Since their respective beginnings, the Boy Scouts (of America) limited their membership to boys and the Girl Scouts (of the United States of America) limited their membership to girls. But, in a significant switch, the Boy Scouts recently announced they will now be accepting girls into their ranks. All would be well and good, except for the fact that this transition resulted in a lawsuit for trademark infringement.

The Boys Scouts (BSA) website describes their organization as having more than 2.4 million youth participants and almost 1 million adult volunteers. Since its inception in 1910, BSA has attracted over 110 million participants.

At its peak, the Boy Scouts had over 4 million participants, but membership has declined to almost half that due to a multitude of issues. Many commentators argued that the Boy Scouts decided to admit girls in order to try to reverse their declining enrollment numbers. Others argued that the change is a response to the social backlash over first, the exclusion, and then the inclusion, of gay scoutmasters. Michael Surbaugh, CEO of the Boy Scouts, had another explanation: “This decision to admit girls is true to the BSA's mission and core values outlined in the Scout Oath and Law. The values of Scouting—trustworthy, loyal, helpful, kind, brave and reverent, for example—are important for both young men and women.”

The Girl Scouts was founded in 1912 and reports 50 million alumni, 1.8 million currently registered girls and 800,000 adults. In what appears to be a direct response to the Boy Scouts decision to admit girls, the Girl Scouts website features (in large prominent letters): “Girls are first at Girl Scouts and they always will be” and “In a world of boys' clubs, give your girl a place of her own.”

The trademarks of the Girl Scouts and the Boy Scouts have been used for many years with what intellectual property attorneys call “peaceful coexistence.” That changed when the Boy Scouts announced their decision to admit girls, and started using trademarks commensurate with that switch. In a May 2, press release, the Boys Scouts announced a new name for its program—SCOUTS BSA—for girls aged 11 to 17. The Boys Scouts have also filed trademark registration applications, SCOUTS BSA (“educational services, namely, providing programs and activities for youth”), SCOUTS BSA (“indicating membership in an organization for youth”) and SCOUT LIFE (“magazines directed to the interests of the members of a youth organization”).

Since the Boy Scouts announcement, there have been instances of “confusion” in which Boy Scouts programs and Girl Scouts programs are being “mixed up” because of the wording in advertisements and marketing materials. The Girl Scouts wrote to the Boy Scouts a number of times, accusing the Boy Scouts of trademark infringement. The Boy Scouts described each incident as “inadvertent” and an “unfortunate error,” but the parties failed to reach an amicable solution, and on Nov. 6, the Girl Scouts filed suit against the Boy Scouts in the U.S. District Court for the Southern District of New York. A complaint has been filed, a judge has been assigned to the case, and, as of the time of this writing, the Boy Scouts need to complete a response.

A simple search of the U.S. Patent and Trademark Office database reveals many trademark registrations for services (such as educational services) and products (such as cookies) associated with the Girl Scouts mark. Furthermore, the Girl Scouts state in its complaint that it and the Boy Scouts have “coexisted in the marketplace for many decades” and have offered services and programs under the Scout, Scouts and Scouting trademarks. But, the complaint adds that, “Crucially, and until recently these terms when used have either been preceded by words like Boy or Girl that have highlighted the gender-specific nature of each organization's programs.” The Boy Scouts' decision to include girls has “dramatically changed the circumstances that previously allowed its use of trademarks like Scouts and Scouting to coexist.”

The complaint provides numerous examples of how the Girl Scouts trademark rights have been violated:

• A Boy Scouts fundraising flier for the “implementation of our New BSA Girl Scouting Programs” (capitalization in the original).
• A flier for a Boy Scout evening program with a “Girl Scout Volunteer Opportunity.”
• A website with a posting by a Boy Scouts leader displaying a “Boys/Girls Scouts of America Volunteer Form.”
• An announcement concerning the formation of a “Girl Scouts BSA Troop.”
• A Facebook posting from a Boy Scout leader to “Come talk to me about the Girl Scouts BSA Troops forming in Kirkland!”

The complaint also describes instances of consumer confusion in which parents intending to register their children for Girl Scouts inadvertently signed up for Boy Scouts. (One parent allegedly called a Girl Scouts council asking if her mistakenly paid Boy Scouts enrollment fee could be transferred to the Girl Scouts—it could not).

As a first cause of action, the Boy Scouts is accused of federal trademark infringement, by using the marks Scouts and Scouting that are “confusingly similar” to the Girl Scouts trademarks. These uses, the complaint alleges, “have caused and are likely to cause confusion, mistake and deception among consumers.”

As a second cause of action, the Boy Scouts is accused of Federal Unfair Competition.

Other causes of action include common law trademark infringement, trademark dilution (basically an erosion of the Girl Scout's current trademarks) and tortious interference.

On the one hand, this author wonders if the examples cited by the Girl Scouts have nothing to do with Boy Scout's national headquarters. In other words, did the incidents occur simply because Boy Scouts volunteers were either misinformed or ignorant of the requirements of U.S. trademark law? On the other hand, Boy Scouts has an obligation to control actions (of their volunteers) that incur legal liability and bears a responsibility for infractions thereof. With millions of volunteers all over the country, insisting that the rights of the Girl Scouts be respected is no small task, yet if the Boy Scouts cannot do so then an appropriate remedy might be to deny them a right to use the Scouts mark without a gender specific prefix.

The Boy Scouts have not yet filed a response to the complaint, but it will be interesting to see if it alleges that some levels of confusion between marks used by the Boy Scouts and the Girl Scouts have always existed. Merely as speculation, they might look for evidence to support a belief that the current confusion has always existed, and has nothing to do with their new mixed-gender policies.

Or, perhaps the two parties will find a way to settle their differences. The Boy Scout law requires that a Boy Scout “Obey the laws of country.” The Girl Scout law requires that a Girl Scout “use resources wisely.” Now would be a good time for both parties to follow their laws by sitting down together and reaching a fair and amicable resolution.

Lawrence E. Ashery  is a partner in the Philadelphia office of Caesar Rivise. He focuses his practice on all aspects of intellectual property law. He can be reached at [email protected].