Sandshaker Lounge and Package Store, LLCv.Quietwater Entertainment, Inc.

Trademark Trial and Appeal Board

Jan 31, 2013

No. 92051664 (T.T.A.B. Jan. 31, 2013)

Mailed: January 31, 2013 Hearing: October 25, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Sandshaker Lounge and Package Store, LLC
v.
Quietwater Entertainment, Inc.
_____

Cancellation No. 92051664
_____

Robert O. Beasley of Litvak Beasley & Wilson LLP, for
Sandshaker Lounge and Package Store, LLC.

J Nevin Shaffer Jr., Esq., for Quietwater Entertainment,
Inc.
_____

Before Quinn, Mermelstein, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Sandshaker Lounge and Package Store, LLC (“petitioner”)
has petitioned to cancel Registration No. 2925268 for the
mark BUSHWACKER, owned by Quietwater Entertainment, Inc.
(“respondent”).1 The registration issued on February 8,
2005 on the Principal Register, and a Section 8 affidavit
has been accepted. The services are identified therein as

1 Application Serial No. 78359219, which matured into the
registration at issue, was filed on January 29, 2004, claiming
first use and first use in commerce of January 1, 1988.
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Cancellation No. 92051664
2
“entertainment services in the nature of a festival
featuring live musical groups,” in International Class 41.
In its petition for cancellation, petitioner asserts
that since prior to respondent’s first use of its mark,
petitioner has been associated with the mark BUSHWACKER in
connection with a drink served by petitioner, (petition at
paras. 8, 9) as well as with the mark HOME OF THE ORIGINAL
BUSHWACKER for services including “musical entertainment
events and festivals.” Id. at para. 18. Petitioner alleges
that by virtue of its prior use of the mark BUSHWACKER, it
has built up valuable goodwill therein which would be
jeopardized by the continued registration of respondent’s
mark. Id. at para. 13. Petitioner further alleged that its
BUSHWACKER mark has “acquired distinctiveness,” citing
Section 2(f) of the Lanham Act. Id. at para. 12.
Petitioner thus alleges a likelihood of confusion with
its marks. Id. at para. 15, 27. Petitioner further alleged
that respondent’s registration is “likely to cause dilution
by blurring.” Id. at para. 14. However, this claim was not
pursued on brief and we consider it to be waived. On the
other hand, petitioner included in its trial brief as
grounds for likelihood of confusion another mark that was
not pleaded, BUSHWACKER BEACH WEEKEND, also based on common
law rights for “musical entertainment events and festivals.”
Since we find that there was no objection by respondent, but
Cancellation No. 92051664
3
rather, the parties treated the issue as having been tried,
we deem the pleadings to be amended under Fed. R. Civ. P.
15(b) to include that mark.2
Respondent’s answer denied the salient allegations of
the petition. Although respondent did not set forth
separate affirmative defenses, we construe the wording of
respondent’s answer to assert the affirmative defense of
acquiescence.3 Such language includes the following
statements in the answer:
1. Any rights petitioner may have had with regard to BUSHWACKER for a drink
“have long since been abandoned” (answer at para. 14)
2. Petitioner acquiesced “with at least one prior owner of the Sandshaker Lounge
participating in the music festival without objection.” Id. at para. 10.
3. Petitioner’s specimen for “Home of the Original Bushwacker” doesn’t even show
use as mark. Id. at para. 18.
4. Petitioner’s alleged use of BUSHWACKER and HOME OF THE ORIGINAL
BUSHWACKER for a drink “never existed with regard to entertainment services
in the nature of a festival featuring live musical groups due to Petitioner’s failure
to use the term for such a festival and abandonment of any such alleged rights due
to acquiescence to Registrant’s open, notorious and continuous use of the term
BUSHWACKER for festivals since at least 1988” Id. at. para 26.
5. Further alleging acquiescence: “Petitioner has never complained, in fact a
predecessor in interest actually participated in Registrant’s festival, and has never
offered those services under that term and any rights Petitioner may have had
have been abandoned due to such acquiescence and Registrant’s detrimental
reliance upon its acquiescence.” (Para. 27).

