The South Texas College of Law has been around since 1923. Closing in on a century of education, it decided a rebrand was due. As part of the rebrand, the school renamed itself as the Houston College of Law. It may regret however, not consulting with the law school faculty on trademark law before selecting the name. Now the old South Texas school is facing a trademark challenge from its cross town counterpart, the University of Houston Law Center, resulting in a lawsuit and suspension of its trademark application at the USPTO.

The South Texas College of Law applied for a trademark registration in May on its new logo and name. The logo included the traditional scales of justice along with the name “Houston College of Law, Established 1923.” The school then began using the new logo in promotional material, at which time the University of Houston took notice. Believing that the name was too similar to the University of Houston’s law school and was likely to cause consumer confusion, University of Houston quickly took action filing a lawsuit against the private school alleging trademark infringement and seeking an emergency injunction to stop South Texas from using the name. As the civil trademark infringement case is now proceeding through the federal court system, University of Houston trademark attorneys have petitioned the USPTO to put South Texas’ trademark application on hold until the federal judge makes his ruling. This is standard procedure at the USPTO if one of the parties to the litigation requests it.

As in all trademark issues, the federal judge will have to evaluate the likelihood of consumer confusion between the two marks. The University of Houston says that confusion between the two schools could have negative impacts on its brand equity, noting that it is ranked in the top 50 law schools by US News & World Report, while the South Texas College of Law didn’t make the top 150. South Texas responds by pointing out that University of Houston’s law school has not gone by the name “College of Law” in the last several decades, but rather the “University of Houston Law Center”, which could help provide some distinction between the two programs.

South Texas may wants to take advantage of an affiliation with the large, recognizable city of Houston in its rebranding efforts. However, depending on the judge’s ruling, it may have to revert to its former use or get more creative with how it use of the city name in its moniker. Inevitably, it will need to find a way to co-exist with the already established University of Houston law school.