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Pepperdine University School of Law

Saturday, October 15, 2016

University Of Houston Obtains Injunction Barring South Texas From Rebranding Itself 'Houston College Of Law'

Houston South TexasFollowing up on my previous posts (links below): Houston Chronicle, UH Wins Temporary Injunction in Legal Battle Against Rival Law College:

A federal judge ruled Friday that South Texas College of Law must stop using its new name - displayed on prominent billboards around town - until it resolves a bitter legal dispute with the University of Houston regents.

U.S. District Judge Keith Ellison granted a temporary injunction in a 42-page ruling that found South Texas's new name, Houston College of Law, had created confusion among consumers and caused a "substantial threat of irreparable injury" to the University of Houston Law Center.

The facts "weigh heavily in favor" of UH prevailing in the case, Ellison said.

He set a hearing Wednesday for lawyers representing the two law schools to determine how to proceed.

Ellison noted in the ruling that South Texas College of Law had wanted to change its name so consumers did not assume it was in the Rio Grande Valley or confuse it with Texas Southern University. "It must be with a great sense of irony that (d)efendant 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," he said.

The order left the South Texas College of Law officials reeling. "We were stunned that this would be the outcome," Donald J. Guter, dean of the 93-year-old private law school, said Friday. "It's not the opinion we were expecting. We were confident we had the law on our side." ...

Ellison's ruling upsets the private law school's effort to rebrand itself as a downtown campus, by stating that the name and colors South Texas chose are too similar to the brand UH had already established.

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Zach Wolfe, a Houston litigation attorney who studied the rulings, said the judge noted that students might be confused initially about the two schools. "Judge Ellison acknowledged that prospective law students are unlikely to be confused about which law school they are selecting at the 'point of sale,' but his reasoning was that prospective students could easily be confused when initially looking into law schools," he said. "That was a key factor showing a likelihood of confusion, which is the key issue in trademark litigation." ...

South Texas' lawyers argued in pleadings that "Houston" didn't belong to anyone. "The College has the right to claim Houston not only as its heritage, its cultural touchstone and its home, but also as part of its name," the college argued.

Ellison, however, ruled that UH had spent years establishing its brand and therefore had priority on the marks "University of Houston," "University of Houston Law Center" and "Houston Law," stating that the new college's name was too similar. He also noted that UH had strong brand identification with the colors red and white.

"There can be no dispute that the cost of a legal education is tremendous, nor can there be much debate regarding the relative sophistication of prospective law students at the point of sale," Ellison said in the ruling. "It is only after their interest in legal education is first piqued that they begin the process of becoming sophisticated. In other words, there exists a period of time in every prospective law student's career where, not only is he unsophisticated, he knows practically nothing about the industry and is particularly susceptible to confusion."

Prior TaxProf Blog coverage:

http://taxprof.typepad.com/taxprof_blog/2016/10/university-of-houston-obtains-injunction-barring-south-texas-from-rebranding-itself-houston-college-.html

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Comments

I have to say, I have seen the billboards around Houston for the new "Houston College of Law." Having not heard of this (even though I live here), I was confused by it. I thought it was the University of Houston (which has a tax program) somehow rebranding itself.

Posted by: Houston Tax Law | Oct 15, 2016 12:14:06 PM

Amazing! South Texas has maintained, for many years, a nationally ranked advocacy program. Why even bother changing the name? This is the second time the school has tried, and found trouble with other law schools in the state. Why bother?

Posted by: Former Student @ STCL | Oct 15, 2016 8:44:48 PM