There is at least one more 2018 Rapala billboard out there, just netted this one over the weekend:

Rapala’s clever Minnowsotan billboard inspired me to cast a few lines about the law concerning trademark disclaimers, as they often reel in some great questions from branding professionals.

Tim did a helpful post on trademark disclaimers, guiding why the USPTO requires them, their legal implications, and encouraging brand owners to properly resist them when they are unwarranted.

Let’s suppose Rapala sought to register Minnowsotan as a trademark for fishing lures. Putting aside wondering whether this little fish might ever attack, Rapala should lose no sleep wondering whether it would be required to disclaim “minnow” from the would-be Minnowsota trademark. No.

While it is true that “minnow” is an element of Minnowsotan, and there should be little debate that “minnow” is either descriptive or generic for a fishing lure depicting a minnow, a disclaimer is not required under the law by the USPTO when the applied-for mark is unitary (TMEP 1213.05):

“The test for unitariness inquires whether the elements of a mark are so integrated or merged together that they cannot be regarded as separable.”

“A unitary mark has certain observable characteristics. Specifically, its elements are inseparable. In a unitary mark, these observable characteristics must combine to show that the mark has a distinct meaning of its own independent of the meaning of its constituent elements. In other words, a unitary mark must create a single and distinct commercial impression.”

Using Minnowsotan as a trademark school hypothetical, it would be a pretty clear example of unitariness — with no need for a disclaimer, but what about Minnow Spoon for fishing lures?

In other words, is Minnow Spoon unitary for a fishing lure that depicts a minnow on a spoon lure?

Perhaps a cloudier answer than for Minnowsota, but usually two-word marks without compression, telescoping, or hyphenation, will require disclaimers of any descriptive or generic wording.

As it turns out, Minnow Spoon once adorned the Supplemental Register, as a merely descriptive composite mark, only capable of being distinctive, with no disclaimer of the generic “spoon” word.

Reading between the lily pad leaves, it appears the USPTO twice has considered Rapala’s Minnow Spoon to be unitary, as it allowed Rapala to federally-register the two-word mark on the Principal Register too, without a disclaimer of the obviously generic second term “spoon” for fishing lures.

Yet, that consistent disclaimer treatment appears inconsistent with the USPTO’s previous disclaimer requirement for “spoon” with the four-word Rapala Weedless Minnow Spoon mark.

Without getting too tangled up in the weeds at the USPTO, while generic matter must be disclaimed from marks registered on the Supplemental Register and the Principal Register (even under a showing of acquired distinctiveness, as was the case with Minnow Spoon), a disclaimer should not be required by the USPTO, if the composite mark is unitary.

Given that guidance, what would you expect with the “Original Finnish Minnow” mark? Well, that one was treated as not unitary, it appears, since a disclaimer of “minnow” was required. And, the same is true for Minnow Chaser and Clackin’ Minnow, as each one had “minnow” disclaimed.

The crazy thing about the “minnow” disclaimer for Clackin’ Minnow is that it was a Supplemental Registration, so the disclaimer should mean that “minnow” actually is generic for fishing lures.

A school of minnows in trademark class might be left thinking that both of the terms “minnow” and “spoon” are generic for lures, highlighting the importance of resisting them when appropriate.

What would Mother’s Day be, at least in Minnesota, without the fishing opener near by?

What would another fishing opener be without Rapala’s distinctive slate of billboard ads?

Here is an engaging pair of billboard ads currently running, if you’ve seen others, let us know:

My personal favorite between them would be Wassup, dock? — love the double meaning and nod to the Warner Brothers and Bugs Bunny trademark saying to Elmer Fudd, What’s Up Doc?

What’s the other meaning to Wassup, dock? One of my sons tells me that bass like to hang around under docks, so the friendly little crank bait is just getting acquainted with his/her surroundings.

Which one do you like better, lighting aside? And, by the way, what is your all-time favorite from the annual Rapala line up that we’ve been covering for a whole ten seasons now?

Rapala’s “More Hits Than Google” Billboard Update (Photo Included) (2009)

Good Bye Google, Hello Whudjagiddumon? (2010)

Rapala Taunts a Monster? (2011)

Rapala: Happy Fishing on Mother’s Day (2012)

Rapala Billboard Ads Continue to Engage (2013)

Eat More Walleye? (2014)

Top Ten Questions About Rapala Minnocchio (2015)

I Get It, Rapala Will Fill Up Your Fish Cooler! (2016)

Rapala’s Public Service Announcement? (2017)

What would this time of year be without us sharing and discussing the Rapala billboard ads?

RapalaDontTextandFishSorry for my delay in reporting Rapala’s annual billboard campaign, which began about a month ago, right around the fishing opener, more on my delay later.

