The Girls Scouts sue the Boy Scouts for trademark infringement and dilution
The Boy Scouts of America was founded in 1910 and has operated under the shorthand name of the “Boy Scouts” from the outset. On May 2, 2018, however, the Boy Scouts of America announced a new name for the association: “Scouts BSA.” Lost in the cultural dispute over whether the Boy Scouts should have included girls and what this means for the Boy Scouts as an organization – a trademark battle emerged.
On November 6, 2018, the Girl Scouts of the United States of America sued the Boy Scouts of America in federal court for trademark infringement, unfair competition, federal trademark dilution, and tortious interference with prospective economic advantage, along with a request to cancel or modify the registration of the SCOUTS® trademark which the Boy Scouts previously acquired from an unaffiliated university.
The moment the Boy Scouts of America adopted the SCOUTS or SCOUTS BSA marks to include girls into their ranks, this conflicted with the pre-existing and concurrent uses of the Girl Scouts’ own GIRL SCOUTS® trademark registration(s) and related marks.
An interesting trademark dispute therefore presents itself to us for analysis.
History of the Boy Scouts’ and Girl Scouts’ respective trademark rights
The Boy Scouts were founded in 1910. Likewise, the Girl Scouts were founded shortly thereafter in 1912. Over the next 100+ years, the two organizations have operated concurrently and have peacefully co-existed in the marketplace without any substantive trademark clashes. Not surprisingly, both organizations have acquired substantial common law trademark rights and have also registered trademarks at both the state and federal level. The Boy Scouts of America has applied for over 275 federal trademark registrations, including most importantly the recent SCOUTS BSA mark(s). It should be emphasized that the Boy Scouts have only filed the SCOUTS BSA application as an “intent to use” status, as the Boy Scouts were going to make the full re-brand official as of February 2019, according to its own website.
Among other federal trademark registrations owned or acquired by the Boy Scouts: BOY SCOUT®, FRIENDS OF SCOUTING®, SCOUTCAST® (yes, even the Boy Scouts have a podcast), BE PREPARED®, CAMP SCOUT!®, and NATIONAL SCOUT JAMBOREE®, among many others.
The Girl Scouts, meanwhile, have the following federal trademark registrations in their name: GIRL SCOUTS®, GIRL SCOUT S’MORES®, GIRLTOPIA®, GIRLSPORTS®, CAMP FURY®, GIRL SCOUT COOKIE PROGRAM®, and of course, THIN MINTS® (multiple registrations).
What about the primary marks though? How are SCOUTS®, BOY SCOUTS®, and GIRL SCOUTS® all registered trademarks that are only now in conflict or under scrutiny?
First, the trademark BOY SCOUTS has acquired special status. Pursuant to a 1998 congressional charter codified by 36 U.S.C. § 30905, the Boy Scouts of America is a corporation sponsored by this congressional charter and the statute provided the Boy Scouts “the exclusive right to use emblems, badges, descriptive or designating marks, and words or phrases the corporation adopts…” The GIRL SCOUTS mark has a similar protected status. Pursuant to 36 U.S.C. § 80305, a similar 1998 congressional charter affords the Girl Scouts “the exclusive right to use all emblems and badges, descriptive or designating marks, and words or phrases the corporation adopts, including the badge of the Girl Scouts, Incorporated…”
Whereas the SCOUTS® registration was originally owned by a university and later assigned to the Boy Scouts – and was only registered in 2015.
Normally, in a trademark dispute, the key issue is “priority of use.” The first to use a trademark in commerce is usually able to claim priority and the right to exclude any subsequent marks that are likely to confuse with the original mark first used in commerce. Yet the BOY SCOUTS and GIRL SCOUTS marks are afforded protected status by statute. While the Boy Scouts effectively preceded the Girl Scouts by two years and would have priority in trademark uses, the statute overrides this classic analysis. This is also reflected by the Girl Scouts’ lawsuit and evidence in support thereof.
This dispute circles back inevitably to “boys versus girls.” Where the original controversy centered over whether the Boy Scouts had the right to exclude girls from membership, the moment the Boy Scouts opened up membership to girls and adopted a gender-neutral mark (“SCOUTS BSA”), along with public advertising campaigns and promotional materials, this upended the balance between the two organizations and their trademark rights. It also throws the statutory protections into upheaval as the federal Lanham Act provides rights to any trademark owner when another uses its mark in a manner that is likely to confuse or deceive. As shown by the Girl Scouts’ complaint, the Boy Scouts of America has started to blur the distinction between “boys” and “girls” in scouting and this affects trademark rights.
