[DO NOT PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT

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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

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(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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