The times are ever evolving and with it, so are the Boy Scouts of America. After over a century in existence, they’ve decided to open their doors to girls. The organization has started campaigns such as “Scout Me In” and filed for trademark and certification mark protection of SCOUTS BSA. The campaigns aim to bring boys and girls together from 5th grade to high school for adventure, challenges, and the responsibilities learned through scouting programs. Sounds great! But, not to the Girl Scouts of the USA (GSUSA).
GSUSA Says There’s No Room for Scouts BSA
The Girl Scouts filed a lawsuit against the Boy Scouts earlier this month. The complaint alleges trademark infringement, dilution, unfair competition, and tortious interference with prospective economic advantage, among other claims. The lawsuit focuses on the use of SCOUTS BSA and the phrase “Scout Me In” in recent advertisements.
The GSUSA has it’s own family of registrations that include “Scout” as part of the marks. However, they claim that using the word “Scout” alone without “Boy” by the Boy Scouts will harm GSUSA. They claim consumer confusion, unfair competition, and harm to reputation due to the Boy Scouts new use.
It’s A Head-To-Head Fight
Interestingly, the Girl Scouts filed for trademark protection of SCOUTS and SCOUT COOKIES in March 2018 for use in connection with cookies. It’s possible one could see such attempt to gain those registrations as potentially overstepping rights to use of “Scout.” And, the Boy Scouts would agree, it seems. When the SCOUT COOKIES application was published for opposition, the Boy Scouts filed an extension to oppose the application. This came one day after GSUSA filed an extension of time to oppose the SCOUTS BSA application. So, the tension of the battle to come would seem imminent.
In addition to the recent use of SCOUTS BSA, the Boy Scouts came to obtain a federal trademark registration for SCOUTS for use in connection with educational services. The registration was obtained via assignment from The Regents of The University of California in 2015. The registration does not limit the scope of the services to boys. So, in the federal lawsuit, the Girl Scouts are also seeking to have this registration modified or partially cancelled.
Why Can’t We All Just Get Along?
In the case of trademark protection, it’s important to understand that enforcement of rights is just as important as registration, if not more so. The two organizations have coexisted for over one hundred years using similar names and trademarks. They have managed, thus far, to maintain a distinction from each other.
If the Girl Scouts don’t work to maintain their rights in the services they offer, they can lose those rights. As companies grow, they typically also expand services. Trademark rights can extend into those new areas, as long as no third party’s prior rights are infringed. Therefore, trademark owners must actively work to maintain their rights through monitoring, enforcement, and litigation if necessary.
About the firm:
Klemchuk LLP is a litigation, intellectual property (IP) and business law firm, located in Dallas, TX. The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. Additional information about the trademark law firm and its trademark attorneys may be found at www.klemchuk.com.
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Also published on Medium.