Rapala, the world’s largest manufacturer of fishing lures has pleasured us with some pretty clever and creative advertisements over the years, a lot of them award-winning ads too. For example, Carmichael Lynch created the above billboard ad that over time gradually “attracted cats” to the billboard featuring a super-sized Rapala minnow fishing lure. Lots of cats, in fact, many more than you can shake a stick at, you might say, if you fancy idioms and don’t happen to be fond of those feline types. Carmichael Lynch notes: “With simplicity and humor, we’ve helped the [Rapala] brand connect with its enthusiast audience and grow to be the undisputed market leader for fishing lures.” This is simply delicious creativity.

More recently, however, the undisputed market leader for fishing lures is now using the brand name of the undisputed market leader for Internet search engines in Rapala billboard advertising, apparently to continue growing Rapala’s fishing lure business. Although there are Twitter tweets and other mentions on the web referring to this new Rapala billboard ad, I haven’t been able to locate an online image yet, so I’ll have to take a picture of the one I have seen myself and post it here when I can. In the meantime, just picture the above billboard minus the cats (and minnow lure) and with this slogan in large prominent black type above the red Rapala logo: “More Hits Than Google“. Is this new Rapala billboard ad one of the award-winning variety?

What does an Internet search engine have to do with a fishing lure anyway? Apparently, quite a lot, at least, in a macro sense. Successful ones from each variety are measured by the number of “hits” they are able to attract. Lures attract fish hits: “One of the greatest moments for any fishermen is when a huge bass ‘hits‘ their top water lure“. A search engine attracts Internet user hits to itself and various other searched-for websites and blogs: Hit means a “connection made to a website over the Internet or another network: Our company’s website gets about 2,000 hits daily.”

In any event, if there were awards given for ads that raise questions of interest to trademark types, then Rapala’s “More Hits Than Google” billboard ad may be in the running for at least a (Dis)Honorable or Honorable(ss) Mention. As a trademark attorney, I am always drawn to and intrigued by ads that use the trademarks of others, especially those far outside the context of comparative advertising, where the justification to do so seems somewhat “fishy,” or at least, more strained. They are particularly interesting to me because they raise so many questions for trademark types to wonder about.

Here are but a few questions to ponder: Why mention Google by name? Why mention any search engine by name? What would be lost by saying instead: “More Hits Than Your Favorite Search Engine?” Was the ad reviewed by legal? Was the ad cleared by legal? Note the difference between the previous two questions? Was Google asked for permission? Did Google grant permission? Is Google’s permission needed? Does this use of the Google brand constitute nominative fair use? Does the ad suggest any sponsorship or endorsement by Google? Is the ad likely to confuse any consumers as to whether there is some sort of connection between Rapala and Google? Does your answer change to either of the prior two questions, knowing that Rapala billboard ads use a Google-like minimalist design having a stark white rectangular background with other minimal content centered in the white rectangle? Is Google aware? Does Google care? Does the ad contain a claim that requires substantiation? Would anyone take it literally? Does it constitute mere puffery? I could keep going, but you get the idea, right?

In case you’re interested, still hungry, and not exhausted by all these unanswered questions, here are a couple of my prior posts discussing the use of another’s trademark in advertising:

  1. Picking Levi’s Pocket or Nominative Fair Use; and
  2. Using Another’s Body to Sell Your Products? The Problem of Airbrushing Non-Traditional Trademarks.

 

  • Well, it could’ve been worse. What if the copy said “More Hits Than Googling”?

  • The billboard really caught my eye (few do). I found it to be very clever.
    I’m sure a few fisherman have used the line already. I can see catching a fish, looking over at my fishing buddy and saying, “This Rapala gets more hits than Google.”
    Good stuff!

