Sazerac Brands, LLCv.Bullshine Distillery LLC

Trademark Trial and Appeal Board

Sep 29, 2020

91227653 (T.T.A.B. Sep. 29, 2020)

Mailed: September 29, 2020

Opposition No. 91227653
Sazerac Brands, LLC

v.
Bullshine Distillery LLC

Before Cataldo, Adlin, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:

This proceeding now comes before the Board for consideration of (1) Sazerac
Brands, LLC’s (“Opposer”) motion for summary judgment on its asserted claim of
likelihood of confusion and on Bullshine Distillery LLC’s (“Applicant”) asserted
counterclaims;1 (2) Applicant’s cross-motion for summary judgment on its genericness
counterclaim;2 and (3) Applicant’s request for an oral hearing on the pending
motions.3 The cross-motions for summary judgment are fully briefed. Opposer has
contested Applicant’s request for an oral hearing.4

1 59 TTABVUE (confidential version); 60 TTABVUE (redacted version).
2 62 TTABVUE (confidential version); 63 (redacted version).
3 69 TTABVUE.
4 70 TTABVUE.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS ORDER IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91227653

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I. Background
Applicant seeks registration on the Principal Register of the standard character
mark BULLSHINE FIREBULL for “Alcoholic beverages except beers” in
International Class 33.5
Opposer has opposed registration of Applicant’s mark under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), based on its alleged prior use and registration
on the Principal Register of the following marks and corresponding goods:
 for “whisky” in International Class 33;6
 FIREBALL (in standard characters) for “whisky” in International Class
33;7 and
 FIREBALL (in typeset form8) for “liqueurs” in International Class 33.9
In its answer, Applicant denied the salient allegations asserted in Opposer’s notice
of opposition. Additionally, Applicant asserted a counterclaim seeking to cancel
Opposer’s pleaded registrations on the grounds of genericness (limited to Opposer’s

5 Application Serial No. 86750668, filed on September 8, 2015, based on an allegation of a bona fide
intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. 1051(b).
6 Registration No. 3734227, issued on January 5, 2010; renewed.
7 Registration No. 3550110, issued on December 23, 2008; renewed.
Opposer also pleaded ownership of Registration No. 4564436 for the standard character mark FUEL
YOUR FIRE for “Distilled spirits and liqueurs; prepared alcoholic cocktails” as a basis for its Section
2(d) claim. By stipulation of the parties, Opposer withdrew its likelihood of confusion claim solely to
the extent it was based on Registration No. 4564436, which the Board granted. See 57 and 58
TTABVUE.
8 Prior to November 2, 2003, “standard character” drawings were known as “typed” or “typeset”
drawings. A typed or typeset mark is the legal equivalent of a standard character mark. See
TRADEMARK MANUEL OF EXAMINING PROCEDURE (“TMEP”)) § 807.03(i) (October 2018).
9 Registration No. 2852432, issued on June 15, 2004; renewed.
Opposition No. 91227653

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pleaded Registration Nos. 2852432 and 3550110), abandonment (limited to Opposer’s
pleaded Registration No. 2852432), and fraud (Opposer’s pleaded Registration Nos.
2852432, 3550110, and 3734227). Opposer filed an answer to the counterclaim
denying the salient allegations asserted therein.10
II. Applicant’s Request for an Oral Hearing
A formal oral hearing at the Board is not held on a motion except by order of the
Board. See Trademark Rule 2.127(a), 37 C.F.R. § 2.127(a). It is the practice of the
Board to deny a request for an oral hearing on a motion unless, in the opinion of the
Board, an oral hearing is necessary to clarify the issues to be decided. Ordinarily,
arguments on a motion are, and should be, adequately presented in the briefs
thereon, and therefore the Board rarely grants a request for an oral hearing on a
motion. See The Scotch Whiskey Association v. United States Distilled Products Co.,
13 USPQ2d 1711 (TTAB 1989), recon. denied, 17 USPQ2d 1240 (TTAB 1990),
dismissed, 18 USPQ2d 1391, 1391 n.3 (TTAB 1991) (issues on motion to dismiss not
so extraordinary to warrant an oral hearing), rev’d on other grounds, 952 F.2d 1317,
21 USPQ2d 1145 (Fed. Cir. 1991); TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311,
1313 n.3 (TTAB 1989) (exception to usual practice is not warranted).
Because the parties have fully and adequately briefed the issues before us on the
cross-motions for summary judgment and because we do not believe that an oral

