When I heard that the Girl Scouts of the United States of America filed a lawsuit against the Boy Scouts of America last week, I was fascinated. As a former Girl Scout and troop leader myself, who also happens to practice trademark law, I have a lot of thoughts about this case. Many people predicted that the Boy Scouts’ decision to admit girls last year would put the organizations on a collision course. The complaint suggests that those fears have been realized. While people might not think of trademark law as the right tool to solve this problem, it is a creative strategy, and I think it might just work.
I always had a sense that the Girl Scouts and Boy Scouts organizations are very different. To simplify, the Girl Scouts curriculum is all about leadership training, and the girls’ activities are supposed to be girl-led. I say “supposed to be” because, well, you try putting a troop of 20 kindergartners in charge of themselves. I tried, and it wasn’t pretty. I can’t say for sure what they do in Boy Scouts meetings, but knowing the boys who attend elementary school with my daughter, I doubt (ahem) they follow the same model.
Anyway, there has been much speculation about why the Boy Scouts began recruiting girls last fall, and who you believe perhaps depends on your perspective. Some say that the Boy Scouts’ membership was in decline, partly as a result of the lengthy and bruising battle regarding participation by LGBTQ individuals. The decision of the Church of Jesus Christ of Latter-day Saints to sever all ties with the Boy Scouts last year certainly did not help on the membership front, as it was reported that their 100-year relationship was so strong that Boy Scouts was mandatory for Mormon boys and they constituted 20% of all Boy Scouts in the United States. Against this backdrop, it is unsurprising that the Boy Scouts would look to shore up its flagging membership by admitting girls.
On the other hand, plenty of people complain that the Girl Scouts have moved away from camping and the other outdoor-focused activities that are at the heart of what it means to be a Girl Scout, and that girls are now legitimately looking to the Boy Scouts to fill that need. One article notes that, over a period of five years, the Girl Scouts put up for sale more than 200 camps in 30 states—more than a third of Girl Scouts properties with acreage—due to the rising costs of maintenance and the fact that “today’s girls aren’t as interested in camping.” But, clearly, many are. And at least some of those girls are joining the Boy Scouts where they perceive, rightly or wrongly, that they will be exposed to more outdoors activities traditionally associated with scouting.
But those are not the girls that the Girl Scouts are worried about. According to the complaint, there have been numerous instances in which girls have been registered with the Boy Scouts thinking that they were registering with the Girl Scouts, and the situation has been greatly exacerbated by the Boy Scouts’ use of “scout” in various forms unconnected to “boys,” such as in the slogan SCOUT ME IN, the abbreviation SCOUTS BSA (which was introduced as a replacement for the BOY SCOUTS trademark for the program serving ages 11 to 17), and use of the term SCOUTS to refer to members of the Boy Scouts. The Girl Scouts allege that when those marks are used in connection with marketing to girls, and without words or context making it clear that the sponsor is the Boy Scouts of America, the resulting confusion is actionable as trademark infringement and dilution.
But wait, there’s more. Layered on top of this undifferentiated “scout” usage is a thick layer of what appear to be unauthorized uses of the Girl Scouts’ trademarks in the Boy Scout’s attempt to market to girls. Most of the examples appear to have been perpetrated by local Boy Scout councils and troops, and include references in flyers and newsletter such as:
- our New BSA Girl Scouting Programs
- GIRL SCOUT VOLUNTEER OPPORTUNITY
- Boys/Girls Scouts of America Volunteer Form
- BOY & GIRL SCOUTS
- Girl Scouts BSA Troop
And finally, as icing on the cake, the complaint alleges a number of acts of unfair competition by the Boy Scouts and their local affiliates, including statements such as:
- The parties’ organizations are now combined
- There is no more Girl Scouts
- It is all the same now
- Girl Scouts are in our pack
- The Girl Scouts had been merged into the Boy Scouts
There are a lot of other details in the 50-page complaint, and it is an interesting read. The Boy Scouts have not responded as of yet, other than to say that they are studying the complaint, but I am guessing that they are not going to roll over. The Boy Scouts’ ability to recruit and admit girls as members is not being questioned—it is only the ability to do so without violating the trademark rights of the Girl Scouts. It is really interesting to consider whether this is possible, given the Boy Scouts’ need to use the term “girls” when recruiting for girls and the association of “scouts” and “scouting” with both organizations.
