Published 10/29/2021 by CIONCA IP TEAM (SE)
In 1915, Girl Scouts of the United States of America (“GSUSA”) was incorporated as a non-profit organization. It recruited and offered programs for girls in grades K-12. GSUSA licensed the “GIRL SCOUTS” among other trademarks. Therefore, it had exclusive use of “the GIRL SCOUTS” and related brands. The United States Patent and Trademark Office (the “PTO”) recognized the protections afforded GSUSA, according to the 36 United States Code.
Boy Scouts of America (“the defendant” or “BSA) was a national organization for youth development. BSA carried out its activities and programs under the trademark “BOY SCOUTS” because its core programs targeted boys. Although the defendant had provided limited programs for girls on previous occasions, it never offered any girls’ programming under the trademarks “SCOUT” or “SCOUTING”.
In 2017, the defendant officially announced it would allow girls in their programs. In addition, an advertisement campaign promoting co-ed scouting “Scout Me In” was unveiled a year later. The following year, the defendant made another important announcement. Afterward, BSA changed its scouting program to “Scouts BSA” in 2019 to include girls’ programs.
BSA applied for federal trademark registration before the PTO to obtain protection for its rebranding efforts on “SCOUTS BSA” and “SCOUT LIFE”. However, GSUSA opposed the application before the PTO. Therefore, a hearing was brought before the Trademark Trial and Appeal Board.
During the pendency of the hearing, GSUSA instituted an action against BSA at the United States District Court, alleging the use of “Scouting” and “Scouts” by BSA as trademark infringement, among other things.
GSUSA claimed the rebrand by BSA violated its trademark rights. It also claimed that there had been marginalization and confusion among families, schools, and communities due to the rebrand. Therefore, a joint motion under Trademark Rule 2.117(a) for suspension of proceeding was requested by both parties. The motion was granted.
Before the District Court, BSA contended that the lawsuit was an effort by GSUSA to restrain competition. It also claimed that the pressure from GSUSA was an attempt to preserve its perceived monopoly over girl scouting. Counsel to GSUSA responded that GSUSA was not trying to restrain BSA from offering services to girls. However, GSUSA only wanted to stop BSA from confusing the innocent public.
The presiding Judge, Hellerstein, expressed concern that GSUSA cannot prevent BSA from becoming co-ed. However, he continued that GSUSA’s effort was only to control language to avoid another competitor. Based on the temporary finding of the Judge, he said he planned to rule in favor of BSA. However, the ruling as stated would be premised on the motion for summary judgment brought by BSA.
The Judge said he found that BSA can use the general word “Scouting” to describe its co-ed programs as it would not cause any confusion with the “Girl Scouts”.
It is noteworthy that the suit brought before the District Court was to challenge BSA’s removal of gender-specific language. GSUSA said such an act violated the congregational charter that governed the organizations.
Source: https://ttabvue.uspto.gov/ttabvue/ttabvue-91247071-OPP-4.pdf Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
CIONCA IP TEAM (SE)10/29/2021 4:49:28 PM
Marin Cionca, Esq.
Registered Patent Attorney
USPTO Reg. No. 63899
About CIONCA® IP Law firm: We are an Irvine, Orange County, California based boutique intellectual property law firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, including IP litigation, offering its IP services, other than IP litigation, primarily at flat fee rates. We serve local OC (Orange County) clients, as well as clients from the Los Angeles, San Diego and Riverside Counties and clients throughout the state of California, the United States and also international clients, such as EU clients.
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