Do think Boy Scouts of America Would Survive without Congressional Charter

[Peregrinator]

I would not venture a guess as to the reason for some of these distinctions.

I believe that in order to register a trademark one must actually use it in the marketplace, either the name of one's corporation or on a particular product. But IANAL, let alone one who works in IP.

[Peregrinator]

The words "Scout" and "scouting" have been claimed by B.S.A. as protected by trademark law and by its Congressional charter and have been held to be the intellectual property of the B.S.A. under trademark law each time the issue has been tested in court. B.S.A. has been quite willing to go to court.

I don't think that contradicts what I wrote. Without the Congressional charter I don't think the BSA's claim to own such generic terms would hold up in court.

[TAHAWK]

I don't think that contradicts what I wrote. Without the Congressional charter I don't think the BSA's claim to own such generic terms would hold up in court.

 

 

The Court in Wrenn held that the BSA's rights, as I noted, arose from trademark law AND the charter. Further, the court held that the riights arising under trademark law predated the Charter.

 

"From before 1916 when the charter was passed, the strength of the Boy Scout's marks had been established as a matter of law. Again, the court in Adolph Kastor explained that the Federal Trade Commission had already found that "the words 'Scout" and "Scouting" had acquired a secondary meaning as applied to the Boy Scouting movement. 138 F.2d at 825."

. . .

"[This status was] in addition to the legislative protection provided by the charter."

 

 

I wonder how many competing organizations using "Scout" or "Scouts" continued to exist by the time of the Charter. Certainly, some did.

 

 

 

[Peregrinator]

The Court in Wrenn held that the BSA's rights, as I noted, arose from trademark law AND the charter

Right, it is the charter that allows BSA to trademark such generic terms (ordinarily trademarks of generic terms are rejected). Here is the judge himself on the Wrenn case:

 

The Wrenns "ran into this juggernaut that Congress has granted to the Boy Scouts, with good reason," White said. "It's unfortunate that the case came to this."

 

The case isn't over, as the judge, who had tentatively ruled against Wrenn before the hearing, said he would issue his final decision in writing. But he seemed to agree with the Boy Scouts that a charter Congress granted in 1916 gave the organization the exclusive right to use "scouts" and related terms in naming youth groups.

 

And from the opinion:

 

With regard to both conceptual and commercial strength of the BSA’s Marks, the Court is again persuaded by the fact that Congress passed a charter enabling the BSA to escape the traditional confines of trademark registration altogether in granting protections to the “words and phrases†chosen by the BSA to identify its programs.

 

The judge seems to be referring to composite trademarks ("Cub Scout," "Eagle Scout," etc.) when invoking trademark law alone.

[TAHAWK]

Your "juggernaut" quote is from SFGate.com, writing before the Court journalized its final judgment.

 

As the quoted language from the Court shows, the Court held that BSA had acquired a right to the trademarks as a matter of law before the Charter.

 

"From before 1916 when the charter was passed, the strength of the Boy Scout's marks had been established as a matter of law. Again, the court in Adolph Kastor explained that the Federal Trade Commission had already found that "the words 'Scout" and "Scouting" had acquired a secondary meaning as applied to the Boy Scouting movement. 138 F.2d at 825." [emphasis added]

 

In the 1943 Kastor case, cited by the Court in Wrenn, appears the following language by Judge Learned Hand explaining why the Kastor Company was correctly barred by the FTC from using "Scout" on its knives:

 

The [Federal Trade] Commission has found, however, that "even before the incorporation of the Boy Scouts of America, the words `Scout' and `Scouting' had acquired a secondary meaning as applying to the Boy Scout movement." . . . Indeed, the Commissioner of Patents refused to register the name, "Winchester Scout" as a trade-mark for pocket knives upon the opposition of the Boy Scouts of America. Boy Scouts of America v. Winchester Repeating Arms Co., 15 Trade Mark Reporter 142. See, also, In re Excelsior Shoe Company, 40 App.D.C. 480. At the outset we hold therefore that the word, "Scout," when applied to a boy's pocket knife, suggests, if indeed it does not actually indicate, that the knife is in some way sponsored by the Boy Scouts of America.

