University of Houston Wins Trademark Award for Defending Its Brand

University of Houston Wins Trademark Award for Defending Its Brand.

Wokandapix / Pixabay

The State Bar of Texas Intellectual Property Law Section recently awarded the University of Houston Law Center (UH) a trademark award for defending its brand against South Texas College of Law Houston (South Texas).[1]

Underlying Trademark Dispute

The original dispute between the rival schools began in 2016 when South Texas, as a part of a rebranding effort, attempted to change its name from South Texas College of Law to Houston College of Law.[2] In response to the name change, UH filed a federal trademark-infringement suit alleging that the rebranding would cause confusion and allow South Texas, as Houston College of Law, to benefit from UH’s reputation. In October 2016, a federal district judge issued a preliminary injunction preventing South Texas from using the new name on the grounds that it was likely to cause confusion for prospective law students and create “a substantial threat of irreparable injury to UH without adequate legal remedy.”[3] For more information on the original suit and the subsequent injunction, see our previous posts, “University of Houston Sues Houston College of Law to Prevent Name Change” and “Houston College of Law (formerly South Texas College of Law) Ends Identity Crisis.”

UH Success

After protracted settlement discussions, UH and South Texas participated in a two-day mediation that resulted in a settlement agreement between the parties in March 2017.[4] South Texas, which had already adopted the name South Texas College of Law Houston, agreed not to use “Houston” as the first word in the school’s name and to limit the use of certain colors in marketing materials. UH agreed to forego financial compensation for the expense of the lawsuit. The settlement agreement also allowed UH to proceed with an application for a federal trademark “for the use of ‘Houston’ for educational purposes.”[5]

In addition to this successful settlement, UH was recognized at the state bar’s annual awards in June when it received a trademark award based on the dispute. Craig Stone, chairman of the Intellectual Property Law Section, noted that the representation of the UH brand was “a great example of what trademark lawyers and teams face every day when tasked with protecting their multi-generational assets as brand stewards.”[6]

Potential for Future Disputes

While the battle with South Texas may be over, UH now faces potential disputes with Houston Community College (HCC) and the Houston Astros. In response to UH’s application for a trademark on “Houston” for educational purposes, both entities have notified the U.S. Patent and Trademark Office that they may choose to oppose the application.[7] HCC and the Houston Astros currently operate educational programs that would violate UH’s trademark if the school’s application is successful.[8]

For more information on obtaining and opposing federal trademarks, see O’Connor’s Federal Intellectual Property Codes Plus.

[1] Gabrielle Banks, UH Wins Again in Trademark Fight with Rival Law School, Houston Chronicle, July 17, 2017.

[2] Id.

[3] Board of Regents of the Univ. of Houston Sys. v. Houston Coll. of Law, Inc., No. 4:16-CV-1839 (S.D.Tex.2016) (memo op.; 10-14-16).

[4] Gabrielle Banks, UH Naming Dispute Could Now Draw in Astros, Houston Community College, Houston Chronicle, March 10, 2017.

[5] See id.

[6] Banks, UH Wins Again in Trademark Fight with Rival Law School.

[7] Id.; see U.S. Patent & Trademark Office, TTABVUE.

[8] Banks, UH Wins Again in Trademark Fight with Rival Law School.

, ,