Both parties filed trial briefs, and petitioner filed a
reply brief. At the request of petitioner, a hearing was

2 While, as discussed at the hearing, this case is unusual, we
are confined to the grounds pleaded, and must rule accordingly.
3 Although acquiescence was not pleaded specifically as an
affirmative defense, it was sufficient to put petitioner on
Cancellation No. 92051664
4
held, and presided over by this panel, on October 25, 2012.
Only petitioner appeared at the hearing.
We have considered all of the evidence and arguments of
record in this case, whether or not they are discussed
herein, in undertaking our analysis, and in reaching our
conclusion, in this decision.
The Record
The record in this case includes the pleadings and the
file of the involved registration. In addition, during its
assigned testimony period, petitioner submitted the
following:
1. Testimony deposition of June Guerra, major
stockholder and president of respondent, Quietwater
Entertainment, Inc., dated November 8, 2010.
2. Testimony deposition of Kimberly Bell Campbell,
current owner and manager of petitioner, Sandshaker
Lounge and Package Store, LLC, dated December 2,
2010.
3. Testimony deposition of Thomas D. Carmichael,
manager of entities owned by respondent, Quietwater
Entertainment, Inc., relevant to the proceeding,
dated November 8, 2010.

notice, and was in any event tried by the parties. Accordingly,
we have considered it as such.
Cancellation No. 92051664
5
4. Affidavit of Linda Murphy, former owner of
petitioner, Sandshaker Lounge and Package Store,
LLC, dated March 2, 2011.
5. Notice of reliance including: Best Western Hotel
Directory; Billboard & Splash Ads; I-10 Billboard
Comfort Inn Guest Directory; DeLuna Fest Ads;
Songwriters Ads; and Valpack Ads.4
Respondent did not submit any testimony or evidence.
Petitioner’s Standing and Priority of Use
Among its other pleaded marks, petitioner has pleaded
and argued rights to the mark HOME OF THE ORIGINAL
BUSHWACKER for services including “musical entertainment
events and festivals.” (petition at para. 5). Petitioner’s
witness testified that petitioner filed an application for
this mark for these and other services. (Campbell depo at
5). In the past, the Board has found standing based on a
party’s testimony that it possesses a live application to
register a mark, without assertion of having been refused
registration, with what the Board described as a “reasonable
basis for a belief that he is damaged by the registration
sought to be cancelled by the fact that both parties’ marks

4 To the extent some of this material may not have been properly
submitted via notice of reliance or affidavit, respondent did not
object, but rather treated it as though it were of record,
referring to all of the same “evidence” in its brief as
comprising “the record.” (respondent’s brief at 5). We
accordingly treat this material as having been submitted by
stipulation.
Cancellation No. 92051664
6
are identical, and their services are at least arguably
related.” Toufigh v, Persona Parfum Inc., 95 USPQ2d 1872,
1874 (TTAB 2010). That is the case here. Thus, we find
petitioner has established standing to bring this
cancellation proceeding. See Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982) (requiring “a reasonable belief of damage”); 15 U.S.C.
§1064.
Having established standing, petitioner must also prove
priority for its likelihood of confusion claim brought under
Trademark Act §2(d). In the absence of a registration, a
party alleging priority must prove that, vis-à-vis the other
party, it owns “a mark or trade name previously used in the
United States … and not abandoned….” Trademark Act Section
2, 15 U.S.C. §1052. A party may establish its own prior
proprietary rights in a mark through actual or constructive
use of the mark or through use analogous to trademark use,
such as use in advertising brochures, trade publications,
catalogues, newspaper advertisements and Internet websites
which create a public awareness of the designation as a
trademark identifying the party as a source. Giersch v.
Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009);
Trademark Act §§2(d) and 45, 15 U.S.C. §§1052(d) and 1127.
See also T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1372, 37
Cancellation No. 92051664
7
USPQ2d 1879 (Fed. Cir. 1996), vacating Pactel Teletrac v.
T.A.B. Systems, 32 USPQ2d 1668 (TTAB 1994).
It is well settled that in the absence of any evidence
of earlier use, the earliest date upon which respondent may
rely is the filing date of its underlying application, which
(contingent upon registration) constitutes constructive use
of the mark. See Trademark Act Section 7(c), 15 U.S.C.
§1057(c). In this case, and as noted above, the application
that matured into the registration at issue herein was
accorded a filing date of January 29, 2004. Respondent’s
witnesses also introduced testimonial and documentary
evidence regarding an earlier first date of use, showing
continuous use of the mark in connection with “entertainment
services in the nature of a festival featuring live musical
groups,” since 1988. (Guerra depo. at 39).
We note, for purposes of this discussion, that both
respondent and petitioner operate or control bars on
Pensacola Beach, Florida. (see Guerra depo. at 4 and 14;
Campbell depo. at 11). Both sell a drink called the
“Bushwacker,” which appears to be generic for a type of
drink sold locally and available at multiple locations
throughout Pensacola Beach, as testified by each of the
deposed witnesses.
Q: Are you aware you can buy Bushwacker drinks all
over Pensacola Beach?
A: Yes.