. . .

In the foregoing we have not relied upon section 7 of the Act of Congress of June 15, 1916, 36 U.S.C.A. § 27. We have not done so, because the validity of that section has not been argued before us, and because there might be some question whether the word, "Scout," taken by itself, was within the clause "words or phrases * * * used by the Boy Scouts of America in carrying out its program." True, it is a part of "words or phrases" so used; but whether the statute meant to go so far as to protect a single word broken from its context, might be open to debate. Moreover, the Commission does not appear to have relied upon the statute in making its order.

[emphasis added] Cited and quoted, Boy Scouts of America v. Teal, No. 72-2319 (E.D. Pa. 04/23/1974)

 

A court may rule otherwise in the future. For now, what we have is a series of administrative and court decisions giving BSA property in the words "Scout" and "Scouting" under trademark law before the Charter was granted and notwithstanding the Charter.

[EmberMike]

The BSA has pursued some groups using the word "scout" in their name. The Baden Powell Service Association became thusly named after the BSA went after them for using the name Baden Powell Scout Association. But it is in name only that the BPSA cannot use the word "scout". They can refer to themselves as scouts and call it "scouting", use "scout" in documentation, oath, law, etc.

 

As far as I understand it, the protection on the word "scout" is restricted to names of organizations. But the BSA doesn't own the practice of scouting.

 

As for the Congressional charter, I think they'd survive fine without it. What does it do beyond giving them a little extra muscle on trademark protection? It already doesn't allow them to prevent other scout groups from forming. It just might mean they have less legal recourse to enforce ownership of some common words in group names.

[TAHAWK]

Assuming that B.S.A. remains successful in asserting its exclusive ownership of "Scout" and "Scouting," no other organization can use those words in connection with a youth program, a product aimed at Scouts, or any use that in any way suggests any relationship with Scouts or Scouting. B.S.A. owns the words used in those contexts.

 

Wann'a call your truck model or rifle model a "Scout? Go ahead.

 

Wanna' say you operating a "Scouting" program for youth, that your youth members are "Scouts," or that your youth program follows "Scouting"? Do it and, off the history in Courts, get sued and lose.

[Old_OX_Eagle83]

Essentially we have the franchise on Youth Development programs in the USA; what would be the advantage of stepping away from that?

 

I fail to see how our Congressional Charter brings anything but benefits.

[King Ding Dong]

As a hypothetical exercise this has been an informative thread. But under what circumstance does anyone believe congress will vote and a President would sign a revocation of the charter?

[NJCubScouter]

As a hypothetical exercise this has been an informative thread. But under what circumstance does anyone believe congress will vote and a President would sign a revocation of the charter?

 

I think the "circumstances" would exist sometime in the next 20 years, but I hope the BSA decides to change the "circumstances" long before that.

 

I don't really need to spell it out, do I? There have already been calls for the federal charter to be revoked, and we all know why. But I don't think that issue will be "forced" in the near (or even not-so-near) future.

[qwazse]

... There have already been calls for the federal charter to be revoked, and we all know why.

 

Yep, 'cause we wont countenance the godless and [most] girls.

[King Ding Dong]

The House has voted some 50 odd time for the repeal of the ACA. Not happening. The nut on Exit 16 declared a new The End Is Near date. Not happening. The gerrymandering of districts is so entrenched change in House in the next 20 years. Not happening. Our Tenderfoots will be running the show in 20 years and we know what most of them they think. That is happening. Congressional charter revoked, not happening.

[Peregrinator]

Thus far no Congressionally-chartered non-profit corporation has had its charter revoked. Some have ceased to exist (e.g., United Spanish War Veterans).