Trademark Merit Badge
Why Are Girl Scouts’ Samoas sometimes Caramel Delites but Thin Mints are always Thin Mints?
It’s Girl Scout Cookie season. A few days ago, my wife brought some home.
Inspecting the three boxes stacked on our kitchen island (purple, red, and orange), I was puzzled. According to the packaging copy, my choices were Caramel Delites, Peanut Butter Patties, and Peanut Butter Sandwiches, cookies that I knew as Samoas, Tagalongs, and Do-Si-Dos, respectively.
What had happened? Had the name “Samoa” been deemed politically incorrect for some reason? Was the American Square Dancing Federation cracking down on unauthorized use of the term “do-si-do?"
As it turns out, “Caramel Delites” are nothing new. Unbeknownst to me, this shadow cookie brand has co-existed with Samoas for decades. The difference is geographical. And, apparently, this was simply the first time since my wife and I moved to the Monterey Peninsula that the venerable youth organization’s besashed street teams had gotten to us.
For whatever reason, it seems the Girl Scouts contract with multiple snack manufacturers, each controlling a complicated patchwork of regional territories worthy of a Risk map or a gerrymandered Congressional district. Keebler subsidiary Little Brownie Bakers, which makes Samoas, Tagalongs, and Do-Si-Dos, supplies the Girl Scouts in most major markets (including the places where I would have been purchasing cookies for most of my life). Elsewhere, including a narrow strip of territory along California’s Central Coast within which I now reside, local troops get their goods from Interbake, the source of Caramel Delites, Peanut Butter Patties, and Peanut Butter Sandwiches.
But that explanation raises more questions than it answers. Why would the cookies produced at Keebler and Interbake factories, clearly designed to be interchangeable in so many other respects, be sold under different brands? And what about Thin Mints? Why are the green-boxed chocolate wafers—the Girl Scouts’ best-selling cookie—called Thin Mints regardless of who manufactures them? The answer, of course, is trademark. And it provides an excellent case study in the complexities of brand ownership and licensing.
Who owns a trademark?
Unlike other types of intellectual property that arise from authorship or inventorship, trademark rights flow from use of a mark in commerce. They aren’t fixed and immutable in the same way as a copyright or patent; trademarks can be gained or lost, strengthened or weakened, depending on how they’re used and by whom.
Contracts that give someone permission to use someone else’s trademark are typically called licensing agreements. Caution must be taken when licensing trademarks. Whereas copyright licenses and patent licenses are effectively just property leases, much like a tenant might rent the right to occupy an apartment from a landlord, trademark licenses always involve a third party: the consumer. Therefore, a licensee’s right to use a mark must always be subject to the licensor’s right to oversee that use. An agreement without the proper strings attached is known as a “naked license” and can result in a trademark’s abandonment.
When properly drafted, though, licensing agreements allow trademarks to be owned by parties that may have no direct involvement in the commercial activity from which the trademarks theoretically spring. Indeed, it is not uncommon for large enterprises to spin off their trademarks to a separate holding company, which does nothing but license the marks to subsidiary, parent, or sibling companies. Likewise, a baker like Keebler might license its cookie trademarks downstream to be used by an organization like the Girl Scouts that will take charge of actually marketing and selling the cookies, but the license could just as easily flow in the other direction.
Grab Your Partner, Do-Si-Do
There’s no way to know what the contracts look like between the Girl Scouts and their manufacturing partners. Their trademark registrations, however, are public record. Here’s a breakdown of some of the scouts’ most prominent flavors:
A few things jump out about these registrations. First, it’s interesting that, despite claiming use dating back to the 1970’s, neither Interbake nor Keebler registered their marks until decades later. While there could be many reasons for that, it might reflect some uncertainty over who owned the marks or at least suggest that the bakers’ relationships with the Girl Scouts made protecting these brands less a priority than it might otherwise have been.
