Sunday, February 12, 2017

Law Schools TM Mediation

Competing law schools in Houston are going to mediation in a federal case in hopes of resolving a bitter trademark dispute over the new name of a 93-year-old law school. Interestingly, U.S. District Judge Keith Ellison of the Southern District of Texas set a judicial mediation before U.S. Magistrate Judge Dena Palermo at the end of the month. The University of Houston (UH) and South Texas College of Law Houston could not agree about withdrawing various trademark applications and registrations. They also could not agree about whether UH should be compensated for its expenses. The UH lawsuit claimed that South Texas had violated its trademark when it changed its name last year to Houston College of Law. The new branding, UH lawyers argued, confused prospective law students and even people voting on law school rankings, to the detriment of UH's law program. UH sought a temporary injunction, asking the judge to stop South Texas from using its new name while the case was being litigated. The injunction was granted because UH was likely to win the case before a jury in the court's view. Interestingly, the judge ordered South Texas to come up with a new name in the interim. South Texas officials decided to attach the word Houston to the end of the college's name rather than the beginning. UH apparently found this acceptable. The standard in trademark is always likelihood of confusion. Judge-directed mediation within federal district courts is sometimes seen around the country, though we don't find this in the Middle District of Florida, where private mediators are usually named in the Case Management Order (CMO) at the outset of a federal case. See story here--