10 By stipulation of the parties, Applicant dismissed, with prejudice, its abandonment counterclaim
against Opposer’s pleaded Registration No. 4564436 for the standard character mark FUEL YOUR
FIRE with prejudice, which the Board granted. See 57 and 58 TTABVUE.
Opposition No. 91227653

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hearing would be useful in determining those issues, Applicant’s motion requesting
an oral hearing is denied.
III. Summary Judgment Standard
Summary judgment is an appropriate method of disposing of cases in which there
are no genuine disputes as to material facts, thus allowing resolution as a matter of
law. See Fed. R. Civ. P. 56(a). The burden is on the party moving for summary
judgment to demonstrate the absence of any genuine dispute of material fact and that
it is entitled to summary judgment as a matter of law. Fed. R. Civ. P. 56(c). In
considering the propriety of summary judgment, all evidence must be viewed in the
light most favorable to the non-movant, and all justifiable inferences are to be drawn
in the non-movant’s favor. See Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993).
When cross-motions for summary judgment are presented, the Board evaluates
each motion on its own merits and resolves all doubts and draws all reasonable
inferences against the party whose motion is being considered. Ava Ruha Corp. v.
Mother’s Nutritional Ctr., Inc., 113 USPQ2d 1575, 1579 (TTAB 2015). The mere fact
that both parties have moved for summary judgment does not necessarily mean there
are no genuine disputes of material fact, or authorize the resolution of such disputes,
or dictate that the Board should enter judgment in favor of one of the parties. See
Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1437 (TTAB 2007).

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IV. Entitlement to Statutory Cause of Action
Section 13 of the Trademark Act, 15 U.S.C. § 1063, permits a party to oppose
registration of a mark if he believes that he would be damaged if the mark registers.
An opposer must demonstrate (1) a real interest in the proceeding, and (2) a
reasonable belief in damage. See Australian Therapeutic Supplies Pty. Ltd. v. Naked
TM, LLC, 953 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir. 2020); Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014)
(citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)).
To prove a “real interest” in this proceeding, Opposer must show that it has a “direct
and personal stake” in its outcome and is more than a “mere intermeddler.” See
Ritchie v. Simpson, 50 USPQ2d at 1026; see also Jewelers Vigilance Committee, Inc.
v. Ullenberg Corp., 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988).11
In support of its motion for summary judgment and to demonstrate its entitlement
to oppose registration of Applicant’s involved mark, Opposer submitted status and
title copies of its pleaded Registration Nos. 2852432, 3550110, and 3734227.12
Because Opposer’s pleaded registrations are of record, we find that, for purposes of
the pending motions, there exist no genuine disputes of material fact that Opposer
has met the requirements for establishing a statutory cause of action to oppose

