Sandshaker Lounge & Package St v. Quietwater Entertainment Inc.

Filing

Opinion issued by court as to Appellant Sandshaker Lounge & Package Store LLC. Decision: Affirmed in part, Reversed in part, and Remanded. Opinion type: Non-Published. Opinion method: Per Curiam.

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[DO NOT PUBLISH]

IN THE UNITED STATES COURT OF APPEALS
FOR THE ELEVENTH CIRCUIT
________________________
No. 14-14481
Non-Argument Calendar
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D.C. Docket No. 3:13-cv-00114-MCR-CJK

SANDSHAKER LOUNGE & PACKAGE
STORE LLC,
A Florida Limited Liability Company,
Plaintiff-Appellant,
versus
QUIETWATER ENTERTAINMENT INC.,
a Florida Corporation,
Defendant-Appellee.
________________________
Appeal from the United States District Court
for the Northern District of Florida
________________________
(March 19, 2015)
Before ED CARNES, Chief Judge, HULL and ROSENBAUM, Circuit Judges.
PER CURIAM:

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Sandshaker Lounge & Package Store appeals the district court’s grant of
summary judgment in favor of Quietwater Entertainment. The district court
affirmed the Trademark Trial and Appeal Board’s denial of Sandshaker’s petition
to cancel Quietwater’s BUSHWACKER trademark.
I.
For decades until 2004 Linda Taylor owned the Sandshaker, a bar on
Pensacola Beach. Sometime during the 1970s Taylor traveled to the U.S. Virgin
Islands, where she was served a creamy, chocolaty alcoholic drink called a
bushwacker. 1 When she returned to Florida, Taylor experimented and created her
own drink, which has the consistency of a milkshake and contains rum, Kahlua,
cream of coconut, crème de cacao, and milk. She began selling that concoction
under the name “bushwacker” at the Sandshaker in 1977. The drink became
hugely popular in the region and soon other nearby beach bars began serving their
own versions. Taylor did not object to the other bars selling her drink because she
felt the drink’s popularity would be a rising tide lifting all local boats.
Across Pensacola Beach Boulevard from the Sandshaker is the Pensacola
Beach boardwalk. Quietwater, owned by June Guerra, helped construct the
1

Although the word presumably derives from “bushwhacker,” it is spelled “bushwacker”
for all purposes related to the drink. Because this opinion deals with three closely related and
identically named concepts (the drink, the word, and the mark), we will use the following
convention: bushwacker with no quotes for the drink, “bushwacker” in quotes for the word, and
BUSHWACKER in all caps for the mark.

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boardwalk in the 1980s and has owned or operated several establishments there,
including Capt’n Fun’s bar, the Jubilee restaurant, and Bushwacker’s Backside. In
1988 a group of local business owners, including Taylor and Guerra, met to
brainstorm ideas to address the slowdown in beach trade that happened each
August. Guerra offered to hold a festival celebrating the bushwacker drink during
the first weekend in August, featuring a “best bushwacker” contest and some
bands. Taylor again believed that any event that drew people to the area would
benefit all of the local businesses, and she did not object to the use of the
“bushwacker” name.
Both Sandshaker and Quietwater scheduled live music events on the first
weekend in August 1988 to celebrate the bushwacker. Quietwater’s event was
unquestionably larger and more elaborate, but the testimony and documentary
evidence suggest that each party advertised its own bushwacker celebration that
year and most years since. Quietwater called its event variously the “Bushwacker
Fest,” “Bushwacker Festival,” “Famous Bushwacker Festival,” and “Famous
Bushwacker and Music Festival.” Sandshaker called its event “Bushwacker
Weekend” or “Bushwacker Beach Weekend.” Both companies held their events
the same weekend each year. Quietwater’s event took place on the boardwalk and
at its bar and restaurants, and Sandshaker’s event took place across the street at the

