Following up on my previous posts (links below):
Houston Chronicle, Law School Naming Feud Heads to Mediation:
A preliminary deal over naming rights between Houston's battling law schools formally fell apart Wednesday, with lawyers asking a federal judge to send them into mediation.
The dissolution of the talks comes as Houston Community College joins the trademark fray over the question of who has the right to use "Houston" in educational materials.
Talks stalled between the University of Houston System and the newly renamed South Texas College of Law Houston before final details could be hammered out to resolve a federal trademark lawsuit filed by UH.
The university contended that the private law school had encroached on the school's trademarked University of Houston Law Center by initially changing its name to Houston College of Law. After a federal judge warned the private school that it was likely to lose the lawsuit, the school changed to the latest name — a move that UH indicated was acceptable. ...
The case appeared all but resolved when the 93-year-old private school announced it had rebranded itself a second time. The South Texas College of Law Houston also agreed to stop using crimson in its marketing materials — a color similar to UH's red-and-white school colors - and switch to blue and gold.
All that appeared left to be sorted out was whether South Texas was willing to pay UH damages and whether the parties should remove various trademark applications and registrations from the U.S. Patent and Trademark Office.
The trademarks are likely where the schools hit an insurmountable roadblock, which may have prompted a third local institution, Houston Community College, to seek protective action with the federal government.
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. ...
Houston Business Journal, UH, South Texas College of Law Houston Head to Mediation Over Ongoing Dispute:
Two Houston law schools are headed to mediation this month as their name-related dispute has yet to be resolved.
The dispute between the University of Houston and South Texas College of Law Houston has been referred to Magistrate Judge Dena Hanovice Palermo for mediation scheduled for Feb. 28, a Feb. 7 court document shows.
Prior TaxProf Blog coverage:
- South Texas College Of Law Rebrands Itself Houston College Of Law (June 22, 2016)
- University Of Houston Dean Threatens To Sue South Texas Over Name Change To Houston College Of Law (June 23, 2016)
- Resolving The South Texas/Houston Brand Dispute: Exxon Law School? (June 26, 2016)
- University Of Houston Files Trademark Infringement Lawsuit Against South Texas's Rebranding Itself Houston College Of Law (June 27, 2016)
- University Of Houston: Like KFC And Pittsburgh Paints, We Own City Law School Moniker (Aug. 29, 2016)
- University Of Houston Gets Patent Office To Suspend South Texas's Trademark Application For 'Houston College Of Law' (Sept. 11, 2016)
- University Of Houston Obtains Injunction Barring South Texas From Rebranding Itself 'Houston College Of Law' (Oct. 15, 2016)
- Law School Formerly Known As South Texas Agrees To Change Name From Houston College Of Law, Subject To Approval Of University Of Houston (Oct. 28, 2016)
- After Losing Federal Trademark Case, 'Houston College of Law' Changes Name To 'South Texas College Of Law Houston', Abandons Color Red (Nov. 8, 2016)