Justin F. McNaughton, Esq., Ryan Kairalla, Esq., Leslie José Zigel, Esq., and Armando Christian Perez*
Download an English PDF version of this article here.
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An exclusive interview about the article with Messrs. McNaughton, Kairalla, and Zigel can be found here.
I’ve worked so hard on crafting my sound and my brand over the years, and I am so pleased that the United States Patent and Trademark Office has awarded me trademark registrations in my original “Eyo” chant for musical sound recordings and live performances. ¡Dale!
Immediate recognition is the epitome of success for musical artists. Few artists attain the level of success at which fans easily identify their sound from a mere snippet of a track, joining the ranks of artists like Frank Sinatra, Dolly Parton, The Grateful Dead, Bob Dylan, and Ella Fitzgerald. Their unique sounds are almost immediately recognizable and easily distinguished from other artists in their genres. In the modern rap and pop world, Pitbull has attained this level of notoriety. Audiences easily recognize his raspy voice and his approach to rap, but it is his grito (yell), “EEEEEEEYOOOOOO!” that clinches it. This trademark yell—pun intended—sets him apart from all other artists, giving him a distinctive sound that is part of virtually every song that he performs and serves as a musical transition when he begins to rap. The U.S. Patent and Trademark Office (“USPTO”) recently awarded trademark registrations to him for this yell for both sound recordings and for live performances. The registration of a sound trademark in the principal register for musical sound recordings is, to our knowledge, the first for the USPTO. This essay will offer some reflections and background on these registrations from Pitbull and the trademark attorneys who worked on the filings.
When listening to his music, Pitbull fans know to expect catchy and danceable hip hop beats, the acclaimed rapper referring to himself as “Mr. Worldwide” and “Mr. 305” on the track, and exclamations of “¡Dale!” (pronounced “DAH-lay,” which literally means ‘Hit it!’ but in context means “‘Let’s Go!” Or “Let’s Do This!”). His fans also know to expect a fantastically identifiable grito that he developed during his early club days. With a quick “EEEEEEEYOOOOOO!,” listeners around the world know a Pitbull track when they hear it, regardless of their language or the musical genre.
In June 2017, Colombian singer J Balvin and French producer Willy William released the song “Mi Gente.” The track was a massive hit that Pitchfork dubbed “a certified banger from the moment it dropped.” Almost immediately after its release, Pitbull began to receive praise for his guest appearance on the track. As a frequent collaborator on songs with other fellow superstar artists, Pitbull’s work on “Mi Gente” appeared to be just the latest in a long string of well-received team-ups for the Grammy-winning artist.
There was just one small wrinkle: Pitbull was not in “Mi Gente.”
So why did people think that he was? We’ll talk more about the impact that hearing Pitbull’s grito in that song had on audiences around the world later in this essay.
Pitbull’s grito has become iconic. It allows fans instantly to recognize a Pitbull song or performance, whether in a live performance or in a musical recording, and serves as a distinctive call sign. This is intentional. At least as early as 2002, Pitbull began consistently using this grito to identify his performances, and over the years, it has been carefully curated.
As a young man coming up in Miami’s nightclub scene, Pitbull’s grito evolved as a way to communicate with friends that he was in trouble (and he’ll be the first to tell you he’s a lover not a fighter). He initially used his grito as a distinctive signal to alert friends that a situation was escalating: “Hey, I’m in trouble here. Hurry over!”
Over time, Pitbull’s iconic grito has become emblematic of his presence on a stage or in a song. It puts his stamp of ownership on a song even though the sound, style, and even the language of the track may be unfamiliar to the listener.
It’s also a sly tip of the hat to the Cuban-American rapper’s Mexican-American fans—likely one of the largest segments of his fanbase in the US. Pitbull’s yell finds its inspiration from the traditional Mexican grito, a loud shout of joy or excitement that is commonly associated with Mexican culture. As part of that tradition, it is not uncommon for each person in a family to have his or her own distinctive grito. That concept is not lost on Pitbull—his grito is unique.
