Friday, July 15, 2016

University of Houston Files Trademark Applications for HOUSTON LAW, HOUSTON LAW REVIEW Following Lawsuit Against Houston College of Law

Earlier this year, the South Texas College of Law changed its name to the Houston College of Law, prompting a lawsuit from the University of Houston, which operates the University of Houston Law Center less than 4 miles away. Not only did the South Texas College of Law change its name to something similar to the University of Houston's well-established law school, but it also adopted a similar color scheme.

On July 11th, the University of Houston filed federal trademark applications for HOUSTON LAW and HOUSTON LAW REVIEW. The applications were filed in multiple classes for a variety of goods and services related to education, clothing, and publications with first use dates of 1992 for HOUSTON LAW and 1963 for HOUSTON LAW REVIEW.

These applications will prevent the South Texas College of Law from filing any similar trademark applications in the future, provide the University of Houston nationwide rights in the marks, and add additional weapons to the school's arsenal as it commences its legal battle over the names. However, even without a federal trademark registration, as the senior user of the marks HOUSTON LAW and HOUSTON LAW REVIEW in its geographical area, the University of Houston has common law rights superior to those of the South Texas College of Law (which didn't start using the name HOUSTON COLLEGE OF LAW until earlier this year).
The trademark applications filed by the University of Houston also set the stage for a battle within the U.S. Patent and Trademark Office (USPTO). Why? On May 12th, the South Texas College of Law filed a federal trademark application for the logo seen above. And because this application was filed prior to the University of Houston's applications, the USPTO might use it to deny registration to the University of Houston's marks due to a likelihood of confusion. TMEP 1207.

Regardless of whether that happens, I suspect the University of Houston will oppose the South Texas College of Law's mark when it is published for opposition. See 15 USC 1063. This will hold up registration of that mark until the issue is resolved in front of the Trademark Trial and Appeal Board (TTAB). Additionally, the application might be abandoned as part of a settlement related to the lawsuit.

According to my search, the University of Houston owns 83 live trademark applications or registrations at the USPTO, but the applications filed on July 11th are the first related to its law school.

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