Sazerac Brands, LLC v. Wadada Spirits, LLC

This Opinion is Not a Precedent of the TTAB Mailed: February 4, 2026

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board _____

Sazerac Brands, LLC

v.

Wadada Spirits, LLC

_____

Opposition No. 91283727

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J. Michael Keyes, Charlene M. Krogh, Lindsey Sadler, Connor Hansen and Breanne Werners of Dorsey & Whitney LLP, for Sazerac Brands, LLC. Teresa Mason of Rangel Mason, PC,

for Wadada Spirits, LLC.

_____

Before Heasley, Cohen, and Bradley,

Administrative Trademark Judges.

Opinion by Bradley, Administrative Trademark Judge:

Wadada Spirits, LLC ("Applicant") seeks to register the standard-character mark FIREBURN 1878 ("1878" disclaimed)¹and the composite mark depicted below on the Principal Register for "alcoholic beverages, except beer; liquor" in International Class

33:

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(with "1878" disclaimed)²(collectively referred to as the "FIREBURN 1878 Marks"). Sazerac Brands, LLC ("Opposer") filed a notice of opposition to registration of Applicant's marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting priority and a likelihood of confusion³with Opposer's previously used and registered marks including the standard character mark FIREBALL for liqueurs,⁴ whisky,⁵and alcoholic beverages, except beer⁶, in International Class 33, as well as other FIREBALL, FIREBALL formative, and FIREBALL & Design marks.⁷

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As discussed further below, Opposer also contends another ground for opposition was tried by implied consent, namely that Applicant lacked the requisite bona fide intent to use the FIREBURN 1878 Marks in connection with the goods identified in the opposed applications as of the application filing dates, in violation of Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b).

In its Answer, Applicant admitted that Opposer is the "purported owner" of the pleaded registrations,⁸but otherwise denied the salient allegations of Opposer's Notice of Opposition. Applicant did not assert any affirmative defenses. Only Opposer filed a brief.⁹Applicant did not file a brief, take testimony, or introduce any other evidence during its testimony period, but it is not required to do so. See Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., No. 92056548, 2018 TTAB LEXIS 168, at *12 n.13 (TTAB 2018) ("Because Respondent, as defendant herein, is under no obligation to submit evidence or a brief, we do not construe Respondent's failure to do so as a concession of the case."); see also Trademark Rule 2.128(a)(1), 37 C.F.R. § 2.128(a)(1).

For the reasons discussed below, we sustain the opposition on the lack of bona fide intent to use claim, and therefore do not reach the likelihood of confusion claim. See Tequila Cuadra S. de RL de CV v. Manufacturera de Botas Cuadra, S.A. de C.V., No.

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91282327, 2025 TTAB LEXIS 207, at *2 (TTAB 2025) ("Because we resolve this proceeding on Opposer's lack of bona fide intent claim, we need not and do not reach Opposer's likelihood of confusion claim.").

I. Trial Record

The record consists of the pleadings, and, by operation of Trademark Rule 2.122(b), the files of Applicant's involved applications. In addition, Opposer submitted testimony, notices of reliance, and exhibits as listed in its brief.¹⁰As noted previously, Applicant did not file any evidence. We have carefully considered the entire record, and relevant evidence is discussed throughout this opinion. See Quiktrip W., Inc. v. Weigel Stores, Inc., 984 F.3d 1031, 1036 (Fed. Cir. 2021) (Board not obliged to expressly discuss every piece of evidence); In re Miracle Tuesday LLC, 695 F.3d 1339, 1348 (Fed. Cir. 2012) ("[T]he mere fact that the Board did not recite all of the evidence it considered does not mean the evidence was not, in fact, reviewed.").

II. Entitlement to a Statutory Cause of Action

Entitlement to a statutory cause of action is an element of the plaintiff's case in every inter partes proceeding. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1304-05 (Fed. Cir. 2020); Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 1373-74 (Fed. Cir. 2020) (citing Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 128 (2014)). Opposer, as the plaintiff in the action, must show its entitlement to a statutory cause of action by demonstrating (i) an interest falling within the zone of interests protected by the statute, and (ii) a

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reasonable belief in damage proximately caused by the registration of the mark. Corcamore, 978 F.3d at 1305-06; Mars Generation, Inc. v. Carson, No. 91224726, 2021 TTAB LEXIS 386, at *8 (TTAB 2021).