Alt.Latino host Felix Conteras echoed this sentiment in a 2016 NPR interview: “I am pretty sure I could identify my tíos and tías [uncles and aunts] by their gritos, and many Mexican-American children begin finding their own grito voice early.” The tradition of Mexican “signature gritos” makes for one of the best moments in the 2016 film Coco, when Anthony Gonzalez’s Miguel is asked for his best grito by Gael García Bernal’s Hector as he’s coaching him to go on stage. And a quick YouTube search for “Mexican grito” will lead you down a rabbit hole of hours of proud moms and dads helping their children develop their own signature yells.
Why is Pitbull’s scream so effective? In short, researchers have made a case for the personalized nature of yells like Pitbull’s grito. In a study entitled Human Screams Occupy a Privileged Niche in the Communication Soundscape, researchers studying brain patterns of humans reacting to screams found that “acoustic roughness [in yells] engages subcortical structures critical to rapidly appraise danger . . . [and] occupy a privileged acoustic niche that, being separated from other communication signals, ensures their biological and ultimately social efficiency.” The researchers concluded that screams and yells are “particularly difficult to predict and ignore.” It is almost impossible to ignore Pitbull’s signature grito—in a club or in a song.
Pitbull’s creation of a unique yell to alert friends in a loud nightclub setting was a highly effective tactic for getting their attention in the early days of his career. Today, his grito has evolved, serving a new purpose: to let people know that they are listening to a Pitbull song. The Pitbull grito is as much a part of Pitbull’s brand as his “¡Dale!” catchphrase or even Pitbull’s stage name itself.
Pitbull uses his grito as a sort of sonic signature. It is a critical component of his branding. Use of this distinctive grito is one of the hallmarks of Pitbull’s style that separates him from other artists.
Bill Teck is a journalist who has been creating a recorded history of Pitbull and has known Pitbull since the early days of the artist’s career. Teck reflects that he “first met Pitbull back when he was a teenager in 2000. I’ve watched [Pitbull’s] career blossom and spent plenty of time thinking about his music beyond the irresistible hooks and pop craftsmanship. And one constant element I’ve identified across nearly all of his songs is his trademark yell, ‘EEEEEEEYOOOOOO.’”
Musicians face a challenge when they stray from their core genre. Fans may altogether miss an artist in a song if it sounds unfamiliar to what they’re accustomed to hearing. Pitbull uses his grito as an innovative way to circumvent this problem. His grito announces that a song is a “Pitbull” song, even though the sound, style, and the language of the track may be unfamiliar to the listener. It is featured in songs where he is the lead artist, and it is also featured on tracks where he makes a guest appearance. For the recordings in the latter group, Pitbull’s grito frequently serves as a signal to listeners that “Mr. Worldwide” is about to rap a verse on another artist’s track. The yell allows him to weave a common thread through the disparate song styles of his biggest hits. For example, “Timber” is country pop, while other songs of his are hip hop, Latin pop, or Middle Eastern pop; they all are connected by his grito. Even when dabbling in rock songs such as 2017’s “Bad Man,” the grito is there, announcing to everyone, “This is a Pitbull track!”
Pitbull’s fans celebrate his iconic grito with memes and videos. One fan created a 3:31 minute video of back-to-back sound clips of Pitbull’s grito from dozens of his tracks. In another particularly clever video, with over 500,000 views, a fan overlaid audio from 25 of Pitbull’s songs, and what begins as a cacophony culminates in Pitbull’s grito playing simultaneously across all of the tracks.
The Lanham Act defines the term “trademark” to include “any word, name, symbol, or device, or any combination thereof . . . used by a person . . . to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” The Second Circuit has stated that, “[i]n expanding the universe of symbols and devices eligible for trademark protection, the Supreme Court has identified other attributes that are capable of conveying meaning to a consumer, for example, the shape of a product, its scent, a particular sound, and color. These attributes are entitled to protection under the Lanham Act.”
