Hooray
The judge granted a temporary injunction. You have to meet a pretty high standard for that, including a showing that you have a substantial likelihood of success on the merits. In other words, the judge ruled that we are more than likely going to win at trial.
This is a serious blow to STCL.
Here is the full opinion.
Judge Ellison went through all the factors. He ruled in favor of Houston in just about every case.
He did stop short of finding STCL acted with the intent to cause confusion so as to trade on UH’s reputation, although he recited a bunch of evidence that would suggest that was exactly STCL’s intent. He did not conclude STCL acted innocently either. This factor was “neutral.”
In a particularly harsh note on STCL’s argument against irreparable harm, Judge Ellison wrote:
Defendant insists that the findings of the Simpson Report were the impetus for its recent name change. The Report found that “the most frequently mentioned reason” that respondents were in favor of a name change was that “‘South Texas College of Law’ is often confused with other schools, particularly Texas Southern University.” It must be with a great sense of irony that Defendant now attempts to downplay the effects of the same type of affiliation confusion that prompted Defendant to spend hundreds of thousands of dollars to rebrand itself.
Bottom line: STCL’s lame attempt to trade on our good name has been at least temporarily halted.
Let’s hope that we ultimately prevail.
Judge praises law schools in resolving naming dispute
New monicker will be adopted if UH does not find it objectionable
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The private school’s legal team told the judge last week that school officials would approve a new name and the lawyers would share it privately with UH officials. If the name is acceptable to UH, the law school will begin using it immediately, Liberato said, however it will take time to make changes on letterhead, on the college’s website and other materials.
Looks like they have a new name. If they chose this name from the start, it likely would have had no issues. South Texas College of Law Houston.
University of Houston System wins trademark dispute as local law school adopts new name
http://law.uh.edu/news/fall2016/1107SouthTexas.asp
The University of Houston has prevailed in its federal trademark lawsuit against South Texas College of Law, which briefly changed its name to Houston College of Law earlier this year. The college announced today it has changed its name once again to satisfy a court order. The 93-year-old private law school is now South Texas College of Law Houston and will feature the color navy in future marketing efforts to distinguish the new name.
So…this apparently isn’t over yet:
Law school naming squabble resumes in federal court
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Albert B. Deaver Jr., a managing principal at Sutton McAughan Deaver and South Texas alumnus representing the UH regents, said he feared the deal was nearing deadlock on “middle ground” issues, including a monetary settlement and the college’s application for a new trademark.
Welp, so much for the settlement; and now HCC is involved:
Google Search Link: Law school naming feud heads to mediation - Google Search
Since 2014, UH has owned a trademark on the word “Houston” in collegiate athletics on everything from letter openers to coffee mugs and aprons.
On June 22, the same day South Texas announced it would be called Houston College of Law, UH filed another application with the federal trademark office for the rights to “Houston” on educational materials and services. That application includes the use on course catalogs and college courses in business, accounting, engineering, science, literature, history and math.
In its counterclaim, filed in July, South Texas asked that UH cancel its claim on the athletic use. And now South Texas has asked that the educational application for “Houston” be withdrawn. Both of those matters remain unresolved.
If UH alters its stance, South Texas lawyers have indicated to the judge they would withdraw their application for the “Houston College of Law” trademark, but not until the entire matter is resolved. UH wants South Texas to pull its application first. South Texas wants UH to go first.
In the meantime, Houston Community College submitted a trademark application in December for the slogans “Houston’s Community College” and “We are Houston’s Community College.”
I noticed a billboard for STCL that has blue and yellow colors now instead of the red.
Google Search Link: Houston's rival law schools reach agreement in naming dispute - Google Search
The judge sent the case to formal mediation, which resulted in the agreement after talks this week.
Officials with both schools declined to comment on the potential settlement.