Boy Scouts vs. Girl Scouts: all is fair in a trademark war

February 2019 | PROFESSIONAL INSIGHT | INTELLECTUAL PROPERTY

Financier Worldwide Magazine

February 2019 Issue

After coexisting peacefully in the same marketplace for over a century, the Boy Scouts have decided to open their membership to girls. Nobody is contesting that they can, but the Girl Scouts are contesting how they do it.

The Boy Scouts of America (BSA) recently announced a major change: beginning in February 2019, they will drop the ‘Boy’ from their name, open their membership up to girls and be known as Scouts BSA. BSA and the Girl Scouts of the United States of America (GSUSA), founded in 1910 and 1912, respectively, have historically been exclusively open to the gender stated in their title – either boys or girls. Because they targeted different audiences, the two organisations coexisted peacefully in the marketplace for well over a century. However, following the BSA’s recent change, the GSUSA has filed a lawsuit alleging that this change violates one of the very values that both organisations were founded on – fairness.

In the complaint filed on 6 November 2018, in the US Federal District Court for the Southern District of New York, the GSUSA alleges trademark infringement, unfair competition and trademark dilution. The complaint provides various examples of how ‘Scout’ and ‘Scouting’, when used by BSA in connection with the recruitment of and marketing to girls, have become “confusingly similar” to the ‘Girl Scouts’ trademarks. GSUSA claims this similarity rises to trademark infringement. For example, GSUSA asserts that consumer confusion has been caused by the following statements by BSA: “Implementation of our new BSA Girl Scouting Programs”, “Girl Scout volunteer opportunity”, “Boys/Girls Scouts of America”, “Boy & Girl Scouts” and “Girl Scouts BSA Troop”. The GSUSA also alleges that confusion has arisen from the unauthorised use of their mission statement on BSA marketing materials and the use of a quote from the founder of the GSUSA placed prominently on BSA advertising.

Additionally, the complaint cites various instances of unfair competition by the BSA’s newly competing service. One allegation claims that representatives of the BSA in Texas stated, “it is all the same now” to prospective parents interested in signing their children up for the GSUSA, and that the “Girl Scouts are in our pack”. Another allegation claims that in North Carolina, several school principals told a Girl Scouts recruitment staff member that they thought the Girl Scouts visits had already been scheduled because a BSA representative “had told the schools that the Girl Scouts had been merged into the Boy Scouts”. Many of the allegations in the complaint do not appear to originate from the BSA executives but rather from the social media pages or fundraising flyers produced by their national volunteers: local councils, troops and leaders of the BSA. The BSA remains legally liable for the actions of each of their 1.2 million volunteers nationwide.

The GSUSA claims that due to these instances of trademark infringement and unfair competition, the GSUSA’s ‘Girl Scouts’ mark will be “both blurred and tarnished as a result of consumers mistakenly associating the two organisations” and the BSA has now “begun to create an improper association between that mark and a second source – BSA”. The GSUSA contends that if they continue to be powerless to prevent the BSA’s use of their mark, it will cause damage to “the goodwill of GSUSA’s Girl Scouts trademarks, and erode its core brand identity”.

This lawsuit presents a fascinating clash between nominative fair use and trademark infringement. As first enunciated by the US Court of Appeals for the Ninth Circuit in New Kids on the Block v. News America Publishing, Inc. “Where the defendant uses a trademark to describe the plaintiff’s product, rather than its own, we hold that a commercial user is entitled to a nominative fair use defence provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder”.

In their complaint, the GSUSA alleges that “With respect to the term scouts and scouting in particular, by virtue of the long history of use of the girl scouts trademark by GSUSA, the consuming public has come to recognise scouts and scouting as trademarks that, like the other GS Marks, belong exclusively to GSUSA when used in connection with leadership programmes and related services for girls”.

This presents the complex question: Is it possible for the BSA to open their membership to girls, to drop the ‘Boy’ from their name, and to identify their products and services directed to girls without infringing upon the ‘Girl Scouts’ trademark? If not, do they have an affirmative defence in nominative fair use? It is doubtful the BSA’s service to girls can be readily identifiable without any use of the Girl Scouts trademark. ‘Female’ or other gender descriptive terms other than ‘girl’ could possibly be used, but would not be consistent with the term ‘boy’ that has been used for over a century. However, to claim nominative fair use, the BSA would need to limit their use of the mark considerably from the allegations in the complaint, to be used only as is reasonably necessary to identify the service.

According to the US Patent and Trademark Office (PTO) website, the BSA filed several federal trademark applications in 2018 in connection with their rebranding efforts, including two filings for ‘Scouts BSA’ and one filing for the ‘Scout Life’. All three applications are currently still pending. Interestingly, since December 2015, the BSA has owned a trademark registration for the ‘Scout’ mark by way of assignment from a university.

There has been much speculation as to what made the BSA make this shift that put them on a collision course with the GSUSA. The BSA has declined to say if it had anything to do with the backlash they received after over a century of not accepting LGBTQ youth or openly gay leaders into their programme, or if it was due to their declining membership, at its peak having over 4 million participants, down to the current 2.4 million participants, according to their website. Chief Scout executive Michael Surbaugh explained the reasoning: “We strive to bring what our organisation does best – developing character and leadership for young people – to as many families and youth as possible as we help shape the next generation of leaders”.

Through their lawsuit, the GSUSA is seeking an injunction that, if granted, would prevent BSA from using any of the trademarks belonging to GSUSA, and also the marks ‘Scout’, ‘Scouts’, ‘Scouting’, ‘Scouts BSA’ or any variation thereof “without an inherently distinctive or distinguishing term appearing immediately before it” in connection with the marketing or promotion of any of the BSA’s services directed to girls. In other words, girls cannot be targeted without making it perfectly clear that it is not involving the GSUSA.

The BSA has not filed their response to the complaint yet, however it will be interesting to see if they claim nominative fair use as an affirmative defence or assert that the risk of consumer confusion has always existed and has not become ‘rampant’ as the complaint alleges. Ultimately, we will have to wait to see if this settles outside of court, or hear from the Southern District of New York on whether the BSA can resume coexisting peacefully in the marketplace with the GSUSA as ‘Scouts BSA’.

BSA has been making headlines recently for alleged sexual abuse of their members and potential bankruptcy filings. GSUSA has not been subject to the same number of high profile scandals that BSA has, and this lawsuit seeks to protect their “valuable goodwill that has grown over decades and been carefully protected”.

The outcome of this curious fight is worth keeping an eye on. Besides its impact on a well-known slice of Americana, it may well change how far one can take creative marketing, and the rights of a property owner’s right to designate their work with their own unique branding.

Sheila K. Meagher is an associate and Brian A. Tollefson is a partner at Prince Lobel. Ms Meagher can be contacted on +1 (617) 456 8166 or by email: smeagher@princelobel.com. Mr Tollefson can be contacted on +1 (617) 456 8099 or by email: btollefson@princelobel.com.

Sheila K. Meagher and Brian A. Tollefson

Prince Lobel