Boy Scouts v. Maker Scouts - trademark complaint.pdf

7/18/2019 Boy Scouts v. Maker Scouts - trademark complaint.pdf

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IN THE UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF TEXAS

DALLAS DIVISION

BOY SCOUTS OF AMERICA, §§ Civil Action No.________________

§Plaintiff, §

§v. §

§§

CREATIVE ENERGY MANAGEMENT LLC, §

THE FOUNDERY CORPORATION, §KIMBERLY A. VARNEY, AND §

EVAN E. JONES §§ JURY DEMANDED

Defendants. §______________________________________________________________________________

PLAINTIFF’S ORIGINAL COMPLAINT

______________________________________________________________________________

Plaintiff Boy Scouts of America (“BSA” or “Plaintiff”), by and through its attorneys, Fox

Rothschild LLP, files the following Complaint against Defendants Creative Energy Management

LLC (“CEM”), The Foundery Corporation (“Foundery”), Kimberly A. Varney (“Varney”), and

Evan E. Jones (“Jones”),1 and in support thereof, asserts the following:

Nature Of The Action

1.

This is an action for (1) a violation of 36 U.S.C. § 30905 (asserting BSA’s

exclusive rights to emblems, badges, marks, and words); (2) trademark infringement under 15

U.S.C. § 1114(a) (Lanham Act § 32(a)); (3) unfair competition under 15 U.S.C. § 1125(a)

(Lanham Act § 43(a)); (4) trademark dilution under 15 U.S.C. § 1125(c) (Lanham Act § 43(c));

1 CEM, Foundery, Varney and Jones are collectively referred to herein as “Defendants”.

Case 3:15-cv-02424-M Document 1 Filed 07/21/15 of 26 PageID 1



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(5) cybersquatting under 15 U.S.C. § 1125(d) (Lanham Act § 43(d)); and (6) related causes of

action under the laws of the State of Texas.

2. As set forth below, the actions listed above arise, inter alia, out of Defendants’

use in commerce of the marks, words and names MAKER SCOUT and MAKER SCOUT

SCIENCE TECHNOLOGY ENGINEERING ART MATH (collectively, “the Maker Scout

Marks”) in connection with goods and services similar and/or related to those of BSA,

Defendants’ registration and use of the domain name “makerscout.com” (the “Maker Scout

Domain”) containing Defendants’ website (the “Maker Scout Website”), which displays the

offending marks, words and names, and Defendant’s use of MAKER SCOUT on social media

web-sites such as Twitter®.

The Parties

3.

Plaintiff BSA is a federally chartered corporation organized under the laws of the

United States of America, with its principal place of business at 1325 West Walnut Hill Lane,

P.O. Box 152709, Irving, TX 75015.

4.

BSA is headquartered in this judicial district.

5. Defendant CEM was incorporated in the State of Florida, with a registered

address of 1904 Marks Street, Orlando FL 32803-4246 and a mailing address of P.O. Box 1224,

Winter Park, FL 32790.

6. On information and belief, CEM was voluntarily dissolved as a corporation on or

about April 15, 2013, but the owners and/or principles of CEM have continued to conduct

business in CEM’s name.




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7. CEM is the owner and listed registrant of the domain names makerscout.com and

thefoundery.org. On information and belief, CEM operated and currently operates the Maker

Scout Website.

8.

Foundery is a nonprofit Florida Corporation having a registered address at 5519

Legacy Crescent Place, Riverview, FL 33578, and a place of business at 565 S. Mason Rd, Katy,

TX 74450.

9.

Foundery is the owner of the assumed business name MAKER SCOUT, is

registered with the State of Texas, and has an address of 565 S. Mason Rd, Katy, TX 74450.

10.

On information and belief, Foundery operates its web-site at the domain

thefoundery.org (the “Foundery Website”).

11. Varney is an individual residing at 565 S. Mason Rd, Katy, TX 74450.

12.

Varney is an owner and manager of CEM and the President and registered agent

of Foundery.

13. On information and belief, Varney is a successor in interest to the assets of CEM.

14.

Varney is the listed owner of now-abandoned applications to register the marks

MAKER SCOUT (U.S. application Serial No. 85881659) and MAKER SCOUT SCIENCE

TECHNOLOGY ENGINEERING ART MATH (U.S. application Serial No. 85814395), which

were filed with the U.S. Patent and Trademark Office (“USPTO”).

15. Defendant Jones is an individual having a residence at 1904 East Marks St.,

Orlando, FL 32803.

16. Jones is an owner, manager, and the registered agent of CEM.

17.

