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.