Rival companies suspected that a friendship between John McIlhenny and then President Theodore Roosevelt (a second lieutenant in Roosevelt’s Rough Riders) may have influenced the government’s decision to grant the trademark. However, the Commissioner of Patents later withdrew the “Tabasco” registration in 1909 based on an alleged false declaration by John McIlhenny because McIllhenny could not claim that it had exclusively used the mark in commerce given the fact that other competitors had used the same term (i.e. McIllhenny had not used the mark exclusively). The action was upheld by the U.S. Court of Appeals for the District of Columbia in 1910.
McIllhenny Company was also sued for libel based on circulars titled “E. M. McIlhenny’s Son v. Infringers,” which were sent out by the company on July 17, 1906, publicizing its trademark registration and calling anyone else using the term “Tabasco” as an infringer. One competing Tabasco sauce maker, New Iberia Extract of Tabasco Pepper Co., Limited, sued McIllhenny and, in 1912, eventually won $5,000 in damages decision by Louisiana Supreme Court. The same court also determined that McIllhenny’s exclusive right to use the name Tabasco expired with its 1870 patent.
However, McIllhenny continued to fight for its right to use the mark exclusively. And on July 29, 1918, the Fifth U.S. Circuit Court of Appeals in Gaidry v. McIlhenny Co., 253 F. 613, recognized McIlhenny as the exclusive holder of the right to sell pepper sauce with the mark “Tabasco.” In short, the court found that despite the geographic descriptiveness of the word Tabasco, it had acquired a secondary meaning to the public as an source identifier, namely identifying McIllhenny’s red pepper sauce.
Spurred on by the Fifth Circuit decision that McIllhenny had a common law trademark right to Tabasco name, McIllhenny then filed a trademark infringement suit in 1919 against Ed Bulliard, who made a sauce named “Evangeline Tabasco Sauce.” In 1920, the U.S. District Court for the Western District of Louisiana granted an injunction to stop Bulliard from using the term Tabasco. The companies negotiated an agreement that would allow Bulliard (as McIllhenny had done with other competitiors) to list simply list Tabasco peppers as one of the ingredients. McIllhenny had to go back years later to file another similar lawsuit to stop Bulliard’s use of the term Tabasco. In 1929, the McIllhenny family also won a trademark infringement suit against Trappey, thus firmly securing McIllhenny’s exclusive right to have the only sauce that could be called “Tabasco.”
The end result is one of the world’s oldest and most recognizable brands. A link to the original 1906 registration is not available, but based on the prior registrations cited in the oldest TABASCO mark that is viewable through PTO’s TARR database (Reg. # 223,310 for TABASCO, which registered on February 1, 1927), these 1906 registrations are likely Reg. # 53,928 and # 53,929. Another TABASCO trademark is its signature bottle shape (pictured below), which McIllhenny registered on March 15, 1966 (see Reg. # 805,671).