Similarly, the Girl Scouts seem to have only quite recently devoted any attention to their cookie trademarks. The organization didn’t apply to register their flagship THIN MINTS brand until 2011. Yet, the registration suggests that Thin Mints have been sold since at least 1959, predating Samoas, Tagalongs, and Do-Si-Dos by 15 years. Based on these registrations and without knowing anything about what was happening behind the scenes, I’d speculate that, after some initial ambiguity, Keebler and (later) Interbake decided they had to protect their interests in their respective marks, possibly with the blessing of GSUSA, which at the time apparently had little interest in developing its own intellectual property portfolio. I’d further speculate that THIN MINTS predates both manufacturers’ contracts, such that neither baker felt it could plausibly assert ownership.
Another aspect of these registrations that’s worth mentioning is that several are registered under Section 2(f) of the Trademark Act. Generally, the U.S. Patent and Trademark Office will refuse registration of a descriptive mark, i.e. a mark that merely describes some feature of the goods. Under Section 2(f), however, descriptive marks can be registered if the applicant proves that they have “acquired descriptiveness” based on the length and/or extent of their use. For example, to register the THIN MINTS mark, GSUSA would have needed to show that consumers associate THIN MINTS with the cookies sold by Girl Scouts and not just with any old thin minty cookie.
It’s easy to see how THIN MINTS and PEANUT BUTTER PATTIES might be considered descriptive of the cookies’ shape and flavor (another factor that might partially explain the delay in registration). LEMONADES seems a little more marginal to me but might similarly be deemed descriptive of cookie flavor or ingredient. Meanwhile, Interbake appears never to have bothered trying to register PEANUT BUTTER SANDWICHES, most likely because they decided the name would be deemed generic, which would render it unregisterable even under Section 2(f).
More surprising is the 2(f) designation for SAMOAS. The implication is that, in 1985, the term “samoa” was understood to refer to some characteristic of these caramel/coconut/chocolate cookies (though not so closely associated as to be the generic name for that type of cookie). Not a term of art I’m familiar with, but maybe that’s my confectionery ignorance.
Thin Mint Empire
The Girl Scouts may not own the trademark rights for many of the cookies they sell, but they appear to make good use of the trademarks they do own. Over the last decade or so, you may have noticed the THIN MINTS brand popping up on products well beyond its core cookie category and offered by a wide array of different manufacturers.
Thin Mints ice cream from Breyer’s. Thin Mints tea from Bigelow. Thin Mints breakfast cereal from General Mills. Thin Mints lattes from Dunkin Donuts. Thin Mints brownie mix from Pillsbury. Thin Mints yogurt from Yoplait. Thin Mints granola bars from Quaker. Thin Mints coffee creamer and candy bars from Nestle. There’s Thin Mints gum. Even Thin Mints chickpeas.
Unless all these far-flung food companies are simply infringing GSUSA’s trademarks, the steady infiltration of every grocery aisle by the THIN MINTS brand suggests that the Girl Scouts have developed an active and sophisticated licensing department. Indeed, to complement their registration for cookies, in 2015-2016 the Girl Scouts registered the THIN MINTS trademark for both ice cream (U.S. Reg. No. 4853891) and tea (U.S. Reg. No. 4998968). It’s a striking example of how trademark rights can be expanded and monetized, even without the trademark owner being directly involved in most of the commercial activity.
It also illustrates why trademark owners need to be conscious of similar marks being used elsewhere in the marketplace, even where the product categories seem distant from one another. In industries where brands regularly engage in cross-promotion and may derive as much revenue from licensing as from selling their core wares, consumers may come to see trademarks as all-encompassing. Who wouldn’t prefer to buy gum and chickpeas approved by the same youth organization so trusted for their quality cookies?
If any more evidence was needed that the Girl Scouts have earned their intellectual property badge, the organization appears to increasingly be taking steps to police unauthorized use of its trademarks. In particular, there have been a number of reports of GSUSA threatening legal action against businesses in the cannabis industry. This is partly the result of the popular “Girl Scout Cookie” and “Thin Mint” strains of marijuana that have emerged in recent years. It seems that reefer is a bridge too far for the scouts’ licensing department. Or perhaps they’re just trying to keep the market clear for their own product launch. In either case, it’s clear that, moving forward, the green-smocked cookie merchants don’t intend to entrust the protection—or cede the value—of their trademarks to commercial partners.