Boy Scouts vs Girl Scouts

(Reuters) - A Manhattan federal judge said Wednesday during a hearing that the Boy Scouts of America didn't infringe the Girl Scouts' trademarks by using the term "Scouting" to advertise to girls.

Senior U.S. District Judge Alvin Hellerstein in what he called "temporary findings," said he planned to rule for the Boy Scouts on its summary judgment motion, finding the group can use the general word "Scouting" to describe its co-ed programs without causing confusion with the Girl Scouts.

"'Boy Scouts' is a brand, 'Girl Scouts' is a brand, but 'Scouting' alone is an activity," Hellerstein said.

The Boy Scouts announced in 2017 it would allow girls to join, and unveiled an ad campaign promoting co-ed scouting called "Scout Me In" a year later. The Boy Scouts also announced in 2018 that it would change the name of its main scouting program to "Scouts BSA," which it did in 2019.

The Girl Scouts sued the Boy Scouts for trademark infringement, among other things, in 2018, alleging the organization's use of "Scouts" and "Scouting" to market to girls violates its trademark rights. The group alleged the rebrand threatened to "marginalize" it, and had already created confusion among families, schools and communities nationwide.

At Wednesday's hearing, Rachel Kassabian of Quinn Emanuel Urquhart & Sullivan, who represents the Boy Scouts, called the lawsuit "an effort by the Girl Scouts to restrain competition and to pressure the BSA not to welcome girls," and said it was driven by the Girl Scouts "not wanting to lose its perceived monopoly" over girl scouting.

Hellerstein expressed concern that the Girl Scouts had tried to use "a control over language to prevent another competitor from extending its services to become co-ed."

"You can't prevent the Boy Scouts from becoming co-ed, and you can't prevent them from adopting a name that describes their new activity," Hellerstein, who didn't indicate when he would issue his final ruling, told Girl Scouts attorney Bruce Ewing of Dorsey & Whitney.

Ewing responded that the Girl Scouts weren't trying to stop the Boy Scouts from offering services to girls, and only wanted to stop the Boy Scouts from causing confusion.

"The issue is unfair competition and the way in which Boy Scouts is marketing and branding its services – it is not doing so in a way that communicates to the public who the sponsor is and what the organization is, and the law allows a remedy for that," Ewing said.

Both organizations have struggled with losing significant numbers of members recently. The Boy Scouts, which filed for bankruptcy last year, had said in its summary judgment motion that the Girl Scouts' lawsuit was calculated to "put political pressure on the BSA at a time when GSUSA felt the BSA was vulnerable to attack."

The Boy Scouts reached a deal on Tuesday with one of its primary insurers, The Hartford Financial Services Group Inc, which said it will contribute $787 million to compensate men who have filed sex abuse claims against the organization. The deal is subject to bankruptcy court approval and faces some opposition from certain groups of abuse claimants.

The case is Girl Scouts of the United States of America v. Boy Scouts of America, U.S. District Court for the Southern District of New York, No. 1:18-cv-10287.

For the Girl Scouts: Bruce Ewing of Dorsey & Whitney.

For the Boy Scouts: Rachel Kassabian of Quinn Emanuel Urquhart & Sullivan.