Metropolitan News-Enterprise


Thursday, September 28, 2006


Page 15



Maker of Tabasco Sauce Generates Misconceptions on Its Website




Located on the website is a section purportedly devoted to debunking myths about Tabasco Sauce, the mission being, it is claimed, to “accurately chronicle the events surrounding the creation” of the product.

The actual purpose is to propagate claptrap.

The question is posed: “When was the TABASCO® trademark first registered?” This answer is given:

It was not until 1905 that Congress passed an act providing for federal registration of trademarks used in commerce between states. This act provided that marks in exclusive lawful use for the ten years proceeding the enactment of the statute were entitled to registration. From at least as early as 1880 until the late 1890s, the mark “Tabasco” was in exclusive use by McIlhenny Company to identify its pepper sauce. Consequently, as a result of the public’s association of “Tabasco” with McIlhenny Company as the single source of the product during this period, under the doctrine of secondary meaning, the “Tabasco” trademark was exclusively owned by McIlhenny Company. Thus, uses by third parties in the late 1890’s and early 1900’s were infringing and unlawful uses.

In fact, John Avery McIlhenny, aformer president of McIlhenny Company, signed an affidavit, on the advice of his trademark counsel, stating that - within the meaning of the Trademark Act of 1905 - McIlhenny Company was indeed the exclusive lawful user of the Tabasco trademark and entitled to registration of the mark under the 1905 Act. A 1920 decision of the U.S. District Court for the Western District of Louisiana confirmed the accuracy of John Avery McIlhenny’s affidavit.

It is plainly dishonest to mention the trademark registration under the 1905 act (the registration taking place in 1906) without acknowledging that the registration was cancelled by the commissioner of patents in 1909 in response to a protest from a competitor. The Court of Appeal for the District of Columbia affirmed that action the following year.

The 10-year clause permitted registration of a mark that did not meet the technical requirements of the 1905 statute but had been in continuous, exclusive use for a 10-year period. The Court of Appeals said the word “Tabasco” could not qualify as a technical trademark because it was merely a geographical description, referring to a state in Mexico. (The doctrine of secondary meaning, which had not yet crystalized, was not discussed.) The court said that the 10-year clause could not be invoked because “[i]t is not denied that appellant was not the exclusive user of said mark during the period required to justify registration under said ten years’ clause.”

Various companies in the relevant period used tabasco peppers as an ingredient in sauces and employed the word “tabasco” in the names of their brands.

It is not true that McIlhenny “signed an affidavit, on the advice of his trademark counsel, stating that - within the meaning of the Trademark Act of 1905 - McIlhenny Company was indeed the exclusive lawful user of the Tabasco trademark and entitled to registration of the mark under the 1905 Act.” (Emphasis added.) McIlhenny said, flat out, without qualification, that his company had been the exclusive user of the the word “tabasco”—which was a knowing lie.

As recited in a 1912 decision of the Louisiana Supreme Court: McIhenny’s lawyer on Sept, 29, 1905 sent two versions of a declaration, one of which he would file in the Patent Office. He advised:

“I should prefer that you should verify the one lettered ‘A,’ because if any admission be made that the use had not been exclusive the Commissioner may desire to call in the parties who have used the same to hear if they have any objections to your obtaining the trade-mark ‘A,’ because, in the legal sense, your use of the name ‘Tabasco’ has been exclusive though in the literal sense it has not been so because of the temporary use of that name by other persons. If you feel that you cannot verify the declaration, ‘A,’ please verify and return the declaration marked ‘B,’ and also return the three other declarations, duly verified.”

The Louisiana Supreme Court commented:

“No amount of legal advice will excuse a suppression, or misrepresentation, of the facts of a case. The client is responsible for the truth of facts by him verified, and advice of counsel will not shield him from statements that are not true.”

To say, as the website does, that the 1920 federal trial court decision “confirmed the accuracy of John Avery McIlhenny’s affidavit” is deceitful. The decision said that “exclusive use” had been interpreted by the Patent Office to mean “‘rightfully exclusive,” so that “[h]ad the application disclosed such use of the word by others, on proof that it was a wrongful use, plaintiff’s predecessor would still have been entitled to the registration of the trade-mark.” Emphasis added.

But McIlhenny did not disclose such use of the word by others; he signed Declation “A” asserting exclusive use—period.

Next week: the finale on Tabasco Sauce.

Copyright 2006, Metropolitan News Company

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