Boy Scouts prevails in ‘scouting’ TM suit with Girl Scouts
The Boy Scouts of America can use its gender-neutral marketing to advertise programmes without causing consumer confusion with trademarks held by the Girl Scouts, the US District Court for the Southern District of New York has ruled.
The Girl Scouts sued the Boy Scouts over the usage of the terms “scouts” and “scouting” in its marketing, claiming that the terms will likely cause confusion between both parties following the Boy Scout's decision to rebrand as a gender-neutral organisation.
The Girl Scouts claimed that the use of the terms infringed on its own trademarks and constituted trademark dilution and unfair competition.
In a decision handed down Wednesday, April 7, Judge Alvin Hellerstein ruled that the Boy Scouts have the right to use the terms in its marketing and dismissed the Girl Scout’s complaint.
‘Scout me in’
In October 2017, the Boy Scouts announced that its two largest programmes would be open to both boys and girls, and that it would change its name to “Scouts”. It advertised this development with the launch of a marketing campaign with the slogan “Scout me in”.
“As has happened in many sectors of society, the Boy Scouts have become co-ed[ucational], opening its scout membership and programmes to girls and boys, and dropping its gender-specific name as an inaccurate and misleading descriptor,” Judge Hellerstein explained.
Upon becoming the Scouts BSA, it adopted the terms “scouts” and “scouting” without any reference to gender.
Since this change, the Girl Scouts claimed that parents have been confused between the two organisations’ programming.
The Girl Scouts sought a summary judgment for claims of trademark infringement, unfair competition, trademark dilution and tortious interference. The Boy Scouts also sought a summary judgment to dismiss the complaint and the Girl Scouts’ entitlement to monetary damages.
Judge Hellerstein rejected the Girl Scouts’ claim that the terms “scouts” and “scouting” have acquired a secondary meaning in connection “exclusively” with the Girl Scouts, finding that the evidence submitted to back up this claim indicates that the public associates the terms with both the Boy and Girl Scouts.
Regarding the likelihood of confusion, Judge Hellerstein ruled that the instances of parental confusion concerning the two organisations were “anecdotal and isolated”.
He sided with the Scouts BSA, claiming that there was no trademark confusion and that the complaint was not based on trademark concerns, but rather focused on the “fear” of competition from the Scouts BSA’s gender-neutral approach to marketing.
Both parties have been approached for comment.
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