Facts, as Portrayed by McIlhennys, Accounted for Fifth Circuit Victory

Thursday, September 16, 2004

Page 15

REMINISCING (Column)

Facts, as Portrayed by McIlhennys, Accounted for Fifth Circuit Victory

By ROGER M. GRACE

Chili peppers, said to be from Tabasco, Mexico, were being sold in the port cities of New Orleans and Baton Rouge, Louisiana, from the early days of the 19th Century.

Maunsel White, a Louisiana plantation owner and politician, began marketing a “tobasco” sauce from these peppers, with salt and vinegar added, by 1849.

Thus, when Edmund McIlhenny of Louisiana began selling his own “Tabasco Pepper Sauce” in 1869, “Tabasco Pepper Sauce” was merely a generic description of his product.

He admitted as much in his 1870 application for a patent on the process by which he supposedly made the sauce. I say “supposedly” because—well, let me save that for a later column.

Here’s what McIlhenny said in the application:

“This invention relates to a new process of preparing an aromatic and strong sauce from the pepper known in the market as Tabasco pepper. This pepper is as strong as Cayenne pepper, but of finer flavor.”

To state the obvious, “sauce” is a generic term, insusceptible of appropriation by any one company as a trademark. Ditto as to “pepper sauce,” the word “pepper” also being used in a generic sense. Surely “Cayenne Pepper Sauce” or “Jalapeño Pepper Sauce” would not qualify as trademarks; “cayenne” and “jalapeño” are generic names of peppers.

In a libel action brought by Lowell R. Gaidry, a maker of a “Tabasco” sauce, against the McIlhenny Company based on its dissemination of circulars proclaiming all such rivals to be infringers, a federal trial judge made this finding:

“That the word ‘Tabasco,’ as applied to pepper sauce, is generic, and indicates quality, ingredients, and place of origin of the pepper from which it is made.”

As I noted last week, the Fifth U.S. Circuit Court of Appeals in 1918 reversed. But…how could it, given that “Tabasco Pepper Sauce” was simply a sauce made from tabasco peppers?

The appeals court recited:

“Several years prior to 1868 a man who at the time had recently come from Mexico gave to Edmund McIlhenny some peppers having a peculiar and agreeable flavor and aroma, all or a part of which were planted by Mr. McIlhenny on his place on Avery Island, near New Iberia, La., and thereafter he continued to grow them there; he being the first person to grow those peppers in the United States. In 1868 he began the manufacture and sale of a table sauce made from that pepper, marketing it in a distinctive bottle bearing a distinctive label, conspicuous words on which were ‘Tabasco * * * Pepper Sauce’; the word ‘Tabasco’ being separated from the other two words by stars. The business so started was continuously conducted by its founder until his death in 1890, and thereafter by a firm composed of his widow and children, until the defendant corporation, controlled by the same family, was formed and succeeded to the business, which it still carries on. There was no name by which the kind of pepper mentioned was known when Mr. McIlhenny began to grow it, or when he started the manufacture and sale of the sauce made from it. Afterwards it came to be known as ‘Tabasco pepper,’ though it was and is also called ‘bird pepper.’ In the application made by Mr. McIlhenny in 1870 for the patent issued to him in that year it was referred to as ‘the pepper known in the market as Tabasco pepper.’ In 1887 it was listed as Tabasco pepper in the catalogue of a New Orleans seed dealer. In 1888 it was described by a botanist of Geneva, N.Y., as a new variety, and he named it ‘Tabasco pepper.’ This was the first time it was recognized botanically and under that name.”

The appeals court held that the trial judge erred in failing to adopt this proposed finding proffered by McIlhenny:

“That the word ‘Tabasco,’ as applied to pepper sauce, indicates origin of manufacture; that is to say, that the sauce to which the term is applied is the sauce made by E. McIlhenny of New Iberia, La., and his successors in title.”

Even if it is believed that someone who had just come from Mexico gave peppers to McIlhenny, and it is accepted that the peppers contained seeds that grew into peppers different from those commonly found on the market, it remains that the word “Tabasco” was in common usage to describe red chili peppers.

The application of the name by a botanist to McIlhenny’s peppers doesn’t change that. What’s relevant is the perception of the public, not botanists.

But, the McIlhennys obviously had able lawyers who made a record sufficient to put the facts in such light as to persuade the Fifth Circuit.

The McIlhenny Company established ownership of the word “Tabasco” as applied to a pepper sauce, and it embarked on what proved to be a winning streak. I’ll look at some of its subsequent wins next week.