On information and belief, Jones is a successor in interest to the assets of CEM

and a manager/registered agent of Foundery.




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18. Upon information and belief, Defendants own the Maker Scout and Foundery

Domains and Websites, own and use the assumed name Maker Scout, and use the Maker Scout

Marks in connection with various goods and services which have been accessed by the

consuming public at various locations throughout the United States.

19.

Defendants transact their business with the public at least in part through the

Maker Scout Website and the Foundery Website.

20.

Defendants sell, offer, advertise and render the services associated with its

products and services on the Internet, which is accessible throughout the world, including in this

judicial district and in the State of Texas.

21.

The acts of Defendants giving rise to BSA’s claims have been and continue to be

committed by Defendants in this judicial district.

Jurisdiction And Venue

22. This Court possesses subject matter jurisdiction over this action pursuant to 28

U.S.C. §§ 1331 and 1338 and the Lanham Act, 15 U.S.C. §§ 1051, et seq.

23.

This Court has supplemental jurisdiction over the state law claims pursuant to 28

U.S.C. § 1367.

24.

Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b)(2) and §

1391(c) because a substantial part of the events or omissions giving rise to BSA’s claims

occurred and are occurring in this judicial district, and through their residences and/or actions, all

Defendants are subject to personal jurisdiction in this district.

Factual Background

A. BSA And Its Marks

25.

BSA is one of the most well-known youth organizations in the United States.




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26. Beginning around February 8, 1910, and continuing to the present, BSA has been

engaged in the organization and management of programs for young people.

27. The BSA was founded in 1910, and in 2013 had approximately 2.5 million youth

members and approximately 960,000 volunteers in local councils throughout the United States

and its territories.

28. BSA adopted and began using marks incorporating the term "SCOUT" as early as

1910.

29. BSA has various programs and ranks based on the age and achievements of boys

and young men, which include CUB SCOUTS, BOY SCOUTS and EAGLE SCOUTS and

which, in addition to the name “Boy Scouts of America,” are well-known and famous names and

identities of BSA.

30.

BSA provides programs and activities related to STEM subjects (science,

technology, engineering, and math) and awards merit badges for completion of the various

programs and activities.

31.

BSA is the owner of, and will rely on herein, the following valid and subsisting

United States trademark, service mark, collective membership mark and certification mark

registrations, including a family of “SCOUT” containing marks, designs and symbols:

MARK/TYPE U.S. REG.

NO.

REG. DATE REPRESENTATIVE

GOODS/SERVICES

EAGLE SCOUT 3877547 November 16,2010

Indication of membership in a(n)organization for boys and young men

VARSITY SCOUT 1370697 November 12,1985 Indication of membership in a scoutingorganization for young men.

SCOUTMASTER 1695120 June 16, 1992 Indicating membership in a scouting

organization for boys.

BOY SCOUTS OF

AMERICA

1215939 November 9,

1982

Items of clothing forming part of a

uniform consisting of shirts, pants,shorts, skirts, dresses, belts, socks, hats,

and neckerchiefs.




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MARK/TYPE U.S. REG.

NO.

REG. DATE REPRESENTATIVE

GOODS/SERVICES

CUB SCOUTS 1215938 November 9,

1982

Items of clothing forming part of a

uniform consisting of dress shirts, t-shirts, pants, shorts, belts, socks, hats,

and neckerchiefs.BOY SCOUTS OF

AMERICA

1363872 October 1, 1985 Indication of membership in an

organization for young men.

CUB SCOUTS 1702357 July 21, 1992 Indication of membership in an

organization for boys.

BOY SCOUTS OF

AMERICA

1725084 October 20, 1992 Pocket knives, utility knives and lock

back knives; jewelry, namely, rings andpins, stationery, activity books and

manuals, concerning outdoor activities,crafts, and requirement of applicant's

organization, decals, desk sets with pen

and pen holders, pen and pencil sets,printed certificates; hand-held mirrors,plaques; balloons.

SEA SCOUTS 2578122 June 11, 2002 Educational services, namely a co-educational program for young adults

in the field of boating, sailing, raftingand scuba diving.

SCOUTING 1197851 June 15, 1982 Magazine for adult leaders andscouting for providing Scouting

instruction to boys and young men.

SCOUTING FOR

ADVENTURE

3638293 June 16, 2009 Entertainment services, namely a

continuing television show about boysand young men within a youth servingorganization

SCOUTSTUFF.ORG 4443273 December 3,2013

Online retail store services featuringclothing and apparel, literature,

camping equipment, craft supplies, andhome and gift wares

The foregoing registered marks are referred to collectively as the “Registered BSA SCOUT

Marks.”2 Copies of each registration are attached as Exhibit A.

