U.S. Appeals Court Confers Victory on McIlhennys

Thursday, September 9, 2004

Page 15

REMINISCING (Column)

U.S. Appeals Court Confers Victory on McIlhennys

By ROGER M. GRACE

Persistence paid off for the McIlhennys of Louisiana.

On July 29, 1918, the Fifth U.S. Circuit Court of Appeals recognized that the McIlhenny Company possessed the exclusive right to market a pepper sauce with the designation “Tabasco.” The court acted in the case of Gaidry v. McIlhenny Co., 253 F. 613.

This was an incredible victory in light of the McIlhennys’ previous thrashings in the courts when they made claimed to ownership of the word “Tabasco.”

As recounted here previously, they got a patent on the name in 1906 under the Trade Mark Act of 1905. The U.S. Patent Office stripped them of the registration in 1909. The following year, the U.S. Circuit Court of Appeals for the District of Columbia upheld that action.

“Tabasco” did not qualify under the technical requirements for a trademark, the court found—and by then, the McIlhennys had given up on the bogus claim on their application that they qualified for protection, under the act, based on 10 years of exclusive use of the name.

In 1912, the Louisiana Supreme Court held that a competing Tabasco Sauce manufacturer was entitled to $5,000 in damages for libel based on the McIlhennys’ public pronouncements that any company other than theirs using the word “Tabasco” was an infringer.

So, when Lowell R. Gaidry, manufacturer of a “Tabasco Pepper Sauce,” went into federal court in Louisiana seeking damages against the McIlhenny Company for continuing to proclaim in circulars that every Tabasco maker but itself was an infringer, he expected to win. And he did, in the trial court, being awarded $1,000.

Reversing, the Fifth Circuit rejected the view of the D.C. Circuit and the Louisiana high court that the word “Tabasco” was not subject to appropriation by any particular manufacturer because it was a geographical term. Tabasco is a state in Mexico.

Modernly, it’s recognized that a geographical name will qualify as a trademark as a “mere description” if it has taken on a “secondary meaning”—that is, if the name, as applied to a product, is commonly thought of in connection with that product, without regard to location. A bucket of “Kentucky Fried Chicken” sold in Los Angeles is, of course, not supposed by consumers to have been fried in Kentucky.

By contrast, at common law, there was a blanket rule that a geographical designation could not become a trademark. After all, how could one cheesemaker in the Village of Ogg be granted exclusive right to market Ogg cheese, with rival cheesemakers in the same locale being denied that right?

In the early 1900s, the notion had just started percolating of a geographical name warranting protection when it was not being used in a generic sense to indicate the locale in which it was produced. The author of the Fifth Circuit opinion in the Tabasco case, with little precedent to invoke, gropingly expressed what is now a familiar concept.

The Fifth Circuit also spurned the view of the D.C. Circuit and the Louisiana high tribunal that there was relevance to the expiration of the McIlhennys’ 1870 patent. Those courts relied on an 1896 U.S. Supreme Court ruling that once the patent on the Singer sewing machine expired, others could not only use the patent, but also the name (Singer) used to describe the product made by the previously patented process.

That was different, the Fifth Circuit said. When company founder Edmund McIlhenny’s patent lapsed in 1887, anyone was free to use the process covered by that patent, the court observed—but no one did. The process covered by that patent had been abandoned by McIlhenny a short time after the patent was acquired, it said. Thus, the court declared:

“The expiration of the patent did not have the effect of conferring on the public, or the plaintiff as a part of it, any right with reference to the name of a thing which was not a subject of the patent.”

But how could “ownership” of the word “Tabasco,” as applied to a “pepper sauce,” be conferred in 1918 on a single manufacturer of such a sauce when, as we’ve seen, the word “Tabasco” or “Tobasco” had long been used to describe peppers sold in the New Orleans region? Indeed, the pepper sauce marketed by Col. Maunsel White prior to the Civil War was a “Tobasco” sauce.

Trademark law was undergoing changes in the early part of the 20th Century, and has developed since then. But one precept unaltered since common law days is that “generic” (or “common”) descriptions can never qualify for protection.

To see how the Fifth Circuit handled that issue, you could peek at the case—or wait for next week’s installment.