HOUSTON – U.S. District Judge Keith P. Ellison has taken under
advisement the University of Houston’ motion for a preliminary injunction against
the former South Texas College of Law’s changing its name to the Houston
College of Law following an Aug. 26 hearing on the injunction request.
According to a minute entry on the docket for the case
pending in the Houston Division of the Southern District of Texas, the
University of Houston’s sur-reply to the Houston College of Law’s response to
the injunction motion must be filed by Sept. 6.
“The word ‘Houston’ is not the property of the University of
Houston System plaintiffs,” the Houston College of Law said in its response to the
injunction request. “Houston College of Law has the right to claim Houston not
only as its heritage, its cultural touchstone, and its home, but also as part
of its name.”
South Texas College of Law was founded under that name, but
the name change to Houston College of Law took effect on July 1. Houston College of
Law said in its response that it is the oldest law school in Houston.
“In replacing ‘South Texas’ in its name with ‘Houston,’ the college
has adopted a name that reflects its location and its mission,” the injunction response
said. “The college has no desire to associate itself with U of H, or the law
school associated with U of H. Both schools are venerable institutions, each
with much to be proud of in its own right.”
Houston College of Law said the University of Houston cannot
prove that its law school marks are distinctive, or that the Houston College of
Law’s alleged infringement is likely to cause confusion among the relevant
In addition, Houston College of Law said there is no reason
that the schools cannot co-exist, arguing that other major U.S. cities are
home to multiple law schools that bear their cities’ names.
Houston College of Law said it would incur significant costs
if the injunction motion is granted and it was ordered to go back to its former
name until the University of Houston’s infringement lawsuit goes to trial and
then possibly resume using the new name after the final ruling is made.
As a result, the Houston College of Law is asking the court
to order the University of Houston to post a $500,000 bond if the injunction is
granted. The Houston College of Law said that money could be used to compensate
it for costs and damages if it prevails at trial.
The University of Houston said it filed this lawsuit to
enforce its federal and common-law trademark rights and to stop further
confusion among concerning affiliation between the two schools.
The University of Houston said in an amended complaint filed
Aug. 10 that Houston College of Law’s actions intentionally and willfully
infringe upon the university’s intellectual property and are also violations of
the unfair competition laws in the state of Texas.
In addition to the South Texas College of Law name change, the
University of Houston said the Houston College of Law also changed its school
colors to predominantly red and white, the same colors that have been used by
the university since 1934.
The University of Houston said it would not object to South
Texas changing its name to South Texas College of Law at Houston, since that
name is less likely to cause confusion.
“Through this name change and by adopting UH’s color scheme,
STCL is attempting to associate itself with the standing and reputation of the
University of Houston System and the University of Houston Law Center,” the
university said in its amended complaint. “Through this suit, UH seeks to
protect its hard-earned reputation and its well-known brand.”