Litigation

Houston, We Have a Problem!

After the South Texas College of Law (defendant) announced on June 22, 2016, that it was changing its name to "Houston College of Law," the University of Houston System (UH) filed a trademark infringement suit against the defendant. On October 14, 2016, Judge Keith P. Ellison of the United States District Court for the Southern District of Texas issued a preliminary injunction barring the defendant from using the mark "HOUSTON COLLEGE OF LAW" as a name, mark, or source identifier for its legal education services.

       The court found that UH as the senior user carried its burden of establishing a substantial likelihood of success on the merits with respect to at least two of its marks: "UNIVERSITY OF HOUSTON" and "UNIVERSITY OF HOUSTON LAW CENTER," and that there is a likelihood of confusion between UH’s marks and the defendant's use of  "HOUSTON COLLEGE OF LAW." Judge Ellison noted that two of the three words in the defendant's mark appear in the UH's mark ("Houston" and "Law"). Both logos use, block letters, emphasize the word "Houston" and utilize a red and white color scheme. UH’s survey expert surveyed 200 law students and found a net confusion rate of 25%. In addition to consumer survey evidence, UH provided strong anecdotal evidence of actual confusion. In weighing the digits of confusion, the court found that prospective law students are likely to assume that the Houston College of Law is affiliated with the University of Houston.

Judge Ellison concluded there is a substantial risk of irreparable injury without adequate legal remedy to UH if an injunction is not issued. This threatened injury if the court were to deny the injunction outweighs the harm to the defendant if the injunction is not issued.  Judge Ellison also found that protecting UH from an infringing junior competitor does not disserve the public’s interest.

Lexis subscribers can access the opinion at: Bd. of Regents of the Univ. of Houston Sys. v. Houston Coll. of Law, Inc., 2016 U.S. Dist. LEXIS 142424.

Lexis Advance subscribers can find the opinion at: Bd. of Regents of the Univ. of Houston Sys. v. Houston Coll. of Law, Inc., 2016 U.S. Dist. LEXIS 142424.

 

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