32.

The Registered BSA SCOUT Marks are valid, subsisting, and in full force and

effect, and they constitute evidence of the validity of the registered BSA SCOUT Marks, BSA’s

ownership of the marks, and BSA’s exclusive right to use the marks in commerce in connection

2 BSA is the owner of numerous other registered marks which include the term “SCOUT”.




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with the identified goods and services pursuant to Section 7(b) of the Lanham Act, 15 U.S.C. §

1057(b). With the exception of Registration Nos. 3877547, 3638293 and 4443273, the

Registered BSA SCOUT Marks listed in paragraph 30 above have become incontestable and

therefore constitute conclusive evidence of such validity, ownership and exclusive rights

pursuant to Section 33(b) of the Lanham Act, 15 U.S.C. § 1115(b).

33. In addition to BSA’s registered rights in its marks, Congress has granted BSA

“the exclusive right to use emblems, badges, descriptive or designating marks, and words and

phrases that it adopts”. 36 U.S.C. § 30905.

34.

BSA also has and asserts common-law rights resulting from its ownership and use

of its marks, symbols and designs in connection with the various goods and services. Such uses

include various prior trademarks, service marks and trade names, which uses have not been

abandoned and which have been valid and continuous since a date prior to Defendants’ first use

in commerce of the Maker Scout Marks and/or any priority date Defendants may claim in the use

thereof. Such common law uses include the following: (i) the trade name BOY SCOUTS OF

AMERICA as used in connection with BSA’s organization; (ii) the marks “Boy Scouts” and

“Cub Scouts” as used with science and technology-related educational programs and awards for

STEM-related topics such as, astronomy, chemistry, engineering, computers, digital technology,

electronics, nuclear science, and oceanography; (iii) the mark BOY SCOUTS as used to indicate

membership in an organization for boys, (iv) the mark SCOUTING as used by the public to refer

to BSA’s services, programs and activities and which use inures to the benefit of BSA, (v) the

trade name and/or mark SCOUTS as used by the public to refer to BSA, its services, programs

and members and which use inures to the benefit of BSA, and (vi) the mark SCOUT as used by




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itself or in conjunction with other words and designs in connection with BSA’s goods, services

and members.3

35. Such common law marks identify and distinguish BSA’s goods, services and

members from those of others, and is an indicator of source.

36.

Said common law marks are inherently distinctive or have become distinctive by

obtaining secondary meaning prior to Defendants’ first use in commerce of the Maker Scout

Marks, and prior to any prior date Defendants may claim in the use thereof.

37. BSA’s SCOUT Marks constitute a family of marks, registered and unregistered,

that include the term “SCOUT”, and which family of “SCOUT” marks were used and promoted

in such as a way as to create a public perception of a family of “SCOUT” marks which are

distinctive as to the goods, services and members of BSA.

38.

BSA’s family of “SCOUT” marks existed prior to Defendants’ use in commerce

of the Maker Scout Marks.

39. As a result of the prominence of the BSA, the extensive number of BSA members

past and present, and the extensive number of consumers that have purchased and/or used its

goods and services, complimented by extensive advertising, promotion and press coverage, the

name and marks of BOY SCOUTS OF AMERICA, BOY SCOUTS, CUB SCOUTS, EAGLE

SCOUTS, and the entire “SCOUT” family of marks, have become famous and have come to be

recognized by the public as identifying exclusively BSA and its goods, services and members.

40.

Moreover, the BSA Marks have built up extensive goodwill.

3 All of BSA’s SCOUT marks and names asserted herein, including the Registered BSA Marks and common law

marks and names, are referred to collectively as the “BSA SCOUT Marks”.




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41. BSA’s SCOUT Marks are distinctive and recognized by the consuming public as

a designation of source for BSA’s goods and services and as a designation of membership in

BSA.

42.

As a result of the allegations set forth above, members of youth organizations and

the consuming public have come to recognize any mark or name incorporating the term

“SCOUT” as used in connection with goods and services similar or related to those of BSA as

originating or being associated with BSA.

43. BSA has used its BSA Marks in commerce in the United States long prior to

Defendants’ use of the marks, names, domain names, and other uses complained of herein.

B. Defendants’ Unauthorized Use Of the Maker Scout Marks in Commerce

44. Maker Scout is a program for children through which they can learn about STEM-

related topics through various activities and projects.

