Judge In Scouts BSA Trademark Case Says He's Going To Rule In Scouts BSA's Favor On Summary Judgement

from the scout's-honor dept

Well, well, it appears that this particular story is going to move faster than I had thought. And, to be frank, I kinda sorta get it. We had just discussed Scouts BSA, formerly The Boy Scouts of America, seeking summary judgement in the trademark suit brought by The Girl Scouts of America. You can go back through the old posts for the detailed context, but the short version is that the Boy Scouts decided girls aren't as icky as they previously thought and rebranded as Scouts BSA to be more inclusive. This created a bunch of confusion with The Girl Scouts, some of it very much due to the actions of local Scouts BSA chapters, such as:

-“As a result of Boy Scouts’ infringement, parents have mistakenly enrolled their daughters in Boy Scouts thinking it was Girl Scouts,” the lawyers said, adding that this never occurred before 2018.

-The lawyers said Boy Scouts councils in Illinois acknowledging improperly using the Girl Scouts’ slogan in Cub Scout recruiting materials and pictures of Girl Scouts to promote a Boy Scouts “Scouts Sign-Up Night!”

-They said a western Massachusetts Boy Scouts council posted a recruiting flyer on Facebook including a photograph of a girl depicted in her Girl Scouts Brownie uniform.

-Meanwhile, Ohio Boy Scouts used the Girl Scouts trademark to try to get a local newspaper to write an article, suggesting a storyline entitled “Boy and Girl Scouts Looking for Members” even though the recruitment involved only the Boy Scouts, the lawyers said.

-Minnesota families looking to sign up their girls were erroneously told the Girl Scouts and the Boy Scouts have merged. Meanwhile, in Indiana and South Dakota, some parents mistakenly signed up their daughters to girls’ programs in the Boy Scouts.

It was due to those real examples of confusion that I had predicted the judge in the case would not rule for Scouts BSA on summary judgement... but it appears I was wrong. And perhaps specifically on the trademark question, the judge is right when he spoke openly about his intention to find in favor of Scouts BSA.

A Manhattan federal judge said Wednesday during a hearing that the Boy Scouts of America didn't infringe the Girl Scouts' trademarks by using the term "Scouting" to advertise to girls.

Senior U.S. District Judge Alvin Hellerstein in what he called "temporary findings," said he planned to rule for the Boy Scouts on its summary judgment motion, finding the group can use the general word "Scouting" to describe its co-ed programs without causing confusion with the Girl Scouts.

"'Boy Scouts' is a brand, 'Girl Scouts' is a brand, but 'Scouting' alone is an activity," Hellerstein said.

And he's right about that. The truth is probably that nobody should have a trademark on the term "scouting". It's entirely descriptive of what the organization is and does. If this ruling is centered strictly on the claim of trademark infringement, I can see it making sense.

Which leaves the issue of the actual customer confusion here and what to do about it. The GSA notes as much itself.

Ewing responded that the Girl Scouts weren't trying to stop the Boy Scouts from offering services to girls, and only wanted to stop the Boy Scouts from causing confusion.

"The issue is unfair competition and the way in which Boy Scouts is marketing and branding its services – it is not doing so in a way that communicates to the public who the sponsor is and what the organization is, and the law allows a remedy for that," Ewing said.

Given the examples of confusion born from the tactics of Scouts BSA marketing, it appears there would be a valid trademark infringement claim based on those actions, just not for the use of "scout" or "scouting" in general.

Regardless, it appears the court is going to rule for Scouts BSA on this suit. I imagine the GSA may want to file suit instead for the individual infringement claims based on the marketing material, which I cannot imagine Scouts BSA winning at the summary judgement phase.

Filed Under: boy scouts, girl scouts, scouting, trademark
Companies: girl scouts of america, scouts bsa

Scouts BSA Seek To End Girl Scouts' Trademark Lawsuit By Brazenly Claiming No Confusion Does Or Will Exist

from the scout's-honor dept

We've been covering the lawsuit brought by The Girl Scouts of America against Scouts BSA, formerly The Boy Scouts of America, for some time. In the two posts that covered the suit, the GSA has alleged all kinds of very real confusion in the marketplace for female scoutting as a result of the branding change by Scouts BSA, which include:

-“As a result of Boy Scouts’ infringement, parents have mistakenly enrolled their daughters in Boy Scouts thinking it was Girl Scouts,” the lawyers said, adding that this never occurred before 2018.

-The lawyers said Boy Scouts councils in Illinois acknowledging improperly using the Girl Scouts’ slogan in Cub Scout recruiting materials and pictures of Girl Scouts to promote a Boy Scouts “Scouts Sign-Up Night!”

-They said a western Massachusetts Boy Scouts council posted a recruiting flyer on Facebook including a photograph of a girl depicted in her Girl Scouts Brownie uniform.

-Meanwhile, Ohio Boy Scouts used the Girl Scouts trademark to try to get a local newspaper to write an article, suggesting a storyline entitled “Boy and Girl Scouts Looking for Members” even though the recruitment involved only the Boy Scouts, the lawyers said.

