           Case: 14-14481   Date Filed: 03/19/2015   Page: 1 of 10


                                                          [DO NOT PUBLISH]



             IN THE UNITED STATES COURT OF APPEALS

                     FOR THE ELEVENTH CIRCUIT
                       ________________________

                             No. 14-14481
                         Non-Argument Calendar
                       ________________________

                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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