Trade mark ‘scout’ wars – girls vs. boys
The Girl Scouts of America are suing the Boy Scouts of America, Arguing that the Boys’ recent rebranding (from Boys Scouts to Scouts) has caused consumer confusion, mistaken enrolment and misinformation about a merger between the two organisations.
The two groups have coexisted peacefully for a long time, but problems arose when the “core gender distinction” was removed by the Boys when they announced last year that that they would start accepting girls in 2019.
The Girls’ lawsuit said the Boys had no right under New York State law and federal law to rebrand itself as ‘the Scouts’ or to use the words like ‘scouts’ or ‘scouting’ by themselves “in connection with services offered to girls”.
The Girls’ lawsuit also said that if the Boys wanted to broaden their base, they couldn’t do it at the Girls’ expense and accordingly they have claimed for trademark infringement and interference with economic prospects.
There are a few points to take away from the ‘Scouts’ trade mark saga –
First, trade marks are valuable assets. A trade mark can be a shield (can be used defensively to prevent third parties from depriving you of the right to use your name and brand). A trade mark can be a sword (can be used offensively to prevent third parties from using your name and brand). Trade marks can be used to generate revenue (licensing). Trade marks make a business more attractive (and valuable) to buyers and investors. In this case, the power of a trade mark is demonstrated by the fact that it is the principal asset through which the Girls’ can seek to prevent rebranding by the Boys’ which they say is causes serious damage to their organisation in the form of consumer confusion, mistaken enrolment and misinformation.
Second, trade mark searches and due diligence are important. We are not suggesting that the Boys didn’t know about the Girls before they rebranded. But as a general principle it is a good idea to carry out searches and due diligence before a lot of time and money are spent on new trade mark applications and other expenses associated with rebranding. At Briffa we always carry out searches and due diligence in advance of any new trade mark application, and we also advise clients on issues like distinctiveness, descriptiveness and issues like honest concurrent use, in order to give clients an overall picture of the likelihood of success. In this case, it may have been useful (and potentially avoided an expensive lawsuit) if the Boys considered how the Girls were likely to react to their rebranding.
Third, consider negotiating. Litigation is commonplace in the US, but for many of our clients the quickest, cheapest and most commercial solution is the preferred one (and usually the one that does not involved lengthy and time-consuming litigation unless absolutely necessary). Of course litigation is sometimes unavoidable, but in many situations a mutually-acceptable solution can be achieved without recourse to litigation (e.g. in this case, by negotiating a coexistence arrangement between the Boys and the Girls where, for example, both parties agreed to shared use of the generic terms ‘Scout’ and ‘Scouting’ but also agreed to avoid confusion by only using those terms with their own specific logos, colours and brand identities).
Briffa advises on all aspects of trade mark law and practice and offers free 30-minute consultations to all new clients. If you would like to book a call or a meeting with one of our specialist IP lawyers, please contact [email protected] or 020 7288 6003.