Analysis of the Girl Scouts’ claims for trademark infringement
One of the causes of action alleged by the Girl Scouts is trademark infringement. But the Girl Scouts use the Boy Scouts’ own prior statements against them. As noted by the complaint, in 2004, the Boy Scouts stated in a prior trademark opposition proceeding that “the Boy Scouts controls use of the marks [SCOUT and SCOUTING] in connection with development programs for boys, while Girl Scouts controls use of the marks in connection with development programs for girls.” With emphasis on the use of “boys” and “girls” for distinction.
Thereafter, the Boy Scouts tacitly accepted that its use of the SCOUT and SCOUTING marks required a gender-modifier to make the mark(s) distinctive and separated from the Girl Scouts’ own trademark rights. This is all intentionally designed to avoid confusing the public and to make sure that the public remains aware that the Boy Scouts and the Girl Scouts are separate organizations.
The Boy Scouts, however, have failed to maintain these distinctions. Nor has the central Boy Scouts of America organization taken steps to cure or rectify these false designations. The Girl Scouts’ lawsuit points out numerous examples of the Boy Scouts’ unauthorized use of the Girl Scouts’ own trademarks and related rights while promoting the Boy Scouts and the new SCOUTS BSA brand. This includes fundraising flyers, video advertisements, online forms and advertisements, Facebook and other social media posts, and official Boy Scouts of America marketing quotes – each of which uses the GIRL SCOUTS mark in conjunction with advertising for the Boy Scouts. Even though both marks are protected by statute, this is a classic example of trademark infringement, as it is likely to confuse girls who may be seeking to join the Girl Scouts but may be confused into mistakenly thinking the two organizations have merged or sponsor each other.
A plaintiff establishes Lanham Act trademark infringement by showing that the defendant uses in commerce any word, term, name, symbol, or device that is likely to cause confusion, or to cause mistake about the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person. The analysis proceeds in two simple steps. A court first considers whether the plaintiff has a protectable right in the mark and then whether there is a likelihood of confusion between the marks.
The GIRL SCOUTS mark is protectable. Not every trademark is singled out by a congressional charter and a federal statute. Thus, it is only a matter of whether the SCOUTS BSA and related marks are likely to confuse with the Girl Scouts’ trademark rights. This might come down to the scope of uses of the SCOUTS and SCOUTING marks by the Boy Scouts while also indirectly using “GIRL SCOUTS” within Boy Scouts advertising, which is documented by the examples provided in the lawsuit. The Girl Scouts also asked for a jury trial, which means this analysis could be determined by 12 people unfamiliar with the nuances of trademark law. Always a risk.
Analysis of the Girl Scouts’ claims for trademark dilution
Trademark dilution is the more salacious and more interesting scope of this analysis. Trademark dilution occurs when a famous mark is weakened of the ability of the mark to clearly and unmistakably distinguish the source of a good or service. The Girl Scouts are asserting that the Boy Scouts’ shift from BOY SCOUTS to SCOUTS BSA weakens the ability of the Girl Scouts to use the statutorily-protected, famous GIRL SCOUTS® mark to identify the singular source of the services offered by that mark.
The Girl Scouts’ lawsuit does not simply pay lip service to the claims of “dilution,” however. The complaint also provides substantial allegations about the controversial history of the Boy Scouts and fears of improper associations with the SCOUTS mark. The complaint specifically alleges that “[s]uch improper associations are of particular concern to [the Girl Scouts] because Defendant has received significant negative publicity regarding its activities conducted under the BOY SCOUTS and SCOUTS marks, such that the goodwill associated with those terms when used in connection with boys’ leadership development services has been damaged.”
The Girl Scouts then directly reference the Boy Scouts’ troubling history with child abuse lawsuits, pedophilia, “perversion files,” and related claims – while linking to news articles about these allegations against the Boy Scouts. This does not even begin to address the Boy Scouts’ historical membership controversies against minorities, gays, transgenders, muslims, and even atheists. The Girl Scouts are rightly concerned about potential consumer confusion through being affiliated with such activities and black-marks against the Boy Scouts organization. This is manifested by their trademark claims and causes of action.
The Girl Scouts even overtly state that the “GIRL SCOUTS mark will be both blurred and tarnished as a result of consumers mistakenly associating the two organizations.” The lawsuit concludes that this is a “classic type of dilution prohibited under 15 U.S.C. § 1125(c).”
Claims NOT made by the Girl Scouts
While the Girl Scouts make straightforward claims of infringement and dilution, and provide substantive facts supporting each claim, it is also interesting to identify what the Girl Scouts are not alleging or asserting.
