Earlier this month the Boy Scouts of America were in the news when they announced that their flagship program, Boy Scouts, would be renamed to Scouts BSA early next year. This name change was made to reflect the organization’s previously announced decision to allow girls to enter the program and become Scouts. Some of these news reports also articulated a more generally unknown point of information; the Boy Scouts of America have the exclusive right to the trademark of the word “scouts”.
In 1916, Congress passed a federal statute that incorporated the Boy Scouts of America and in doing so granted them the “exclusive right to use emblems and badges, descriptive or designating marks.” In 1998, under 36 U.S.C. § 30905, Congress amended the BSA incorporation statute so that it now reads that BSA “has the exclusive right to use emblems, badges, descriptive or designating marks, and words or phrases the corporation adopts.” Since its incorporation in 1916, the BSA has interpreted the Congressional Statute to mean that they have exclusive control over the word “scouts”. Due to the special permission granted by Congress and BSA’s interpretation of the statute’s meaning, the organization has been very willing to use the legal system to protect their trademarks.
One of the first instances of the Boy Scouts suing over the term “scouts” was in the 1920’s when they sued the Girl Scouts for use of the term. In response to the lawsuit, the Girl Scouts were adamant that girls should be on equal footing with boys and therefore should retain the right to use the term “scouts”. Obviously, the Girl Scouts ended up winning the argument but the Boy Scouts of America continued to protect their use of the phrase going forward. In 1960, BSA sued the “Safety Scouts” over trademark infringement and won. Girl Scouts of U.S. of Am. V. Hollingsworth, 188 F. Supp. 707 (E.D.N.Y. 1960). The BSA again challenged another youth organization in 2008 in the unpublished case of Wrenn v. BSA, 2008 U.S. Dist. LEXIS 91913 (N.D. Cal. 2008).
In Wrenn, the plaintiff was a father and founder of the National Council of Youthscouts. The plaintiff founded Youthscouts when his daughter was denied the right to become a member of her twin brother’s Cub Scout troop because she was a girl. The plaintiff created Youthscouts to act as a non-discriminatory scouting organization and filed for a trademark with the USPTO. BSA, in response, filed a notice of opposition and the whole thing eventually ended up in federal court. The US District Court eventually ruled for the Boy Scouts of America and stated that the BSA “need not demonstrate the likelihood of confusion because it has been granted special protection by Congressional charter.” The court went on to grant BSA’s petition for summary judgment and found that the Plaintiff was infringing on BSA’s trademark.
In 2013 there was another incident in which the BSA used their legal status to stop a youth organization from using the phrase “scout”. Hacker Scouts, a child education group that focuses on STEM education, received a cease and desist letter from the BSA. The BSA demanded that Hacker Scouts change its name or face legal ramifications. In response the director of Hacker Scouts decided to change the programs name to Curiosity Hacked so as to avoid the wrath of the BSA. This story went viral and caught the attention of some online legal blogs who started referring to BSA as a trademark bully.
Overall, it seems that the Boy Scouts of America pay attention to any and all use of the phrase “scout” by other organizations. While some may consider the BSA as trademark bullies the BSA likely considers their actions to be simple protection of their registered trademarks. Now that the BSA organization is undergoing some rather extensive changes it is possible that their legal department changes its stance on this issue as well. In the meantime however, at least a family in the same situation as the family in Wrenn can now use the Scouts BSA organization to learn the scouting skills and ideals that are so useful in life. That is after all, what scouting is all about.