As you can see, it reads more like a tongue-in-cheek public service announcement than past billboards, playing on the serious problem of texting while driving.

Anglers probably handle their cell phones more now than ever before while fishing, otherwise how would they capture notable moments for social media bragging rights?

Hopefully the humor in this Rapala ad won’t dilute the effectiveness of the many other ad campaigns designed to curb the dangerous activity of texting while driving a motor vehicle.

How would you assess this Rapala campaign?

CaptainPhilipRapalaIt took me a little while to find the message and humor in this one. I’m generally not the first to get the joke, probably dead last on this one though, since the fishing opener was last month.

As you know, we have enjoyed commenting on Rapala’s billboard ads each year, but when I first saw this one, I figured it must relate to some inside joke about a certain film I never saw.

How much do you like this Rapala Billboard ad?

I’ll ask a larger question too, how do marketing types go about predicting ad effectiveness when the embedded and intended humor is not immediately accessible to all potential consumers?

In typical DuetsBlog tradition, here is Rapala’s 2015 billboard for the fishing opener, albeit a few weeks late:

minnochio

I’ll have to admit, I like the telescoped Minnocchio word, and the consistent graphic display from past years, but my head is feeling pretty wooden at the moment, so I need your help, because I’m totally stumped by these questions about the point of the billboard advertisement:

  1. Is Rapala promoting a new lure made of wood named Minnocchio?
  2. Does this new lure come equipped within a fresh bed of wood shavings?
  3. Could Rapala be promoting that its lures are hand-crafted by Geppetto?
  4. Are they really hand-crafted? I’m thinking not, so let’s try another angle.
  5. Pinocchio is known for telling tall tales, so do the preceding questions qualify?
  6. If the point of the billboard is about lies, isn’t Rapala the only one speaking here?
  7. Should we be concerned about Rapala’s comfort with the truth about its product claims?
  8. Does Rapala believe that anglers from Minnesota are prone to telling tall tales?
  9. Do the minnows caught using Rapala lures grow when discussed around the campfire?
  10. Is there really no point intended by the billboard, except to provide useful blog-fodder?

Perhaps my density today is heavier than a hunk of snakewood, so please feel free to enlighten me, I really don’t get it. Dear readers, please feel free to grow the list of questions in the comment section.

It’s that time of year again, the Minnesota fishing opener is upon us this weekend, so Rapala is sporting its new billboard in the Twin Cities metro area, as shown below:

“Winner, winner, walleye dinner,” is an obvious play on the far more frequently uttered “winner, winner, chicken dinner” positive outcome phrase, that apparently derives from early casino dining experiences. In fact, Ballys has decided to cash in on this phrase by obtaining a federal registration covering the phrase for gaming machines.

And, last year, Raising Cane’s, a fast food chicken restaurant chain (one that my kids strongly prefer over Chick-fil-A, by the way) obtained a federal registration for the same phrase in connection with restaurant services.

Yet, less than two months ago, an intent-to-use application for “Winner! Winner! Grouper Dinner!” was filed by Team Lobo in Naples, Florida, for t-shirts, so I suspect we won’t see Rapala’s above tagline appearing on t-shirts this year. For a comparison of nutritional facts concerning grouper v. walleye, see here.

Curiously, last year Rapala expressly abandoned its “Bass Friends Forever” t-shirt trademark application, shortly after it was published for opposition, leaving us to wonder who may have added some tension to their fishing line? Perhaps PVH Corp, based on these rights in BASS?

So, here’s my suggested Rapala billboard tagline for next year: Eat More Walleye.

What do you suppose Chick-fil-A would have to say about that?

In case you’re wondering about status of the Eat More Kale dispute — the USPTO has been sitting on Bo Muller-Moore’s 71-page Office Action Response for eight months now, so stay tuned.

It’s that time of year again. The fishing opener in Minnesota is upon us this coming Saturday, so Rapala is sporting its new billboard advertisement.

Judging from USPTO trademark filings, it looks like the cutesy “Bass Friends Forever” tagline is intended to adorn clothing items too.

You will recall that we have consistently covered various iterations of the Rapala billboard ads over the last five years:

Despite the annual rotation of taglines (nicely creating yearly anticipation), there is a very consistent look to the billboard ads, with the Google-like clean white background, the contrasting red-colored Rapala logo, the eye-popping black-colored words for the new season, and finally the same artificial lure positioned top and center. This consistent use leaves me wondering about non-traditional trademark protection for the particular lure, not knowing whether it is unique to Rapala or a generic, functional, public domain lure design. Anyone, anyone?