Cancellation No. 92051664
8
Campbell depo. at 15.

Q: So if I were to open a bar, to your knowledge,
on Pensacola Beach, could I sell a drink
called a Bushwacker?
A: Yes.
Q: You would have no problem with that?
A: I believe it’s a little late to have a problem
with that.

Id. at 47.

A: Everybody sold a drink Bushwacker on the beach.
Q: Which includes Sandshaker?
A: Sandshaker, Flounder’s, Boy on a Dolphin.

Guerra depo. at 31.

A: Everybody served a Bushwacker.

Carmichael depo. at 15.

Thus, although the Bushwacker drink first appeared at
petitioner’s bar, it is now sold by multiple unrelated
establishments, and “Bushwacker” is understood to be the
name of a particular drink rather than as an identification
of source. Because of the renown of the local “Bushwacker”
drink, respondent decided to incorporate the name into the
festival that it created in consultation with other
establishments on the Pensacola Beach in 1988 to promote the
local businesses on the beach.

Q: And describe for me what went on in 1988.
A: We hired an advertising agency, Cooper Yates,
to promote a festival for us on the boardwalk.
We had a big contest of who made the best
Bushwacker on the beach and all bars and
people that served the Bushwacker competed in
Cancellation No. 92051664
9
that contest. And we had music, and that was
the starting of the Bushwacker Festivals.

Guerra depo. at 32.
From the beginning, it was contemplated that the
festival would be held the first week of August. Id. at 38.
This was arranged between respondent and other local
business leaders who decided that since August was a slow
month on the beach, they should “try to promote bringing
people to the beach,” and so “we said we would take the
first weekend in August.” (Guerra depo. at 59).
With the testimony and evidence provided, we find that
respondent has, indeed used the mark continuously in
connection with a music festival since 1988.

Q: Is there a difference in the events, are they
two different events, between Bushwacker Music
Festival and Bushwacker Beach Weekend?
A: It’s the same event.

Guerra depo. at 44.

Q: Would it be fair to say that the three
indications, names, Bushwacker Music Festival,
Bushwacker Beach Weekend, and Bushwacker Fest,
all three of them kind of indicate an event at
the beach related to the Bushwacker?
A: To the Bushwacker Music Festival, yes.

Id. at 49-50.

Accordingly, we find that petitioner has not, and
cannot establish priority via a showing regarding its own
festival since it is one and the same as the festival held
by respondent at the same time in essentially the same
Cancellation No. 92051664
10
location. Additionally, we find that petitioner does not
purport to have started its festival earlier than
respondent, but admits that respondent started a festival
which has been held “the first week of August” since 1988,
and petitioner simply claims to have been tagging on its own
musical activities at the same time in its own nearby bar.
(Campbell depo. at 65, Ex. 1) (“It’s for the same weekend as
Bushwacker Festival runs. I mean, it’s for the same
weekend.”). Not showing an earlier use date than
respondent, petititioner has failed to establish priority.
We also find that petitioner has acquiesced to the use
of the “BUSHWACKER” term by respondent in using it
concurrently over a period of decades without complaint
until the filing of this action in 2009.
Q: Have you ever filed any complaint against
anybody or made a complaint – not filed. Have
you ever made a complaint or voiced a
complaint about anybody for a Bushwacker
Festival?

A: As far as a complaint against someone else
having a festival?

Q: Yes, ma’am.

Mr. Beasley: Other than the present lawsuit.

Mr. Shaffer: Yes. Other than this cancellation
proceeding, which was for the record filed, I
believe, 28, October, 2009.

The witness: I would never have had a problem with
anything across the street if June had not
called me and said that we couldn’t have
Bushwacker Weekend.

Cancellation No. 92051664
11
Campbell depo at 49.
There is no question that petitioner was well aware of
respondent’s use of the BUSHWACKER mark at all times
relevant to this case. Both parties’ establishments are
located in close proximity on Pensacola beach and for many
years they have both participated in or sponsored activities
using the BUSHWACKER mark during the first week of August.
We conclude that petitioner’s continuing activities — without
any protest regarding respondent’s notorious use of the
mark — reasonably led respondent to conclude that petitioner
had no objection to respondent’s use of the mark. Christian
Broad. Network Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1573
(TTAB 2007).
We find that petitioner has not established prior
rights in the pleaded marks and therefore cannot prove
likelihood of confusion. We also find that petitioner has
acquiesced to respondent’s use of the BUSHWACKER mark for
the registered services.
Decision: The petitioner for cancellation is denied.