214 F. Supp. 3d 573
S.D. Tex.2016Background
- UH is a public university with a long-standing trademarked identity including federally registered marks for "UNIVERSITY OF HOUSTON" and a law school known and marketed as the University of Houston Law Center (UHLC) since 1982.
- Defendant (formerly South Texas College of Law) rebranded itself in June 2016 as "Houston College of Law," adopting a red-and-white trade dress and marketing materials emphasizing “HOUSTON” and “LAW.”
- UH sued five days after the announcement, seeking a preliminary injunction under the Lanham Act to stop Defendant’s use of the HOUSTON COLLEGE OF LAW mark as likely to cause confusion and to protect UH’s registered and common-law marks.
- The dispute concentrates on protectability of UH’s marks, likelihood of consumer confusion (including initial-interest confusion), evidence of actual confusion (survey and anecdotes), defendant’s intent, and irreparable harm.
- The court held an evidentiary hearing, evaluated dueling expert surveys (25% net confusion for UH’s expert; 6% for Defendant’s), and numerous anecdotal instances of confusion occurring shortly after the name change.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Protectable marks under Lanham Act | UH: registered "UNIVERSITY OF HOUSTON" (including registrations covering educational services) and UHLC have protectable rights and UH is senior user | Defendant: some registrations not directed to educational services; third-party use of "Houston" weakens protection | Court: UH has protectable rights in UNIVERSITY OF HOUSTON (including a registration covering educational services) and UHLC has acquired secondary meaning — protectable marks established |
| Likelihood of confusion (including initial-interest) | UH: marks similar in appearance/meaning, identical services/market, overlapping advertising, survey + anecdotes show confusion; initial-interest confusion will give Defendant unfair credibility | Defendant: marks are descriptive/weak given widespread "Houston" use; differences and disclaimers dispel confusion; purchasers are sophisticated; survey flaws | Court: weighed the Digits of Confusion — strength, similarity of marks, services, channels, actual confusion, etc.; majority weigh heavily for UH; held there is a substantial likelihood of confusion, including initial-interest confusion |
| Irreparable harm | UH: confusion and loss of control over UH’s reputation, and misappropriation of goodwill cannot be remedied by money | Defendant: monetary damages or rebranding costs would suffice; harm overstated | Court: irreparable harm found — monetary damages inadequate and reputational/control harms weigh for UH |
| Balance of hardships & public interest | UH: harm from continued use outweighs Defendant's rebranding costs; public interest supports enforcement of Lanham Act | Defendant: significant sunk costs and disruption from compelled reversion | Court: hardship favors UH (Defendant knowingly risked suit and incurred costs); public interest favors injunction |
Key Cases Cited
- Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998) (recognizes initial-interest confusion can support infringement even if no sale occurs)
- Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303 (5th Cir. 2008) (outlines Lanham Act elements and preliminary injunction standards in trademark disputes)
- Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221 (5th Cir. 2009) (discusses weighing factors for likelihood of confusion and that intent may be neutral absent evidence)
- Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987) (initial-interest confusion doctrine: harm stems from junior user gaining credibility by implied association)
- T-Mobile US, Inc. v. AIO Wireless LLC, 991 F. Supp. 2d 888 (S.D. Tex. 2014) (illustrative district-court application weighing survey and market-strength evidence to grant preliminary injunction)