Holding: The time period to assess if a trademark is generic starts at the time of registration and does not depend on whether the trademark was generic prior to registration.
Bullshine applied to register the mark BULLSHINE FIREBULL on the Principal Register in connection with “alcoholic beverages except beers.” Sazerac filed a Notice of Opposition, alleging likelihood of confusion with its registered trademarks FIREBALL for liqueurs; FIREBALL for whisky; and FIREBALL and Design for whiskey. Bullshine denied likelihood of confusion and sought cancellation of Sazerac’s registrations, alleging that “fireball” is a generic term for a drink including a spicy flavor such as cinnamon or hot sauce. The TTAB found the FIREBALL marks to not be generic, but also determined that the BULLSHINE FIREBULL mark was not likely to cause consumer confusion with the FIREBALL marks. Both sides appealed.
Bullshine argued that the TTAB erred by only considering whether the term “fireball” was generic at the time of registration and at the time of trial. Instead, Bullshine suggested that if a mark is generic at any time prior to registration, the mark remains generic for any time in the future and can never be registered. The Federal Circuit did not agree, holding that the correct time period to assess if a mark is generic is at the time of registration.
The Federal Circuit found support for its ruling in Section 2(e) of the Lanham Act, which states that a mark cannot be registered when it is merely descriptive of the goods that are connected to the mark. Section 2(e) extends to prevent registration of a generic term since a generic term is, by definition, the most descriptive word that can be used for the goods. The purpose of Section 2(e) is to prevent registration of a mark that would deceive consumers as to the origin of the goods. Therefore, it makes sense to look to whether consumers would have been confused at the time of registration, rather than looking to some other time in the past.
The statutory scheme of the Lanham Act also suggests that whether a term is generic can change over time. A mark can be cancelled at any time if it becomes generic, even if it has attained incontestable status. Therefore, the Lanham Act views genericity as an evolving concept, and it would be inappropriate to rule that once a term is generic it must always remain generic.
The Federal Circuit also agreed with the TTAB’s ruling that FIREBALL was not generic at the time of registration. Bullshine introduced evidence of recipes to show that FIREBALL was generic, but many of these recipes did not use whiskey or liqueur, and some of them did not taste like cinnamon.
As for the issue of likelihood of confusion between FIREBALL and BULLSHINE FIREBULL, the Federal Circuit again upheld the decision of the TTAB. Sazerac did not carry its burden to show that the mark FIREBALL is famous under the fifth DuPont factor, as Sazerac did not provide any context to is advertising and sales figures. Sazerac provided evidence that FIREBALL whisky was the #1 shot by volume in the United States in 2014, but did not provide any testimony from the creator of the rankings to provide context to this statistic. Additionally, this statistic only applied to shot drinkers and did not apply more broadly to the listed goods of whisky or liqueurs.
The Federal Circuit also agreed with the TTAB’s conclusion that the mark FIREBALL is conceptually weak since it is highly suggestive. Sazerac admitted that its whisky has the same flavoring as ATOMIC FIREBALL and that the term “fireball” has been used for other spicy foods such as popcorn, ice cream, beef jerky, and for liquid flavorings. Since the mark FIREBALL is conceptually weak, and the marks FIREBALL and BULLSHINE FIREBULL are too different both visually and audibly, the Federal Circuit ultimately affirmed the TTAB’s decision of no likelihood of confusion.
Federal Circuit Precedential 
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