McIlhenny Wins Another Bout Over Use of Word 'Tabasco'

Thursday, September 23, 2004

Page 15

REMINISCING (Column)

McIlhenny Wins Another Bout Over Use of Word ‘Tabasco’

By ROGER M. GRACE

Ed Bulliard of St. Martinville, La. figured he had a right to market a sauce made from Tabasco peppers under the name “Evangeline Tabasco Sauce.” Since 1896, a couple dozen or so companies had entered the market with sauces labeled “Tabasco” notwithstanding threats and grumblings by the McIlhenny Company, which proclaimed the word “Tabasco” to be its own.

Some abandoned the term out of fear of litigation. Others didn’t. The Louisiana Supreme Court in 1912 set damages at $5,000 against McIlhenny for denigrating a competitor’s right to use that word in its name.

In 1919, the McIlhenny Company, a Maine corporation headquartered on Avery Island in Louisiana, sued Bulliard in the United States District Court for the Western District of Louisiana. The company entered this, its latest court fray, buoyed by the Fifth U.S. Circuit Court of Appeals’ recognition in 1918 of its common law trademark on the word “Tabasco,” as applied to a sauce made from chili peppers.

The federal court in western Louisiana in 1920 denied damages—finding that Bulliard had acted in the good faith belief that he had the right to use the word “Tabasco”—but granted an injunction.

The district judge recited that Edmund McIlhenny had gone into the pepper sauce business in 1868, and continued:

“There was then on the market a similar sauce, manufactured in New Orleans by Maunsell White, and labeled ‘Maunsell White Pepper-Sauce.’ McIlhenny gave his sauce the distinctive name ‘Tabasco Pepper-Sauce.’ At this time these peppers were grown in the state of Tabasco, Mexico, and elsewhere in Mexico, and were known as Mexican or Chili peppers—not as Tabasco peppers. Consequently, plaintiff’s sauce did not take its name from the pepper which was its chief ingredient, but the pepper soon acquired its name from the sauce.”

As those who have read previous installments in this series know, “Tabasco” was not a “distinctive” name. Peppers had long been sold in Louisiana marketplaces under that name and White had been making up batches of his “Tobasco Sauce” since at least 1850, distributing it commercially it as of 1859. (Contrary to the recitation by the court, White was not himself marketing it in 1868; he died in 1863).

Anyway, the court found that “Tabasco” was a word the McIlhennys could use—and Bulliard couldn’t. The judge also ordered Bulliard to stop packaging and labeling his product to look like that made by the McIlhenny Company.

In subsequent negotiations in 1921 between Bulliard and the McIlhennys, it was agreed that Bulliard could use the word “Tabasco” in a limited way: it could say, “on a secondary label and in a subordinate way” that the sauce was “[m]ade out of Tabasco Peppers.” In these days of stringent labeling requirements—where water bottlers are required to confess that the product has no vitamin content—it does seem incredible that it was a concession to allow a rival to list an ingredient on a label.

The concession paralleled that made to another “tabasco” sauce manufacturer, Glasser-Crandell Company, in unrelated litigation.

Dissatisfied with the dispensation it had attained, Bulliard proceeded to flaunt the name “Tabasco” in advertisements and otherwise, and McIlhenny in 1925 again sued in the federal trial court in western Louisiana. A judge on April 30, 1926 found that Bulliard “should be adjudged guilty of civil contempt” for violating the 1920 injunction, “and that he should account to complainant for the profits made by the wrongful use of its trade-name.”

On June 7, 1926, the matter was referred to a master for findings as to damages.

Also, the judge held that Bulliard was free to use the phrase “Made from tabasco peppers,” but was obliged to spell out: “But this is not the old, established tabasco sauce, which is the pepper sauce manufactured for many years by McIlhenny Company and its predecessors at New Iberia, Louisiana, or a statement similar thereto, which shall clearly and unmistakably distinguish the sauce manufactured and sold by defendant from that manufactured by McIlhenny Company.” Bulliard never got around to adding that qualifier.

The upshot of it all was a 1928 ruling by the District Court that damages were too uncertain to be awarded but that Bulliard was to pay a $5,000 “fine.” Half of that sum was to be handed over to the McIlhenny Company “to cover its expenses and costs, and the remainder to be considered as punishment for the willful violation of the court’s decree.”

The prospect of imprisonment for contempt was “held in abeyance to await the future conduct” of Bulliard.

In light of his past conduct, the judge decreed, Bulliard was forbidden to use the word Tabasco in any way for the next five years.

Next week, I’ll look at litigation between McIlhenny Company and its major rival, B. F. Trappey.