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Sandshaker. Quietwater’s festival reached its zenith in 1996 when Three Dog
Night played.
In September 2004 Hurricane Ivan struck Pensacola as a Category 3 storm.
Local businesses including Quietwater properties Jubilee and Bushwacker’s
Backside were hit hard, and both establishments closed their doors soon after.
Worried its remaining facilities might not be repaired in time for the 2005
Bushwacker Festival and that mainland businesses might try to appropriate the
event, Quietwater filed an application to register the BUSHWACKER mark in the
category of “Entertainment services in the nature of a festival featuring live
musical groups.” Quietwater did not disclose to the Patent and Trademark Office
(PTO) that Sandshaker had simultaneously used the mark throughout the preceding
seventeen years. The PTO granted the application and published Quietwater’s
registration on February 8, 2005.
In May 2005 Sonny Campbell bought the Sandshaker. He set about
preparing for the 2005 “Bushwacker Beach Weekend,” but in July Guerra called
him and told him Sandshaker could not hold its event because Quietwater owned
the BUSHWACKER trademark.
In October 2009 Sandshaker filed a petition for cancellation of Quietwater’s
BUSHWACKER mark as applied to the music festival. The Trademark Trial and
Appeal Board (TTAB) denied the petition after determining that Sandshaker had

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no protectable interest in the BUSHWACKER mark as applied to the drink and
that it was not a prior user of the mark as applied to the music festival. Sandshaker
filed a civil action in the United States District Court for the Northern District of
Florida seeking to overturn that decision.2 Sandshaker sought cancellation of
Quietwater’s trademark under 15 U.S.C. §§ 1052, 1064, and 1125; damages and an
injunction under § 1125; and a declaration of Sandshaker’s common-law right to
exclusive use of the BUSHWACKER mark in Sandshaker’s zone of reputation.
Each of these arguments was premised on the theory that Sandshaker owned
protectable rights in the BUSHWACKER mark as applied to the drink. On cross
motions for summary judgment, the district court ruled in favor of Quietwater.
This is Sandshaker’s appeal.
II.
We review de novo a district court’s grant of summary judgment.
McCullum v. Orlando Reg’l Healthcare Sys., Inc., 768 F.3d 1135, 1141 (11th Cir.
2014).
Sandshaker’s arguments all stem from its contention that it owns protectable
rights in the BUSHWACKER mark as applied to the drink and that those rights

2

Under 15 U.S.C. § 1071, a party dissatisfied with the TTAB’s decision may either
appeal directly to the United States Court of Appeals for the Federal Circuit or file a civil action
in a United States District Court.

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trump any rights Quietwater has in the mark. 3 But Sandshaker does not have any
such rights. Generic marks may not be registered. Welding Servs., Inc. v. Forman,
509 F.3d 1351, 1358 (11th Cir. 2007). That prohibition against federal registration
reflects the principle that generic marks are in the public domain and may not be
appropriated from it. See id. (“Courts have generally held that a term used
generically cannot be appropriated from the public domain; therefore, even if the
name becomes in some degree associated with the source, a generic mark cannot
achieve true secondary meaning.”). The TTAB found that BUSHWACKER
“appears to be generic for a type of drink sold locally and at multiple locations
throughout Pensacola Beach.”
A court reviewing the TTAB’s findings may not reverse those findings
absent “testimony which in character and amount carries thorough conviction.”
Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1557 (11th
Cir. 1991). Far from thoroughly convincing us that the TTAB is wrong, the
testimony introduced in the district court thoroughly convinces us that the TTAB is
correct that “bushwacker” is a generic term for a chocolaty frozen drink containing
rum and coffee liqueur. Both parties agree that bars throughout the area and
beyond make bushwackers. Perhaps most tellingly, Sandshaker concedes that any
3

We emphasize that our discussion here applies only to the BUSHWACKER mark. We
express no opinion about the HOME OF THE ORIGINAL BUSHWACKER mark that
Sandshaker seeks to register.

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new bar opening on Pensacola beach could sell a drink using the name
“bushwacker” and that it was “a little too late [for Sandshaker] to have a problem
with that.” The drink served at the Sandshaker is merely a species of the genus
“bushwacker,” and thus BUSHWACKER is a generic mark for the drink. See Park
’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 187, 194, 105 S. Ct. 658, 661
(1985) (“A generic term is one that refers to the genus of which the particular
product is a species.”). Because it is generic as applied to the drink, it may not be
registered as a trademark for that usage. See id. Nor may Sandshaker appropriate
it from the public domain. See Forman, 509 F.3d at 1358. Sandshaker has no
protectable right to BUSHWACKER as applied to the drink.
We turn now to Quietwater’s contention that it has a protectable interest in
the BUSHWACKER mark as applied to musical performances. When a mark has
been on the Principal Register for less than five years at the time of the
cancellation petition, “any ground that would have prevented registration in the
first place qualifies as a valid ground for cancellation.” Cunningham v. Laser Golf
Corp., 222 F.3d 943, 946 (Fed. Cir. 2000); see also 15 U.S.C. § 1064(1); Coach
House, 934 F.2d at 1557 (requiring “valid grounds for discontinuing registration”).
Federal registration protects only trademark rights already acquired through
adoption and use. See Turner v. HMH Publ’g Co., 380 F.2d 224, 228 (5th Cir.
1967) (“Under the Lanham Act, registration of a trademark confers only

