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It’s All About Name and Place: University Trademark Disputes on the Uptick

Source: Grill IP patent news

south-texas-college-law-trademark-dispute2016 has seen an uptick in trademark disputes between academic institutions, notably universities. Recently the University of Houston levied a suit against the former South Texas College of Law, following the defendant’s name change to “Houston College of Law” and their adoption of a similar white and red color scheme. This case highlights trademark concerns faced by institutions bearing geographic namesakes and differentiates between pools of prospective consumers when it comes to discretion.

A preliminary injunction was issued against the College last week, which prevented their use of the name pending final disposition of the suit. A hearing set to take place this week will decide how the injunction will be implemented. That said, the federal judge’s order essentially seals the fate of the faculty’s new title, which will now either have to revert to its old name or something entirely new. This case points to the presence of initial interest confusion as a factor in the college selection process. While the defendant maintained that no one would be so confused as to enroll in the wrong law school, the South District Court disagreed. It deemed that using the term “Houston” would endow the school with unearned credibility, benefitting the school in the early stages of the school selection process, when prospective students are less familiar with their options. Further, the adoption of similar name was hardly helped by changing the school’s colors to resemble the plaintiff’s.

This preliminary injunction victory for the University of Houston follows months after a panel of the Eleventh Circuit Court of Appeals reached an opposing ruling, which denied Florida International University an appeal in their case against Florida National University. Affirming the dismissal, the Court of Appeals held that, “potential college students are relatively sophisticated consumers who are unlikely to be easily or meaningfully confused by similar sounding university names.” FIU certainly wasn’t helped by the generic nature of its name, with the defendant citing a multiplicity of other schools with names featuring “University” and “Florida”.

    Looking ahead, it’s likely that parties embroiled in trademark disputes will cite the FIU case in litigation, reasoning that plaintiffs are prone to encounter a greater burden where it concerns the college selection process, as this involves a deliberative and careful cohort, who are able to distinguish their prospective institutions more easily than their less “sophisticated” counterparts. These cases also indicate that institutions with geographic names should also be more considerate of the distinctiveness hurdles they will face in any trademark dispute.

    In a similar vein, the Baptist College in Pennsylvania was forced to undergo two name changes in less than a year. In April 2015, the College changed its title to Summit University of Pennsylvania, leading to a lawsuit filed by a bible college in Montana named Summit University. For over forty years, the plaintiff had a federal trademark registration for its name, which compelled the defendant to adopt a new title, Clarks Summit University, which went into full effect in July. Published reports show that the Pennsylvania institution had knowledge of the Montana school when they changed their name, but assumed the geographic distance and indication “of Pennsylvania” would eliminate any prospective complaints. The Court noted that there is no inherent trademark significance afforded to geographic terms, providing little protection from trademark disputes.

    In addition to taking note of the trademark’s target audience, as it concerns their careful consideration of the institutions in question, these cases also indicate that institutions with geographic names should also be more considerate of the distinctiveness hurdles they will face in any trademark dispute.

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Author: grill-ip

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