test.
Implications for Trademark Law
This decision offers two enduring principles for brand owners and trademark practitioners:
- Genericness is dynamic: A term’s eligibility for federal registration turns on its status at the time of the application, not based solely on historical generic usage.
- Likelihood of confusion remains fact-intensive: Even where marks share common elements or flavor-based suggestions, nuanced analysis of strength, distinctiveness, and consumer perception can tip outcomes.
Both parties retained their marks following the court’s affirmation, underscoring the rigor of trademark analysis in contested registrations. Trademark owners challenging or defending registrations should carefully document consumer perception and evidence of distinctiveness at the relevant time of filing.