CAFC Affirms TTAB Ruling that FIREBALL is Not Generic but Competitor’s Mark Won’t Confuse

The U.S. Court of Appeals for the Federal Circuit (CAFC) Wednesday issued a precedential decision affirming a Trademark Trial and Appeal Board (TTAB) decision that the mark FIREBALL is not generic but also that a competing mark was not likely to cause consumer confusion. The decision was authored by CAFC Chief Judge Kimberly Moore.

Bullshine Distillery LLC applied to register the mark BULLSHINE FIREBALL in 2015 for “alcoholic beverages except beers.” Sazerac Brands LLC, which owns several FIREBALL marks, filed an opposition, alleging a likelihood of confusion. Bullshine countered that its mark would not cause a likelihood of confusion and also sought cancellation of Sazerac’s mark, arguing the term “fireball” is a “‘generic name for a [whiskey or liqueur/schnapps-based] common alcoholic drink’ containing ‘a spicy flavoring element such as cinnamon or hot sauce.’” The Board ultimately held that Sazerac’s marks were not generic but also that Bullshine’s mark did not pose a likelihood of confusion.

On appeal, the CAFC first rejected Bullshine’s argument that the TTAB applied the incorrect legal standard in assessing genericness. Bullshine said that since “fireball” was generic prior to Sazerac’s registration, the evidence of secondary meaning that the Board considered could not save it from genericness. “Bullshine argues if a term is generic at any time prior to registration, regardless of how it is understood at the time of registration, it remains generic for all time and cannot be registered,” wrote the CAFC. However, Sazerac said the correct time period to assess genericness is at the time of registration and the court agreed:

“Bullshine’s argument that once generic always generic, no matter how far removed from the time-period of genericness, is inconsistent with the statue… It is the impression of consumers at the time of the mark’s registration—whether they would be confused or misled by a mark—that the Act aims to protect.”

Turning to Bullshine’s argument that the Board then erred in finding the mark was not generic at the time of registration, the CAFC analyzed the TTAB’s treatment of the evidence and said its holding was supported by substantial evidence. Specifically, the Board “found that FIREBALL was known by the relevant consumers more as a trademark, either for ATOMIC FIREBALL candy or DR. MCGILLICUDDY’S FIREBALL cinnamon whisky, than as a nondistinctive term for a specific flavor… There was also no evidence in the record that any competitors in the whisky or liqueur fields used the term ‘fireball’ at the time of registration.”

As for Sazerac’s cross-appeal, the CAFC first said the Board’s finding that the FIREBALL mark is not famous was supported by substantial evidence, chiefly because Sazerac’s evidence of rankings and sales figures was insufficient and did not include the necessary context or supporting testimony for the Board to make an appropriate comparison. “The Board in this case did not require evidence of market share, the error we identified in Bose,… but required a way to contextualize the evidence it had before it,” wrote the CAFC.

The TTAB also found that FIREBALL is a “conceptually weak” mark because if it highly suggestive. Sazerac argued that the Board “erred by considering dissimilar goods such as popcorn and beef jerky,” but the CAFC said “substantial evidence still supports the Board’s finding Sazerac’s mark is conceptually weak because “the Board also relied on Sazerac’s sworn statements, “fireball” recipes that include whisky or liqueur, and an admission that Sazerac’s product replicates a known taste.”

Finally, Sazerac argued the TTAB failed to consider the sixth DuPont factor, “the number and nature of similar marks in use on similar goods.” But the CAFC said the Board did consider this factor and actually found in Sazerac’s favor, even though the relevant findings appeared in the Board’s discussion of genericness. “Despite this finding, the Board determined Sazerac’s ‘FIREBALL mark is so conceptually weak, the marks FIREBALL and BULLSHINE FIREBULL are too different in appearance and sound, and especially meaning and commercial impression, for confusion to occur,” concluded the opinion.