Girl Scouts Sue Boy Scouts: 7 Deadly Sins?
Girl Scouts of America Sue Boy Scouts of America
Over Alleged Trademark Infringement:
Seven Deadly Sins a.k.a. Seven Infringement Charges
By John Pellegrin, December 2018
Most organizations covet and vigorously protect their Intellectual Property (IP) rights, particularly if they perceive unauthorized use of service and trademarks by any other organizations, be they nonprofit or for-profit. They are also concerned with competition and name/mission/branding confusion, and file suit so as to prevent perceived confusingly similar or competitive use of their own marks. The Girl Scouts of America is no exception.
The Girl Scouts of America (“GSA”) filed a comprehensive #trademark infringement lawsuit against the Boy Scouts of America (“BSA”) last month in a New York federal court. GSA has asked for both preliminary and permanent injunctive relief, as well as a jury trial in its lengthy Complaint. Absent a settlement, this case will undoubtedly take a year or more to work its way through the initial federal trial court, with the loser probably appealing any adverse decision to the next higher federal court.
Because of the length of the GSA Complaint (50 pages plus multiple exhibits) and numerous Causes of Action (7 are separately set out), analysis of this suit will be covered in three separate blog postings or “Chapters.” The author is striving to make sure all salient arguments relevant to this fascinating subject are covered in a fair, impartial manner. Follow-on blog postings will set out a brief history of each organization and the background leading up to this recently filed suit.
Essence of GSA Complaint. The gravamen of GSA’s Complaint is that BSA’s announced plan to admit girls into both its Cub Scout and Boy Scout programs, coupled with BSA’s use of the marks “Scouting,” “Scouts,” and “Scouting BSA ”without the previously used “Boy” as part of the official name, as well as similar-sounding marks of both BSA and GSA, infringes on GSA’s marks. GSA also claims that such BSA foreshortening of its marks by eliminating “Boys” is detrimental to GSA’s branding, impugns GSA’s reputation/good name, and confuses the public. Throughout its Complaint, GSA expresses concern that BSA is expanding its services and scope so as to compete head to head for the same youth as GSA seeks to serve and include; i.e., young and adolescent girls (up to 19 years old). Whether such “new” outreach by BSA also amounts to the separately plead “unfair competition” remains to be seen as this suit winds its way through the federal court system.
The Seven Deadly Sins aka Specific Causes of Action Plead by GSA:
1. Confusion as to the source/owner of particular federally registered trademarks;
2. Trademark infringement by BSA’s elimination of “Boys” from any of its trademarks that are otherwise similar to GSA’s trademarks;
3. Dilution of GSA’s trademarks and brand identity erosion. Blurring and tarnishment of GSA’s “goodwill” through BSA’s actions that are willful, deliberate and taken in bad faith;
4. Modification and/or partial cancellation of BSA’s federally registered trademarks demanded through the court ordering the Secretary of Commerce and the #USPTO to modify or partially cancel several of BSA’s marks;
5. Common Law Trademark Infringement, Unfair Competition, and Passing Off by #BSA. Both federal and New York State law is cited;
6. Trademark dilution under NY State General Business Law. Alleged control by BSA of its Councils, Districts, Troops and Packs allows BSA to dominate and require conformance at all levels of BSA’s organization;
7. Tortious interference with prospective economic advantage. BSA and its Councils and leaders have employed “dishonest, unfair and improper statements for the purposes of false recruiting of parents and their children; i.e., young girls, to register with the BSA programs vs. the GSA’s programs.”
GSA also seeks a trebling of its alleged monetary damages, as well as attorney’s fees and court costs.
Other arguments/claims are interwoven throughout GSA’s Complaint, including “false designation of origin” and “tortious interference with prospective economic advantage.” Additional theories are plead which are not grounded or based in trademark infringement; rather, they are based on alleged “unfair competition” and related theories of liability.
As of this blog’s release, BSA has not yet filed a response to GSA’s Complaint. Stay tuned for coverage of additional arguments, counts, defenses, theories, and strategies to be advanced by two former co-existing and well respected youth organizations – now, seemingly mortal enemies.
DISCLAIMER: The author, while an Eagle Scout, National Eagle Scout Association and Order of the Arrow member, as well as a COR (Chartering Organization Representative) to a local Cub Scout Pack and Boy Scout Troop, does not represent either party in this lawsuit and will not take any position with respect to any parties to this litigation.
Pellegrin’s BriefCase SM/©
Volume 2, Issue #4, December 2018
Author’s Background and Caveats: ADVERTISING MATERIAL. John Pellegrin, Esq. maintains a robust business law and management consulting practice. Areas of expertise include transactional and business succession planning, #communications, IT/IP, various government agencies (#FCC, #FTC, USPTO, #Copyright Office, #FDA, #EPA), nonprofits, and #wills/trusts/estates. He is admitted to practice before the U.S. Supreme Court, New York, District of Columbia, and #Virginia.
Nothing contained in Pellegrin’s BriefCase should be taken as the last word on any given subject discussed nor relied upon as legal advice; rather, the author’s comments on emerging trends and prescient decisions in the #law and government regulations/interpretations/policies are meant to make the reader more aware of developing issues, opportunities and risks.
Legal and Business Consulting Services. We view our role as legal counsel being essentially to “define the scope of the risk” for our clients. John also serves as Of Counsel to the law firm of Allred, Bacon, Halfhill & Young, PLC. He is also actively involved in several community-based organizations. These include serving as Chairman/At Large Commissioner on the #Fairfax County Small Business Commission; #Rotary Club of West Springfield; COR (Chartering Organization Representative) to a local Boy Scout Troop & Cub Pack; National Eagle Scout Association; #MVLE, Inc.; various Chambers of Commerce; MEPC (McLean Estate Planning Council), and the Purveyors Club. He has been recognized and honored with several awards over his lengthy legal career and for his community involvement, including a communications Golden Receiver Award, Community Champion Award, and Distinguished Service Award (Rotary International).
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