SMD Wins TM Ruling for University of Houston

On June 27, 2016, the University of Houston announced that it had filed a trademark infringement lawsuit against South Texas College of Law, in which the University of Houston was represented by Sutton McAughan Deaver PLLC along with Tony Buzbee of The Buzbee Law Firm. On October 14, 2016, Judge Ellison of the U.S. District Court for the Southern District of Texas ruled in favor of the University of Houston, finding that the University was entitled to a preliminary injunction. The complete text of the University's press release is provided below. 

The Court's ruling was covered widely by the press, including by Law360, Houston Public Radio, Texas Lawyer, National Jurist, ABA Journal, Houston Chronicle and Houston Press.

University of Houston's October 14, 2016 Press Release:

University of Houston Law Center Granted Temporary Injunction to Block Renaming of South Texas College of Law

HOUSTON, Oct. 14, 2016 /PRNewswire-USNewswire/ -- A federal judge today ruled in favor of the University of Houston Law Center and issued a preliminary injunction preventing the South Texas College of Law from changing its name to Houston College of Law.

UH Law Center sought the injunction after South Texas announced in June that it planned to change its name. UHLC maintains the name change and use of the Law Center's red and white colors in South Texas' new branding would cause confusion between the two schools among prospective students and members of the legal community.

In issuing the temporary injunction, U.S. District Judge Keith P. Ellison found there is a strong likelihood that UH Law Center will prevail in its trademark infringement suit; there is a "strong likelihood of confusion;" as well as "a substantial threat of irreparable injury to UH." 

He set a hearing for Wednesday to determine a timetable for South Texas to comply with the injunction and decide whether a bond should be set.

"The university is pleased a federal court recognized the University of Houston's strong trademarks and its reputation as a top-tier law school," said Dona Hamilton Cornell, vice chancellor for legal affairs and general counsel of the UH System. "The University of Houstonappreciates the work of its legal team."  

"Today, the court upheld the University of Houston's trademark to use exclusively "Houston" in conjunction with providing legal education," said UH Law Center Dean Leonard M. Baynes.   "We have had this exclusive right for almost 70 years. This ruling has confirmed our exclusive right. It was vital to protect the Law Center's reputation and brand as a top tier law school;  the decision protects students, alumni, faculty, staff and the general public from confusion caused from South Texas's recent name change."     

"We are pleased with the court's decision. The evidence showed overwhelmingly that the name change caused confusion in the marketplace," said Tony Buzbee, principal of The Buzbee Law Firm, which is representing UH as lead counsel. "The next step is for South Texas College of Law to remove their billboards, change their website, remove merchandise from stores and change their name in the American Bar Association database. This is a complete victory for the University of Houston and the UH Law Center."