45. The youth members of Maker Scout are called “Maker Scouts” or “Scouts”, and a

Maker Scout’s unit in a particular city or area is referred to as a “Troop.”

46.

There are Maker Scout troops throughout the United States, including the state of

Texas.

47.

The Maker Scouts meet at Maker Scout troop meetings and can earn badges for

the completion of a particular activity or project.

48. The Maker Scout Website has the following tagline next to the mark MAKER

SCOUT: “The Next Generation of Scouting”. A true and correct copy of the opening page of the

Maker Scout Website is attached hereto as Exhibit B.




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49. The Maker Scout Website has a login portal for its members to access and use the

Maker Scout Website and obtain information and services. A true and correct copy of the page

of the Maker Scout Website showing the member login portal is attached as Exhibit C.

50.

Defendants own and operate the Maker Scout Website located at the Maker Scout

Domain.

51. The Maker Scout Website contains a reference to the Foundery, which also acts as

a hyperlink to the Foundery Website. See Exhibit B.

52. Upon information and belief, the Foundery is affiliated with and runs the Maker

Scout Website.

53.

The Foundery Website displays a picture of shirts with Maker Scout merit badges

thereon and a brochure for Maker Scout. A true and correct copy of a page from the Foundery

Website is attached hereto as Exhibit D.

54. The Maker Scout Domain of “makerscout.com” incorporates therein the term

“scout”.

55.

The term “scout” as used in the Maker Scout Domain is identical to the term

“scout” as used in BSA’s family of “SCOUT” containing marks.

56.

The Maker Scout Website prominently displays the Maker Scout Marks. See

Exhibit B.

57. The Maker Scout Mark is displayed on the Maker Scout Website in connection

with the advertising of the Maker Scout program for children and offering the program for sale.

58. The Maker Scout program is offered in commerce to consumers through the

Internet in the State of Texas and throughout the United States.




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59. The Maker Scout Mark is displayed on Twitter® in connection with the

advertising, promotion, and sale of the Maker Scout program for children.

60. Upon information and belief, one or more of Defendants own and operate the

Twitter® account in which said Maker Scout Mark is displayed. A true and correct copy of the

web page http://twitter.com/MakerScout is attached hereto as Exhibit E.

61. The Maker Scout Mark is also displayed on Google+ in connection with the

advertising of the Maker Scout program for children and offering the program for sale.

62. Upon information and belief, one or more of Defendants own and operate the

account Google+ on which said Maker Scout Mark is displayed. A true and correct copy of the

web page https://plus.google.com/116858873786243715983/posts is attached as Exhibit F.

63. BSA has not authorized Defendants to use the Maker Scout Marks in any fashion,

including the Maker Scout Domain, Maker Scout Website, Twitter, and Google +.

64. Defendant Varney filed the following applications in the USPTO to register the

Maker Scout Marks:




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Mark U.S.

ApplicationSerial No.

Application

Filing Date

Goods/Services

MAKER SCOUT 85881659 March 20, 2013 Development and dissemination ofeducational materials of others in the

field of Science, Technology,Engineering, Art, and Math;

Educational services, namely,conducting mentoring, classes,

projects, workshops, activities, fieldtrips. competitions, challenges, and

scouting in the fields of Science,Technology, Engineering, Art, and

Math and distribution of trainingmaterials in connection therewith;

Educational services, namely,

developing curriculum for educators;Educational services, namely,providing incentives to students K-12

to demonstrate excellence in the fieldof Science, Technology, Engineering,

Art, and Math; Organization ofexhibitions for cultural or educational

purposes; Providing a website featuringinformation in the fields of education

and entertainment for children;Providing after school educational

programs for children in grades K-12;Providing educational information in

the academic field of Science,Technology, Engineering, Art, and

Math for the purpose of academicstudy; Providing science educational

mentoring services and programs.




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Mark U.S.

ApplicationSerial No.

Application

Filing Date

Goods/Services

MAKER SCOUTSCIENCE

TECHNOLOGYENGINEERING

ART MATH

85814395 January 3, 2013 Development and dissemination ofeducational materials of others in the

fields of Science, Technology,Engineering, Art, and Math;

Educational services, namely,conducting mentoring, classes,

projects, workshops, activities, fieldtrips, competitions, challenges, and

scouting in the fields of Science,Technology, Engineering, Art, and

Math and distribution of educationalmaterials in connection therewith;

Educational services, namely,

developing curriculum for educators;Educational services, namely,providing incentives to students K-12

to demonstrate excellence in the fieldof Science, Technology, Engineering,

Art, and Math through the issuance ofawards; Organization of exhibitions for

cultural or educational purposes;Providing a website featuring

information in the fields of educationand entertainment for children;

Providing after school educationalprograms for children in grades 4-8;

Providing educational demonstrations;Providing educational information in

the academic field of Science,Technology, Engineering, Art, and

Math for the purpose of academicstudy; Providing science educationalmentoring services and programs.