11 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the Trademark
Act, 15 U.S.C. §§ 1063–64, under the rubric of “standing.” Mindful of the Supreme Court’s direction in
Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 125-26 (2014), we now refer to
this inquiry as entitlement to a statutory cause of action. See Australian Therapeutic Supplies Pty.
Ltd., v. Naked TM, LLC, supra. Despite the change in nomenclature, our prior decisions and those of
the Federal Circuit interpreting Sections 13 and 14 remain equally applicable.
12 See Exh. H of the Declaration of Rebecca Henry (“Henry Decl.”) Opposer’s senior marketing director
of spirit brands. 60 TTABVUE 96-102.
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Applicant’s involved application. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
Further, Applicant is entitled to counterclaim to cancel Opposer’s pleaded
registrations by virtue of its position as defendant in this opposition proceeding. See,
e.g., Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478 (TTAB 2007)
(applicant subject to opposition entitled to counterclaim for cancellation); Carefirst of
Maryland, Inc. v. FirstHealth of the Carolinas Inc., 77 USPQ2d 1492 (TTAB 2005)
(“[a]pplicant, by virtue of its position as defendant in the opposition, has standing to
seek cancellation of the pleaded registrations”) (citing Ohio State University v. Ohio
University, 51 USPQ2d 1289, 1293 (TTAB 1999)).
V. Parties’ Cross-Motions for Summary Judgment
A. Opposer’s Summary Judgment Motion on Section 2(d) Claim
To prevail on summary judgment as to its asserted Section 2(d) claim, Opposer,
as the movant, must establish that there is no genuine dispute of material fact that
Opposer has priority and that contemporaneous use of the parties’ respective marks
on their respective goods would not be likely to cause confusion, mistake or to deceive
consumers. Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 USPQ2d 1733,
1735 (TTAB 2001).
In support of its motion, Opposer maintains that (1) it has prior use of its pleaded
FIREBALL marks; (2) its pleaded FIREBALL marks are famous; (3) the marks at
issue are highly similar; (4) the goods at issue are identical and travel in identical
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trade channels and are offered the same classes of purchasers; and (5) Applicant
adopted its mark in bad faith.13
In opposing the motion, Applicant argues, inter alia, that (1) the mark FIREBALL
is not famous; (2) the parties’ respective marks are dissimilar in appearance, sound,
connotation, and commercial impression, and (3) Applicant did not adopt its
BULLSHINE FIREBULL in bad faith since, among other things, its applied-for mark
adheres to the overall “Bull” theme of the company and the mark is named after a
Spanish festival called El Toro de Fuego, which translates to “fire bull.”14
Upon review of the parties’ arguments and evidence, and drawing all inferences
with respect to the motion in favor of Applicant as the non-moving party, we find that
Opposer has not demonstrated the absence of a genuine dispute of material fact for
trial and therefore is not entitled to judgment as to its pleaded Section 2(d) claim
under applicable law. Based on the present record, we find, at a minimum, a genuine
dispute of material fact exists as to the similarities of the marks at issue.
Accordingly, Opposer’s motion for summary judgment on its Section 2(d) claim is
denied.
B. Parties’ Cross-Motions for Summary Judgment on Applicant’s
Genericness Counterclaim

Here, Applicant, by way of its counterclaim, seeks to cancel Opposer’s pleaded
registrations for the standard and typeset marks FIREBALL on the ground that the
term is the generic name for Opposer’s identified goods. A generic term “is the