  • Frank T

    I really hope someone can get a pic of this ad sometime; if you go to the front page of Rapala’s USA website, they scroll through a bunch of similar ads (but not this one). I usually think billboards are either dangerous (e.g. ones that flash messages) or uninspired, so I was pleasantly surprised to see one that’s actually pretty clever. I’m also a geek who grew up in the country…
    Also, I’m pretty sure this ad could only be called “confusing” if you assume a very low standard of intelligence on the part of the viewer, or a very low standard of life experience. I saw this ad on the outskirts of a metro area in a US state where outdoor activities are very popular, so I doubt many people here are confused. However, in a place like NYC it might be confusing because fewer people have ever gone fishing.
    P.S. IANAL, but I’m likely more well-read than the average person when it comes law. And I find it hilarious that you ask some incredibly inane questions about the ad (e.g. “why did they name Google?”); I would hope that a trademark attorney would at least have some basic intuition about what makes a good ad.

  • I haven’t seen the billboard just yet, but it sounds like a great tagline. In full disclosure I do fish, but then again so does the target audience so maybe that’s okay.

  • All, thanks for taking the time to share your insights and comments. I do now have an image of the Rapala “More Hits Than Google” billboard sign, and I’ll post it as soon as I can get it downloaded from my camera and uploaded to the blog, hopefully later today since I don’t have the camera with me right now. As you will see, the only difference to how I described it above and the actual photo is that it does have a minnow lure depicted above the advertising slogan: “More Hits Than Google,” I had forgotten the minnow lure graphic was on that billboard.
    In any event, Joe, I can imagine the very dialogue you suggested happening between fishing buddies, and who knows, that may have been the marketing impetus for the billboard slogan, but what consumers might say between themselves can’t necessarily or automatically be appropriated, repeated and promoted by a manufacturer in its advertising without risk of infringement, dilution, or false and misleading advertising.
    And, Frank, while I can sympathize with your amusement over the questions I asked, questions you consider to be “incredibly inane,” I’m guessing that the very bright lawyers for both Rapala and Google (that’s not me) would not treat them in such a cavalier fashion because they actually go to the heart of some of the possible legal claims and exposure that manufacturers risk when they use another’s trademark in their own advertising to draw attention to and sell their own non-competitive products or services. Actually, I made no attempt to list them all, but to avoid bringing you to tears in laughter, I’ll refrain from further adding to the list of questions here.
    What you might be surprised to learn, Frank, is that the trademark laws are designed to protect consumers, even those having a “low standard of intelligence” that you assert would be necessary for anyone to be confused here. In fact, for infringement to exist, evidence of “actual” consumer confusion it not a requirement; the standard of liability is a “likelihood” of confusion among actual and potential consumers. And it doesn’t have to be “likelihood of confusion” as to the source of the product (thinking that Google and Rapala are one in the same), likelihood of confusion as to any sponsorship, affiliation, or other connection between the parties is enough. In fact, properly conducted consumer surveys showing even 15% of consumers confused by an ad have been found sufficient to establish the necessary “likelihood of confusion” and infringement. So, from a legal perspective, it is not a stretch at all to imagine a properly conducted survey showing at least 15% of respondents thinking that Rapala needed Google’s permission to run the ad, putting aside the questions of whether permission actually was requested or obtained.
    At the risk of opening a brand new “can of worms” on this topic, it is worth noting, we haven’t even talked about trademark dilution as a possible legal claim here. Federal and state laws protect against “dilution” of the distinctive quality of a famous trademark and I dare say most would view Google as a truly famous mark worthy of this exhalted protection. To succeed in bringing a dilution claim no evidence of likely confusion is required, since the legal standard is likely dilution, not confusion. The standard was recently lowered from “actual” dilution to a “likelihood of dilution,” and while there is a safe haven for “fair use” under certain specified circumstances, it is an open question as to whether those exceptions are applicable here, hence the littany of questions I asked in the opening post.
    Last, while I believe I have a fair sense for what makes a “good” ad as a consumer, perhaps one that creates a strong motivation to buy the product or service in question, as a trademark lawyer, I recognize and appreciate that not all ads that are effective in motivating purchasing decisions pass legal scrutiny.