These applications are referred to collectively herein as the “Maker Scout Applications”.

65.

BSA filed Notices of Opposition with the Trademark Trial and Appeal Board of

the US patent and Trademark Office (“the TTAB”) against both of the Maker Scout

Applications, premised upon the likelihood of confusion with BSA’s marks, dilution, and




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violations of 36 U.S.C. §30905, among other grounds (Opposition Nos. 91212115 and

91212153).

66. Varney did not answer the Notices of Opposition, and the TTAB refused to

register the marks by sustaining Opposition Nos. 91212115 and 91212153 in Orders dated

December 9, 2013, and December 5, 2013, respectively. True and correct copies of the TTAB

Orders are attached as Exhibit G.

67.

The day after the December 9, 2013 Order, counsel for BSA sent Varney a Cease

and Desist letter, in which BSA demanded that Maker Scout (1) cease and desist from using the

mark “MAKER SCOUT” or any other name including the word “SCOUT” in connection with

the organization’s services; and (2) arrange to transfer the Marker Scout Domain to the BSA. A

true and correct copy of the December 10, 2013 Cease and Desist letter is attached as Exhibit H.

C. Defendants’ Continued Violations of BSA’s Rights Despite the TTAB Dismissing

Their Maker Scout Applications

68. Despite the TTAB’s Orders sustaining BSA’s Opposition to the proposed Maker

Scout Marks and BSA’s Cease and Desist letter, Defendants failed to deactivate the Maker Scout

Website. See Exhibit B.

69.

On March 28, 2014, BSA’s counsel sent Varney a second Cease and Desist

Letter, again demanding that she cause Maker Scout to (1) cease and desist from using the mark

“MAKER SCOUT” or any other name including the word “SCOUT” in connection with the

organization’s services; and (2) arrange to transfer the Marker Scout Domain to the BSA. A true

and correct copy of the March 28, 2014 Cease and Desist letter is attached as Exhibit I.

70.

Rather than comply with BSA’s demands, Defendants renewed the ownership of

the Maker Scout Domain in December 2014. A true and correct copy of the registration

information is attached as Exhibit J.




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71. On March 11, 2015, due to Defendants renewing the ownership of the Maker

Scout Domain instead of complying with BSA’s demands, BSA’s counsel sent Varney a third

Cease and Desist Letter, again demanding that she cause Maker Scout to (1) cease and desist

from using the mark “MAKER SCOUT” or any other name including the word “SCOUT” in

connection with the organization’s services; and (2) arrange to transfer the Marker Scout Domain

to the BSA. A true and correct copy of the March 11, 2015 Cease and Desist letter is attached as

Exhibit K.

72. As of the date of this filing, Defendants continue to maintain the Maker Scout

Website as an active website and have not communicated their intent to transfer the Maker Scout

Domain to BSA, let alone actually effectuated the transfer.

73. Defendants also continue to maintain the Maker Scout Twitter and Google +

pages and promote Maker Scout at the Foundery Website.

74. Defendants’ use in commerce of the Maker Scout Marks through the Maker Scout

Domain, Maker Scout Website, Twitter, and Google + constitute a violation of 36 U.S.C. §

30905 (BSA’s exclusive rights to its marks), trademark infringement, trademark dilution, and

unfair competition, among others.

75.

Defendants’ registration and use in commerce of the Maker Scout Domain also

constitutes cyber piracy under 15 U.S.C. § 1125(d).


Domain, Maker Scout Website, Foundery Website, Twitter, and Google + violates BSA’s

exclusive right to use the BSA Marks, including BSA’s “SCOUT” family of marks.

77.

Defendants’ use in commerce of the Maker Scout Marks through the Maker Scout

Domain, Maker Scout Website, Foundery Website, Twitter, and Google + constitutes a use in




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commerce of reproductions, counterfeits, copies, or colorable imitations, among others, of BSA’s

marks, including BSA’s Registered Marks, in connection with the sale, offering for sale,

distribution, or advertising of Defendants’ goods and services such that such use is likely to

cause confusion, cause mistake, or to deceive.

78.

Upon information and belief, Defendants’ use in commerce of BSA’s Marks has

been made, notwithstanding BSA’s well-known and prior established rights in its marks, with

actual notice of BSA’s trademark rights.

