Boy Scouts v. Maker Scouts - Trademark Complaint PDF

Case 3:15-cv-02424-M Document 1 Filed 07/21/15
Page 1 of 26 PageID 1
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.
______________________________________________________________________________
PLAINTIFFS 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 BSAs
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.
(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 Defendants 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 CEMs name.
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.
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 BSAs 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 BSAs 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.
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
29.
BSA has various programs and ranks based on the age and achievements of boys
1910.
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
EAGLE SCOUT
U.S. REG.
NO.
3877547
VARSITY SCOUT
1370697
SCOUTMASTER
1695120
BOY SCOUTS OF
AMERICA
1215939
REG. DATE
November 16,
2010
November 12,
1985
June 16, 1992
November 9,
1982
REPRESENTATIVE
GOODS/SERVICES
Indication of membership in a(n)
organization for boys and young men
Indication of membership in a scouting
organization for young men.
Indicating membership in a scouting
organization for boys.
Items of clothing forming part of a
uniform consisting of shirts, pants,
shorts, skirts, dresses, belts, socks, hats,
and neckerchiefs.
MARK/TYPE
CUB SCOUTS
U.S. REG.
NO.
1215938
BOY SCOUTS OF
AMERICA
CUB SCOUTS
1363872
BOY SCOUTS OF
AMERICA
1725084
SEA SCOUTS
2578122
SCOUTING
1197851
SCOUTING FOR
ADVENTURE
3638293
SCOUTSTUFF.ORG
4443273
1702357
REG. DATE
REPRESENTATIVE
GOODS/SERVICES
November 9,
Items of clothing forming part of a
1982
uniform consisting of dress shirts, tshirts, pants, shorts, belts, socks, hats,
and neckerchiefs.
October 1, 1985 Indication of membership in an
organization for young men.
July 21, 1992
Indication of membership in an
organization for boys.
October 20, 1992 Pocket knives, utility knives and lock
back knives; jewelry, namely, rings and
pins, 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.
June 11, 2002
Educational services, namely a coeducational program for young adults
in the field of boating, sailing, rafting
and scuba diving.
June 15, 1982
Magazine for adult leaders and
scouting for providing Scouting
instruction to boys and young men.
June 16, 2009
Entertainment services, namely a
continuing television show about boys
and young men within a youth serving
organization
December 3,
Online retail store services featuring
2013
clothing and apparel, literature,
camping equipment, craft supplies, and
home 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, BSAs
ownership of the marks, and BSAs 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.
6
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 BSAs 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 BSAs 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 BSAs 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
itself or in conjunction with other words and designs in connection with BSAs goods, services
and members.3
35.
Such common law marks identify and distinguish BSAs 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.
BSAs 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.
BSAs 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.
All of BSAs 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.
8
41.
BSAs SCOUT Marks are distinctive and recognized by the consuming public as
a designation of source for BSAs 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 Scouts 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
47.
The Maker Scouts meet at Maker Scout troop meetings and can earn badges for
Texas.
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.
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 BSAs 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.
10
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:
11
Mark
MAKER SCOUT
U.S.
Application
Serial No.
85881659
Application
Filing Date
Goods/Services
March 20, 2013
Development and dissemination of

educational materials of others in the
field of Science, Technology,
Engineering, Art, and Math;
Educational services, namely,
conducting mentoring, classes,
projects, workshops, activities, field
trips. competitions, challenges, and
scouting in the fields of Science,
Technology, Engineering, Art, and
Math and distribution of training
materials in connection therewith;
developing curriculum for educators;
providing incentives to students K-12
to demonstrate excellence in the field
of Science, Technology, Engineering,
Art, and Math; Organization of
exhibitions for cultural or educational
purposes; Providing a website featuring
information 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,
Math for the purpose of academic
study; Providing science educational
mentoring services and programs.
12
Mark
MAKER SCOUT
SCIENCE
TECHNOLOGY
ENGINEERING
ART MATH
U.S.
Application
Serial No.
85814395
Application
Filing Date
Goods/Services
January 3, 2013
Development and dissemination of

educational materials of others in the
fields of Science, Technology,
Engineering, Art, and Math;
conducting mentoring, classes,
projects, workshops, activities, field
trips, competitions, challenges, and
scouting in the fields of Science,
Math and distribution of educational
materials in connection therewith;
developing curriculum for educators;
providing incentives to students K-12
to demonstrate excellence in the field
of Science, Technology, Engineering,
Art, and Math through the issuance of
awards; Organization of exhibitions for
cultural or educational purposes;
Providing a website featuring
information in the fields of education
and entertainment for children;
Providing after school educational
programs for children in grades 4-8;
Providing educational demonstrations;
Providing educational information in
the academic field of Science,
Math for the purpose of academic
study; Providing science educational
mentoring 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 BSAs marks, dilution, and
13
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 organizations 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 BSAs Rights Despite the TTAB Dismissing

Their Maker Scout Applications
68.
Despite the TTABs Orders sustaining BSAs Opposition to the proposed Maker
Scout Marks and BSAs Cease and Desist letter, Defendants failed to deactivate the Maker Scout
Website. See Exhibit B.
69.
On March 28, 2014, BSAs 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
organizations 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 BSAs 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.
14
71.
On March 11, 2015, due to Defendants renewing the ownership of the Maker
Scout Domain instead of complying with BSAs demands, BSAs 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 organizations 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 (BSAs 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).