Here, Opposer established its entitlement to oppose Applicant's mark by making of record its pleaded registrations,¹¹which form the basis for a plausible Section 2(d) likelihood of confusion claim. See Conopco, Inc. v. Transom Symphony OpCo, LLC, No. 91256368, 2022 TTAB LEXIS 194, at *11 (TTAB 2022). "[O]nce an opposer meets the requirements for [statutory entitlement], it can rely on any of the statutory grounds for opposition set forth in . . . [the Trademark Act]." Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1377 (Fed. Cir. 2012). Accordingly, Opposer has also established its entitlement for its claim of Applicant's lack of bona fide intent to use the FIREBURN 1878 Marks.

III. Whether a Claim of Lack of Bona Fide Intent to Use Was Tried by Implied Consent

Opposer admits that its Notice of Opposition does not include a claim that Applicant lacked a bona fide intent to use the FIREBURN 1878 Marks in commerce.¹² Applicant has not filed a brief or any evidence, and has therefore not expressly consented to trial of this claim. Accordingly, we consider whether Opposer's claim of Applicant's lack of bona fide intent to use was tried by implied consent under Fed. R. Civ. P. 15(b), made applicable to Board proceedings by Trademark Rule 2.116(a). See Hole in 1 Drinks, Inc. v. Lajtay, No. 92065860, 2020 TTAB LEXIS 9, at *20 (TTAB

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2020) ("when issues not raised by the pleadings are tried by the . . . implied consent of the parties, they shall be treated in all respects as if they had been raised in the pleadings").

The Board may find implied consent to the trial of an unpleaded issue "only where the non-offering party (1) raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised that the evidence was being offered in support of the issue." Heil Co. v. Tripleye GmbH, No. 91277359, 2024 TTAB LEXIS 494, at *18 (TTAB 2024) (citing TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 507.03(b) (June 2025). We consider the circumstances presented here to determine if Opposer meets this standard.

Toward the beginning of the discovery period,¹³Opposer served multiple discovery requests regarding Applicant's intent to use its applied-for marks,¹⁴including:

• "Documents sufficient to show Applicant's intent to use the FIREBURN [1878] Marks in U.S. interstate commerce in connection with the goods identified in the Applications.";¹⁵

• "Documents Concerning the target consumer to whom You market, offer, or sell or intend to market, offer, or sell the goods identified in the Applications under the FIREBURN [1878] Marks.";¹⁶

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• "Documents Concerning the locations where Applicant manufactures or intends to manufacture the goods in the Applications under the FIREBURN [1878] Marks."¹⁷

• "Documents sufficient to show the steps You have taken to manufacture and sell the goods identified in the Applications under the FIREBURN [1878] Marks."¹⁸

• "Any business plans prepared by Applicant or anyone acting on Applicant's behalf Concerning the FIREBURN [1878] Marks or any products You sell or intend to sell under the FIREBURN [1878] Marks.";¹⁹

• "State the intended dates of first use of the FIREBURN [1878] Marks in U.S. interstate commerce in connection with the goods identified in the Applications.";²⁰

• "Identify the Person(s) with the most knowledge of Applicant's use of and/or intent to use the FIREBURN [1878] Marks in connection with the goods identified in the Applications."²¹

• "Describe in detail the channels of trade through which You have sold or intend to sell the goods identified in the Applications under the FIREBURN [1878] Marks"²²; and

• "Describe in detail all methods You use or intend to use to advertise, market, or promote Applicant's goods identified in the Applications under the FIREBURN [1878] Marks."²³

Applicant's operative Second Supplemental Responses to Opposer's First Set of Interrogatories and Requests for Production do not contain any objections to the discovery requests.²⁴

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During its trial period, Opposer filed a Notice of Reliance on Discovery Materials. Notably, in the Notice of Reliance, Opposer explicitly states in thirteen instances that Applicant's discovery responses are relevant to Applicant's lack of bona fide intent to use the FIREBURN 1878 Marks in commerce.²⁵Applicant did not object to Opposer's Notice of Reliance.

