Fashion houses (like Burberry and Celine), and mass-market staples like Dunkin Donuts, IHOP, and Uber are not the only ones that have recently taken to revamping their brands. The Boy Scouts of America (“BSA”) are currently in the midst of a radical rebrand. According to the Girl Scouts of the U.S. (“GSUS”)’s newly-filed trademark infringement suit, the BSA “recently decided to offer all of its services to both boys and girls for the first time.” As a result, the group will now simply go by “Scouts,” as opposed to Boy Scouts. This is a “damaging” turn of events, according to the 106-year old GSUS.
The GSUS alleges in its 50-page suit, which was filed in a New York federal court on Monday, that “throughout [its] history, [the GSUS organization] has coexisted with [the BSA], which has long offered programs aimed at boys under the ‘Boy Scouts’ trademark.” They have been able to peacefully operate at the same time in the same geographies and with the same core demographics — despite their very similar names (i.e., trademarks) — thanks to the gender specificity of their organizations and their names.
Just as “the ‘Girl Scouts’ trademarks “embody the values of an organization whose unique and specific mission is to advance the cause of girls’ leadership and empowerment through programs exclusively for girls,” the GSUS asserts, the BSA’s “Boy Scouts” marks act as “symbols of youth development programs that, for more than a century, have been aimed at, led by and developed primarily for boys.”
“Thus, even though both [the Girl Scouts] and [the Boy Scouts] use the term ‘Scouts’ as part of their core trademarks, the organizations are distinct, with one offering leadership programming developed for and aimed at girls, and the other offering programming developed for and aimed at boys.”
This is no longer the case thanks to the Boy Scouts’ impending revamp, the complaint states. In fact, the GSUS claims that “such misconduct [will] cause confusion among the public,” the central inquiry in a trademark infringement matter. And far from merely a hypothetical assertion, the GSUS claims that since the BSA announced in May that it will adopt the new “Scouts” name, “families, schools and communities across the country have been told that the GSUSA and BSA have merged, or even that GSUSA no longer exists.”
Beyond that, though, the GSUS argues that the BSA’s name change will not only “damage the goodwill of [the] ‘Girl Scouts’ trademarks and erode its core brand identity, it will also marginalize the Girl Scouts Movement by causing the public to believe that GSUSA's extraordinarily successful services are not true or official 'Scouting' programs, but niche services with limited utility and appeal.” In connection with the foregoing, the GSUS has asserted claims of trademark infringement and dilution, as well as unfair competition.
Still yet, as a result of what the GSUS calls “a widespread and systematic course of conduct [by the BSA] to intentionally interfere with [its existing] relationships by dishonest, unfair, and improper means,” the group has forth claims of tortious interference with prospective economic advantage. As it turns out, the GSUS claims that recruiters for the BSA, in an attempt to poach potential Girl Scout members, have “recently begun telling parents and girls that there ‘are no more Girl Scouts’ or that the organizations have combined.”
The GSUS is seeking injunctive relief, in order to bar the BSA from changing its name and thereby, infringing the GSUS’s trademarks, and monetary relief.
*The case is the Girl Scouts of the USA v. the Boys Scouts of America, 1:18-cv-10287 (SDNY).