Trademarks provide valuable benefits to producers and consumers alike. “A [trade]mark’s source distinguishing ability allows it to serve those basic purposes that gave birth to trademark law in the first place; that is, to ensure that a product’s maker reaps the rewards of the reputation it has built, and to enable consumers to recognize and repurchase goods with which they have previously been satisfied.”
Sound trademarks belong to a special group of trademarks referred to as “sensory” trademarks that are not capable of a visual representation, such as sounds, colors, and smells. Comparatively few sensory trademarks ever attain registration. The first sound trademark was filed by The National Broadcast Company in 1947 to protect its famous chime sequence.
Years later, the Trademark Trial and Appeal Board of the USPTO (the “Board”) held:
a sound mark depends upon aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it is struck. Thus, a distinction must be made between unique, different, or distinctive sounds and those that resemble or imitate ‘commonplace’ sounds or those to which listeners have been exposed under different circumstances.
In other words, the Board confirmed that sounds can be trademarks. However, the Board made a distinction between sounds that are uncommon and sounds that are familiar or even commonplace. In its holding, the Board required a showing of acquired distinctiveness as a prerequisite to obtaining a trademark registration for sounds that can be considered familiar or of a common type. Said in a different way, people yell all the time, so in order for a particular yell to become a trademark, it must acquire distinctiveness so that people recognize that it identifies a source rather than simply being a random yell.
Whenever a sound is familiar to most people, evidence must be provided that the trademark is, in fact, recognized by people to identify the source of a particular product or service. This can be shown by evidence of “1) the length and manner of [its] use, 2) the nature and extent of advertising and promotion, and 3) other efforts at creating a conscious connection in the public’s mind between the designation and the service.”
For example, one of the most famous sound trademark cases involved a duck call. The case involved two amphibious boat tour operators (yes, those unsafe-looking WWII boats with Jeep tires on them). In that case, one of the boat operators had obtained a federal trademark registration for blowing a duck call during a tour. The particular services registered were “tour guide services over land and water by amphibious vehicles.” In that case, the court held that the sound of quacking was too familiar a noise to qualify as being inherently distinctive. Additionally the court held that the trademark owner did not submit evidence that customers actually associated the sound of a duck call with the services offered by the tour company (i.e., “that a person apprehending a quacking noise on the streets of Philadelphia would reflexively think of the services provided by [plaintiffs]”). As quipped by Gilson on Trademarks, “[o]ne can only envision with wonderment a consumer survey interviewer stopping Philadelphia citizens on Broad Street and inquiring of their quacking noise association, if any.”
Like duck calls, people hear yelling commonly. In order for a yell to acquire secondary meaning, significant effort must be made to make the public recognize that yell as a unique call sign for a unique purpose. As a result, while sound trademarks themselves are rare, sound trademarks for common or familiar sounds like yells are even more unusual.
For context, as of the date of this publication, there are more than 2.6 million active trademark registrations in the United States. Of those, there are only about 250 active sensory trademark registrations in the United States (as of February 27, 2020). Of those, about 234 are sound trademarks. Of those sound trademarks, about 36 are of familiar sounds (without words accompanying the sound). These sound trademarks have acquired distinctiveness and have become trademarks in the United States because the owners have used them so that people associate them with a particular good or service.
For additional context, examples of sound trademarks that are unusual and that did not require any showing of acquired distinctiveness include NBC’s chime, MGM’s lion roar, Lucas Film’s THX sound, and the NY Stock Exchange Bell. Examples of sound trademarks for familiar sounds that required a showing of distinctiveness include the sound of a Zippo lighter opening, igniting, and closing,  Apple’s two successive C# tones that a person hears when calling upon their Siri virtual assistant, and the clacking of typewriters for CBS Radio. Many readers will instantly recognize these sounds, which is an indication that these sounds have acquired distinctiveness and now function as trademarks.
