Pitbull yells out a trademark for himself! How Trade marking sounds have come a long way.

The jurisprudence of trademark laws, all around the world, has categorized a sound mark as a non-conventional trademark. It is usually seen as a trade dress to a particular product or service to which it is associated as being intangible in nature. A sound mark arises when a particular sound assumes the function of a trademark and is used to identify a specific product or service. It’s not hard to miss out when you think of the Nokia tune or the 20th century fox fanfare tune. Sound marks are non-conventional in a sense that they fall in the contemporary advertising techniques and acquire the status of a trademark later in time as compared to the other conventional trademarks such as a word, logo, figure etc.

What was so catching about this TM registration? Pitbull’s registration of his grito for musical sound recordings is the first time a sound trademark within a song has been registered on the Principal Register for musical sound recordings. Usually, it is seen that marks which are not inherently distinctive are not allowed to be registered on the principal register and are rather added to the supplemental register.

Under the Lanham Act, 1946 “marks which can be visualized and possess inherent distinctiveness are eligible for registration on principle register”[1]. In juxtapose to visual marks, non-visual marks or sensory marks such as sound and smell, are registered on supplemental register upon showing secondary meaning, for the purpose of trademark protection[2]. Every mark must be used in commerce and be capable of distinguishing the goods and services of the user of a mark from that of others.

Under the Trademark Manual of Examining Procedure[3], a sound mark is defined as a mark which is adept at identifying and distinguishing a product or service via aural rather than visual means. Sound marks are functional in nature in the sense that they perform the function of a source identifier only when they “assume a definitive shape or arrangement” and “generates in the listeners mind an association of the sound” with respect to goods or services.[4] Thus, it is apt to say that sounds are eligible for registration on Principal Register only when they are able to successfully make an association with a product or service. In other words, they are “arbitrary, unique or distinctive in its class and able to attach to the mind of the listeners in a way that listener is able to distinguish that a particular product or service-is/was coming from a particular, even if anonymous, source.”[5]

For the former requirement of ‘use in commerce’, Pitbull had no trouble in proving the commercial value derived from the sale of tickets to musical performances, record labels, video recordings, etc. Pitbull’s style of use of the mark, coupled with nearly 20 years of international use, has made his grito one of the most famous sound trademarks in the music industry. Listeners all around the world hear Pitbull’s grito and are instantly informed that the song originates from one and only Pitbull himself.

Thus, it can be said that for non-conventional marks like sound marks, under the US Trademark laws, a sound mark shall be given trademark protection only and only, they are capable of acquiring a secondary meaning besides possessing an intent to be used with respect to their goods and services. Such a requirement may not be a straight jacket rule for protection of marks like sound marks, in other parts of the world.

For instance, In India, for the registrability of a sound mark, it must be capable of being represented graphically and which in turn capable of distinguishing the goods and services of its goods and services with that of others.[6] Talking further on sound marks, India has no system of principle register or supplemental register per se, as existing under US Trademark Laws. Moreover and in addition to the requirement of the distinctiveness of a mark, the Trademark Rules mandate that the application if consisting of a sound as a trademark – Firstly it must be submitted in MP3 format, not exceeding 30 seconds in length and recorded on a medium which allows easy and clear audible replaying and secondly must be accompanied with a graphical representation of its notations.[7]

Unlike USA, India is yet to provide protection to a sound within a song but there are few registrations which are quite intriguing in itself. Such as the “Yahoo yodel” and the corporate jingle of ICICI Bank. The Yahoo yodel sound was filed for the registration of a sound mark in-Human voice yodelling Yahoo, under classes 35, 38 and 42. Whereas the latter was, one of its kind to be registered in the name of an Indian entity, filed under class 36 for ICICI’s Corporate jingle – DhinChikDhinChik). Talking more of such intriguing registrations – the trademark office recently,  granted registration to the sound of ‘click’ to the renowned cigarette Lighter manufacturer- “Zippo”, under class 34.

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I would like to extend my sincere thanks to the editors of The IP Press for their guidance.

[1] 15 U.S.C 1052, Lanham Act, 1946

[2] 15 U.S.C 1091, Lanham Act, 1946

[3]See Trademark Manual of Examining Procedure, TMEP- 1202.15 (2018)

[4]In re Gen. Electric Broad. Co., 199 USPQ 560, 563 (TTAB 1978)

[5]In re Vertex Grp. LLC, 89 USPQ2d 1694, 1700 (TTAB 2009)

[6]§ 2 (1) (zb), Trademark Act,1999

[7] Rule-26 (5), Trademark Rules,2017