Trademark Genericness and Time of Assessment
The case of Bullshine Distillery LLC v Sazerac Brands LLC, [1] focused on a critical issue in trademark law: the appropriate time period for assessing whether a mark was generic such that it could not be registered in the first instance. This issue, which was one of first impression, has significant implications for how trademarks are evaluated and protected. While the case also addressed the likelihood of confusion between Sazerac’s "FIREBALL" trademark and Bullshine’s proposed "BULLSHINE FIREBULL" mark, the primary focus was on the question of genericness and the timing of its assessment.
Sazerac Brands, LLC owns the trademark "FIREBALL," used for its popular cinnamon-flavored whiskey. Sazerac argued that "FIREBALL" was a distinctive trademark and not a generic term for spicy alcoholic beverages. Sazerac also owns several other trademarks, including "FIREBALL" in standard characters for "whiskey" and "FIREBALL" in typed form for "liqueurs."
The dispute began in 2015 when Bullshine Distillery applied to register the trademark "BULLSHINE FIREBULL." Bullshine Distillery LLC sought to register the trademark "BULLSHINE FIREBULL" for its alcoholic beverages, specifically "alcoholic beverages except beers." Sazerac opposed the application, arguing that "FIREBULL" was confusingly similar to its established "FIREBALL" trademark and would mislead consumers.
In response, Bullshine argued that "FIREBALL" had become a generic term for a category of alcoholic beverages, particularly those with a spicy cinnamon flavor. Therefore, “FIREBALL” should no longer be eligible for trademark protection. Thus, Bullshine filed a petition for cancellation with the Trademark Trial and Appeal Board (TTAB), seeking to cancel Sazerac’s "FIREBALL" trademark on the grounds that it had become a generic term for spicy alcoholic beverages. Bullshine argued that if "FIREBALL" was considered generic at any time prior to registration, it should remain generic permanently and be ineligible for trademark protection.
Sazerac responded, arguing "FIREBALL" was not a generic term and deserved trademark protection. Sazerac contended that the correct time period for assessing genericness is at the time of registration.
The TTAB considered the issue of genericness and the likelihood of confusion between the two marks. The board evaluated evidence from both parties, including consumer perception, third-party uses of the term "fireball," and the history of Sazerac’s use of the "FIREBALL" mark. The TTAB rejected Bullshine’s argument that "FIREBALL" had become generic. The board emphasized that the appropriate time for assessing whether a mark is generic is at the time of registration, not based on historical usage. The TTAB found that "FIREBALL" was not generic at the time of its registration and remained a distinctive trademark. The board noted that consumers associated "FIREBALL" with Sazerac’s specific brand of cinnamon-flavored whiskey, not with a general category of spicy alcoholic beverages.
The TTAB also considered the evidence presented by Bullshine, including recipes and third-party uses of the term "fireball" to describe alcoholic beverages. However, the board found that this evidence did not establish that "FIREBALL" had become a generic term. Instead, the TTAB concluded that "FIREBALL" referred to a specific brand of liquor rather than a general category of products.
The TTAB also found no likelihood of confusion between "FIREBALL" and "BULLSHINE FIREBULL." The board considered factors such as the distinctiveness of the marks, their overall appearance and sound, and the nature of the alcoholic beverage market. The TTAB found that "FIREBALL" was commercially strong but conceptually weak, meaning that while it was well-known, the term itself was not inherently distinctive. However, the TTAB also noted that "BULLSHINE FIREBULL" was composed of two terms, both of which included the word "bull," and that the mark began and ended with the same term. This made "BULLSHINE FIREBULL" visually and phonetically distinct from "FIREBALL."
Bullshine Distillery appealed the TTAB’s decision to the Court of Appeals for the Federal Circuit (Federal Circuit), challenging the ruling on both genericness and the likelihood of confusion. The Federal Circuit affirmed the TTAB’s decision, rejecting Bullshine’s argument that "FIREBALL" had become generic. The Federal Circuit clarified that the appropriate time for assessing whether a mark is generic is at the time of registration, not based on historical usage. The court emphasized that trademarks can evolve over time, and a term that was once considered generic can acquire distinctiveness and regain trademark protection.
The Federal Circuit also rejected the "once generic, always generic" doctrine, which presumes that a term, once deemed generic, remains so indefinitely. The court highlighted the dynamic nature of language and branding, noting that even if a term was once considered generic, it can acquire distinctiveness over time and become eligible for trademark protection. The Federal Circuit found that "FIREBALL" had not become a generic term for spicy alcoholic beverages. The court highlighted that consumers associated "FIREBALL" with Sazerac’s specific product, not with a general category of products. This consumer perception was key to the court’s decision.
The Federal Circuit also affirmed the TTAB’s finding that there was no likelihood of confusion between "FIREBALL" and "BULLSHINE FIREBULL." The court noted that the marks differed in appearance, sound, and meaning, and that consumers in the alcoholic beverage market were generally adept at distinguishing between brands with similar elements.
The Bullshine Distillery LLC v Sazerac Brands LLC case provides several important insights into the issue of genericness in trademark law. The appropriate time for assessing whether a mark is generic is at the time of registration. This means that a term’s genericness at a point in time prior to the applicant’s seeking registration does not determine its eligibility for trademark protection. Genericness is determined by how consumers perceive the term. The Federal Circuit emphasized that a term that was once considered generic can acquire distinctiveness and regain trademark protection.
While the primary focus of the case was on genericness, the issue of likelihood of confusion between "FIREBALL" and "BULLSHINE FIREBULL" was also addressed. The TTAB and the Federal Circuit both concluded that there was no likelihood of confusion between the two marks. The TTAB and Federal Circuit concluded that "FIREBALL" was commercially strong but conceptually weak, while "BULLSHINE FIREBULL" was sufficiently distinct in appearance, sound, and meaning.
To summarize, the Bullshine Distillery LLC v Sazerac Brands LLC case underscores that genericness is assessed at the time of trademark registration, that genericness is not permanent, and that trademarks can evolve over time. The case also clarifies the importance of consumer perception in determining whether a mark is generic. By focusing on the time of registration and consumer perception, the courts have provided a clear framework for assessing genericness in trademark disputes. While the case also addressed issues such as the likelihood of confusion, the discussion of genericness remains its most significant contribution to trademark law. For brand owners, the case serves as a reminder of the importance of establishing and maintaining distinctiveness in their marks to ensure continued trademark protection.