Another interesting attribute of Pitbull’s grito trademark is the fact that consumers experience the mark in the course of experiencing the product itself. In most contexts, sound trademarks serve the function of a “jingle” for a product or service: they are a brand identifier of a product or service but are spatially and/or temporally disconnected in some way from the product or service itself. For example, Nationwide Insurance’s popular “Na-tion-wide-is-on-your-side” jingle is a registered trademark for the company’s financial and insurance services, but the mark itself is mainly featured in the company’s advertisements and is typically not heard by consumers in the course of the services provided by Nationwide. Similarly, Twentieth Century Fox’s orchestral fanfare is a registered sound trademark for its motion pictures, but the sound itself appears in the opening logo branding that precedes their films, rather than in the films themselves.
Not all sound marks are separated from their respective goods or services in this way. A smaller class of sound marks features sounds that are emitted by the actual product or service itself. At least one commentator has referred to these marks as “sound products.” The Federal Signal Corporation has such a “sound product” in the form of its registration in the sound that its siren makes. Another example is TiVo’s trademark for the unique popping noise a user hears when clicking through the Digital Video Recorder’s menus. “Consumers are much more predisposed to connect these sounds with the sources of the products that make them than other types of marks.” Pitbull’s grito shares some similarities with this “sound product” category of trademarks, and fans certainly connect this sound to the recordings themselves and the source of the recordings.
Pitbull’s grito presents an unusual situation because people are not just familiar with yelling, they are wired to respond to it. It is also not a traditional sound trademark “jingle”: it does not function as an advertisement that is disconnected from the good or service. It shares some features of sound product marks, but it also goes beyond a sound to identify a product. In sound recordings, the use of Pitbull’s sound trademark is actually a sound recording embedded in the very sound recordings that it identifies. Said another way, Pitbull’s grito serves as a musical call sign within another musical work or performance that identifies him to audiences everywhere. That style of use, coupled with nearly 20 years of international use, has made his grito one of the most famous sound trademarks in the music industry. Listeners around the world hear Pitbull’s grito and are instantly informed that the song originates from Pitbull himself.
Recognizing this, on October 8, 2019, the USPTO accepted Pitbull’s evidence that his iconic grito had acquired distinctiveness and issued Pitbull two trademark registrations. The newly issued registrations are U.S. Registration Nos. 5,877,076 and 5,877,077 for “entertainment services in the nature of live musical performances” and “musical sound recordings; musical video recordings,” respectively.
The issuance of these trademark registrations provides a legal presumption of what his fans already knew: the grito “EEEEEEEYOOOOOO” means Pitbull has put his stamp on the recording or performance.
There is something else particularly noteworthy about this sound product mark. Based on our search of trademark records, we believe that Pitbull’s registration of his grito for musical sound recordings is the first time a sound trademark within a song has been registered in the principal register for musical sound recordings.
After reading this essay, you might think that the idea of a sound functioning as a trademark within a larger musical sound recording is new, but that is not the case. Pop music offers no shortage of instances of recording artists employing a common sound bite or musical catchphrase across their respective catalogs as a branding technique for the artist. The unique melodic flourish of R&B artist Jason Derulo singing his name at the beginning of hits like “In My Head,” “Whatcha Say,” and “Don’t Wanna Go Home” is one example. Atlanta-based rapper DeAndre “Soulja Boy” Way opens many of his most popular recordings with the rhythmic phrase “Soul-ja-Boy-Tell-‘Em.” These sounds are instantly identifiable to these artists’ fans and efficiently inform listeners of who created the track in question.
We believe that there will likely be more of these important trademark registrations in the future. In terms of efficiency, there is no better way to stamp a sound recording than with a unique sound. Given the prevalence of these call signs throughout the music industry, it is only a matter of time before other music superstars embrace this valuable branding protection and seek to obtain registration for their unique sonic signatures, and they would be wise to do so. It stands to reason that an artist, in an effort to capitalize on another superstar’s fame, could try to insert that superstar’s musical catchphrase into their own tracks. Such an action would foster the sort of consumer confusion among music fans that the Lanham Act seeks to prevent.