79. Defendants’ use of the Registered BSA Marks has been made, notwithstanding

BSA’s well-known and prior established rights in its marks, with actual and constructive notice

of BSA’s federal registrations under 15 U.S.C. § 1072.

80. Defendants’ goods and services sold, offered for sale or marketed in connection

with the Maker Scout Marks are similar and/or related to the goods and services of BSA.

81. The goods and services of Defendants and those of BSA move through similar

channels of trade to similar classes of consumers.

82.

Among other things, the Maker Scout Marks incorporate the term “SCOUT”,

which is identical to the famous and distinctive term “SCOUT” used in the family of BSA

“SCOUT” marks.

83. The Maker Scout Marks, as used in commerce in the Maker Scout Domain,

Maker Scout Website, Foundery Website, Twitter, and Google +, are so similar to BSA’s Marks

as to be likely to cause confusion, mistake or deceive as to the source or origin of Defendants’

goods and services in the public and others are likely to believe that Defendants’ goods and

services are provided by, or sponsored by, or approved by, or licensed by, or affiliated with or in

some other way legitimately connected with BSA, all to BSA’s irreparable harm.




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84. Defendants willfully infringed BSA’s Marks to create a false designation,

connection, association and/or affiliation with BSA.

85. Defendants’ use in commerce of the Maker Scout Marks has diluted the famous

BSA Marks by impairing the ability of the BSA Marks to distinguish its goods and services from

those of others, and it continues to do so.

86. Defendants’ infringing activities have caused and, unless enjoined by this Court,

will continue to cause, irreparable injury and other damage to BSA’s business, reputation and

goodwill in its federally registered trademarks.

87.

Defendants knowingly created the Maker Scout Website and/or had it created on

its behalf, and the Maker Scout Website can be seen by the consuming public in the State of

Texas and throughout the United States.

88.

Defendants will continue to willfully and intentionally use the Maker Scout

Marks in commerce in connection with their goods and services, among other acts, all causing

BSA harm.

CLAIMS AND CAUSES OF ACTION

COUNT I

Exclusive Rights under 36 U.S.C. § 30905

89. BSA incorporates by reference the allegations in paragraphs 1 through 88 above.

90. In enacting 36 U.S.C. § 30905, Congress granted BSA “the exclusive right to use

emblems, badges, descriptive or designating marks, and words or phrases” that it adopts.


Domain, Maker Scout Website, Foundery Website, Twitter, and Google + violates BSA’s

exclusive right to use its “emblems, badges, descriptive or designating marks, and words or




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phrases” as set forth in 36 U.S.C. §30905, including the right to use its family of “SCOUT”

marks.

92. Defendants’ wrongful activities have caused, and will continue to cause,

irreparable damage to BSA unless such activities are enjoined by this Court.

93.

Moreover, BSA has no adequate remedy at law.

94. The Court should accordingly determine that BSA has exclusive rights to its

protected marks.

COUNT II

Federal Trademark Infringement (15 U.S.C. § 1114(1))

95.

BSA incorporates by reference the allegations in paragraphs 1 through 93 above.


Domain, Maker Scout Website, Twitter, and Google + constitutes infringement of BSA’s

Registered Marks under 15 U.S.C. § 1114(1).


Domain, Maker Scout Website, Foundery Website, Twitter, and Google + is without permission

or authority of BSA.

98.

Said use is likely to cause confusion and mistake and is likely to deceive.

99. Defendants committed the acts alleged above with the intent to cause confusion

and mistake, and to deceive.

100.

From a time prior to Defendants’ infringing activities as alleged above, BSA has

given notice that its registered marks are registered in the USPTO by displaying therewith the

letter R enclosed within a circle (®).




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101. Defendants’ wrongful activities have been and will continue to cause irreparable

damage to BSA, its business reputation, and the goodwill associated with its marks unless such

activities are enjoined by this Court.

102.


103.

The Court should accordingly determine that Defendants have engaged in

trademark infringement by using the Maker Scout Marks in commerce.

COUNT III

Trademark Infringement and False Designation of Origin (15 U.S.C. § 1125(a))

104.


105.

Defendants’ use in commerce of the Maker Scout Marks through the Maker Scout

Domain, Maker Scout Website, Foundery Website, Twitter, and Google + constitute uses of a

false designation of origin in interstate commerce, which wrongfully and falsely designates,

describes or represents the origin of Defendants’ goods and services, and is likely to cause

confusion, cause mistake and to deceive as to Defendants’ affiliation, connection, or association

with BSA, and/or as to the origin, sponsorship, or approval of Defendants’ goods and services by

BSA.