First, there is no claim (yet) that the Boy Scouts are “abandoning” the BOY SCOUTS trademark(s). In May 2018, when the Boy Scouts publicly announced the intention to re-brand as “Scouts BSA,” that would have been a solid argument to make that the Boy Scouts intended to abandon the BOY SCOUTS marks and would no longer be using these marks as of February 2019. According to the Lanham Act, 15 U.S.C. § 1127, a trademark is considered abandoned if “its use has been discontinued with intent not to resume such use.” Importantly, the intent not to resume may be inferred from circumstances: and a public announcement of a re-brand might be compelling evidence of the intent not to resume such use.
To be fair, this may be an issue that is raised later in the lawsuit in an amended complaint. It may be something that the Girl Scouts are waiting until February 2019 for the actual re-brand to occur before they pursue this particular strategy, too.
While the complaint provided specific links to claims about “child abuse” and “sex abuse” by the Boy Scouts, the Girl Scouts do not mention the Boy Scouts’ extensive policy of not admitting girls as members or, until 1988, not even allowing female Scoutmasters within their ranks. This seems relevant. Nor does the complaint make mention of the troubling history of the Boy Scouts attitude towards gays and transgenders. Or those who do not identify as Christians, particularly atheists. These are all features and attributes of the Boy Scouts that has been part of its historical culture, which runs counter to the Girl Scouts’ own traditions of being open and inclusive for all girls. As mentioned, these are all facts that would boost the allegations of trademark dilution, blurring, and/or tarnishment.
Again, this is something that may be raised in subsequent pleadings or even in a direct argument to the jury. It is possible the lawyers for the Girl Scouts did not want to address these issues right away as they are the kind of headline-grabbers that can distract from the core trademark claims. It is worth watching and monitoring as the case proceeds.
Likely Outcomes and Conclusions?
In a vacuum, this appears to be a straightforward case of trademark infringement and unfair competition. The BOY SCOUTS and GIRL SCOUTS trademarks, however, cannot be assessed in a vacuum. For one, Congress has repeatedly taken steps to treat these organizations different from typical corporate entities and with heightened rights for trademarks, emblems, and logos. Additionally, these are famous marks fighting each other. There is no one dominant senior user. There is also the Jury Demand to consider – the Girl Scouts want a jury to decide this case. And juries are notoriously unpredictable in intellectual property cases. Emotion can override precise legal standards and years of case law precedent.
Most likely, the Boy Scouts will be allowed to use the “Scouts BSA” moniker, but may be enjoined from using the GIRL SCOUTS mark(s) as part of any advertising or marketing. Even indirectly. The Boy Scouts may have to write and publicize and nationwide corporate policy for how to address the new admission of girls without running afoul of the separate Girl Scouts organization. Whether the SCOUTS BSA mark will ever be registered as a trademark is another matter and I am sure the Girl Scouts will oppose and challenge any registration of that mark for all theoretical uses by the Boy Scouts of America (or whatever the new corporate name may be as of February 2019).
 Girl Scouts of the United States of Am. v. Boy Scouts of Am., Case No. 1:18-cv-10287, in the United States District Court for the Southern District of New York (November 6, 2018).
 See generally U.S. Trademark App. No. 87906567 (filed May 3, 2018) and No. 87906407 (May 3, 2018).
 See USPTO Serial No. 89/001,951 (BOY SCOUTS mark) “protected under U.S. Statute.”
 USPTO Serial No. 89/000,078 (GIRL SCOUTS mark) “protected under U.S. Statute.”
 See U.S. Trademark Reg. No. 4,865,183 (December 8, 2015).
 15 U.S.C. § 1125(a)(1)(A).
 See generally T-Mobile US, Inc. v. AIO Wireless LLC, 991 F. Supp. 2d 888, 903 (S.D. Tex. 2014) (citing Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303, 309 (5th Cir. 2008); and Sec. Ctr., Ltd. v. First Nat’l Sec. Ctrs., 750 F.2d 1295, 1298 (5th Cir. 1985)). See also 15 U.S.C. § 1125(a)(1)(A) (also known as Lanham Act § 43(a)).
 Dallas Cowboys Football Club, Ltd. v. Am.’s Team Props., Inc., 616 F. Supp. 2d 622, 642 (N.D. Tex. 2009); 15 U.S.C. 1125 (Trademark Dilution Revision Act).
 For full disclosure: I was a member of the Boy Scouts of America as a youth. Against my will. It remains the worst experience of my life and I fully support the Girl Scouts in any legal actions against the Boy Scouts which they may pursue. As a trademark lawyer, this particular case is extremely interesting to me.