76.
Domain, Maker Scout Website, Foundery Website, Twitter, and Google + violates BSAs
exclusive right to use the BSA Marks, including BSAs SCOUT family of marks.
77.
Domain, Maker Scout Website, Foundery Website, Twitter, and Google + constitutes a use in
15
commerce of reproductions, counterfeits, copies, or colorable imitations, among others, of BSAs

marks, including BSAs 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 BSAs Marks has
been made, notwithstanding BSAs well-known and prior established rights in its marks, with
actual notice of BSAs trademark rights.
79.
Defendants use of the Registered BSA Marks has been made, notwithstanding
BSAs well-known and prior established rights in its marks, with actual and constructive notice
of BSAs 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 BSAs 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 BSAs irreparable harm.
16
84.
Defendants willfully infringed BSAs 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 BSAs 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.
91.
Domain, Maker Scout Website, Foundery Website, Twitter, and Google + violates BSAs
exclusive right to use its emblems, badges, descriptive or designating marks, and words or
17
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.
96.
Domain, Maker Scout Website, Twitter, and Google + constitutes infringement of BSAs
Registered Marks under 15 U.S.C. 1114(1).
97.
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 ().
18
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.
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.
damage to BSA, its business reputation and the goodwill associated with its marks unless such
108.
19
109.

COUNT IV
Common Law Trademark Infringement
110.
111.
Domain, Maker Scout Website, Foundery Website, Twitter, and Google + constitutes unfair
competition and an infringement of BSAs common law rights in its BSA Marks.
112.
BSAs 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.
20
118.

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.
125.
trademark dilution by using the Maker Scout Marks in commerce.
21
COUNT VI
Federal Cybersquatting (15 U.S.C. 1125(d))
126.
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.

132.
133.
cybersquatting by using the Maker Scout Domain.

COUNT VII
Unfair Competition under Section 17.46(a) of the Texas Business and Commerce Code
134.
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
22
of BSAs; (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.
damage to BSA, its business reputation and the goodwill associated with its marks unless such
139.
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
141.
142.
BSAs 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 BSAs
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 BSAs 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.
23
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 BSAs 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 BSAs family of SCOUT marks, or any
other mark, word or name similar to BSAs Marks which is likely to cause
confusion, mistake or to deceive, including any mark or name that
includes the term scout, and BSAs marks;
(b)
directly or indirectly using, in whole or in part, or in any form, the marks

and/or names MAKER SCOUT and SCOUT;
24
(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--vis BSA;
(3)
(d)
diluting BSAs Marks; and
(e)
unfairly competing with BSA.
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.
25
(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. 00788101
Andy Nikolopoulos, Esq.
Texas Bar No. 24044852
FOX ROTHSCHILD LLP
Two Lincoln Centre
5420 LBJ Freeway
Suite 1200
Dallas, TX 75240-6215
bmyers@foxrothschild.com
anikolopoulos@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.
Scott C. Oberlander, Esq.
FOX ROTHSCHILD LLP
2000 Market Street, 20th Floor
Philadelphia, PA 19103
ghecht@foxrothschild.com
ereed@foxrothschild.com
(t) (215) 299-2000
(f) (215) 299-2150
Dated: July 20, 2015
Attorneys for Plaintiff, Boy Scouts of America
26

Boy Scouts v. Maker Scouts - Trademark Complaint PDF

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

IN THE UNITED STATES DISTRICT COURT

BOY SCOUTS OF AMERICA,

Civil Action No.________________

CREATIVE ENERGY MANAGEMENT LLC,

THE FOUNDERY CORPORATION,

KIMBERLY A. VARNEY, AND

This is an action for (1) a violation of 36 U.S.C. 30905 (asserting BSAs

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

BSA is headquartered in this judicial district.

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

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

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

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

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

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

thefoundery.org (the Foundery Website).

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

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

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

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

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

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

and a manager/registered agent of Foundery.

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

Maker Scout Website and the Foundery Website.

committed by Defendants in this judicial district.

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

BSA And Its Marks

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

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

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

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

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

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

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

BSAs SCOUT Marks constitute a family of marks, registered and unregistered,

BSAs family of SCOUT marks existed prior to Defendants use in commerce

of the Maker Scout Marks.

Moreover, the BSA Marks have built up extensive goodwill.

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

Defendants Unauthorized Use Of the Maker Scout Marks in Commerce

related topics through various activities and projects.

Maker Scouts unit in a particular city or area is referred to as a Troop.

the completion of a particular activity or project.

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

a hyperlink to the Foundery Website. See Exhibit B.

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

scout as used in BSAs family of SCOUT containing marks.

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

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

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

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

Maker Scout Marks:

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

March 20, 2013

Development and dissemination of

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

Development and dissemination of

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

Defendants Continued Violations of BSAs Rights Despite the TTAB Dismissing

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

pages and promote Maker Scout at the Foundery Website.