106.

Upon information and belief, Defendants’ actions have been willful and

intentional.

107. Defendants’ wrongful activities have been and will continue to cause irreparable

damage to BSA, its business reputation and the goodwill associated with its marks unless such


108.





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109. The Court should accordingly determine that Defendants have engaged in


COUNT IV

Common Law Trademark Infringement

110.



Domain, Maker Scout Website, Foundery Website, Twitter, and Google + constitutes unfair

competition and an infringement of BSA’s common law rights in its BSA Marks.

112.

BSA’s common law rights in its BSA Marks are superior to any rights that

Defendants may claim in their use of designations that include the term “Scout”.

113. Defendants have used, and continue to use, the Maker Scout Marks in Texas and

throughout the United States through the Maker Scout Domain, the Maker Scout Website,

Twitter, and Google +.

114. Said use is likely to cause confusion as to the source of Defendants’ goods and

services in that purchasers and prospective purchasers thereof will likely associate or have

associated such goods and services with or as originating from BSA, all to the detriment of BSA.

115.

Upon information and belief, Defendants’ actions complained of herein have been

willful and intentional.

116. Defendants’ conduct has caused, and continues to cause, irreparable injury to

BSA and, unless enjoined by this Court, will continue to both damage BSA and deceive the

public.

117.





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COUNT V

Federal Trademark Dilution (15 U.S.C. § 1125(c))

119.


120. As a result of extensive promotion and use of the BSA Marks and the goods and

services offered by BSA thereunder in commerce by BSA for many years, and the extensive

number of BSA members past and present, the BSA Marks are famous throughout the United

States, and are distinctive of BSA goods, services and membership. The BSA Marks became

famous long before Defendants commenced their unauthorized use of the Maker Scout Marks as

described above.

121.

Defendants’ unauthorized use in commerce of the Maker Scout Marks in

commerce through the Maker Scout Domain, the Maker Scout Website, Foundery Website,

Twitter, and Google + is likely to dilute the distinctive quality of the famous BSA Marks,

including its famous “SCOUT” marks, by blurring and tarnishment.

122. Defendants’ actions have been willful and intentional.

123.

Defendants’ wrongful activities have caused irreparable damage to BSA, its

business reputation, its marks, and the goodwill associated with its marks, and will continue to

cause such damage unless the Court enjoins Defendants from continuing to use the Maker Scout

Marks such activities.

124. Moreover, BSA has no adequate remedy at law.

125.


trademark dilution by using the Maker Scout Marks in commerce.




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COUNT VI

Federal Cybersquatting (15 U.S.C. § 1125(d))


127.

Defendants’ conduct, as set forth fully above, constitutes “cybersquatting” under

the Anti-Cybersquatting Consumer Protection Act.

128. Defendants used, registered, and/or trafficked in the domain name

“makerscout.com” with a bad faith intent to profit from the BSA Marks.

129. The BSA Marks were distinctive at the time of registration of the

“makerscout.com” domain name.

130.

The domain name “makerscout.com” is confusingly similar to the BSA Marks.

131. Defendants’ wrongful activities have caused irreparable damage to BSA and will

continue to do so unless such activities are enjoined by this Court.



cybersquatting by using the Maker Scout Domain.

COUNT VII

Unfair Competition under Section 17.46(a) of the Texas Business and Commerce Code


135. Defendants have used, and are continuing to use, the Maker Scout Marks in

commerce through the Maker Scout Domain, Maker Scout Website, Foundery Website, Twitter,

and Google + in Texas and the remainder of the United States.

136.

Defendants’ actions set forth above constitute false, misleading, or deceptive acts

or practices including, but not limited to (1) passing off Defendants’ goods or services as those




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of BSA’s; (2) causing confusion or misunderstanding as to the source of its goods and services,

sponsorship, approval, or certification of its goods or services; and/or (3) causing confusion or

misunderstanding as to affiliation, connection, or association with, or certification by, BSA.

137.

Defendants’ wrongful activities have been willful and intentional.

138.

Defendants’ wrongful activities have been and will continue to cause irreparable

damage to BSA, its business reputation and the goodwill associated with its marks unless such



140.

The Court should accordingly determine that Defendants have engaged in unfair

competition by using the Maker Scout Marks in commerce.

COUNT VIII

Trademark Dilution Under Section 16.103 of the Texas Business and Commerce Code


142. BSA’s Marks constitute famous marks in the State of Texas pursuant to Section

16.103 of the Texas Business and Commerce Code, which marks became famous prior to the

commencement of Defendants’ activities alleged herein.