As it turns out, while I suppose it is possible Rapala enjoys design patent protection for the repetitively seen lure, there are currently no trademark filings to cover it, which is particularly interesting as Rapala does have a few federal trademark registrations for some other fishing lure configurations (that it appears to have acquired from Blue Fox Tackle Company):

 

 

 

 

 

 

 

Are there any hardcore fishers of men and women who might be able to explain why these product configurations are more important to protect than the one appearing on billboard ads — almost as a non-verbal company signature?

Well, it’s that time of year again. Happy Mother’s Day to all the moms out there — even those who don’t fish.

Our very own Susan Perera is a brand new mom, so a very special celebration for you Susan!

We have been following Rapala billboard ads for the last several years, right around the time of the fishing opener (and Mother’s Day), and the 2012 edition is shown above and to the left.

I’ll have to say, I’m not very moved by Rapala this year, past years were far more creative in my opinion:

Rapala Taunts a Monster?

Good Bye Google, Hello Whudjagiddumon?

Rapala’s More Hits Than Google Billboard

Rapala Fishing Lures: More Hits Than Google? Or, More Cats Than You Can Shake a Stick At?

Which one is your favorite?

Happy Mother’s Day!  So, it’s time again to talk a little fishing billboard branding, I guess.

We have enjoyed discussing Rapala billboard ads over the last couple of years, the “attracting cats” billboard, the “More hits than Google” billboard, the “Whudjagiddumon” billboard, and now the “Do you believe in monsters?” billboard.

Note the upper case “G” in Google and the lower case “m” in monsters.

Normally you’d think that the lower case usage would be contrary to a brand or trademark reference, but as we’ve seen with the growing trend toward lower case branding and visual identity, who can really tell anymore?

Given that, might the notorious trademark bully Monster Cable be frightened into objecting here?

If so, in my opinion, that would be taking trademark bullying to an entirely new level.

For other reports on the antics of Monster Cable, check out these sources:

Have you encountered Monster Cable in a trademark dispute before?

If so, please share your experience.

Someone who is in the business of repairing Volvo brand automobiles has the right to say so, in advertising, and elsewhere — without obtaining advance permission from Volvo — provided consumers aren’t likely to understand the advertisement or communication to mean that the repair services and/or the business providing them is authorized by, affiliated with, or otherwise connected to the Swedish automobile manufacturer. So, as is often the case, the devil is in the details of the advertisement or communication and how it is likely to be perceived by consumers.

Indeed, over the years, there has been much litigation over the trademark fair use right and defense of independent repair shops, but suffice it to say, for our limited purposes here, using the Volvo logo on signage or in advertising would most likely cross the fair use line. (Interesting history of the Volvo logo, here). Doing so takes more than necessary to communicate the simple truth and probably implies authorized status. Of course, other activities that fall short of logo use may too, but activities simply and truthfully representing that one repairs Volvo automobiles, without more, should be fair use — nominative fair use of a trademark, that is.

Over the last year and a half, we have written a lot about trademark fair use, both classic fair use and nominative fair use doctrines (Levi’s Double Arcuate Design, Corvette Shape, Rapala-Google Billboard, Google Fortune Kit, 3M’s Post-it Note, Wal-Mart Gift Cards, Match.com For Car Lovers, Cars.com/Twins Fans BillboardSummit Beer/Twitter Billboard), nevertheless, it is probably worth repeating the necessary elements of a successful nominative fair use trademark defense here:

(1) The product cannot be readily identified without using the trademark;

(2) Only so much of the trademark is used as is necessary for the identification; and

(3) No sponsorship or endorsement of the trademark owner is suggested by the use.

So, given these key elements of a successful nominative fair use defense, imagine my surprise each time I hear the ad — from a Relevant Radio sponsor on AM 1330 in Minneapolis — refraining from use of the two syllable Volvo brand name in the ad; instead, using precious airtime to read this cumbersome mouthful: "We Repair Automobiles From Sweden Starting With The Letter V," or something similar to that effect. This may very well define the need for the first element of the defense in being not "readily identified without using the" Volvo trademark.

Given that, each time I hear it, I’m left wondering why? As a trademark type, I’ll have to admit, it’s a bit annoying, since this extra verbiage is totally unnecessary and not legally required. So, here are a few ideas on the possible reason for the mysterious and puzzling substitution for the Volvo brand name:

  1. Engage (and hopefully not annoy some) consumers by communicating with a verbal puzzle;
  2. Avoid a possible unfortunate enunciation and unintended meaning [warning, graphic Urban Dictionary definition, I just discovered] of the Volvo brand name; and/or
  3. Serious misunderstanding of trademark nominative fair use principles.

Other possible explanations?

And, how many of you believe overzealous lawyers are responsible for this unnecessary verbiage?