13 60 TTABVUE 10-17; see also Henry Decl. and accompanying exhibits.
14 63 TTABUVE 24-27.
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common descriptive name of a class of goods or services.” Princeton Vanguard, LLC
v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015)
(citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ
528, 530 (Fed. Cir. 1986)). There is a two-part test used to determine whether a
designation is generic: (1) what is the genus (class or category) of goods or services at
issue?; and (2) does the relevant public understand the designation primarily to refer
to that genus of goods or services? Princeton Vanguard, 114 USPQ2d at 1803 (citing
Marvin Ginn, 228 USPQ at 530); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive,
LLC, 110 USPQ2d 1458, 1462 (TTAB 2014). “The critical issue in genericness cases
is whether members of the relevant public primarily use or understand the term
sought to be protected to refer to the genus of goods or services in question.” Marvin
Ginn, 228 USPQ at 530.
Any term that the relevant public uses or understands to refer to the genus of
goods, or a key aspect or subcategory of the genus, is generic. Royal Crown Co., Inc.
v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046-47 (Fed. Cir. 2018). “[A]
term is generic if the relevant public understands the term to refer to part of the
claimed genus of goods or services, even if the public does not understand the term to
refer to the broad genus as a whole.” In re Cordua Rests., Inc., 823 F.3d 594, 118
USPQ2d 1632, 1638 (Fed. Cir. 2016) (holding CHURRASCOS, a word that is generic
for a type of grilled meat, to be generic for restaurant services because it referred to
a key aspect of those services); see also In re Nordic Naturals, Inc., 755 F.3d 1340,
111 USPQ2d 1495 (Fed. Cir. 2014) (CHILDREN’S DHA generic for DHA supplements
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for children); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961
(Fed. Cir. 1985) (BUNDT generic for ring cake mixes, i.e., the subcategory “bundt
cakes.”).
“Evidence of the public’s understanding of the term may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers and other publications.” Royal Crown, 127
USPQ2d at 1046 (quoting In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987)); see also Cordua, 118 USPQ2d at
1634; Princeton Vanguard, 114 USPQ2d at 1830; In re Reed Elsevier Props. Inc., 482
F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (finding third-party websites
competent sources for determining what the relevant public understands mark to
mean).
In support of its motion for summary judgment on Applicant’s genericness
counterclaim, Opposer submitted a consumer survey, the results of which indicate
that 48.9% of the survey respondents view the designation FIREBALL as a brand
name.15 Opposer also submitted (1) numerous articles featuring FIREBALL as a
trademark to identify Opposer’s goods,16 and (2) several dictionary definitions of the
terms “fireball” and “fire ball,” none of which define the term as a liqueur, whisky, or
any type of flavor.17 Opposer also argues that there are no third parties selling whisky
or liqueur under the name FIREBALL. Additionally, Opposer asserts that the Alcohol

15 Declaration of Kristen McCallion (“McCallion Decl.”), one of Opposer’s counsel, Exh. E; 60
TTABVUE 641-659.
16 Henry Decl., Exhs. Q1-Q2; 60 TTABVUE 150-255.
17 Id. at Exh. G; 60 TTABVUE 82-95.
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and Tobacco Tax and Trade Bureau (TTB), which defines categories of alcohol for U.S.
regulatory purposes, does not mention “fireball” as a category of any type of liquor or
recognized cocktail.18
In opposition to Opposer’s motion and in support of its cross-motion, Applicant
argues that the designation “fireball” is generic as applied to Opposer’s goods since it
identifies a “key aspect” of such goods, namely, the cinnamon flavor of Opposer’s
whisky and liqueurs. In support of its argument, Applicant notes that, in a prior
application for the mark DR. McGILLICUDY’S FIREBALL for “whisky-based
liqueurs,” Opposer disclaimed the term “fireball.”19 Additionally, Applicant asserts
that Opposer, in prior federal civil litigation, argued that no one was entitled to
exclusive use of “fireball” specifically because the term was generic.20 Applicant also
maintains that Opposer has publicly confirmed that its alcoholic beverages are called
“Fireball” because it is flavored to taste like candy. Specifically, upon the death of
Nello Ferrara, who purportedly invented the Atomic Fireball candy, Opposer paid its
tribute to him as follows:
It’s with a heavy heart that we say goodbye to Nello Ferrara who passed
away on Friday. Mr. Ferrara invented the Atomic Fireball candies which
our whisky is based on. Take a shot in his name today. Cheers, Mr.
Ferrara! (emphasis added).