-Minnesota families looking to sign up their girls were erroneously told the Girl Scouts and the Boy Scouts have merged. Meanwhile, in Indiana and South Dakota, some parents mistakenly signed up their daughters to girls’ programs in the Boy Scouts.

Those appear to be verifiable, real-world claims of confusion as a result of the BSA rebranding to a more generic name, all in the context of a world where the BSA and GSA have long been separated along gender lines. Why it should be any surprise that confusion exists here is beyond me. It seems like roughly the most predictable thing in the world to have happened, particularly when you account for the actions of local Scouts BSA organizations that seemed to actively attempt to instill such confusion.

In fact, perhaps the most surprising thing now is that Scouts BSA is asking a judge for a summary judgement that no confusion has or will exist.

U.S. District Judge Alvin Hellerstein in Manhattan will hear oral arguments on the Boy Scouts' motion for summary judgment, in which it argued that rebranding as "Scouts BSA" and advertising to girls won't cause confusion with the Girl Scouts.

The Boy Scouts said in a statement that it has been clear that the groups are separate organizations, and trusts that "families choose organizations for their children with great care." Rachel Kassabian of Quinn Emanuel Urquhart & Sullivan represents the Boy Scouts.

This is belied, again, by the examples of confusion that have not been specifically refuted as well as some of the confusion-inducing actions taken by Scouts BSA local chapters. It's also a simple matter to remind the public that the BSA has itself been extremely protective of all manner of its IP in the past, making this not solely a story about spurious claims of non-confusion, but also one of hypocrisy.

We'll await the ruling by the judge on this motion, but it would be very strange if Scouts BSA prevailed.

Filed Under: likelihood of confusion, scouts, trademark
Companies: boy scouts of america, girl scouts of america, scouts bsa

The Girl Scouts Sues The Boy Scouts Over Trademark

from the scouting-party dept

As you may recall, the Boy Scouts of America decided late last year to -- finally -- allow girls to join their ranks. It was a widely praised decision that was long overdue, with the organization's mission statement not calling for any kind of gender exclusivity. You may also recall that the BSA has some history of being on the wrong side of intellectual property concerns and even has a special law created just for the BSA to allow it to be trademark bullies. These two seemingly unrelated worlds have now collided, with the BSA being sued by the Girl scouts of America over trademark concerns.

The Girl Scouts are suing the Boy Scouts, saying the organization’s inclusive rebranding effort has caused all sorts of consumer confusion from mistaken enrollment in the Boy Scouts to misinformation about a merge of the two groups.

Tuesday’s trademark infringement lawsuit is an attempt to clear up the uncertainty, said the Girl Scouts of the United States of America.

The Manhattan federal case noted the two separate youth organizations have long coexisted. But problems arose when “core gender distinction” was altered by the Boy Scouts of America, which announced in October 2017 it would open its doors to girls beginning in 2019. Earlier this year, the Boy Scouts unveiled new marketing campaign to back the effort. “Scout Me In,” the tagline proclaimed.

What happened here is pretty simple. And, frankly, pretty stupid on the part of the BSA. And we should acknowledge that Techdirt generally, and myself specifically, tend to advocate a more permissive attitude when it comes to trademark concerns. In this case, what BSA did was to rebrand itself without the "Boy", instead recruiting girls into its ranks using the "Scouts BSA" branding and term. To be somewhat critical of the Girl Scouts, having that "BSA" in its name certainly does some work to differentiate it and call back to its original Boy Scouts of America name, but I'm not sure one could argue that "BSA" alleviates any concern. The Girl Scouts, of course, are still a thing. And this appears to have led to very real confusion in the marketplace.

In court papers, the Girl Scouts said the Boy Scouts’ rebranding announcement has created all kinds of brand confusion across the country.

For example, some Minnesota families looking to sign up their girls were erroneously told the Girl Scouts and the Boy Scouts have merged. Meanwhile, in Indiana and South Dakota, some parents mistakenly signed up their daughters to girls’ programs in the Boy Scouts.

Those are pretty clear cut examples. But, for some, this has become a tricky case. Most people view the Boy Scouts being more inclusive and allowing girls in as a good thing. Most people think the term "scout" is fairly generic at this point. Are we really to advocate that the GSA can keep BSA from including girls as scouts?

No, of course not. The problem here arose when BSA decided to brand itself by dropping the "Boy" instead of replacing it. If the branding and marketing material had instead replaced "Boy" with something else, particularly with a new name that used a different acronym, there wouldn't be a problem. If BSA had decided to become the Field Scouts of America, for instance, confusion wouldn't have been a thing. That it chose to do otherwise, knowing full well that the Girl Scouts exist, is actually fairly belligerant.

Filed Under: boy scouts, confusion, girl scouts, scouts, trademark
Companies: boy scouts of america, bsa, girl scouts of america, gsa, scouts bsa