In the Statement of Issues in its trial brief, Opposer lists the second issue in the proceeding as:

Did Applicant lack the requisite bona fide intent to use the FIREBURN [1878] Marks in U.S. commerce in connection

with the goods identified in the Applications at the time it filed the Applications in violation of Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b)?²⁶

Applicant did not file a trial brief or otherwise raise an objection to Opposer identifying Applicant's lack of bona fide intent as an issue in this proceeding. Considering the above circumstances, we find that Applicant was fairly apprised that its bona fide intent to use was at issue in this proceeding and that its discovery responses were being offered to demonstrate its lack of bona fide intent. Specifically, Opposer's discovery requests were directed to Applicant's intent to use, and the Opposer's notice of reliance and trial brief both contained explicit references to a claim of Applicant's lack of bona fide intent to use the FIREBURN 1878 Marks in commerce. We also find that Applicant raised no objection to the introduction of this evidence by failing to assert any objections in its responses to Opposer's discovery

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requests, and by failing to file a brief or any other objection to Opposer's notice of reliance or trial brief.²⁷See Shenzhen IVPS Tech. Co. v. Fancy Pants Prods., LLC, No. 91263919, 2022 TTAB LEXIS 383, at *17-19 (TTAB 2022) (finding opposer's prior use based on common law tried by implied consent where the "[a]pplicant did not raise any objection to this testimony as it did not file a brief on the case and it did not seek to cross-examine [o]pposer's witness"). Accordingly, Opposer's claim of Applicant's lack of bona fide intent to use was tried by implied consent and "the pleadings are deemed amended under Fed. R. Civ. P. 15(b)" to include this claim. Hole in 1 Drinks, 2020 TTAB LEXIS 9, at *27.

IV. Lack of Bona Fide Intent to Use

Applicant filed its applications under Trademark Act Section 1(b) which requires that Applicant have "a bona fide intention, under circumstances showing [its] good faith . . . to use a trademark in commerce." 15 U.S.C. § 1051(b). "Because a bona fide intent to use the mark in commerce is a statutory requirement of a valid intent-to- use trademark application under Section 1(b), the lack of such intent is a basis on which an opposer may challenge an applicant's mark." M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1375 (Fed. Cir. 2015).

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In determining whether Applicant had a bona fide intent to use its FIREBURN 1878 Marks at the time of filing its applications, we examine objective evidence of Applicant's intent considering the totality of circumstances to ascertain whether

"[A]pplicant's intent to use the mark was firm and not merely intent to reserve a right in the mark[s]." Tiger Lily Ventures Ltd. v. Barclays Capital Inc., 35 F.4th 1352, 1365 (Fed. Cir. 2022). "Opposer has the initial burden of demonstrating by a preponderance of the evidence that [A]pplicant lacked a bona fide intent to use [its] mark[s] on the identified goods on the filing date of its application[s]." Tequila Cuadra, 2025 TTAB LEXIS 207, at *12-13 (TTAB 2025) (citation omitted). If Opposer meets this burden then "the burden shifts to [A]pplicant to rebut that prima facie case by producing evidence which would establish that it had the requisite bona fide intent to use the mark[s] when it filed its application[s]." Id. at *13. Opposer may demonstrate that Applicant lacks the requisite bona fide intent to use by showing Applicant lacks documentary evidence regarding its intent. Boston Red Sox Baseball Club Ltd. P'ship v. Sherman, No. 91172268, 2008 TTAB LEXIS 67, at *16 (TTAB 2008) ("absence of any documentary evidence on the part of an applicant regarding such intent constitutes objective proof sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce"). In its responses to Opposer's document requests, Applicant stated that it was "not aware of any responsive documents" regarding:

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• Strategy for the promotion, distribution, and sale of the goods identified in the Applications under the FIREBURN 1878 Marks;²⁸

• Steps it has taken to manufacture and sell the goods identified in the Applications under the FIREBURN 1878 Marks;²⁹

• Licenses or regulatory approvals that it has sought or obtained to manufacture and sell alcoholic beverages or liquor bearing the FIREBURN 1878 Marks in the United States;³⁰