In addition, Applicant contends that Opposer has publicly professed that its
product “tastes like the candy” and it is “just like the candy you were given as a kid”

18 Id. at Exh. 1; 60 TTABVUE 103-118.
19 63 TTABVUE 16.
20 Id.
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and conceded the fact in deposition.21 Therefore, Applicant concludes that Opposer
uses “Fireball” because its product is part of the genus of goods that taste like Fireball
candy.
Applicant also asserts that the relevant consuming public understands that the
designation “fireball” refers to the subcategory of goods flavored like fireball candy.
As an example, Applicant refers to one consumer who noted: “The first thought as I
took a sip was the round jaw breaker candy … The amazing ‘Atomic Fireball”’ … so
clearly, I will never forget the name of Fireball Whiskey.” Another proclaimed: “[T]he
taste … is identical, to the atomic fireball candy you had as a kid.” And others simply
stated: “Tastes like an atomic fireball.” Thus, Applicant argues that the relevant
public understands “Fireball” to refer to a type of alcohol flavored to taste like the
candy for which it is named.22
Additionally, Applicant submitted the expert opinion of Ms. Beth Kimmerle, who
conducted a flavor analysis that found: (1) Fireball Whiskey and Atomic Fireball
Candy share the same heat intensity and use cinnamaldehyde flavor; (2) Fireball
Whiskey and Atomic Fireball Candy flavors create deep burn sensations from
capsaicin, the compound in spicy peppers; (3) Fireball Whisky causes similar heat
sensation and mouthfeel as Atomic Fireball candy; (4) Fireball Whisky and the
Fireball Shot have a candy-like cinnamon spicy flavor; and (5) “Fireball” is used to
describe a candy-like spicy cinnamon flavor similar to Atomic Fireball candy.23

21 Id. at 17.
22 Id.
23 63 TTABVUE 36-54.
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With regard to Opposer’s consumer survey, Applicant argues that a “Teflon”
survey, such as the one presented by Opposer, is irrelevant to the genericness inquiry
before the Board.24 Specifically, Applicant argues that a Teflon survey is only
appropriate in a case where the question is whether a coined or arbitrary mark has
become generic, i.e., genericide, and is not appropriate to prove recognition of an
otherwise not inherently distinctive mark. Applicant further contends that this case
does not involve genericide since the designation “fireball” is not a coined term but
one initially used with the Atomic Fireball candy in the 1950s, then the name of a
fireball drink; and also, the flavor of foods and beverages.25
Even if Opposer’s Teflon survey had relevance, Applicant argues the survey was
designed to limit the “relevant public” to individuals between the ages of 21 and 65,
who within the last 6 months or within the next 6 months, bought or consumed a
“shot” of liquor.26 Applicant points out that the goods at issue are not limited by the
manner of consumption, the frequency of consumption, or the age of the adults who
buy and consume alcoholic beverages.27 Because of the survey’s design, Applicant
maintains that the survey polled only a very small percentage of the relevant
consuming public making the results valueless.28
Upon careful consideration of the parties’ arguments and evidence, and drawing
all justifiable inferences in favor of each nonmoving party, we find that neither

24 63 TTABVUE 21.
25 Id.
26 Id.
27 Id.
28 Id.
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Opposer nor Applicant has established the absence of a genuine dispute of material
fact as to Applicant’s genericness counterclaim. We find, at a minimum, genuine
disputes of material fact remain as to whether the relevant consuming public
perceives the designation FIREBALL as a source-indicator for Opposer’s identified
goods or as identifying the genus or a key aspect of those goods. In view thereof, the
parties’ cross-motions for summary judgment on Applicant’s genericness
counterclaim are denied.
C. Opposer’s Motion for Summary Judgment on Applicant’s Fraud
Claim

