On Christmas Eve, the Girl Scouts of the United States of America (Girl Scouts) filed a 119-page Memorandum of Law in Opposition to the Boy Scouts of America’s (Boy Scouts) Motion for Summary Judgment. Read here.
The Girl Scouts brought suit against the Boy Scouts in 2018 in the U.S. District Court in Manhattan over unfair competition and trademark infringement regarding ongoing marketplace confusion caused by the Boy Scouts throughout the United States, and to prevent future harm to the famous GIRL SCOUTS brand. The Girl Scouts allege the level of confusion arises from the Boy Scouts’ use of terms such as GIRL SCOUTS, SCOUT, SCOUTS, SCOUTING, SCOUTS BSA and SCOUT ME IN to market its core programs to girls. The suit came after the Boy Scouts announced in 2017 that it would accept girls into its organization and changed its BOY SCOUTS program to SCOUTS BSA.
The issue in this case is: who owns any rights in the terms SCOUT, SCOUTS and SCOUTING for use in connection with girl’s leadership and development services? The Girl Scouts allege the trademark infringement and unfair competition claims are premised both on its GIRL SCOUTS trademark, the fame of which Boy Scouts concedes, and the Girl Scouts’ rights in the above terms standing alone. The Boy Scouts deny the Girl Scouts own any rights in those terms. The Boy Scouts argue the Girl Scouts have not used the above three terms standing alone as trademarks without the word GIRL. The Girl Scouts assert there is “clear public association of the terms SCOUT, SCOUTS and SCOUTING with Girl Scouts in connection with girls leadership and development services”, which gives “Girl Scouts rights in those terms for such services that are superior to those of Boy Scouts.” Further, the Girl Scouts claim the Boy Scouts use of the GIRL SCOUTS trademark and related intellectual property by Boy Scouts’ councils, troops and volunteers around the United States is secondary trademark infringement.
The Girl Scouts maintain it has used the trademarks SCOUT, SCOUTS and SCOUTING, unaccompanied by the word GIRL or another gender-specific modifier, in a number of ways: (i) in its earliest years, on or in connection with badges, program names, publications, posters and other communicative materials; (ii) for many years prior to 1994, and since 2018, as part of the registered SCOUT COOKIES trademark; (iii) as part of “Scouts’ Own,” a term that refers to a Girl Scouts ceremony; and (iv) on products like patches and t-shirts sold by Girl Scouts councils through Girl Scouts official online store. Moreover, the Girl Scouts assert it has reinforced its rights and policed the terms with respect to the Boy Scouts since at least the mid-1970s.
The Girl Scouts cite to Girls Clubs of Am., Inc. v. Boys Clubs of Am., Inc., in support of its trademark infringement claims. In 1988, the Boys Clubs of America decided to admit girls and announced plans to change its name to Boys and Girls Clubs of America. The Girls Clubs of America objected to this name change, filed suit, and obtained a preliminary injunction after the Court found that the proposed new name – Boys and Girls Clubs of America – would falsely communicate to the public that the two organizations had merged, given the new overlap of markets. See Girls Clubs of Am., Inc. v. Boys Clubs of Am., Inc., 683 F. Supp. 50, 52 (S.D.N.Y. 1988), aff’d, 859 F.2d 148 (2d Cir. 1988)
Ultimately, the Girl Scouts conclude the Boy Scouts’ marketing of expanded services for girls is “extraordinary and highly damaging to Girl Scouts” and has set off an “explosion of confusion” by children, parents, schools, religious organizations, and the general public.