• Agreements with any third party to manufacture, distribute, sell, or promote the goods identified in the Applications under the FIREBURN 1878 Marks;³¹

• The locations where Applicant manufactures or intends to manufacture the goods in the Applications under the FIREBURN 1878 Marks;³²

• The geographic areas of distribution or intended distribution for the goods identified in the Applications under the FIREBURN 1878 Marks;³³

• The retailers who sell or will offer for sale the goods identified in the Applications under the FIREBURN 1878 Marks;³⁴

• The retail price at which it intends to sell the goods identified in the Applications under the FIREBURN 1878 Marks;³⁵

• The target consumer to whom it intends to market, offer, or sell the goods identified in the Applications under the FIREBURN 1878 Marks;³⁶

• Market research concerning the sale of the goods identified in the Applications under the FIREBURN 1878 Marks;³⁷or

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• Every medium it intends to use to promote the goods identified in the Applications under the FIREBURN 1878 Marks.³⁸

Additionally, when Opposer requested "[d]ocuments sufficient to show Applicant's intent to use the FIREBURN [1878] Marks in U.S. interstate commerce in connection with the goods identified in the Applications,"³⁹Applicant responded by directing Opposer to "see the file history for Applicant's FIREBURN [1878] [M]arks, Application Nos. 97149968 and 97153510 [i.e., the applications that are the subject of this opposition]."⁴⁰However, the mere act of filing intent-to-use applications is insufficient to establish Applicant's bona fide intention to use its FIREBURN 1878 Marks in commerce for the identified goods. Societe Des Produits Nestle S.A. v. Taboada, No. 91232597, 2020 TTAB LEXIS 267, at *39 (TTAB 2020). In its answers to Opposer's interrogatories, Applicant responded that it "has no information responsive to this interrogatory" regarding:

• The intended dates of first use of the FIREBURN 1878 Marks in U.S. interstate commerce in connection with the goods identified in the Applications;⁴¹

• Its strategy for selling the goods identified in the Applications under the FIREBURN 1878 Marks in the United States;⁴²

• The steps it has taken to sell alcoholic beverages or liquor under the FIREBURN 1878 Marks in the United States;⁴³

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• The steps it has taken to comply with any regulatory requirements for selling alcoholic beverages or liquor under the FIREBURN 1878 Marks in the United States;⁴⁴

• The channels of trade through which it intends to sell the goods identified in the Applications under the FIREBURN 1878 Marks;⁴⁵

• The retail price or anticipated retail price for each variation of alcoholic beverage and liquor sold or intended to be sold under the FIREBURN 1878 Marks;⁴⁶

• The methods it intends to use to advertise, market, or promote Applicant's goods identified in the Applications under the FIREBURN 1878 Marks;⁴⁷ or

• The target consumer to whom it intends to market, offer, or sell the goods identified in the Applications under the FIREBURN 1878 Marks.⁴⁸ Considered together, the lack of any information or documents regarding Applicant's intended use beyond its applications, including its failure to take any steps to obtain the regulatory approvals needed to sell the alcoholic beverages covered by its applications,⁴⁹meets Opposer's burden to establish a prima facie case of

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Applicant's lack of bona fide intent to use. See Tequila Cuadra, 2025 TTAB LEXIS 207, at *16 (in finding opposer met its burden of establishing a prima facie case, stating "[o]f particular significance are [a]pplicant's responses to [o]pposer's interrogatories, wherein . . . [a]pplicant acknowledged that it has had no communications with the necessary regulatory authority in the United States concerning the production and sale of any . . . alcoholic beverage" and the applicant also did not produce any "applications for regulatory approvals"). The burden thus shifts to Applicant to rebut Opposer's prima facie case. However, Applicant did not file any evidence or a trial brief, and there is no evidence of record that demonstrates its bona fide intent to use the FIREBURN 1878 Marks. Accordingly, Applicant has failed to rebut Opposer's prima facie case.

Decision: The opposition is sustained based on Opposer's claim that Applicant did not have a bona fide intention to use the marks in commerce when it filed the opposed applications.

any distilled spirits in containers unless such containers are marked, branded, labeled, and packaged in conformity with the regulations in this part.").