Fraud in procuring a trademark registration occurs when an applicant for
registration knowingly makes a false, material representation of fact in connection
with an application to register with the intent of obtaining or maintaining a
registration to which it is otherwise not entitled. In re Bose Corp., 580 F.3d 1240; 91
USPQ2d 1938, 1939 (Fed. Cir. 2009). Here, Applicant seeks to cancel Opposer’s
pleaded registrations on the ground that Opposer pursued trademark protection for
the generic term FIREBALL, wrongly claiming that it owned exclusive rights to the
term. Applicant argues that Opposer falsely claimed no other person had the right to
use the term Fireball knowing all were so entitled to use that generic term.
Because we have found that there exists a genuine dispute of material fact as to
whether the designation FIREBALL identifies the genus or a key aspect of Opposer’s
identified goods and since Applicant’s fraud counterclaim is predicated on the theory
that Opposer knew, at the time of the filing of the underlying applications of its
pleaded registrations and when filing the maintenance documents for the pleaded
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registrations, that others in the trade had the right to use the designation “fireball”
because it is generic, we similarly find, by logical extension, that genuine disputes of
material fact exist as to whether Opposer made a false, material representation of
fact in its filings with the USPTO. 29 Of course, there is also a genuine dispute as to
whether (assuming that FIREBALL is ultimately found to be generic) Opposer did so
knowingly and with an intent to deceive the Office, particularly since the evidence
shows that Opposer argued that the term “fireball” is generic in a prior federal civil
action and disclaimed the wording in a prior application.
Accordingly, Opposer’s motion for summary judgment on Applicant’s fraud
counterclaim is denied.
D. Opposer’s Motion for Summary Judgment on Applicant’s
Abandonment Counterclaim

Trademark Act Section 45, 15 U.S.C. § 1127, states in relevant part as follows: “A
mark shall be deemed to be ‘abandoned’ ... [w]hen its use has been discontinued with
intent not to resume such use. Intent not to resume may be inferred from
circumstances.” Therefore, as the party moving for summary judgment on the
abandonment claim asserted against it, Opposer must establish that there is no
genuine dispute that (1) there was no nonuse or discontinuation of use of its pleaded
FIREBALL mark for “liqueurs” or (2) there was no intent not to resume use of that
mark.

29 Applicant’s fraud counterclaim is particularly unsuited for disposition on summary judgment on
factual questions of intent to deceive. See Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20
USPQ2d 1295, 1298-99 (Fed. Cir. 1991); Asian & W. Classics B.V. v. Selkow, 92 USPQ2d 1478 (TTAB
2009).
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Opposer contends that FIREBALL is the name of a distilled spirit that is labeled
and marketed in the U.S. as a cinnamon whisky; it may be classified as a liqueur,
flavored whisky, or “distilled spirits specialty” in the TTB based on its recipe and
sugar content and the TTB’s liquor classification system; Opposer chose to classify
the FIREBALL product as a “distilled spirits specialty” for the U.S. market where the
product is marketed as a “cinnamon whisky” under TTB regulations; outside of the
U.S., the FIREBALL spirit is deemed a liqueur and must be labeled as such, which
Opposer does in its U.S. distilleries; the sales of such liqueur-labeled bottles are
handled from Opposer’s U.S. offices; and the liqueur-labeled bottles of FIREBALL are
distributed in U.S. interstate commerce from U.S. distilleries to several U.S. port
cities from where it is exported for retail sale overseas.30 Opposer submitted a sample
of the FIREBALL liqueur label used on bottles sold overseas, as well as a photograph
of the liqueur-labeled bottles, which are displayed below:31

30 Opposer also contends that Applicant admitted in its responses to Opposer’s requests for admission
that Opposer sells liqueurs under its pleaded FIREBALL mark. However, Applicant only admitted
that it does not know of a company that sells a whisky or a liqueur labeled as “fireball,” and did not
specifically admit that Opposer offers liqueurs under the FIREBALL brand.
31 Henry Decl. at ¶34 and Exh. K; 60 TTABVUE 36 and 121.
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Opposition No. 91227653

