UH could face new challenges on name rights
Trademark fight could next draw Astros and HCC
The University of Houston has settled its trademark dispute with South Teas College of Law Houston, but the fight may not be over as the Astros and Houston Community College consider opposing UH’s attempt to own the rights to “Houston” for educational purposes.
The University of Houston has settled the score in a protracted trademark dispute with rival South Texas College of Law Houston, but the fight over naming rights may not be over.
On deck are two new potential opponents: the Houston Astros and Houston Community College.
A mediated settlement announced Friday resolved the dispute over the law school names, but includes a provision that allows UH to pursue a federal trademark for the use of “Houston” for educational purposes.
That’s where the Astros and HCC step up to the plate.
The two organizations have put the U.S. Patent and Trademark Office on notice that they are considering opposing UH’s attempt to own the rights to “Houston,” a move that could set off another round of legal challenges among major Houston institutions.
Officials with the Astros and HCC did not respond to a request for comments, but both organizations provide educational services in various forms that could run afoul of a UH trademark.
In the meantime, South Texas College of Law Houston officials are at peace with their school’s new name after going by three different monikers in a six-month stretch. The law school dean conceded in an otherwise upbeat email to law school alumni it has been “an unusual, sometimes frustrating, process for our community.”
UH officials indicated they, too, are satisfied with the agreement.
“We’re pleased it’s behind us,” said UH spokesperson Mike Rosen. “We’re pleased our brand is protected and we look forward to moving on with the business we do best, which is educating our students.”
UH filed a federal lawsuit challenging the decision by South Texas College of Law to change its name to Houston College of Law, part of a rebranding effort to increase its national profile. U.S. District Judge Keith Ellison ruled in October that the change likely would lead to confusion for prospective law school students.
The downtown campus then devised the latest name, which was acceptable to UH. But settlement discussions stretched on for months as the parties tried to sort out pending trademarks and the cost of the lawsuit, ending after a two-day mediation before U.S. Magistrate Judge
Dena Hanovice Palermo.
The two schools issued a joint statement Friday saying they’d resolved the lawsuit with an agreement in which the 93-year-old private institution promises not to use “Houston” as the first word in identifying the college and to cease using a red-and-white color scheme in marketing materials that is similar to UH’s colors.
In turn, the University of Houston will proceed with its trademark application but it will not receive financial compensation for the expense of lawyering up for the lawsuit against South Texas.
South Texas Dean Donald J. Guter said he likes the newest name of his school even more than the one that triggered the lawsuit.
“It allows us to have the legacy of South Texas College of Law which many of our alums are very happy with and still have the ‘Houston’ in there,” he said.
The suit has been fodder among students, said Greg Vetter, who teaches trademark law at UH Law Center. He wasn’t able to discuss the case in class because of the pending lawsuit, but he did talk privately with students.
“They’re interested because scandal and controversy is fun,” he said.
The classroom discussions may yet continue. Both the Astros and HCC have sought an extension with the federal trademark office until May 31 to decide whether to challenge UH’s application. The latest dispute would then move through the Treasury Department, rather than the judiciary.
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