Who has the trademark on Scouts the boys or the girls?

Who has the trademark on Scouts the boys or the girls?

A trademark is something that a product manufacturer uses to distinguish its products from similar products in the market place.  Trademarks can be placed on tangible products or intangible products like services.  Traditionally trademarks are thought of as symbols words or phrases, but just about anything used to distinguish products can be granted trademark protection.   The purpose of granting trademark protection is to prevent consumers from being confused about from whom they are buying a product.  Trademark law grants a user of a trademark the right to exclude others from branding products in a way which would confuse consumers.

Trademarks frequently have emotional and sentimental value.  A good trademark will make a consumer think of a company, an excellent trademark will elicit an emotional response from a consumer.  If consumers love a trademark and automatically associate a company with that trademark, that is a sign of an excellent trademark.  The association that a consumer makes between a trademark and the company that uses the trademark is a direct measure of the strength of the trademark.  If consumers begin to loose the association, then the strength of the trademark is weakened.  For this reason excellent trademarks must be guarded against infringement.

An example of a trademark owner guarding its excellent trademark is GIRL SCOUTS OF THE UNITED STATES OF AMERICA v. BOY SCOUTS OF AMERICA, 18-cv-10287 (S.D.NY 2018).  The Girl Scouts is a leadership development organization that focuses on developing the social and moral growth of young ladies.  The Boy Scouts is a leadership development organization that focuses on developing the social and moral growth of young men.  Both organizations have operated for more than one hundred years.

The Girl Scouts and the Boy Scouts are not average organizations in the United States.  The two organizations are the product of special laws that grant each organization the exclusive right to use the trademark Girl Scout or Boy Scout on every product which can be registered with the United States Patent and Trademark Office.  Both organizations have coexisted in the marketplace for many decades, with each offering youth development services and programs, under the “SCOUT,” “SCOUTS” and “SCOUTING” trademarks, usually preceded with the word girl or boy.

Recently the Boy Scouts decided to admit young ladies to its organization.  To make the organization more attractive to females the Boy Scouts rebranded itself as Scouts BSA and started referring to its members as Scouts.  The Boy Scouts also started an membership campaign with the tag line Scout Me In, to attract new members.

The Girl Scouts took exception to the Boy Scouts name change.  The Girl Scouts argue that the name change infringes on their trademark rights and is causing confusion in the marketplace.  The Girl Scout cite a 2004  Trademark Trial and Appeal Board opposition hearing where the Boy Scouts stated that they control use of the marks SCOUT and SCOUTING in connection with development programs for boys, while Girl Scouts controls use of the marks in connection with development programs for girls.  The Girl Scouts also submitted several pieces of correspondence between the two organizations, going back decades, showing that the two organizations were careful to promote their trademarks with boy or girl preceding Scouts.  To demonstrate consumer confusion, the Girls Scouts submitted several newspaper ads and social media posts from Boy Scout organizers that could be confusing to parents of young ladies.

The Girl Scouts request that the court grant an injunction stopping future infringement and monetary damages.  The Boy Scouts have not filed their answer to the complaint yet.

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