On Friday, October 14, 2016, a federal judged ruled that Houston College of Law must change its name, at least for the duration of pending trademark litigation. The temporary injunction stems from a trademark infringement suit the University of Houston brought against Houston College of Law, a private law school which until June had been known as South Texas College of Law. Mem. Op. (Dkt. 67), The Board of Regents of the Univ. of Houston System, et al. v. Houston College of Law, Civil Action No. 4:16-cv-1839 (Oct. 14, 2016, S.D. Tex.).
The University of Houston’s law school has been called the University of Houston Law Center since at least as early as the 1980s (and even earlier, before a relatively short-lived name change to Bates College of Law). Houston College of Law, meanwhile, was founded in 1923 as South Texas College of Law and Commerce and is unaffiliated with any university or college.
University of Houston Law Center v. Houston College of Law
The case presents what could have been an interesting dispute over geographically descriptive trademarks and the issue of acquired distinctiveness. In his order, however, Judge Keith Ellison concluded that Houston College of Law has conceded the acquired distinctiveness point since it never directly challenged or addressed the issue in its briefs.
Instead, the court focused directly on the plaintiff’s claim that prospective students are likely to believe the schools are somehow affiliated or associated with one another, rather than to mistake one school for the other in the more classic trademark confusion scenario. To succeed on its motion for a preliminary injunction, the University of Houston needed to show a substantial likelihood of success that it will prevail on the merits of this broader confusion claim.
Reviewing the Fifth Circuit’s likelihood of confusion factors, the court concluded that nearly all of the factors weighed in favor of the University of Houston. Specifically, the University of Houston Law Center’s ranking as the 50th best law school in the country in the U.S. News and World Report rankings, the University of Houston’s recent success and national recognition for its football program, and several other brand-recognition facts were indicators of the commercial strength of the University of Houston brand. The court found other institutions’ use of “university” or “Houston” in their names to be unpersuasive evidence that the UNIVERSITY OF HOUSTON mark is weak. Moreover, the “practically identical” meanings of the marks and the legal education services offered by both schools also pointed towards a likelihood of confusion, the court said, as did the overlapping consumer bases and advertising outlets.
What seemed to trouble the court most, however, was the defendant’s rebranding from a crimson-and-gold color scheme to red with white, the colors of the University of Houston.
Still analyzing the defendant’s intent, the court also considered a market survey that South Texas College of Law conducted in 2013 in which student respondents indicated that they wanted the school to be renamed and affiliated with another university. This evidence, combined with the fact that Texas Wesleyan School of Law recently affiliated with Texas A&M and then leapfrogged South Texas in the 2016 law school rankings, could point towards bad faith intent, the court reasoned. Nevertheless, reviewing evidence that other survey respondents had simply wanted a new name to reflect the school’s Houston location, the court ultimately concluded that the intent factor was neutral to both parties.
It was evidence of actual confusion, however, that further tipped the factors in the University of Houston’s favor. The parties presented dueling expert reports with the University of Houston’s survey showing confusion among 25% of respondents, while Houston College of Law’s survey showed only 6% confusion. Nevertheless, anecdotal confusion evidence was persuasive with stories of misdirected mail, a confused prospective student seeking a waiver of an application fee, and a mislabeled nameplate for a Houston College of Law professor at another law school’s workshop.
Houston College of Law argued that prospective law students are sophisticated consumers and unlikely to mistakenly enroll in the wrong law school before spending tens of thousands of dollars on tuition. The court agreed but also found persuasive the University of Houston’s theory of initial interest confusion, a controversial doctrine which has only been recognized in passing in the Fifth Circuit, as the court acknowledged.
The initial interest theory of trademark infringement accommodates a scenario where no confusion exists at the time of purchase—just at the point of “initial interest”—raising the question of whether there is even a harm to be remedied. Here, however, the court discussed the possibility that initial interest confusion can still divert sales and therefore harm the senior user in addition to allowing the junior user to free ride on the goodwill of another. All extended purchasing decisions, the court reasoned, would fall outside the purview of the Lanham Act if initial interest confusion cases were not actionable.
The court’s order chronicles how Houston College of Law spent considerable sums rebranding and then destroyed much of its old stationery and signage after learning of the University of Houston’s objections, a decision that the court could not help observing “defies logic.” We will have to see, however, whether Houston College of Law will continue to fight for its name. Meanwhile, the court has ordered a hearing for October 19th to discuss a timeline for Houston College of Law’s compliance with the injunction. Stay tuned to our Brand Protection Blog for more updates on this case.