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Houston (College of Law) Has a Problem

Posted in Agreements, Articles, Branding, Civil Procedure, Goodwill, Infringement, International, Law Suits, Loss of Rights, Marketing, Trademark Bullying, Trademarks

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A trademark problem, that is, as reported by the Texas Tribune on Friday of last week.

Lest you be fooled by the above reference to Houston College of Law being established in 1923, the name has only been around since June of 2016.

In fact, when South Texas College of Law rebranded to Houston College of Law in June, the University of Houston Law Center jumped into federal court with both boots and within five days of the announcement, seeking a preliminary injunction, to temporarily stop the use while the case proceeds through the court system to an eventual trial.

Last Friday the federal district court granted University of Houston Law Center’s request for a preliminary injunction, in a detailed 42-page decision, holding:

There is a substantial likelihood of success on the merits of UH’s trademark infringement claim under the Lanham Act: at least two of UH’s marks, “UNIVERSITY OF HOUSTON” and “UNIVERSITY OF HOUSTON LAW CENTER,” are eligible for protection; UH is the senior user of these marks; and there is a likelihood of confusion between UH’s marks (both individually and collectively) and Defendant’s use of “HOUSTON COLLEGE OF LAW.”

And, herein lies the problem for South Texas College of Law: Does it really make sense to litigate for a year or more to try and convince the court there really is no likelihood of confusion, after it already has ruled that University of Houston Law Center has established a “substantial likelihood of success on the merits” of its trademark claim?

South Texas College of Law appears to believe so, and is prepared for another lengthy legal fight, so stay tuned for more as this case proceeds.

The court has scheduled a hearing for Wednesday to determine a “feasible timeline” for South Texas College of law to comply with the injunction, and to determine whether the University of Houston Law Center will need to post a bond, and if so, in what amount, in case it is later determined that the grant of the injunction was not warranted.

As a marketing type or brand manager, suppose you faced this kind of problem, after running into a legal brick wall and being ordered to cease using the chosen new brand name, under what circumstances would you fight in the court system for a year or more for the legal right to hopefully change the court’s mind so you can change your brand name once again?

Is this why many trademark disputes resolve by way of settlement after the grant or denial of a preliminary injunction?

UPDATE:

Above the Law covers the story, here.