Girl Scouts Sue Boy Scouts: Mark Your Turf
Girl Scouts of America Sue Boy Scouts of America Over Alleged Trademark Infringement
Seven Deadly Sins aka Seven Infringement Charges
This post follows up on previous coverage of the Girl Scouts of America’s (“GSA”) trademark infringement suit filed against the Boy Scouts of America (“BSA”) in November 2018 in a New York federal court. As covered in Volume II, Issues #4 and #5 of this author’s blog, today’s post (Chapter #3) will delve a bit more into the positioning, arguments, theories, defenses, and possible stratagems of the main litigating parties.
Seven Deadly Sins aka Seven Infringement Charges:
The particular BSA-claimed trademarks challenged by GSA are “Scouting,” “Scouts,” Scout,” and “Scouting BSA.” This suit was brought on by BSA announcing its active solicitation of girls to become members of Cub Scout Packs BSA and Scout Troops BSA, or alternatively, separate girls-only Scout Packs or Troops BSA.
GSA has advanced seven distinct Causes of Action: 1) Confusion as to ownership and source of GSA’s and BSA’s respective trademarks and services; 2) Trademark infringement by BSA’s elimination of “Boys” from its marks; 3) Dilution of GSA’s marks; 4) Modification and/or partial cancellation of BSA’s federally registered trademarks demanded through the Secretary of Commerce and the USPTO; 5) Common Law Trademark Infringement, Unfair Competition, and Passing Off by BSA; 6) Trademark dilution under NY State General Business Law; and 7) Tortious interference with prospective economic advantage.
Mark Your Turf: GSA sees the recent emphasis by BSA in its promoting just the above three marks – without the use of “Boys” in conjunction therewith – as a concerted, conscious effort to siphon off GSA’s girl members and would-be girls for GSA membership. BSA has also recently filed federal trademark applications for registration of “Scouts BSA,” “Scout Me In,” and “Scout Life,” all without adding the qualifying or limiting identification/preamble of “Boys.” GSA also objects to these marks.
Girls to be accepted by existing Cub Scout Packs and Boy Scout Troops. As of February, 2019 BSA will allow Troops to accept girls in their adolescent-targeted programs, as well as allow Packs to accept younger girls into BSA’s Cub Scout program. Alternatively, BSA will allow the creation of separate, girls-only Packs and Troops, as ultimately decided by local BSA Councils, Districts or the Packs/Troops.
Apparently, BSA is creating a potentially “hybrid” or alternate structure for Packs and Troops; i.e., either “co-ed” and fully integrated Packs and Troops or “same sex” Packs and Troops. In any event, BSA is on record as stating that local Councils, Districts, Packs and Troops can and will make the ultimate decision as to girls’ admission/inclusion under the new BSA banner.
Basis/Rationale for BSA to Encourage Girls to Join Packs and Troops. BSA has experienced a severe loss of members as a boys-only organization over the last few years, as has the GSA vis-à-vis girl membership. As noted in Chapter #2, over the past three years these losses amount to some 10% for BSA, with an anticipated additional 10% loss due to the Mormon Church’s backing away from BSA, and 12% loss for GSA.)
In permitting girls to join Cub Scout Packs or Boy Scout Troops, BSA is taking the initial position and recommending to local BSA organizations that girls joining must be kept in a separate girls-only Patrol(s) within a Troop and a separate girls-only Den(s) as to Cub Scout Packs. Alternatively, BSA has offered to sanction local organizations’ establishment of new, all-girls Dens and Troops, urging that as to teen-age/adolescent girls, they be allowed only to become members in girls-only Troops, with the ability to achieve Eagle Scout rank. Adult leaders of Packs or Troops may be of either gender in both BSA and GSA Troops and BSA Packs.
GSA’s Previous Acquiescence to BSA Allowing Adolescent Girls as Members in Several Other BSA-Sponsored Programs. GSA notes in its suit that BSA has for several decades – without objection from GSA – offered membership and activities to older (teenage/adolescent) girls in BSA-sponsored and controlled groups known as Venturing Crews, Explorers or Sea Scouts. None of these three separate BSA organizations offer individual rank advancement or merit badges for any members to the ultimate rank of Eagle Scout.
Prestigious Eagle Scout Rank and Girls’ Stated Desire to Achieve Eagle Scout Rank: GSA does not discuss the attractiveness and presumed impact of BSA’s highest rank for any and all Scouts; i.e., “Eagle Scout” as being an incentive for girls to join BSA Cub Scout Packs or Boy Scout Troops. Girls who join BSA-accredited Troops will be eligible to be awarded the prestigious “Eagle Scout” rank upon successful completion of that rank’s stringent requirements. BSA has made it clear there will not be anything akin to “Eagle Light” for girls; rather, “Eagle Is Eagle” and the specific intermediate ranks and 21 merit badges to qualify for Eagle Scout rank/award will be stringently maintained.
GSA currently has as its highest rank the “Gold Award,” with a specified number and required merit badges (as do the Boy Scouts and Eagle Scout rank/award). The “Gold Award” is most likely not as well-known or given the same credit as the “Eagle Scout” rank/award. Nor is the BSA’s “Order of the Arrow” mentioned in the GSA suit. (It is believed GSA does not have an equivalent “Order of the Arrow” (“OA”) award or component. OA is rooted in Native American Indian lore and Indian tribes’ traditions/ceremonies. Initial membership in the OA requires a good deal of camping and election by the candidate’s fellow Scouts in the Troop to the OA itself).
Stay tuned for coverage of additional arguments, counts, defenses, theories, and stratagems of these two formerly co-existing and well respected national and local youth organizations – now, seemingly mortal enemies with PR battles ahead for both.
DISCLAIMER: The author, 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 this litigation.
Pellegrin’s BriefCase SM/©
Volume 2, Issue #6, December 2018
Author’s Background: ADVERTISING MATERIAL. John Pellegrin, Esq. maintains a robust business law and management consulting practice. Areas of expertise include IP/IT, transactional and business succession planning, communications, various government agencies (FCC, FTC, USPTO, Copyright Office, FDA, and EPA), nonprofits, and wills/trusts/estates. He is admitted to practice before the U.S. Supreme Court, New York, District of Columbia, and Virginia.
Caveats: 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 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, as well as being 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; IFSR; 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).
Pellegrin’s BriefCase is a Service Mark (SM) of John D. Pellegrin, P.C., and its contents are copyrighted ©, with all rights reserved. Pellegrin’s Briefcase/blog may be reposted or commented on if appropriate attribution is given this author.
Comments on/submissions to Pellegrin’s BriefCase are always welcome.