143.

Defendants’ activities as alleged above dilute the distinctive quality of BSA’s

Marks in violation of Section 16.103.

144. Defendants’ wrongful activities have caused, and unless enjoined by this Court

will continue to cause, irreparable injury and other damages to BSA’s business, reputation and

goodwill in its Scout marks, symbols and designs. BSA has no adequate remedy at law.

145.


trademark dilution by using the Maker Scout Marks in commerce.




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DEMAND FOR JURY TRIAL

BSA demands a trial by jury of all triable claims.

RELIEF REQUESTED

WHEREFORE, BSA respectfully requests that:

(1) The Court find and enter Judgment against Defendants on each of BSA’s Claims

for Relief, Counts I through VIII, inclusive, for exclusive rights under 36 U.S.C. § 30905,

trademark infringement under 15 U.S.C. § 1114(a) (Lanham Act § 32(a)), unfair competition

under 15 U.S.C. § 1125(a) (Lanham Act § 43(a)), common law trademark infringement,

trademark dilution under 15 U.S.C. § 1125(c), federal cybersquatting (15 U.S.C. § 1125(D)),

violation of federal common law rights, deceptive trade practices under Section 17.46(a) of the

Texas Business and Commerce Code, and trademark dilution under Section 16.103 of the Texas

Business and Commerce Code.

(2) The Court enjoin and restrain Defendants, their officers, directors, agents,

servants, employees, attorneys, affiliates, successors, assigns, and all persons acting for, with, by,

through or under them, from:

(a) directly or indirectly using, in whole or in part, or in any form, the BSA

Marks or any other mark in BSA’s family of “SCOUT” marks, or any

other mark, word or name similar to BSA’s Marks which is likely to cause

confusion, mistake or to deceive, including any mark or name that

includes the term “scout”, and BSA’s marks;

(b) directly or indirectly using, in whole or in part, or in any form, the marks

and/or names “MAKER SCOUT and “SCOUT”;




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(b) making any false or misleading designation or representation of origin,

and/or engaging in any unfair methods of competition and/or unfair

and/or deceptive acts or practices which may or are likely to cause the

actual or potential customers of BSA and/or Defendants and/or the public

in general to believe that Defendants, and/or their products, services or

business, are in any way associated, affiliated, or connected with, or

sponsored by, BSA, or otherwise falsely designating or representing the

source, origin, sponsorship, connection, or affiliation of Defendants,

and/or Defendants’ activities or business of Defendants, vis-à-vis BSA;

(d) diluting BSA’s Marks; and

(e) unfairly competing with BSA.

(3) The Court require Defendants to account for and pay over to BSA all gains, profits

and advantages derived by them from the activities complained of herein.

(4) The Court award BSA its actual damages caused by Defendants’ acts complained

of herein.

(5) The Court award BSA treble the amount of actual damages suffered by BSA;

(6) The Court award BSA compensatory damages in an amount to be proven at trial,

for which Defendants shall be liable.

(7) The Court award BSA its costs in this civil action.

(8) The Court award BSA its reasonable attorney fees.

(9) The Court Order that Defendants transfer to BSA the domain name

“makerscout.com”.




(10) The Court award such other and further relief as the Court may deem just and

equitable.

Respectfully submitted,

/s/ Andy Nikolopoulos_______________Brett L. Myers, Esq.

Texas Bar No. 00788101Andy Nikolopoulos, Esq.

Texas Bar No. 24044852

FOX ROTHSCHILD LLP

Two Lincoln Centre5420 LBJ Freeway

Suite 1200Dallas, TX 75240-6215

[email protected]@foxrothschild.com

(t) 972.991.0889(f) 972.404.0516

and

Gary A. Hecht, Esq.

Pennsylvania Bar No. 62277( pro hac vice admission pending)

Eric E. Reed, Esq.Pennsylvania Bar No. 204692

( pro hac vice admission pending)Scott C. Oberlander, Esq.

Pennsylvania Bar No. 311750( pro hac vice admission pending)

FOX ROTHSCHILD LLP2000 Market Street, 20th Floor

Philadelphia, PA [email protected]

[email protected] (t) (215) 299-2000

(f) (215) 299-2150

Dated: July 20, 2015 Attorneys for Plaintiff, Boy Scouts of America


Boy Scouts v. Maker Scouts - trademark complaint.pdf

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Transcript of Boy Scouts v. Maker Scouts - trademark complaint.pdf