SCOUTS HONOR? BINARY BRANDING GONE BAD

What a mess. Kudos to the Boy Scouts of America for opening up its membership to girls, but the gender-specific nature of the branding, plus the undeniable existence of a competing group, the Girl Scouts of the USA, has created a brand battle that would be right at home on a law school exam.

Timothy Geigner at TechDirt has a good post about the mess, but the basic issue is simply that the Boy Scouts of America are rebranding as “Scouts BSA.” Yes, the “BSA” still presumably stands for “Boy Scouts of America,” but by dropping the “BOY” portion from the mark, it has allegedly created confusion among the scouting community as a whole and is harming the Girl Scouts.

As explained in the TechDirt article, and in other articles on this issue, The Girl Scouts have sued the Boy Scouts in federal court, claiming trademark infringement, dilution, and other unfair competition. The complaint is HERE, and it is 50 pages long – covering interesting scouting history and allegations of intentionally sowing confusion.

From the Introduction in the Complaint:

There is also corresponding activity at the USPTO’s Trademark Trial and Appeal Board.  The lawsuit was filed in the Southern District of New York on November 6, 2018.  However, prior to that, on October 16, 2018, the Girl Scouts of the USA filed a request to extend the time to oppose the Boy Scouts of America’s trademark application for “SCOUTS BSA,” which the BSA filed on May 3, 2018.  Here is the TTAB docket:

Since there is now pending district court litigation, the Girl Scouts of the USA will likely not need to pursue opposing the application at the TTAB because the district court litigation can take care of the registrability and confusion issues, and, the TTAB typically suspends its own proceedings when there is concurrent district court litigation.

The Girl Scouts of the USA likely intended to pursue this in district court from the beginning, but the Boy Scouts’ “SCOUTS BSA” trademark application was published for opposition on September 18, 2018, which meant that the Girl Scouts had to either file a notice of opposition or seek an extension of time to file a notice of opposition within 30 days of September 18, 2018, otherwise the application would proceed toward registration.  Thus, the Girl Scouts, in an abundance of caution, filed the extension request within the 30-day window to preserve the ability to oppose the mark at the TTAB regardless of the status of the district court litigation.  Again, the TTAB will likely not have to get involved if the district court litigation takes off, but this is a good example of making sure all bases are covered before kicking off a litigation strategy.

Be prepared.

Sorry, couldn’t resist.

This will be a fascinating case.  Since these marks are so old and well-known, the dilution claims should be interesting.

 

*This article, in its entirety, was first published on Kevin’s personal blog, www.floridiptrends.com