CAFC confirms TTAB ruling that FIREBALL Is Not Generic, but Competitor’s Mark Won’t Confuse
The decision was written by CAFC Chief Judge Kimberly Moore. 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 by claiming that its mark wouldn’t cause confusion, and also sought to cancel Sazerac’s mark. It argued that “fireball” was a “generic name” for a
commonly alcoholic drink containing “a Bullshine argued that because “fireball” had been generic before Sazerac registered it, the evidence of secondary significance that the Board considered was not enough to save it from being generic. The CAFC wrote that Bullshine’s argument that a term, if it is generic prior to registration and is not understood at the time it is registered, is generic forever. It cannot be registered. 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.”[whiskey or liqueur/schnapps-based]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 TTAB found that FIREBALL was a “conceptually-weak” mark, because it is 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. The Board concluded that despite this finding, Sazerac’s “FIREBALL” mark was so conceptually weak that the marks FIREBALL, BULLSHINE, and BULLSHINE, FIREBULL were too different in appearance, sound, meaning, and commercial
Eileen McDermott, Editor-in Chief of IPWatchdog.com is a veteran IP and legal journalist. Eileen McDermott is a veteran IP journalist and has held editorial and management positions at
