by Tara M. Madison

It’s Girl Scout Cookie Time!  The arrival of those industrious young women and the delicious products they peddle is always a welcome time of year at our home.  We have been waiting for a year to get our Samoas fix.  This year we scoured the product list, but no Samoas.  Our astute Girl Scout representative noticed our dismay and quickly steered us toward the Caramel deLites, which she assured us was a worthy alternative.  The Caramel deLites looked like Samoas, were packaged like a Samoas, but just were not called Samoas.  What gives? As a trademark attorney and a Girl Scout cookie aficionado, I had to know more.

Upon further research, which admittedly has not been confirmed by the Girl Scouts (or any other parties involved for that matter), it appears that the two names for the same Girl Scout cookie boils down to a good old fashioned trademark claim.  The Girl Scouts contract with independently owned bakeries to bake their cookies each year.  The original Samoas baker, Murray Bakery Products, Inc. d/b/a/ Little Brownie Bakers, apparently coined the name Samoas and/or was the first to start using it in commerce to identify the cookies they produced for the Girl Scouts.

A sometimes little known fact about trademarks is that one can acquire what are referred to as common law trademark rights simply by using a distinctive word or phrase in commerce as a source identifier for a particular good or service.  But, Little Brownie Bakers did even better than that.  It obtained a federal trademark registration for Samoas in 1986.  Thus, the Little Brownie Bakers became the exclusive owner of Samoas to identify cookies throughout the United States.  Well played, Little Brownie Bakers, well played.

As the market for Girl Scout cookies expanded over the years, the Girl Scouts have had to commission the assistance of additional bakeries.  The other bakeries, however, cannot use the Samoas trademark unless the trademark owner grants them the right, which apparently has not happened.  And, in fairness, Interbake Foods, LLC, the bakery that produces Caramel deLites may not want the name, since it too has a federal trademark registration for the Caramel deLites brand cookie.

Unconfirmed internet research suggests that each independent bakery that bakes for the Girl Scouts uses their own recipe, so the Samoas brand cookie really is not the same cookie as the Caramel deLites brand cookie. Whether you get the Samoas or the Caramel deLites seems to depend on where your particular Girl Scout Troop’s cookies are sourced, which I understand can change from year to year.  The old adage, “you get what you get and don’t throw a fit,” comes to mind.

In case you are worried about the future of other Girl Scout cookie favorites, rest assured that the Girl Scouts filed and obtained their own federal trademark registrations for Thin Mints, Trefoils, and Girl Scout S’mores, so all is not lost!

In fairness to all the hard working Girl Scout bakeries, I must admit that we thoroughly enjoyed the two boxes of Caramel deLites we purchased.  But, nostalgia did leave us longing for the original…  It’s a good lesson to all you users of distinctive words and phrases out there…  Do what you can to stake your claim to the brand name associated with the good or service you provide.  Little Brownie Bakers took action to protect its intangible asset by filing a federal trademark application.  What likely seemed like a small investment in an inconsequential asset was sold to Kellogg North America Company in 2003.  A trademark success story to be sure.  So, in terms of “what’s in a name” for Little Brownie Bakers or it successors, I would suggest a whole heck of a lot.