Written by Courtney Allen, with some help from Chris McHattie.
Written by Courtney Allen and Chris McHattie No “Scout” About it, when the Boy Scouts of America announced plans to change their name to the more universal “Scouts BSA” to allow girls into the program, they probably hadn’t thought through the intellectual property implications. Unfortunately, the Girl Scouts did. The “Scouts BSA” change has resulted in the Boy Scouts being sued by the Girl Scouts for trademark infringement, as The Girl Scouts contend the boys have rights in “scouts” for boys, and the girls have rights in “scouts” for girls, and no one has rights in “scouts” for both boys and girls, particularly not the Boy Scouts, “scouts honor.”
The Girl Scouts filed a complaint in the Southern District of New York that focuses on the use of the word “scout” without a gender modifier. The Girl Scouts claim their right to use “Scout” and “Scouting” marks in relation to programs for girls has long been recognized by both the law and by the Boy Scouts organization. The Girl Scouts also to note that the two separate organizations have coexisted for decades based on the difference “in markets” (boys vs. girls) and the marks themselves (Boy Scouts vs Girl Scouts). The Girl Scouts Complaint is requesting that the Boy Scouts stop “using the marks SCOUT, SCOUTS, SCOUTING, SCOUTS BSA, or any variation thereof, alone without an inherently distinctive or distinguishing term appearing immediately before it, in connection with the marketing, promotion, advertising, sale or rendering of services directed to girls.”
The Girl Scouts have been using its mark since 1912 (with the first mark being Registered in 1924
) and they have secured and own multiple trademark registrations for its GIRL SCOUTS and GIRL SCOUTS & Profile Design marks, live ones shown below, including: most relevantly, in connection with “Educational services-namely, conducting programs and activities for girls and young women to promote social, physical and intellectual growth and development” (incontestable U.S. Trademark Registration No. 1,318,643).
The Boy Scouts, on the other hand, was established in 1910 and according to the USPTO has been using The BOY SCOUTS OF AMERICA mark since 1910 in connection with “membership in an organization for young men.” (US Registration No. 1363872) as well as other various trademarks that include the term SCOUTS, like CUB SCOUTS (US Registration No 1702357) and EAGLE SCOUT (US Registration No 3877547), with restrictions of only relating to an organization for boys or young men.
As a part of the Boy Scouts decision to accept girls, the Boy Scouts have now begun using and have filed several trademark applications to include non-gender specific goods and services:
- BOY SCOUT (Serial No 86939181) in connection with “membership in an organization for youth”
- SCOUTS BSA (Serial No 87906597) in connection with “educational services, namely, providing programs and activities for youth” in International Class 41.
- SCOUT LIFE (Serial No. 87/882,226) “magazines directed to the interests of the members of a youth organization” in International Class 16, and “providing online magazines directed to the interests of the members of a youth organization” in International Class 41.
The Girl Scouts filing seeks an Order requiring that these applications directed to BOY SCOUT, SCOUTS BSA and SCOUT LIFE be withdrawn with prejudice.
The Boy Scouts’ decision to open its programs to girls in an effort to ‘genericize’ the Boy Scouts brand, led the Girl Scouts to submit their Complaint and to do “what any brand, company, corporation, or organization would do to protect its intellectual property, the value of its brand in the marketplace, and to defend its good name.” The Complaint states: “Such misconduct will not only cause confusion among the public, damage the goodwill of GSUSA’s Girl Scouts trademarks, and erode its core brand identity, but it will also marginalize the Girl Scouts Movement by causing the public to believe that GSUSA’s extraordinarily successful services are not true or official ‘Scouting’ programs, but niche services with limited utility and appeal.”
The Girls Scouts claim they have already been damaged by the name change announcement, saying that “throughout the country, families, schools and communities have been told that GSUSA and BSA have merged, or even that GSUSA no longer exists.” With such similarities in name and services, it’s not entirely surprising that “Parents interested in signing up for Girl Scouts programs have instead mistakenly signed up for the new girls’ programs offered by BSA,” as stated in the complaint.
The Boy Scouts said in a statement it was reviewing the lawsuit carefully and added, “We applaud every organization that builds character and leadership in children, including the Girl Scouts of the USA, and believe that there is an opportunity for both organizations to serve girls and boys in our communities.”
The Girl Scouts of USA are seeking an injunction against infringement of its trademarks and monetary damages, specifically “three times Defendant’s profits and three times GSUSA’s damages suffered as a result of Defendant’s willful, intentional, and deliberate acts,” “scouts honor”. (We’re hoping the availability of cookies will not be harmed by this lawsuit).
The case is Girl Scouts of the United States of America v Boy Scouts of America, U.S. District Court, Southern District of New York, No. 18-10287.