Early Court Decisions Deny Exclusive Use of 'Tabasco'

Thursday, August 26, 2004

Page 15

REMINISCING (Column)

Early Court Decisions Deny Exclusive Use of ‘Tabasco’

By ROGER M. GRACE

If you happen to want to go into the hot sauce business, nobody can stop you from making a sauce from Tabasco peppers—and, of course, you’re at liberty to say that your product is made from such peppers. But unless you’re the McIlhenny Company of Avery Island, Louisiana, you can’t call the product “Tabasco Sauce.”

If you are the McIlhenny Company, you can make a sauce from peppers that are not Tabasco peppers, and still call it Tabasco Sauce. That’s what the company is now doing, with its introduction of new varieties of hot sauce from other peppers.

The exclusive right of the McIlhenny Company to use of the word “Tabasco” as a brand name was won long ago through dogged litigation efforts spanning several years.

There’s no question but that peppers were marketed in Louisiana as “tabascos” decades before Edmund McIlhenny (1815-1890) began cultivating his peppers in 1868 for use in the commercial production of a sauce. As noted in past columns, Col. Maunsel White (1783-1863), also of Louisiana, had marketed a “Tobasco” sauce before McIlhenny entered the market. And the word “Tabasco” had long been associated with products from the Tabasco region of Mexico.

It was surely no small legal task for the McIlhenny family to establish that the word had acquired a secondary meaning—that is, that “Tabasco,” as applied to a table sauce derived from peppers, was commonly understood to refer to its product, and no other.

The McIlhennys lost an early court battle. The widow of Edmund McIlhenny sued to block a Texas company from marketing a condiment bearing “Tabasco” on its labels. As recited by the Louisiana Supreme Court in a 1912 decision:

“In the case of Mrs. Mary E. McIlhenny et al. v. Feith & Boehme, in United States Circuit Court, Southern District of Texas, in the year 1898, a consent decree was entered up in favor of the defendants, rejecting the demand of the plaintiffs for an injunction prohibiting and restraining the use of the name ‘Tabasco’ on pepper sauce labels; but perpetuating the injunction against the use of imitations of the bottles, caps, labels, and cartons used by the complainants.”

A competitor was thus barred from passing off its product as the familiar condiment from neighboring Louisiana—but the McIlhennys failed to establish that its product was the Tabasco Sauce.

The federal Trademark Act went into effect in 1905. Under it, any moniker a company had applied to a product for 10 years—with its use of the name being exclusive—could be registered as a trademark even if that name did not otherwise qualify for protection. That year, John Avery McIlhenny, oldest son of Edmund and Mary McIlhenny, put in an application on behalf of the company he now headed, which had come to be known as E. McIlhenny’s Son. He declared that his company, and it alone, had been using the designation “Tabasco” in connection with a pepper sauce during the previous 10-year period. That was, plainly, a lie. Despite determined efforts of the company to deter others from using that word in describing their sauces, the word “Tabasco” was appearing on the bottle labels of several competitors.

One of them was the New Iberia Extract of Tabasco Pepper Company, Ltd., owned by one C. P. Moss. His company filed an application in the Patent Office in 1908 to strip E. McIlhenny’s Son of the trademark gained in April, 1906. The commissioner of patents obliged by canceling the registration of the trademark in 1909. The following year, the Court of Appeals for the District of Columbia affirmed.

The court relied not only upon the fact that McIlhenny’s company did not come under the provision of the Trademark Act relating to exclusive use for a 10-year period, but that “Tabasco” was a geographical designation, insusceptible of appropriation as a trademark. It said:

“Tabasco is a state in the Republic of Mexico, and was when appellant adopted the name as a trademark. Indeed, the record shows that the word was adopted by the predecessor of appellant, because the seed of the pepper from which the sauce was made originally came from that State.”

The court also found the trademark invalid because the 1870 patent for a process used in manufacturing the sauce had expired, so that the description of the sauce produced by that process now belonged to the public.

At this point, the McIlhenny family’s prospects of acquiring the exclusive right to producing “Tabasco Sauce” appeared dim, if not extinguished.

Things got worse before they got better for E. McIlhenny’s Son in its court battles, as you’ll see in next week’s installment.