Last month, the Girl Scouts of the United States of America (“GSUSA”) sued the Boy Scouts of America (“BSA”) for trademark infringement in federal court in New York.
The two organizations have co-existed for more than 100 years, both using the marks SCOUT, SCOUTS, and SCOUTING, one in connection with programs for girls and one in connection with programs for boys.
In addition, until recently, these terms were either preceded by BOY or GIRL or otherwise appeared in a context that made it clear which organization’s programs were being referred to.
However, now that BSA is allowing girls to participate in its programs, it’s rebranding itself as “Scouts BSA” and using the SCOUT, SCOUTS, and SCOUTING marks to recruit girls into its programs.
The complaint filed by GSUSA claims that because BSA is offering its programs to girls, BSA’s use of the marks SCOUT, SCOUTS and SCOUTING creates a likelihood of confusion and indeed, has already caused substantial actual confusion.
According to the complaint, BSA councils and troop leaders are even using GSUSA’s GIRL SCOUT and GIRL SCOUTING marks, for example, referring to “implementation of our New BSA Girl Scouting Program,” calling a registration form “Boys/Girls Scouts of America Volunteer Form” and posting on Facebook, “Come talk to me about the Girl Scouts BSA Troops forming in Kirkland.”
GSUSA is seeking monetary damages and injunctive relief, including an order prohibiting BSA from using any GSUSA marks or using SCOUT, SCOUTS, SCOUTING, or SCOUTS BSA without a distinguishing term.
The test for infringement is whether the marks are confusingly similar. This is determined not just by comparing the marks themselves, but by reviewing various other factors, including the types of goods or services and marketing channels.
This is why both organizations were able to use SCOUT, SCOUTS, and SCOUTING without confusion in the past – BSA offered services for boys, and GSUSA offered services for girls.
Although BSA must have been aware that its rebranding could be problematic, the person or business being sued for infringement is often unaware of the plaintiff’s use of its mark until a demand letter or lawsuit is received.
To help avoid problems like this when you choose a mark for your product or service, you should have a thorough trademark search conducted, covering not only the US Patent & Trademark Office’s registrations, but other databases and the Internet.
It would also be prudent to check the Canadian and Mexican registrations, as well as those of other pertinent foreign jurisdictions, particularly if you use your mark online.
Please feel free to contact us if you have any questions about or need assistance with conducting a trademark search or protecting your marks.
Photo by Kevin Delvecchio on Unsplash
