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Jack, District Judge: Plaintiff, McIlhenny Company, a corporation of the State of Maine, which, with its predecessors, for many years past, has manufactured at Avery Island, Louisiana, a condiment known as “Tabasco Pepper Sauce,” brings this action against defendant Ed. Bulliard, to enjoin him from using the word “Tabasco,” which plaintiff claims as its trade-mark, in the designation of a pepper sauce manufactured at a neighboring town and sold by him under the name of “Evangeline Tabasco Sauce”; and, further, for injunction to restrain him from employing, in connection with the manufacture, advertisement and sale of such sauce, wrappers, cartons, or packages so resembling plaintiff’s as to be calculated to induce the belief that his product is that of the plaintiff. With these demands plaintiff couples the prayer that defendant be decreed to account to plaintiff for all profits which he has made by reason of alleged infringement of plaintiff’s trademark.
The defendant, in answer, denies that plaintiff or its predecessors now use, or have ever used, the word “Tabasco” as a trade-mark or identifying name for sauce, and specially avers that the word “Tabasco” could not and cannot be appropriated as a trade-mark, because it is geographical and descriptive; that plaintiff continually acquiesced in the descriptive use of the word “Tabasco,” and never made a bona fide attempt to establish the trade-mark it now asserts; and that any rights that plaintiff may have had in the name as a trade-mark were lost by the patenting of the process and the expiration of such patent. In answer to plaintiff’s demands based on alleged unfair competition, defendant denies that there is any fraudulent similarity in the bottles, cartons or packages containing his sauce, which might cause it to be taken for that of the plaintiff.
The case was submitted on a statement of facts, from which it appears that in 1865 or 1866, Edmund McIlhenny, a planter on Avery Island, was given a few peppers supposed to have been brought from the State of Tabasco, Mexico. He planted the seed, and, in 1868, made a pepper sauce from the peppers raised, which he called “Petite Anse Sauce,” “Petite Anse” being the French name for the island on which he lived. The sauce proved palatable and popular, and in 1868 he decided to make a business of its manufacture and sale. There was then on the market a similar sauce manufactured in New Orleans by Maunsell White, and labelled “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. Commencing about 1890, the peppers have been extensivly raised in Louisiana and Mississippi, under the names “Tabasco peppers,” “bird peppers” and “red peppers,” and have been used in the manufacture of pepper sauces substantially the same as that made by plaintiff. The seed was first catalogued by a seed store in 1886 as Chili or Tabasco Pepper Seed. It was not until 1888 that the pepper became known botanically as Tabasco Pepper, having been at that time described in his Herbarium Notes, by Dr. E. L. Sturtevant, of Geneva, New York, who had obtained specimens from Edmund Mcllhenny, as a new garden variety of the red pepper family, to which he gave the name “Tabasco.”
In 1870, Edmund Mcllhenny obtained a patent for making a new and improved pepper sauce. The process described involved abstracting the pulp from the pepper known in the market as Tabasco Pepper, and mixing it with vinegar, rock salt, and alcohol, with a small amount of bisulphate of lime added to prevent fermentation. He continued to manufacture “Tabasco Pepper Sauce” in accordance with this patent, until 1875 or 1876, when the improvement described in the patent was abandoned, since which time he and his successors, the McIlhenny family, and, finally the present corporation, have manufactured “Tabasco Pepper Sauce,” by mixing crushed pepper pulp with vinegar and salt only. In 1906 Edmund McIlhenny’s Son, the immediate predecessor of the present plaintiff, registered the word “Tabasco” as a trade-mark in the United States Patent Office, under the Federal Trade-Mark Act of February 20, 1905. This trade-mark was subsequently cancelled, pursuant to a decision of the Court of Appeals of the District of Columbia, in 1910.
Plaintiff’s predecessor likewise caused the word “Tabasco” to be registered as a trade-mark under the laws of Louisiana and a number of other states, as well as in England, France, Germany, and many other foreign nations. Prior to 1897 no other maker of pepper sauce used the word “Tabasco.” Since then about twenty five manufacturers have made sauces substantially like plaintiff’s and have sold them under the name of “Tabasco Pepper Sauce,” or “Tabasco Sauce.” Such of these other manufacturers, including defendant, whose use of the word “Tabasco” came to the knowledge of plaintiff and its predecessors, have been warned to the effect that they have no right to use the word in connection with the sauce, or to use similar packages, and quite a number of suits for infringement have been filed by plaintiff, most of which have been terminated by consent decrees.
The facts bearing on the question of unfair competition will be stated later. The primary issue is plaintiff’s right to the exclusive use of the word “Tabasco” as his trade-mark.
This identical question was recently presented and passed on by the Circuit Court of Appeals for this Circuit in the case of McIlhenny v. Gaidry (1918), 253 Fed. 618 [8 T. M. Rep. 283], in which the facts as found by the court were substantially the same as those set forth in the stipulation in this case. In that case Gaidry, a manufacturer of a sauce labelled “Tabasco Pepper Sauce,” brought suit against McIlhenny Company for damages for alleged wrongful conduct in interfering with the plaintiff’s business by falsely and in bad faith representing to dealers throughout the country that it had an exclusive trade-mark in the name “Tabasco,” and threatening injunction and other legal proceedings against those who handled any sauce called “Tabasco” not made by the said McIlhenny Company. A jury having been waived, the lower court, Eastern District of Louisiana, found that the word “Tabasco,” as applied to pepper sauce, was generic and indicated quality, ingredients and place of origin of the pepper from which it was made and rendered judgment in favor of plaintiff for damages. The Court overruled a motion by counsel that this particular finding be eliminated, and the following incorporated among the Court’s findings of fact “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.”
Whereupon, McIlhenny Company sued out writ of error and the judgment of the lower court was reversed, the Court of Appeals sustaining the contention made by McIlhenny Company.
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