Returning back to “Mi Gente,” it should not have come as a surprise that many listeners, upon hearing Pitbull’s unmistakable grito in the song, would have thought that he contributed to Balvin and William’s 2017 hit. In fact, the authors of this paper thought Pitbull collaborated on the track when we first heard the song.
The confusion results from a 2-3 second stretch of audio in “Mi Gente.” First appearing at the 0:52 mark and repeated twice more on the track, “Mi Gente” features an excited yell that bears a near-identical similarity to Pitbull’s grito. Some of Pitbull’s fans, conditioned over dozens of the star’s hits to associate that grito with the rapper’s music, incorrectly thought that Pitbull was featured on “Mi Gente.”
Bill Teck again reflects: “The release of ‘Mi Gente’ by J Balvin and Willy William led to an interesting moment for me, in particular, when I heard the song for the first time. The track features a loud yell (towards the end of the first minute of the record) that sounds identical to Pitbull’s distinctive grito. When I first heard the song, I texted Pitbull to congratulate him—only to find out later that he had nothing to do with the 2017 hit. Fans were confused. Many of them asked me, ‘Is that Pitbull on there?”
Pitbull’s response to “Mi Gente” was a classic hip hop response. Within a few weeks, he released his own remix of the song dedicated to his fans, opening the track with his grito. Then he registered the first call sign by a musical artist for sound recordings in the principal trademark register of the USPTO. And by doing so, Pitbull made trademark law a little bit louder.
 Matthew Ismael Ruiz, J Balvin/Willy William “Mi Gente” [ft. Beyonce] (Remix), Pitchfork (Sept. 29, 2017), https://pitchfork.com/reviews/tracks/j-balvin-and-willy-williams-mi-gente-ft-beyonce-remix/.
 Personal Interview with Armando Christian “Pitbull” Perez (Feb. 1, 2020); Personal Interview with Bill Teck (Feb. 1, 2020).
 Brenda Salinas, In Mariachi Music, A Distinctive Yell Speaks To The Soul, NPR (Aug. 23, 2016, 4:34 AM), https://www.npr.org/sections/codeswitch/2016/08/23/488502412/in-mariachi-music-a-distinctive-yell-speaks-to-the-soul.
 Coco (Walt Disney Pictures 2017).
 Luc H. Arnal et al., Human Screams Occupy a Privileged Niche in the Communication Soundscape, 25 Current Biology 2051, 2051 (Aug. 3, 2015).
 See, e.g., Pitbull, I Know You Want Me (Calle Ocho) (Sony Music 2009) (1:10); Pitbull, Fireball (feat. John Ryan) (Sony Music 2014) (0:45); Pitbull, Timber (feat. Kesha) (Sony Music 2013) (0:36); Jennifer Lopez, On the Floor (feat. Pitbull) (Island 2011) (3:18); Enrique Iglesias, I Like It (feat. Pitbull) (Universal Republic 2010) (0:06); Priyanka Chopra, Exotic (feat. Pitbull) (Interscope 2011) (0:31).
 15 U.S.C. § 1127 (2018).
 EMI Catalogue P’ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 62 (2d Cir. 2000) (citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995)).
 Registration No. 523,616 (NBC Chimes—i.e., the musical notes G, E, C played on chimes).
 In re Gen. Elect. Broad. Co., 199 U.S.P.Q. (BNA) 560, 563 (Trademark Tr. & App. Bd. 1978).
 Id. (stating that familiar or common sounds “must be supported by evidence to show that purchasers, prospective purchasers and listeners do recognize and associate the sound with services offered and/or rendered exclusively with a single, albeit anonymous, source”).
 Am. Diabetes Ass’n, Inc. v. Nat’l Diabetes Ass’n, 533 F. Supp. 16, 19 (E.D. Pa. 1981).
 Ride the Ducks, LLC v. Duck Boat Tours, Inc., 75 U.S.P.Q.2d 1269 (E.D. Pa. 2005).
