The firm recently secured a historic victory for the Boy Scouts of America (the “BSA”) in an important trademark case, ensuring the BSA’s continued right to use its long-standing “Scout” branding with both male and female members.
For over 100 years, the BSA has used the terms “Scout,” “Scouts” and “Scouting” in connection with its youth-serving programs. Over the years the BSA has had both single-gender and co-ed programs. In 2018, the BSA began welcoming girls into its Cub Scouts and Boy Scouts (renamed as “Scouts BSA”) programs, and launched a national campaign using the slogan “Scout Me In” to promote the inclusion of girls into these programs.
Later that year, the Girl Scouts of the United States of America (“GSUSA”) filed a lawsuit against the BSA in the Southern District of New York, asserting claims of trademark infringement, trademark dilution, unfair competition, and tortious interference with contractual relations. GSUSA alleged that the BSA’s use of the terms “Scout,” “Scouts” and “Scouting” in connection with activities that include both boys and girls infringed GSUSA’s claimed rights in the marks “Scouts” and “Girl Scouts” in connection with its youth program services for girls. GSUSA also alleged that the BSA’s use of the program name “Scouts BSA” and the slogan “Scout Me In” infringed GSUSA’s trademark rights, and that the BSA’s use of scout-related terms diluted GSUSA’s “Girl Scouts” mark. GSUSA sought damages in the form of GSUSA’s costs for claimed “corrective advertising” and disgorgement of the BSA’s alleged profits, as well as an injunction that would largely prohibit the BSA from using the term “Scout” without being preceded by the word “Boy.”
Discovery was extensive, involving dozens of depositions and hundreds of thousands of documents. The BSA moved for summary judgment on GSUSA’s claims, including arguing that GSUSA did not hold valid trademark rights in the term “Scout” alone (particularly in light of the fact that GSUSA’s own brand guidelines expressly forbade any use of “Scout” without being preceded by “Girl” in reference to GSUSA and its members), and that GSUSA had failed to prove likelihood of confusion.
On April 7, 2022, Judge Alvin K. Hellerstein granted the BSA’s motion for summary judgment in its entirety. See Girl Scouts of the U.S. v. Boy Scouts of Am., 2022 WL 1047583 (S.D.N.Y. Apr. 7, 2022). The Court first held that GSUSA had no protectable trademark rights in the word “Scout” unaccompanied by the word “Girl,” including because of GSUSA’s public disavowal of any such association. Id. at *4-*5. The Court then proceeded to address each of the eight factors that guide the determination as to whether there is a likelihood of confusion, and concluded that each was either neutral or favored the BSA (finding, for example, that any similarity between the marks is undercut by the BSA’s consistent use of other BSA brand indicia when it uses the term “Scout”). Id. at *6-*10. The Court concluded: “There is no trademark confusion. Girl Scouts has no trademark rights in ‘Scouts’ alone, and ‘Girl Scouts’ in its full form is distinct from [the BSA’s] Scout Terms.” Id. at *10. The Court also found that GSUSA had brought its lawsuit for an improper purpose, holding that “[i]n truth, Girl Scouts’ complaint is based, not on concern for trademark confusion, but on fear for their competitive position in a market with gender neutral options for scouting.” Id. Finally, the Court ruled that the BSA was not vicariously liable for the acts of local councils, and that the BSA was not liable for alleged acts of dilution or tortious interference. Id. at *11-13. The Court entered judgment for the BSA on all counts.