Trademark Infringement Merit Badge for Boy Scouts? Girl Scouts Claim Boy Scouts Aren’t Playing Fair.

On November 6, the Girl Scouts of the United States of America (“GSUSA”) filed a lawsuit against the Boy Scouts of America (“BSA”) alleging, most notably, that BSA’s use of its SCOUTS and SCOUTING marks and derivatives thereof in connection with services offered to both boys and girls infringes GSUSA’s GIRLS SCOUTS marks. Both GSUSA and BSA offer leadership development services geared towards children and young adults and have generally followed gender-exclusive membership policies.

BSA recently decided to allow girls to participate in all of its services. On October 11, 2017, BSA announced that its inclusionary efforts would start with allowing girls to enroll in its CUB SCOUTS program[NL1] . Girls will be allowed to enroll in the BOY SCOUTS program in February 2019.

BSA intends to rebrand the BOY SCOUTS as “SCOUTS BSA” and has filed two trademark applications to that effect:

• SCOUTS BSA (Serial No. 87/906,407), applied for on May 3, 2018 in connection with “Indicating membership in an organization for youth” in International Class 200; and

• SCOUTS BSA (87/906,567), applied for on May 3, 2018 in connection with “Educational services, namely, providing programs and activities for youth in International Class 041.

            BSA has also filed an application for:

• SCOUT LIFE (Serial No. 87/882,226), applied for on April 18, 2018 in connection with “Magazines directed to the interests of the members of a youth organization” in International Class 016; and “Providing online magazines directed to the interests of the members of a youth organization” in International Class 041.

BSA intends to refer to its members as Scouts rather than Boy Scouts. BSA has also adopted the slogan “SCOUT ME IN” as part of a campaign celebrating BSA’s “expansion to serve families and welcome girls and boys into Scouting in communities across the country.”

Further, GSUSA contends that BSA has been using its SCOUTS and SCOUTING marks and derivatives thereof as a means to recruit girls into BSA’s CUB SCOUTS and BOY SCOUTS programs.

GSUSA stipulates that the cornerstone of its brand identity, the “famous” GIRL SCOUTS trademarks are “powerful symbols of…goodwill” and embody the core mission of GSUSA, namely, the empowerment of young women. GSUSA’s federal registrations include:

• (U.S Registration No.: 1,318,643), registered on February 5, 1985 for use in connection with “Educational Services-Namely, Conducting Programs and Activities for Girls and Young Women to Promote Social, Physical and Intellectual Growth and Development” in International Class 041; and

• (U.S Registration No.: 1,142,666), registered on December 9, 1980 for use in connection with “Embroidered Patch” in International Class 026.

 GSUSA notes Congressional charters and separate grants of intellectual property rights granted to GSUSA and BSA that are specific to girls and boys, respectively. Therefore, GSUSA argues, the use of SCOUTS, SCOUTING, and derivatives thereof by the two organizations has historically been distinct. GSUSA adds that BSA’s decision to use the SCOUTS and SCOUTING marks and derivatives thereof without a gender qualifier in connection with services for girls threatens this historic distinction.

GSUSA contends that the public recognizes that the SCOUTS and SCOUTING marks, and any derivatives thereof, belong exclusively to GSUSA“ when used in connection with leadership programs and related services for girls.” GSUSA believes that BSA’s rebranding will “falsely communicate” that BSA is the only organization offering leadership development services to girls under SCOUTS, SCOUTING and derivatives thereof. GSUSA contends that this will result in consumer confusion, damage to the goodwill of the GSUSA GIRL SCOUTS marks, damage to the GSUSA brand identity and cause the public to believe that GSUSA’s services are not official.

GSUSA points to a variety of occasions in which BSA regional councils, local troops, and individual leaders have used SCOUTS, SCOUTING, and derivatives thereof in an infringing manner to advertise BSA activities geared towards girls.  For example, GSUSA introduces BSA fundraising material advertising “New BSA Girl Scouting Programs” and a BSA flyer advertising a “Girl Scout Volunteer Opportunity.” Further, BSA has displayed quotes from Juliette Gordon Low, the founder of GSUSA, on its advertising. GSUSA alleges BSA has largely ignored GSUSA’s letters and other communications requesting that it stop the infringing activity.

Further, GSUSA makes note of various incidents which it alleges are examples of actual confusion among consumers resulting from BSA’s advertising and promotional material described above. Particularly, GSUSA references instances where parents have mistakenly signed up their daughters for the BOY SCOUTS.

It is unfortunate that GSUSA and BSA, despite their historic relationship and parallel missions involving the promotion of leadership and community engagement among the youth, have had to resort to litigation to resolve the dispute.  GSUSA’s famous GIRL SCOUT marks are intrinsically tied to GSUSA’s brand identity.  The evidence that GSUSA introduces suggests that if BSA continues to use SCOUTS, SCOUTING, and derivatives thereof in connection with services offered to both boys and girls, GSUSA could fade into obscurity. It is unsurprising that GSUSA has taken issue with BSA’s conduct. GSUSA notes in the complaint that historically BSA has used the EXPLORER and VENTURING marks in connection with services offered to girls. If BSA is trying to rebrand itself to foster inclusivity, BSA could just as easily come up with something different to SCOUTS BSA- perhaps something along the lines of PATHFINDERS BSA?             GSUSA has requested an injunction stipulating, most notably, that GSUSA stop using SCOUT, SCOUTING and derivatives thereof (without a preceding distinctive term) in connection with services offered to girls. BSA has yet to file an Answer, so it remains to be seen how this cookie will crumble.

Aidan Murray is an LLM candidate, 2019, at NYU School of Law.