 John Eligon et al., Missouri Duck Boat Accident Kills 17, Including 9 From Same Family, N.Y. Times (July 20, 2018), https://www.nytimes.com/2018/07/20/us/duck-boat-branson-accident.html.
 Ride the Ducks, 75 U.S.P.Q.2d at 1271.
 Id. at 1276.
 Jerome Gilson & Anne Gilson LaLonde, Cinnamon Buns, Marching Ducks and Cherry Scented Racecar Exhaust: Protecting Nontraditional Trademarks, 95 The Trademark Rep. 773, 804 (2005).
 Trademark Electronic Search System Database (TESS), United States Patent and Trademark Office, https://www.uspto.gov/trademarks-application-process/search-trademark-database (last visited, Apr. 14, 2020). The data in this paragraph were collected, compiled, and analyzed by the authors of this paper.
 The mark comprises the musical notes G, E, C played on chimes, Registration No. 916,522.
 Registration No. 1,395,550.
 Registration No. 1,872,866.
 Registration No. 2,741,129.
 Registration No. 5,527,388.
 Registration No. 4,689,365.
 Registration No. 5,635,561.
 The mark consists of nine bars of primarily musical chords in the key of B flat; the chords consisting of four, eighth and sixteenth notes, Registration No. 2,000,732; see, e.g., Izzat Fr, 20th Century Fox Intro [HD], YouTube (Nov. 14, 2012), https://www.youtube.com/watch?v=YXWFYPk11GM.
 Nick Pisarsky, Note, PoTAYto-PoTAHto-Let’s Call the Whole Thing Off: Trademark Protection of Product Sounds, 40 Conn. L. Rev. 797, 805 (2008).
 Registration No. 2,712,396 (the mark consists of a unique sound comprising a fundamental sweeping tone that rises quickly).
 Registration No. 2,996,654 (the sound mark is comprised of a sequence of two tones in increasing pitch).
 Daniel R. Bumpus, Bing, Bang, Boom: An Analysis of In re Vertex Group LLC and the Struggle for Inherent Distinctiveness in Sound Marks Made During a Product’s Normal Course of Operation, 21 Fed. Cir. B.J. 245, 278 (2011).
 The mark is a sound. The mark consists of a man yelling “EEEEEEEYOOOOOO” in falsetto with “E” drawn out followed by a “U” sound, Registration No. 5,877,076; The mark is a sound. The mark consists of a man yelling “EEEEEEEYOOOOOO” in falsetto with “E” drawn out followed by a “U” sound, Registration No. 5,877,077.
 Registration No. 5,877,076.
 Registration No. 5,877,077.
 Jason Derulo, Jason Derulo—In My Head (Video), YouTube (Jan. 23, 2010), https://www.youtube.com/watch?v=UyG1FG3H6rY; Jason Derulo, Jason Derulo—Whatcha Say (Video), YouTube (Oct. 15, 2009), https://www.youtube.com/watch?v=pBI3lc18k8Q; Jason Derulo, Jason Derulo—Don’t Wanna Go Home (Official Video), YouTube (May 25, 2011), https://www.youtube.com/watch?v=2CGF_Z3yZAo (0:38).
 See, e.g., Soulja Boy, Crank That (Collipark Studio) (2007); Soulja Boy, Kiss Me Through The Phone (Collipark Studio) (2008); Soulja Boy, Turn My Swag On (Collipark Studio) (2008).
 See Park ‘n Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198 (1985) (“The Lanham Act provides national protection of trademarks in order to secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.”).
 urkel 15, J Balvin, Willy William, Pitbull “Mi Gente” (woldwild & urkel15 remix) extender version, YouTube (Aug. 30 2017), https://www.youtube.com/watch?v=tPvu12EUh0w (with a nod to those who could’ve sworn he was on the original track, Perez quips during the remix’s intro: “Since everybody thought that I was on the record, I think it’s only right that I jump on the remix.”).