UofH vs STCL/HCL: a trademark war
Is the University of Houston a trademark bully?
On June 22, 2016, South Texas College of Law (“STCL”) changed its name to “Houston College of Law” (“HCL”) in an effort to associate itself with its location in downtown Houston and to emphasize its history as the oldest law school in the city.
The University of Houston (“UofH”) is not happy about the name change. Although the purpose of the rebranding is to improve name recognition, UofH is concerned that the new HCL name will create confusion in the marketplace and discredit UofH’s law program.
On June 27, 2016, UofH took legal action by filing a trademark infringement lawsuit against HCL. In its lawsuit, UofH claims that “STCL’s actions willfully and intentionally infringe upon UH’s intellectual property.” UofH goes on to assert that the reason why HCL changed its name is to take credit for the hard-earned reputation of UofH.
The two trademark entries on the United States Patent & Trademark (USPTO) Trademark Electronic Search System (TESS) show that the class of the services offered by each party overlap. In particular, both offer educational services in the field of law. This is an important factor in assessing whether or not a trademark is being infringed upon. However, it is hard to say if anyone can actually own the name “Houston” considering it is geographically descriptive.
The basis of UofH’s legal arguments depend on the belief that HCL is trying to affiliate itself with UofH. They are afraid that people will be misled into thinking that UofH somehow endorses HCL’s legal program or that they are a part of the same entity.
We here at Madan Law PLLC are a house divided, with one STCL/HCL grad and two UofH backers. It should be interesting to see how this lawsuit plays out and what arguments and counter-arguments are made. In the meantime, we’re watching closely, so stay tuned!
