Katherine A. Compton 2016-12-22 16:13:46
South Texas College of Law announced on June 22, 2016, that it was changing its name to Houston College of Law.1 Five days later, the Board of Regents of the University of Houston on behalf of its member institutions, including the University of Houston Law Center, filed suit for trademark infringement in the U.S. District Court for the Southern District of Texas.2 On October 14, 2016, the court granted a preliminary injunction against the defendant, finding there was a likelihood of success on the merits. The decision prevented the Houston College of Law (formerly known as South Texas College of Law) from using the trademark “Houston College of Law” as a name, mark, or source identifying for its legal education services.3 In making its decision, the court analyzed each factor necessary to succeed on a trademark infringement case, including a showing that: 1) the claimed mark is eligible for protection; 2) the party seeking protection is the mark’s senior user; 3) there is likelihood of confusion; and 4) the likelihood of confusion would cause plaintiff irreparable harm for which there is no adequate legal remedy. The court determined that the plaintiff’s trademarks were eligible for protection and had the superior mark. In focusing on likelihood of confusion, the court looked at the similarity of the marks and noted that the 5th Circuit uses a “subjective eyeball test” to determine the similarity of marks.4 The court wrote in its opinion that it was troubled by not only the similarity of the wording of the two names but also by the way in which the defendant deployed its mark into the marketplace, using block letters, like the plaintiff, that emphasized the word “HOUSTON,” and using a red and white color scheme, again, just like the plaintiff.5 The defendant had previously used dark crimson and gold but changed the colors to a shade of red that is “more reminiscent of the hue that has long been employed by UH [plaintiff].”6 The court next considered evidence of actual confusion and determined that the University of Houston’s expert’s survey that showed 25 percent consumer confusion was substantially stronger than the defendant’s expert.7 The plaintiff also provided a number of specific instances of actual consumer confusion, including a prospective law student who assumed that the Houston College of Law was affiliated with the University of Houston.8 After determining that the plaintiff would be irreparably harmed, the court balanced the hardships and, citing T-Mobile U.S., Inc. v. Aio Wireless LLC, stated: “The harm to [UH’s] brand, which it has spent [millions] of dollars and [many decades] creating, substantially outweighs the … harms that [defendant] will suffer in stopping the use” of the Houston College of Law mark.9 Following a hearing held on October 26, 2016, the Houston College of Law, formerly the South Texas College of Law, stated it would announce a new name by November 4. If the University of Houston has no conflict with the new name, the court stated, it will begin to be implemented, and that process must finish by the year’s end. Officials announced three days later that the new name would be South Texas College of Law Houston. Notes 1) Memorandum Opinion Setting Out Findings of Fact and Conclusions of Law, The Board of Regents of the University of Houston System on Behalf of the University of Houston System and its Member Institutions et al., v. Houston College of Law, Inc., formerly known as South Texas College of Law, Civil Action No. 4:16-CV-1839 (S.D. Tex.)(ECF No. 67). 2) See The Board of Regents of the University of Houston System on Behalf of the University of Houston System and its Member Institutions et al., v. Houston College of Law, Inc., formerly known as South Texas College of Law; Civil Action No. 4:16-CV-1839 (S.D. Tex.); Complaint (ECF. No. 1). 3) Memorandum Opinion (ECF No. 67). 4) Board of Regents of the University of Houston et al. at 12.; T-Mobile US, Inc. v. AIO Wireless LLC, 991 F.Supp.2d 888, 921 (S.D. Tex. 2014) (quoting Exxon Corp. v. Tex. Motor Exchange of Houston, Inc., 628 F.2d 500, 504 [5th Cir. 1980]). 5) Id. 12. 6) Id. 20. 7) Id. 25. 8) Id. 28. 9) Board of Regents of the University of Houston et al.; T-Mobile, 991 F.Supp.2d at 929. KATHERINE A. COMPTON, a Dallas-based trial lawyer with more than 25 years of experience, is a partner in Lewis Brisbois Bisgaard & Smith. She handles all types of commercial litigation, with an emphasis on trademark infringement, personal injury, franchise, banking, trade secrets, and non-competes.
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