Girl Scouts Sue Boy Scouts: Market Confusion?
Updated: Jan 10, 2019
Girl Scouts of America Sue Boy Scouts of America Over Alleged Trademark Infringement Seven Deadly Sins & Background
Following up on the Girl Scouts of America’s (“GSA”) comprehensive trademark infringement lawsuit filed against the Boy Scouts of America (“BSA”) last month in a New York federal court, as noted in previous Issue #4 of this author’s blog post, today’s blog will set out a brief history of each organization and the background leading up to this recently filed suit. As with most trademark infringement suits, “potential confusion to the public as to the owner/source of the mark and goods” and “unfair competition” are the gravamen of such formal lawsuits.
Seven Deadly Sins aka Seven Specific Causes of Action Plead by GSA:
The particular trademarks challenged are “Scouting,” “Scouts,” Scout,” and “Scouting BSA.” As to these federally registered and now “famous” marks, GSA has advanced seven separate Causes of Action (7 Deadly Sins) against BSA. GSA is riled up because BSA is now actively soliciting girls to join BSA Cub Scout Packs and Scout Troops, even as BSA envisions girls will be separated into individual Dens within a Cub Scout Pack, and separate Patrols within a Boy Scout Troop. Alternatively, girls will be included in BSA’s programs, but only in separate, all girl Packs and Troops. GSA argues that its iconic organization, brand, and Intellectual Property, as well as the public, will be harmed by the continued use of the above specific marks by BSA if used to solicit girl members, and separately pleads:
1. Confusion as to the source/owner of registered marks;
2. Trademark infringement by elimination of “Boys” from any of BSA’s marks;
3. Dilution of GSA’s trademarks;
4. Modification and/or partial cancellation of BSA’s federally registered trademarks demanded of the Secretary of Commerce and the USPTO. [This particular Cause of Action is reminiscent of the decades-old dispute as to the D.C. professional football team – the “Redskins ®” – and whether such slang term/logo is disparaging to the point where this federal trademark and all derivatives thereof should be cancelled. So far, the courts have ruled in the owner’s favor and have refused to order the cancellation of any federal trademark registrations containing the word “Redskins”];
5. Common Law Trademark Infringement, Unfair Competition, and Passing Off;
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; and
7. Tortious interference with prospective economic advantage. BSA and its Councils and leaders have engaged in siphoning, using “dishonest, unfair and improper statements for the purpose of false recruiting of parents and their children; i.e., young girls, to register with BSA programs vs. GSA programs.”
Background leading up to this suit. The American BSA was founded in 1910 and the American GSA in 1916. Both hold U.S. Congressional Charters. While neither is formally associated with the other, GSA does not allow boys to join Brownie or Girl Scout Troops unless the family wishes to have a transgender child accepted as a girl and the child identifies as being a girl. With respect to a transgender issue, GSA handles each case individually. It has its own guidelines to assess what is best for the respective Brownie or Girl Scout Troop, the families of the applying child, and accommodating the individual child’s/adolescent’s desire to be included. GSA allows both male and female leaders in local Brownie and Girl Scout Troops, as does BSA vis-à-vis its Cub Scout Packs and Boy Scout Troops. For some 75 years, Camp Fire Girls co-existed with BSA, but now this organization is totally separate.
Girls to be accepted into Cub Scout Packs and Scout Troops BSA. BSA has announced that after several years of review and input at various levels by hundreds of people, a more “family” based approach of inclusion of both boys and girls from the same families into scouting seems to be the best approach. Thus, as of February, 2019 BSA will accept girls in its signature 11 to 19 year old age Troop BSA program, as well as accept younger girls into BSA’s Cub Scout program. Girls’ inclusion could take one of two distinct forms, ultimately depending on what local BSA Packs and Troops decide: 1) totally separate Packs and Troops having only girls in them, or 2) inclusion of girls in existing Packs and Troops, while still keeping girls in separate Dens or Patrols. Alternatively, “unique” Troops could be formed with specially trained leaders who work with affiliated but separate Troops of boys and girls kept apart. Both GSA and BSA recognize that engaged, committed leadership is critical.
BSA officials defend their decision on the national level with several arguments, including their view that the Girl Scout organization and mission is very “girl oriented” vs. boy scouting now becoming more “family oriented” vs. just boy oriented. BSA promises that different handbooks will be created to cover perceived mission and program differences/emphasis. BSA has concluded that its existing Cub Scout program is already very family oriented and many Packs already admit girls.
My Kingdom for a Name – Erosion/Shrinkage of Membership Base. GSA also complains that BSA has recently filed additional federal trademark applications for “Scouts BSA,” “Scout Me In,” and “Scout Life” without adding any qualifying and clear/limiting identification/preamble of “Boys.”
GSA argues that BSA is desperate, mainly because BSA has experienced significant contraction in the number of boys in its respective programs, down from some 2.28 million to 2.42 million (5.6%) over the last three years through 2017, according to the Washington Post in a front page article published on December 9, 2018. GSA has also experienced a drop in overall Brownie and Girl Scout membership, falling some 12% to 1.76 million over the same three years, according to the Washington Post article. BSA, while having the support of NOW (National Organization of Women) and the Catholic Church with respect to admitting girls, is losing the backing of the Church of Jesus Christ of Latter-day Saints (Mormon Church) as a sponsoring or Chartering Organization for numerous Packs and Troops (some 20% overall loss in terms of national membership). In the case of the Mormon Church, this is most likely a reaction to BSA in recent years allowing gay adult volunteer Scout leaders and then allowing gay boys to be Scouts.
That BSA has now chosen to allow girls to join previous boys-only Packs and Troops may also be a reason for the Mormon Church to distance itself from Boy Scouting. Most Chartering Organizations (CO)/sponsors view BSA’s recent decision to include girls and this current litigation as either “political” or BSA trying to be “politically correct.” In any event, COs feel that inclusion of girls in Packs or Troops should be left to the discretion of each local Council, District, Pack, and/or Troop as to their admission policies. BSA is on record that it will honor these local decisions.
In permitting girls to join existing Cub Scout Packs and/or Boy Scout Troops, or alternatively establish separate girls-only Scouting BSA Packs and Troops, BSA states it is looking to offer girls an alternative to the standard GSA programs, programs which do not stress outdoors and/or individual achievement as much as the BSA-sponsored programs and its unique hierarchy of rank.
GSA acquiescence in allowing adolescent girls to be members of three BSA-sponsored organizations. GSA acknowledges that BSA has for several decades – without objection from GSA – offered membership to older (teenage/adolescent) girls in groups known as Venturing Crews, Explorers and Sea Scouts. BSA has federally registered “®” marks for each of these three distinct groups, groups which are not designed to lead to BSA’s highest rank, that of Eagle Scout.
As of this blog’s release, BSA has not yet filed a response to GSA’s trademark infringement Complaint. Stay tuned for coverage and analysis of additional arguments, counts, defenses, theories, and strategies of these two formerly co-existing and well respected national and local youth organizations – now, seemingly mortal enemies.
DISCLAIMER: The author, an Eagle Scout, National Eagle Scout Association (NESA) 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.
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Volume 2, Issue #5, December 2018
Author’s Background: ADVERTISING MATERIAL. John Pellegrin, Esq. maintains a robust business law and management consulting practice. Areas of expertise include IT/IP, 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.
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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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