A trademark case to keep an eye on this year is Girl Scouts of the USA v. Boy Scouts of America, case no. 1:18-cv-10287, which was filed last November in the United States District Court for the Southern District of New York and is currently in the discovery phase.
Being familiar organizations to many of us, the Girl Scouts and Boy Scouts have peacefully coexisted for decades in the U.S. for their respective leadership development services traditionally offered exclusively to girls or boys. Although both are congressionally chartered organizations, they are not affiliated or associated with each other. Each owns numerous federal trademark registrations for their GIRL SCOUTS and BOY SCOUTS brands.
Now, in light of a recent policy change by the Boy Scouts of America (BSA) to begin enrolling girls as well as boys, the Girl Scouts of the United States of America (GSUSA) contends that BSA has crossed the line into its protected trademark space.
Girl Scouts' Complaint
GSUSA alleges numerous claims against BSA, including trademark infringement, dilution, unfair competition, tortious interference and deceptive business practices under federal and New York state laws.
According to GSUSA, as part of its recent decision to begin admitting girls into its ranks, BSA has engaged in a rebranding effort to "alter its core brand identity from BOY SCOUTS to SCOUTS," and has started using marks such as SCOUTS BSA, SCOUTS and SCOUT ME IN. The BSA's recruiters and marketing materials allegedly use the GIRL SCOUTS trademarks in promoting BSA's services, which has given consumers the impression that the organizations have now merged. GSUSA claims that BSA does not have the right to use the marks SCOUTS or SCOUTING alone in connection with leadership development services offered to girls.
To support its allegations made in the complaint, GSUSA includes numerous examples of the alleged infringing activities by BSA, including evidence of actual confusion by parents who accidentally registered their daughters with BSA thinking they were registering with GSUSA, and marketing materials distributed by BSA with the GIRL SCOUTS trademark on them.
GSUSA also alleges that BSA has "received significant negative publicity regarding its activities conducted under the BOY SCOUTS and SCOUTS marks," such that its goodwill in those marks used in connection with leadership development services for boys has been damaged, and that the GIRL SCOUTS mark will be tarnished by consumers mistakenly believing the two organizations are associated.
GSUSA seeks preliminary and permanent injunctive relief, withdrawal of BSA's pending trademark applications for SCOUTS BSA and SCOUT LIFE, partial cancellation of BSA's SCOUT registration and treble damages for BSA's willful infringement, among other relief.
Boy Scouts' Response
BSA filed a motion to dismiss, claiming that GSUSA failed to state a claim for tortious interference with prospective business relations under New York state law and asking the court to dismiss GSUSA's claims to the extent they depend on GSUSA's purported common law rights in the marks SCOUT or SCOUTING. BSA's motion to dismiss was dismissed without prejudice as being premature.
In turn, BSA disputed GSUSA's claims in its answer. BSA alleges to own registered and/or common law trademarks for SCOUT, SCOUTS and SCOUTING, and claims that it has provided leadership development services under these and other marks for boys and girls for nearly 50 years. Thus, to BSA, the organizations have been coexisting for decades and there is room for both to offer their services to girls and boys.
BSA denies that GSUSA uses the marks SCOUTS or SCOUTING alone and alleges that it only uses those terms with the term GIRL. BSA denies that it authorized some of GSUSA's alleged evidence of infringement. BSA also contends that while it has received unfavorable publicity, it has also received positive publicity for the strong youth protection policies that it has adopted.
In its affirmative defenses, BSA raises a First Amendment issue – that GSUSA's claims violate BSA's right to freedom of association in connection with its trademark rights – as well standing, abandonment and trademark misuse defenses based on BSA's allegations that GSUSA does not use SCOUT, SCOUTS or SCOUTING alone, without GIRL.
Scouting Out the Case
It will be interesting to see how this case shakes out. One side claims to have evidence of actual confusion, which typically weighs heavily in proving likelihood of confusion in a trademark infringement case. Yet on the other side, we have a claim of ownership in the SCOUT, SCOUTS and SCOUTING marks alone and an alleged coexistence of offering services to both boys and girls for over 50 years. To top it off, we have a First Amendment issue due to GSUSA seeking a finding that the organizations can only serve girls or boys and BSA wanting to be inclusive and offer its services to all genders. Another issue to consider is if BSA is offering its services to girls, can it also use the term GIRL in connection with SCOUT, SCOUTS or SCOUTING? Stay tuned!
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