Federal Circuit Clarifies Under Trademark Act, Generic Terms May Not be Forever Generic

In a case of first impression, the Court of Appeals for the Federal Circuit confirmed that whether “a term is generic is an inquiry that changes over time.” In holding that “It is the impression of consumers at the time of the mark’s registration.…that the [Trademark] Act seeks to protect,” the Court determined that the Trademark Trial and Appeal Board applied the correct legal standard when it:

1) identified the genus of goods at issue and the relevant public; and then
2) reviewed the evidence as to what the relevant consumers thought of the term “fireball” at the time of registration. Bullshine Distillery LLC v. Sazerac Brands, LLC, 2023-1682 (Fed. Cir. March 12, 2025)

Even where a mark is protectable and “quite strong”, though, it still can be conceptually weak such that the differences between two marks can result in a finding of no likelihood of confusion. In this case, FIREBULL was not found to be confusingly similar to FIREBALL despite the one letter difference (and where FIREBULL was combined with the house mark BULLSHINE). The Court found the marks “are too different in appearance and sound, and especially meaning and commercial impression, for confusion to occur.”

This decision reminds us of the importance for trademark owners to regularly review their trademark portfolios to ensure proper and sufficient protection, as well as to consider the strength and enforceability of their brands.

We would be pleased to answer your questions regarding registrability and/or enforceability of your trademarks.