“Generic terms are common names that the relevant purchasing public understands primarily as describing the genus of goods or services being sold. They are by definition incapable of indicating a particular source of the goods or services,” and may not be registered. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2011) (citations omitted). See also USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729, at *2 (2020) (“A generic name—the name of a class of products or services—is ineligible for federal trademark registration.”); Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1045-46 (Fed. Cir. 2018) (noting that a generic term is the “ultimate in descriptiveness”).

“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.” H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); see also Royal Crown, 127 USPQ2d at 1046. “The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.” 15 U.S.C. § 1064(3). See also In re Am. Fertility Soc'y., 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991). 

Determining whether a term is generic is a two-step inquiry. First, what is the genus (category or class) of goods at issue? Second, is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods? See H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986). 

The issue of the appropriate time period for assessing whether a trademark was generic such that it could not be registered in the first instance was an issue of first impression for the Federal Circuit in Sazerac Brands, LLC v. Bullshine Distillery LLC, Nos. 2023-1682 and 2023-1900, __ F.4th __ (Fed. Cir. March 12, 2025). 

The Court noted that Section 2(e) of the Lanham Act prevents registration of a generic term which "necessarily looks to what consumers would think at the time of registration. 

     The statutory scheme of the Lanham Act supports this interpretation. The Act not only prevents registration of generic terms, but also provides for cancellation of marks “[a]t any time,” if they become generic. 15 U.S.C. § 1064(3). Even a mark that has attained incontestable status can still be challenged on the basis of genericness. 15 U.S.C. § 1065(4). This demonstrates Congress' understanding that whether a term is generic is an inquiry that changes over time, and therefore Bullshine's argument that once generic always generic, no matter how far removed from the time-period of genericness, is inconsistent with the statue. 

The Court further noted that the Lanham Act was “incompatible with an unyielding legal rule that entirely disregards consumer perception,” citing Booking.com, 591 U.S. at 560. 

The public is not protected by looking to what consumers thought of a term ten, fifty, or one-hundred years ago. 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.

The Court also noted that its caselaw was consistent with this approach, citing Application of G. D. Searle & Co., 360 F.2d 650, 656 (C.C.P.A. 1966) (affirming the denial of registration for the term “the pill,” by finding “substantial evidence that the term is the common descriptive name of an oral contraceptive pill at the time the issue of registrability was under consideration”); Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 966 (Fed. Cir. 2015) (“the Board must first identify the genus of goods or services at issue, and then assess whether the public understands the mark, as a whole, to refer to that genus” (emphasis omitted)); see also Weiss Noodle Co. v. Golden Cracknell & Specialty Co., 290 F.2d 845, 848 (C.C.P.A. 1961) (holding that “haluska,” the Hungarian word for noodles, described the good it was used for at the time of registration, just in another language). 

Also citing Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 640–41 (Fed. Cir. 1991) (“this court has stated that whether a term is entitled to trademark status turns on how the mark is understood by the purchasing public” (emphasis added)), the Court noted that the “purchasing public” is necessarily contemporaneous with the time of registration.

The Court then affirmed the TTAB's finding against genericness because the recipes relied upon by Bullshine to show that “fireball” was a generic term for a drink using whiskey and liqueur to replicate the taste of ATOMIC FIREBALL candy, a “spicy and sweet cinnamon candy product” sold beginning in 1954, were from specialized publications and therefore did not evidence what the relevant consumer base, consumers of whisky and liqueurs, associated with the term—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—and that 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. 

The TTAB's finding that FIREBALL was commercially strong, even if not famous; but was conceptually weak because it was highly suggestive of the taste and flavor of a “sweet/spicy cinnamon”-flavored whisky/liqueur also was affirmed by the Court. In addition, the Court also suggested that it was not error for the TTAB to have considered dissimilar goods such as popcorn and beef jerky in discussing evidence that "fireball" has been used to denote such a flavor. 

The Court affirmed that FIREBALL was not generic at the time of registration, and that there is no likelihood of confusion between FIREBALL and BULLSHINE FIREBULL.