'EEEEEEEYOOOOOO': Lawyers Worked 18 Months to Get Pitbull That Trademark
The entertainer joined an exclusive club, with the likes of "60 Minutes" and its distinctive clock ticking, and MGM, with its powerful lion's roar.
April 24, 2020 at 11:00 AM
4 minute read
It's an 'EEEEEEEYOOOOOO' that's been heard around the world.
And several attorneys from Texas and South Florida had a hand in registering the trademark for singer Pitbull's famous shout.
The U.S. Patent and Trademark Office awarded trademark protection to Miami-born musician Armando Christian Perez, better known as Pitbull, for his signature yell, or "grito," for both sound recordings and live performances. Pitbull joins an exclusive club of 36 registrants who have received trademark protection for familiar sounds, or sounds without words accompanying them, attorneys say.
Backing up the singer was a team of Florida and Texas lawyers, including Leslie José Zigel, the chair of the entertainment, media and technology group at Greenspoon Marder in Miami; Justin F. McNaughton, a Nashville-based patent and trademark attorney at the firm's Texas office; and Ryan Kairalla, a Miami attorney specializing in entertainment and education law.
It took about 18 months to secure the trademark registration for the global superstar. The attorneys had to prove under the Lanham Act that Pitbull used his grito in commerce as a trademark, while demonstrating that he is legally entitled to register the sound as a federally protected trademark.
Not so easy
The attorneys had to prove two concepts: distinctiveness and consistency.
And that's not an easy task, according to McNaughton. For instance, applicants failed to meet the standard in a recent case involving two amphibious boat tour operators, who were fighting over a duck call.
One of the tour boat operators determined that having the sole right to blow a duck call during an amphibious boat tour would be a significant marketing advantage, and obtained a federal trademark for the use of a duck call. But when a competitor challenged, the U.S. District Court for the Eastern District of Pennsylvania ruled that the sound of a duck call was too familiar to be distinctive.
Also, the registrant's evidence failed to show customers necessarily associated the duck call with the tour company that obtained the registration. Because of that lack of association, McNaughton said, a person on a tour would hear the duck call whistle and likely think, "Oh, there is some strange guy blowing a duck whistle on top of an amphibious vehicle."
"It is not to say they couldn't have done that," he added. "But they would have had to have done a lot more advertising. They would have had to have done a lot more consistent use, and really train people that when they hear that sound, that's these people."
In Pitbull's case, there was a similar conflict. The lawyers say the approach they took in the trademark application is that the sound is synonymous with Pitbull's brand, and that brand needs to be protected.
The conflict arose in June 2017, when Colombian singer J. Balvin and French producer Willy William released the song "Mi Gente." The massive hit had Pitbull's "EEEEEEEYOOOOOO" grito, but Pitbull was not on the track.
Pitbull's lawyers claimed the sound has been a hallmark of his work for more than two decades. In response to the release of Mi Gente, Pitbull released a remix of the song for his fans. He also registered "the first call sign by a musical artist for sound recordings in the principal trademark register," according to a law review article by Zigel, McNaughton, Kairella and Pitbull, published by the NYU School of Law Journal of Intellectual Property and Entertainment Law,
After the familiar sound trademark was approved, Pitbull joined the likes of "60 Minutes," with its distinctive clock ticking, and MGM, which owns the powerful lion's roar heard at the start of movies it produces and distributes.
Pitbull's lawyers believe this short list of successful sound-trademark holders will add more musical artists in the near future.
"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," the authors state in the NYU law review article. "And they would be wise to do so."
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