by Dennis Crouch
Bullshine Distillery LLC v. Sazerac Brands, LLC, 2023-1682 (Fed. Cir. March 12, 2025)
In an interesting trademark decision, the Federal Circuit has clarified that terms once considered generic do not necessarily remain permanently unregistrable. provides important guidance on genericness timing and addresses a question of first impression in trademark law.
The case involves two alcohol producers:
- Bullshine Distillery sought to register “BULLSHINE FIREBULL” for alcoholic beverages;
- Sazerac, owner of “FIREBALL” branded cinnamon whiskey, and opposed the registration claiming likelihood of confusion.
Bullshine counterclaimed seeking cancellation of Sazerac’s marks, arguing “fireball” was generic for spicy cinnamon-flavored alcoholic drinks. The Trademark Trial and Appeal Board (TTAB) denied both parties’ claims, finding FIREBALL was not generic either at registration or the opposition trial, and determining there was no likelihood of confusion between the marks. Both parties appealed. The Federal Circuit, in an opinion by Chief Judge Moore, affirmed the TTAB decisions in both cases.
Resolving the Timing Question for Genericness
The term “fireball” has been used for a long time as part of a recipe for a cinnamon flavored drink. DR. MCGILLICUDDY’S FIREBALL cinnamon whisky has also long been sold as is the quite awful tasting “ATOMIC FIREBALL” candy. And, Sazerac had apparently admitted that the term was generic for a cinnamon flavored drink prior to its launch of its FIREBALL branded whisky.
Bullshine argued that if a term is generic at any time prior to registration, it remains generic forever and cannot be registered, regardless of consumer understanding at the time of registration. To me this “once generic, forever generic” approach is clearly wrong and I’m happy to report that the Federal Circuit rejected the argument, holding that the key question is whether the mark was sufficiently source identifying at the point of registration and after. And here, the court found sufficient evidence to support the TTAB’s conclusion that “FIREBALL” was not generic at the time of registration.
In its analysis, the court looked first to the statutory language of Section 2(e) of the Lanham Act, which prevents registration of a mark that “when used on or in connection with the goods of the applicant is merely descriptive.” 15 U.S.C. § 1052(e). The court noted that this “necessarily looks to what consumers would think at the time of registration.” The Lanham Act also allows for cancellation of marks that become generic. This demonstrated “Congress’ understanding that whether a term is generic is an inquiry that changes over time.”
Channeling trademark policy goal of consumer protection, the court explained that the law’s purpose is to “protect the public so it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get.” Looking to what consumers thought of a term “ten, fifty, or one-hundred years ago” wouldn’t serve this purpose.
Bullshine raised the 1961 Weiss Noodle decision – as supporting the “once generic, always generic” position. Weiss Noodle v. Golden Cracknel Specialty, 290 F.2d 845, 129 U.S.P.Q. 411 (C.C.P.A. 1961). In Weiss Noodle, the CCPA affirmed a cancellation of Weiss Noodle’s trademark registration for “HA-LUSH-KA” for egg noodles. The court determined that “HA-LUSH-KA” was simply a hyphenated, phonetic spelling of “haluska,” which is the Hungarian word for noodles. The court ruled that “the name of a thing is the ultimate in descriptiveness” and cannot be trademarked even if it has acquired secondary meaning in the marketplace. Weiss had argued that its mark had become distinctive through use and was properly registered, but the court held that common descriptive names of products cannot become exclusive trademarks regardless of any de facto secondary meaning they might acquire.
In Bullshine v. Sazerac, the Federal Circuit clarified that Weiss Noodle actually examined the public’s understanding of “haluska” at the time registration was sought, not at some distant point in the past. The mark was denied registration because it described the goods it was used for (noodles) at the time of registration (just in Hungarian). The Federal Circuit rejected Bullshine’s interpretation that Weiss established a rule that terms generic at any point in history remain permanently unregistrable.
Sazerac’s Cross-Appeal: Likelihood of Confusion
On cross-appeal, Sazerac challenged the TTAB’s finding that there was no likelihood of confusion between its FIREBALL marks and Bullshine’s BULLSHINE FIREBULL mark. Sazerac argued the Board erred by concluding that the FIREBALL had not achieved “fame” and was conceptually weak; and by not considering the sixth DuPont factor (the number and nature of similar marks in use on similar goods).
Regarding fame, the Board had found that while the FIREBALL mark was commercially strong, Sazerac failed to provide sufficient context for its sales and advertising figures. Much of Sazerac’s evidence related specifically to shots, which the Board noted was just a subset of the broader identified goods (whisky or liqueurs more broadly). The Federal Circuit affirmed that substantial evidence supported the Board’s finding.
Highly Suggestive. As discussed above, the evidence showed that Sazerac had admitted in court that FIREBALL was not inherently distinctive, and that “fireball” had been widely used to denote a spicy cinnamon flavor in various products. While Sazerac contested the Board’s consideration of dissimilar goods like popcorn and beef jerky, the court found that substantial evidence still supported the conceptual weakness finding.
Similar Goods: Finally, contrary to Sazerac’s argument, the Federal Circuit found that the Board had indeed considered the sixth DuPont factor. The court noted that the Board had explicitly found in Sazerac’s favor on this point, acknowledging that there was no evidence competitors used the term FIREBALL at the time of registration. However, this favorable finding was ultimately outweighed by other factors in the likelihood of confusion analysis, particularly the conceptual weakness of Sazerac’s mark and the differences between the marks in appearance, sound, meaning, and commercial impression.
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So, both parties keep their marks. The Federal Circuit’s decision allows Sazerac to maintain its FIREBALL registrations despite historical generic usage, while Bullshine can proceed with its BULLSHINE FIREBULL mark registration.
BUT, this doesn’t free Bullshine entirely. Although the marks were not found to be confusingly similar in the registration context, Bullshine could still be sued for trademark infringement if it uses its mark in a way that creates confusion in the marketplace. The court’s decision specifically addressed registrability and the abstract likelihood of confusion analysis conducted by the TTAB, but real-world use introduces additional factors that could shift the analysis.
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