A trademark infringement dispute involving unlikely opponents made national headlines last fall when the Girl Scouts of the United States of America (GSUSA) filed suit against the Boy Scouts of America (BSA), following BSA's decision to start admitting girls and rebrand its leadership program for older kids as "Scouts BSA." In Girl Scouts of the United States of America v. Boy Scouts of America, filed on November 6, 2018 in the Southern District of New York, GSUSA alleges that BSA's new branding infringes GSUSA's trademark rights.
Although the two organizations have never been associated with one another, they have coexisted for more than 100 years. Then, in October 2017, BSA announced that, starting in 2018, it would begin welcoming girls into its ranks for the first time. While some welcomed BSA's decision as a progressive move, it was also met with controversy, and GSUSA immediately began speaking out against it. In May 2018, BSA announced that it was changing its branding as well, revealing "Scouts BSA" as the new name of the organization's program for children ages 11-17 and launching a promotional campaign featuring the tagline "Scout Me In."
In its complaint, GSUSA alleges that BSA's use of "Scouts BSA," "scout" "scouts" and "scouting" in connection with leadership development services for girls creates a likelihood of confusion with GSUSA's trademarks, which include several registered "GIRL SCOUTS" word and design marks, and its common law rights in GIRL SCOUTS and SCOUTS. GSUSA cites numerous promotional materials released by BSA targeted at girls that refer to "Scouts" or "Scouting" and other advertising materials that use phrases such as "New BSA Girl Scouting Program," "Girl Scouts BSA Troop," "Boys/Girls Scouts of America" and "Boy and Girl Scouts." GSUSA also alleges that there have been numerous instances of actual confusion among the public in different states, where parents have mistakenly enrolled their daughters in BSA's program believing they were signing up for Girl Scouts. Its complaint points to reports that some BSA representatives have even told parents, teachers and people in control of recruitment events that the Boy Scouts and Girl Scouts have merged.
GSUSA is asking the court to enjoin BSA from using the terms SCOUT, SCOUTS, SCOUTING, or SCOUTS BSA on their own without other distinguishing terms appearing before them. GSUSA is also demanding that BSA withdraw, amend or cancel several of its relevant trademark applications and registrations in the United States. It is also asking the court to require BSA to train its local leaders and troops about preventing confusion between the two organizations.
Ultimately, both GSUSA and BSA are looking to keep their membership numbers afloat, find ways to successfully evolve with the times, and protect their respective public images.
This case is an excellent illustration of how trademarks are among a business's most valuable assets, and how trademark law can be an effective tool in protecting the core interests of a business. It also demonstrates the challenges that businesses with arguably descriptive marks may encounter when trying to stop others from using certain words in their branding.
GSUSA may have an uphill battle here given the arguably descriptive quality of the terms GIRL SCOUTS and SCOUTS (although the terms may have acquired distinctiveness given that GSUSA has used them for so many years). It will be interesting to see how this case develops, and how these two long-running organizations can continue to coexist.
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