On November 6, 2018, the Girl Scouts of the United States of America ("GSUSA") filed a complaint against the Boy Scouts of America ("BSA") in the Southern District of New York for trademark infringement, unfair competition and trademark dilution. GSUSA has been in operation for over 106 years and is currently serving about 2 million active members. In contrast, BSA's membership has been dwindling. Currently serving 2.28 million members, BSA is at less than half of its peak membership level reached in the 1970s. In an attempt to increase enrollment, BSA has rebranded, announcing that it would accept girls into its Cub Scouts program starting in 2019. In its complaint, GSUSA submits that BSA may not, under federal and New York trademark law, use "SCOUT," "SCOUTS" and "SCOUTING," in relation to offering youth development programs to girls.
Why is GSUSA bringing this lawsuit?
GSUSA and BSA's Ability to Coexist
Since its inception in 1912, GSUSA has coexisted with BSA, with each organization helping develop life skills for their respective young members. However, until BSA's rebrand, the words "SCOUT," "SCOUTS" and "SCOUTING" have always been used in conjunction with the words BOY or GIRL to provide context that would differentiate the services of each respective organization. In its lawsuit, GSUSA maintains that BSA is creating consumer confusion in the marketplace by competing for girls to enroll in its programs.
Actual Confusion Under Trademark Law
GSUSA believes that the BSA rebrand is misleading consumers as to the source of BSA goods and services and has created actual confusion in the marketplace. In its complaint, GSUSA provides evidence of actual confusion by including documented examples of where Boy Scout council representatives have stated that the organizations are now combined and advised potential Girl Scouts that "it is all the same now." Evidence of actual confusion can weigh heavily in favor of trademark owner plaintiffs and enough potential immediate damage may warrant injunctive relief. To bolster its argument, the GSUSA complaint includes an exhibit comprised of a filing that BSA made in 2004 with the Trademark Trial and Appeal Board ("TTAB"), admitting "that GSUSA owned exclusive, congressionally granted rights to SCOUTS and SCOUTING with respect to youth development programs for girls." In its request for relief, GSUSA is asking the court to: 1) preliminarily and permanently enjoin BSA from using any GSUSA trademarks or using "SCOUT," "SCOUTS," "SCOUTING" or "SCOUTS BSA" without a distinguishing term; 2) require trademark training for all Boy Scout personnel in order to prevent consumer confusion in the marketplace; and 3) order the withdrawal of BSA's trademark applications for the terms "SCOUTS BSA" and "SCOUT LIFE."
Seek out the Expertise of a Trademark Law Attorney
Litigation involving issues of trademark law can often be a long and expensive proposition. Consulting a trademark attorney early in your branding process can help minimize the risk of unwelcome legal issues down the road. If you are involved in a trademark dispute or need legal counsel in connection with your brand strategy, please email us at info@kleinmoynihan.com or call us at (212) 246-0900.
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