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Opposer also submitted unrebutted testimony that demonstrates that Opposer
has sold its liqueur-labeled FIREBALL alcoholic beverage to its overseas markets
continuously from 2011 to 2019 with impressive sales during such time.32 In view of
the foregoing, Opposer argues that it has not abandoned its FIREBALL mark for
“liqueurs.”
In response, Applicant contends that Opposer has abandoned the mark subject to
its pleaded Registration No. 2852432 (typeset FIREBALL mark for “liqueurs”)
because Opposer obtained rights in the mark through an invalid assignment.
Applicant, however, did not plead an invalid assignment as a basis for its
abandonment counterclaim. Instead, Applicant merely pleaded that Opposer has
“never used, offered, manufacture, sold or provided liqueurs under its Fireball brands
of cinnamon flavored whiskey.”33 Accordingly, we have given no consideration to
Applicant’s argument based on an unpleaded invalid assignment.
In determining whether Opposer has met its initial burden of establishing the
absence of a genuine dispute of material fact that it has not abandoned its FIREBALL
mark for “liqueurs,” the starting point for our analysis is the text of the Trademark
Act. The Trademark Act specifies that a trademark shall be deemed to be in use in
commerce when the goods bearing the mark “are sold or transported in commerce."
15 U.S.C. § 1127. This language comprehends all commerce that may lawfully be
regulated by Congress: either interstate commerce or commerce between the United
States and a foreign country. Larry Harmon Pictures Corp. v. Williams Rest. Corp.,

32 Id. at ¶ 75; 59 TTABVUE 53 (confidential version).
33 See Applicant’s amended answer and counterclaim, ¶ 20; 24 TTABVUE 10.
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929 F.2d 662, 18 USPQ2d 1292, 1293-94 (Fed. Cir. 1991); Person’s Co. v. Christman,
900 F.2d 1565, 14 USPQ2d 1477, (Fed. Cir. 1990) (“The term ‘used in commerce’ in
the Lanham Act refers to a sale or transportation of goods bearing the mark in or
having an effect on: (1) United States interstate commerce; (2) United States
commerce with foreign nations; or (3) United States commerce with the Indian
Tribes.”) (emphasis added); 7-11 Sales, Inc. v. Perma, S.A., 225 USPQ 170, 171 (TTAB
1984) (petitioner failed to show that respondent's marks were not used in commerce
between the United States and a foreign country, and therefore failed to show
nonuse); In re Silenus Wines, Inc., 557 F.2d 806, 194 USPQ 261, 263 (CCPA 1977) (a
shipment in foreign trade or interstate commerce will satisfy the “use” requirement
as long as the applicant is the one who caused the shipment to be made, and was not
simply a passive recipient.).
Based on the present record, we find that there exist no genuine disputes of
material fact that (1) Opposer labeled its FIREBALL alcoholic beverage as a liqueur
in the United States to be sold overseas; (2) Opposer transported these liqueur-
labeled bottles in U.S. commerce to U.S. ports to be exported overseas; and (3)
Opposer has sold its liqueur-labeled FIREBALL goods to foreign distributors and
retailers continuously from 2011 to 2019. There is no evidence of record
demonstrating that Opposer has ceased labeling its FIREBALL alcoholic beverage as
a “liqueur” or that Opposer has discontinued use of its FIREBALL mark on liqueur-
labeled bottles of its alcoholic beverage sold overseas. The foregoing establishes, as a
matter of law, that Opposer has continuously used its FIREBALL mark in connection
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with “liqueurs” in commerce, as defined by the Trademark Act, since 2011 and has
not abandoned the mark.
In view of the foregoing, we find that Opposer has demonstrated the absence of a
genuine dispute of material fact that it has not abandoned its FIREBALL mark for
“liqueurs.” Accordingly, Opposer’s motion for summary judgment as to Applicant’s
abandonment counterclaim is granted and, therefore, Applicant’s counterclaim of
abandonment is dismissed with prejudice.
Summary
In sum, Opposer’s motion for summary judgment on its asserted Section 2(d) claim
and on Applicant’s genericness and fraud counterclaims is denied; Applicant’s cross-
motion for summary judgment on its genericness counterclaim is denied; and
Opposer’s motion for summary judgment on Applicant’s abandonment counterclaim
is granted in its favor.34
As a final matter, the Board hereby exercises its authority to manage the cases on
its docket by precluding the parties from filing any additional motions for summary
judgment or partial summary judgment in this proceeding, particularly since this
case is on the verge of trial.

