Girl Scouts Lawsuit Highlights Problems with Descriptive Marks

Despite both organizations having descriptive marks, the Girl Scouts of America recently sued the Boy Scouts of America for trademark infringement after the Boy Scouts announced its plans to drop the word “BOY” from its mark and allow girls to participate in its program. The Girl Scouts accused the Boy Scouts of undermining the Girl Scouts by attempting to covertly recruit girls into its organization. In its complaint, the Girl Scouts identify instances of alleged actual confusion where the Boy Scouts advertised that both boy and girl scouts may join its organization.

A defining characteristic for both the Boy Scouts and Girl Scouts from their inception and for about a century later was that boys joined BOY SCOUTS and girls joined GIRL SCOUTS. These terms describe a significant characteristic, feature, or purpose of the respective organizations. Accordingly, the terms BOY and GIRL do not have any source identifying significance, and the Boy Scouts can delete this term from its mark without changing the overall commercial impression of the mark. In other words, the Boy Scouts will not abandon their prior trademark rights by deleting BOY from the mark.

Trademark law also does not restrict or limit the operations of a company or organization. Despite historically accepting only male applicants, the Boy Scouts can broaden its applicant pool to include girls, adults, etc. In fact, broadening applicant pool may be evidence of a natural zone of expansion. When the expansion occurs, it will be promoted and certain words may be required for the promotion.

In the case of the Boy Scouts, the decision to broaden its applicant pool requires it to use the word “girl” in order to attract female applicants. Using the word “girl” in this way even with or in close proximity to SCOUTS is a classic fair use. Classic fair use occurs when another party uses a term to exploit its descriptive meaning. It is another negative aspect to adopting descriptive marks.

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