Girl Scouts of the United States of America recently filed a trademark infringement lawsuit against Boy Scouts of America in response to the Boy Scouts’ recent rebranding as SCOUTS BSA. The change drops “BOY” from the organization’s name in view of the fact that girls are now eligible to earn the Boy Scouts’ highest rank of Eagle Scout.

Girl Scouts alleges that dropping “BOY” is causing confusion across the nation with many mistakenly believing that the Girl Scouts organization no longer exists or has merged with SCOUTS BSA.  It also alleges that Boy Scouts does not have exclusive rights in the term “SCOUT”.

While it is difficult to predict how this case will ultimately turn out, it is a cautionary tale that there may be serious consequences resulting from rebranding by dropping aterm from the name, especially if the remaining part of the name is used by others in the same or a related industry. The problem is compounded when the removed term is what distinguished the name as a whole from other names in the industry.

In this particular case the removal of the term “BOY” from the Boy Scouts’ branding arguably created a “perfect storm” from a trademark perspective, since the term “BOY” was the part of the name distinguishing the Boy Scouts from the Girl Scouts. Furthermore, since the Girl Scouts have also used the term “SCOUTS” for many decades, it may be difficult for the Boy Scouts to claim exclusive rights in the term.

In view of the potential issues that may arise as a result of rebranding highlighted in this case, it is highly recommended that businesses and other organizations review any proposed branding changes with competent counsel experienced in trademark law before implementing any changes.

The case is Girl Scouts of the United States of America v Boy Scouts of America, U.S. District Court, Southern District of New York, No. 18-10287.

Jeffrey J. Scepanski, Esq.