34 The fact that we have identified certain genuine disputes of material fact as a sufficient basis to
deny the parties’ motions for summary judgment on Opposer’s Section 2(d) claim and on Applicant’s
counterclaims of genericness and fraud should not be construed as a finding that these are necessarily
the only disputes that remain for trial. Also, evidence submitted with a summary judgment motion
and in opposition thereto is of record only for consideration of the motion. To be considered at final,
such evidence must be properly introduced during the appropriate trial period. See Levi Strauss & Co.
v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).
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VI. Accelerated Case Resolution
The remaining legal issues presented in this proceeding appear to be appropriate
for resolution by means of the Board’s accelerated case resolution (“ACR”) procedure,
and the Board suggests that the parties stipulate to continuing this opposition
proceeding and accompanying counterclaims by that process. This may take the form
of the summary judgment briefing, and the evidence submitted therewith, with or
without supplementation. See, e.g., Freeman v. Nat'l Ass'n of Realtors, 64 USPQ2d
1700 (TTAB 2002) (parties agreed that evidence and arguments submitted with
Opposer's motion for summary judgment and Applicant's response could be treated
as the final record and briefs); see also TBMP § 528.05(a)(2) and authorities cited
therein. In the event the parties agree to ACR using summary judgment briefs and
incorporating the current evidence, including any supplementation of evidence they
may agree would be appropriate, they will need to stipulate that the Board may
determine any genuine disputes of material fact the Board may find to exist. See
TBMP § 702.04 for more information.
The parties are encouraged, within fifteen days of the mailing date of this order,
to jointly contact the Board’s Interlocutory Attorney responsible for this proceeding
by telephone to discuss the possibility of ACR, any necessary or desired stipulations,
and an agreed schedule for proceeding under ACR.
If the parties decide not to proceed via ACR, the proceeding will continue on the
schedule set below.

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VII. Trial Schedule
Proceedings are resumed. Discovery is closed. Trial dates, beginning with the
deadline for Opposer’s pretrial disclosures as plaintiff in the opposition proceeding,
are reset as follows:
Pretrial Disclosures Due for Party in Position of Plaintiff in Original
Claim
10/30/2020
30-day Trial Period Ends for Party in Position of Plaintiff in Original
Claim
12/14/2020
Pretrial Disclosures Due for Party in Position of Defendant in
Original Claim and in Position of Plaintiff in Counterclaim
12/29/2020
30-day Trial Period Ends for Party in Position of Defendant in
Original Claim, and in Position of Plaintiff in Counterclaim
2/12/2021
Pretrial Disclosures Due for Rebuttal of Party in Position of Plaintiff
in Original Claim and in Position of Defendant in Counterclaim
2/27/2021
30-day Trial Period Ends for Rebuttal of Party in Position of Plaintiff
in Original Claim, and in Position of Defendant in Counterclaim
4/13/2021
Pretrial Disclosures Due for Rebuttal of Party in Position of Plaintiff
in Counterclaim
4/28/2021
15-day Trial Period Ends for Rebuttal of Party in Position of Plaintiff
in Counterclaim
5/28/2021
Opening Brief for Party in Position of Plaintiff in Original Claim Due 7/27/2021
Combined Brief for Party in Position of Defendant in Original Claim
and Opening Brief as Plaintiff in Counterclaim Due
8/26/2021
Combined Rebuttal Brief for Party in Position of Plaintiff in Original
Claim and Brief as Defendant in Counterclaim Due
9/25/2021
Rebuttal Brief for Party in Position of Plaintiff in Counterclaim Due 10/10/2021
Request for Oral Hearing (optional) Due 10/20/2021

Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, matters in
evidence, the manner and timing of taking testimony, and the procedures for
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submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
final hearing will be scheduled only upon the timely submission of a separate notice
as allowed by Trademark Rule 2.129(a).