The complaint seeks an injunction on behalf of Girl Scouts of the United States of America with the following terms:
(a) That GSUSA be granted preliminary and permanent injunctive relief under 15 U.S.C. § 1051 et seq. and New York law specifically requiring that Defendant and all of its councils, troops, officers, leaders, agents, servants, representatives, employees, attorneys, parent and subsidiary corporations, assigns and successors in interest, and all other persons acting in concert or participation with them, or any of them, be preliminarily and permanently enjoined from:
(i) using the GS Marks, or any confusingly similar variations thereof, in connection with the marketing, promotion, advertising, sale or rendering of any of Defendant’s services,
(ii) using the marks SCOUT, SCOUTS, SCOUTING, SCOUTS BSA, or any variation thereof, alone without an inherently distinctive or distinguishing term appearing immediately before it, in connection with the marketing, promotion, advertising, sale or rendering of any of Defendant’s services directed to girls;
(iii) using any false designation of origin or any false description that can, or is likely to, mislead the public, or individual members thereof, to believe that any service distributed, sold, offered for sale, or advertised by Defendant is in any manner associated with or approved or sponsored by GSUSA;
(iv) representing in any manner that Defendant or its councils or troops are endorsed or sponsored by GSUSA, or represent or work on behalf of GSUSA, or are affiliated or associated with GSUSA; and
(v) any other infringing or misleading conduct discovered during the course of this action;
(b) That Defendant be ordered to provide training to all of its councils, troops, officers, leaders, agents, servants, representatives, employees, and volunteers to prevent confusion between the parties and their respective trademarks, including with respect to:
(i) Defendant’s use of the marks SCOUT, SCOUTS, SCOUTING, SCOUTS BSA or variations thereof in a manner compliant with the injunction issued by this Court;
(ii) Defendant’s relationship with GSUSA;
(iii) the GS Marks, and
(iv) affirmative steps that must be taken to avoid or remediate instances of actual consumer confusion; and to provide GSUSA with a written report detailing such training; …
Such an injunction, if entered, will effectively force the Boy Scouts to stop marketing to and admitting girls into its programs unless it can find a way to do that without causing confusion. Otherwise, the Boy Scouts will be at risk of contempt of court, the penalties for which can include monetary fines, jail time, and whatever else the judge can think of. While it seems unlikely that anyone from the Boy Scouts would ever go to jail over trademark usage, it is hard to believe that the organization would want to even go down a road in which such things are possible. They are, after all, Boy Scouts.
I will close by reprinting this newsletter excerpt, which appears in the complaint. In it, a Boy Scouts troop leader discusses the reasons behind the admission of girls into the Boy Scouts, notes that the “studies are pretty convincing that girls learn better in single gender environments,” and concludes with “We will be forming a Girl Scout troop in February… see what Scouting can do for your family!” For me, this excerpt captures the debate in a very poignant way and illustrates the difficulty with the current trademark coexistence relationship now that Boy Scouts is serving girls. It will be interesting to see how the Boy Scouts respond to the lawsuit. We’ll keep you posted.
Update (posted January 26, 2019):
On January 23, the Boy Scouts moved to dismiss certain counts of the Complaint based on the argument that they own exclusive rights in SCOUTS and SCOUTING for both boys and girls, and the Girl Scouts only own rights in the composite mark GIRL SCOUTS. The Boy Scouts also allege that the Girl Scouts disclaimed any rights in SCOUTS and SCOUTING since their policies provided that those words should always be preceded by GIRLS. (Of course, one can’t help but wonder whether the Boy Scouts did that too, in which case it would be pretty harsh to punish the Girl Scouts for playing by the rules.) The Girl Scouts have 14 days to respond to the motion.