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procedural advantages and does not enlarge the registrant’s rights, for ownership of
the trademark rests on adoption and use, not on registration.”) (citation omitted). 4
And trademark rights are appropriated under Florida law “only through actual prior
use in commerce.” Crystal Entm’t & Filmworks, Inc. v. Jurado, 643 F.3d 1313,
1320 (11th Cir. 2011) (quotation marks omitted). Regardless of who came up with
the idea of having a festival to celebrate the bushwacker drink, the district court
found — and Quietwater concedes — that both parties began using the mark in
commerce simultaneously in August 1988 to identify a festival event featuring live
music. As between Sandshaker and Quietwater, there was no prior user. Thus
Quietwater did not make “actual prior use in commerce” of the mark. See id.
Further, whatever rights Quietwater might have had, its slumber on them
rivaled Rip van Winkle’s. 5 Both parties used the mark in connection with live
music events for nearly two decades, until Quietwater finally objected to
Sandshaker’s use in 2005.6 When the district court rejected Sandshaker’s
4

In Bonner v. City of Prichard, 661 F.2d 1206, 1209 (11th Cir. 1981) (en banc), we
adopted as binding precedent all decisions of the former Fifth Circuit handed down before
October 1, 1981.
5

See Washington Irving, Rip Van Winkle and Other American Essays From the Sketch
Book 27 (Houghton, Mifflin & Co. 1891) (“Rip’s story was soon told, for the whole twenty
years had been to him but as one night.”).
6

To the extent the district court’s contrary conclusion on this point relies on a finding
that Sandshaker was merely advertising its own participation in Quietwater’s event, that finding
is clearly erroneous. See Robinson v. Tyson Foods, Inc., 595 F.3d 1269, 1273 (11th Cir. 2010)
(“[W]e review . . . the district court’s findings of fact for clear error.”); United States v.

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trademark claim over the BUSHWACKER mark for the drink, it reasoned that
Sandshaker’s “knowing acquiescence to use of the name by other unrelated
establishments” supported a finding that “Sandshaker did not have trade identity
rights sufficient to create priority.” True, but that reasoning applies with equal
force to Quietwater’s claim to its own mark. If Sandshaker’s failure to enforce its
rights killed its trademark, Quietwater’s identical failure had the same lethal effect
on its trademark. The evidence shows that throughout the entire relevant time
period Sandshaker openly held and advertised its annual “Bushwacker Beach
Weekend” featuring live musical performances. And it did so in plain view, across
the street from Quietwater’s properties.
It is a “bedrock principle of trademark law that a mark can identify and
distinguish only a single commercial source.” Jurado, 643 F.3d at 1320. Because
both companies were using the mark, it never “identif[ied] and distinguish[ed] only
a single commercial source” of musical celebrations of the bushwacker drink. See

Rodriguez-Lopez, 363 F.3d 1134, 1137 (11th Cir. 2004) (“For a factual finding to be clearly
erroneous, this court, after reviewing all of the evidence, must be left with a definite and firm
conviction that a mistake has been committed.”) (quotation marks omitted). The record contains
clear and ample evidence in the form of testimony and Sandshaker’s advertisements for
Sandshaker’s events on Sandshaker’s property that it always considered its musical event a
celebration related to but separate from Quietwater’s festival. A finding that Sandshaker’s ads
for its own events were actually advertising Quietwater’s festival is akin to a finding that
Quietwater’s ads for $1.75 bushwackers sold at its restaurants were really advertising
Sandshaker’s drinks.

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id. Quietwater thus never acquired any protectable right to the BUSHWACKER
mark, and its registration is due to be canceled.
We AFFIRM the district court’s judgment to the extent that it found that
Sandshaker did not have protectable rights in the BUSHWACKER mark as applied
to the drink. We REVERSE the remainder of the judgment and REMAND for
further consideration in light of this opinion.

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