In an opinion yesterday, Judge Hellerstein granted summary judgment to the Boy Scouts, and against the Girl Scouts, in a case arising from the Boy Scouts’ decision to use gender-neutral terms like “scout,” to account for its new policy of allowing girls to participate. The Girl Scouts alleged, in essence, that the Boy Scouts’ use of gender-neutral terms would create public confusion about the two organizations (see our prior coverage here).
Judge Hellerstein found that the Girl Scouts did not have a protectable trademark right to “scouting” because the public associates that term with either both organizations, or with the generic concept of “scouting”:
The evidence . . . indicates that the public associates the Scout Terms with both the Boy Scouts and the Girl Scouts; if any protectable rights exist in the Scout Terms alone, both the Boy Scouts and the Girl Scouts have claim to those rights. As used to describe both organizations, the evidence in the record suggests that that the Scout Terms are understood by the public to be generic, or at best descriptive, of scouting activities.
Judge Hellerstein noted that the suited reflected a fear of legitimate competition:
In truth, Girl Scouts’ complaint is based, not on concern for trademark confusion, but on fear for their competitive position in a market with gender neutral options for scouting. While some girls and their parents may prefer an all-girls scouting environment, others prefer a co-ed scouting environment. Just as many organizations have done in other contexts—such as colleges that were once exclusively male—Boy Scouts chose to open its doors to girls and provide them with an opportunity to choose which form of scouting they prefer. Though Boy Scouts and Girl Scouts may now compete more than they once did, neither organization can preempt the other’s use of the Scout Terms and their trademarks are not likely to be confused.
[D]rawing all inferences in the plaintiffs’ favor, I find that Girl Scouts has failed to raise a genuine issue of material fact with respect to likelihood of confusion. There is no trademark confusion. Girls Scouts has no trademark rights in “Scouts” alone, and “Girl Scouts” in its full form is distinct from the Scout Terms. Boys and girls can join the organization of their preference. If a parent or child makes a mistake as to the actual organization they have joined, they can quickly correct it.