Who the Heck Do I Buy My Thin Mints From?
In October 2017, the Boy Scouts of America (“Boy Scouts”) began accepting girls into its programs.1 This may have been a good idea, considering that traditional gender roles are changing and perhaps children who do not conform to any one gender identity would like to be a part of a more inclusive program.2 Moreover, this may have been a good marketing strategy for the Boy Scouts to increase its enrollment, which has been declining over recent years after multiple scandals and a potential bankruptcy filing.3 The Boy Scouts’ new girls’ programs went by the names of “SCOUTS BSA” and “SCOUT LIFE” and its new advertising slogan became “Scout me in.”4 This is where the problems began.5
The Girl Scouts of the United States of America (“Girls Scouts”) were not happy about the Boy Scouts creating girls programming, accusing the Boy Scouts of infringing on its trademarks.6 In their 50-page complaint filed in the Southern District of New York in November 2018, the Girl Scouts alleged federal trademark infringement, federal unfair competition, as well as federal trademark dilution—among other claims—by the Boy Scouts.7 The Girl Scouts began its complaint explaining how the organization have “coexisted” with the Boy Scouts for decades, with the Girl Scouts implementing the “SCOUTS” mark exclusively in relation to girls’ programming and the Boy Scouts using the “SCOUTS” mark exclusively in relation to boys’ programming.8 However, the infringement began when Boy Scouts started recruiting girls and using “SCOUTS” for both girls’ programming and boys’ programming.9
The Girl Scouts allege that since the Boy Scouts are using “SCOUTS” in relation to boys’ and girls’ programming, the Boy Scouts are confusing the public, as well as damaging the Girl Scouts’ trademarks.10 The Girl Scouts claim that the Boy Scouts have used Girl Scouts trademarks as well as quotes from the Girl Scouts’ founder, Juliette Gordon Low, in its advertising.11 The Girl Scouts present multiple flyers from the Boy Scouts in its complaint that use phrases such as “New BSA Girl Scouting Programs!,”12 “Girl Scout Volunteer Opportunity,”13 and “We will be forming a Girl Scout troop in February.”14 The Girl Scouts then go on to list multiple examples of schools and parents being confused about the status of the Girl Scouts and accidentally enrolling their daughters for the Boy Scouts rather than the Girl Scouts.15 The Girl Scouts claim that because of the Boy Scouts’ infringement of the its trademarks, the Boy Scouts have created confusion for people throughout the country who believe that that the Girl Scouts and Boy Scouts have merged or that the Girl Scouts no longer exist.16 The Boy Scouts’ decision to include girls in ita programming has “dramatically changed the circumstances that previously allowed their use of trademarks like SCOUTS and SCOUTING to coexist with [Girl Scouts’] Marks without causing confusion.”17
The Girl Scouts asked the court to grant preliminary and permanent injunctive relief, enjoining the Boy Scouts from using the Girl Scouts marks or “any confusing similar variations” in their advertising and marketing, as well as representing that the Boy Scouts are affiliated with the Girl Scouts.18
As of January 2, 2019, the Boy Scouts had not filed a response, but an attorney has filed a notice to appear on their behalf.19
To prove federal trademark infringement, “a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are ‘senior’ to the defendant’s), and that the defendant’s mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks.”20 The key factor courts consider while determining infringement is “the degree of similarity between the marks at issue and whether the parties’ goods and/or services are sufficiently related that consumers are likely to assume (mistakenly) that they come from a common source.”21 Courts also look to “how and where the parties’ goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant’s intent in adopting its mark; and the strength of the plaintiff’s mark.”22
Here, the Girl Scouts have a fairly good claim for trademark infringement, as it owns the Girl Scouts mark and the Boy Scouts’ use of the marks, from what is presented in the complaint, seems to cause confusion about the Boy Scouts’ affiliation with the Girl Scouts.23 The fact that the two groups are advertising to similar groups (e.g., parents and schools), which have reported being confused about the two groups affiliation with each other, may also help the Girl Scouts’ claim.24 On a personal note, the Girl Scouts’ examples of Boy Scouts posters that used the phrases “Girl Scouts” or “Girl Scouting,” even if preceded or followed by “Boy” or BSA,” seemed confusing to me, so I could imagine parents being confused as well.
There are a few things that could happen as a result of this lawsuit. Since the Boy Scouts may file for bankruptcy, it is possible they do not want to get into the midst of a big lawsuit.25 The Boy Scouts could settle, perhaps by paying the Girl Scouts monetary damages and changing how they advertise to girls so as not to confuse people.26
This could also go to trial. If the court finds that the Boy Scouts have been infringing on the Girl Scouts’ trademarks, the Boy Scouts would be enjoined from using SCOUTS or SCOUTING in relation to programming for girls. As a result, the Boy Scouts might encounter more difficulty recruiting girls who would be referred to, or will be in troops of “boy scouts,” perhaps effectively killing the Boy Scouts’ ability to recruit girls or non-binary kids.
On the other hand, if the Boy Scouts win, the Girl Scouts could become less relevant as more people might register their daughters for the Boy Scouts instead of the Girl Scouts, possibly out of confusion created by the Boy Scouts’ advertising.27 If this happens, the question becomes: who the heck do I buy my Thin Mints from?
Tiffani Otey and Phil Gura, Girl Scouts File Trademark Complaint Against Rival Boy Scouts, IP Watchdog (Dec. 27, 2018), https://www.ipwatchdog.com/2018/12/27/girl-scouts-file-trademark-complaint-against-rival-boy-scouts/id=104458/. [https://perma.cc/3W47-QK63]↩
See generally, Lawrence E. Ashery, Battle of the Sexes: Girl Scouts Sues Boy Scouts for Trademark Infringement, The Legal Intelligencer (Dec. 4, 2018 at 1:54PM), https://www.law.com/thelegalintelligencer/2018/12/04/girl-scouts-sues-boy-scouts-for-trademark-infringement/. [https://perma.cc/Q3HV-MCUB]↩
Id.; Otey and Gura, supra at 1.↩
Ashery, supra at 2.↩
Complaint at 1–4, Girl Scouts of the United States of America v. Boy Scouts of America, (S.D.N.Y. 2018) (No. 18-cv-10287).↩
Id. at 1–3.↩
Id. at 2.↩
Id. at 3.↩
Id. at 3–4.↩
Id. at 21.↩
Id. at 22.↩
Id. at 26.↩
Id. at 30–33.↩
Id. at 3–4.↩
Id. at 19.↩
Id. at 47–48.↩
Docket Report, Justia.com, https://dockets.justia.com/docket/new-york/nysdce/1:2018cv10287/504196 (last visited Mar. 8, 2019). [https://perma.cc/B25C-UGTT]↩
About Trademark Infringement, USPTO.com, https://www.uspto.gov/page/about-trademark-infringement (last visited Mar. 8, 2019). [https://perma.cc/KW43-JM2V]↩
Complaint, supra at 26–33.↩
Otey and Gura, supra at 1.↩
See Ashery, supra at 2.↩
Otey and Gura, supra.↩