Sayre’s Law teaches that academic disputes are so bitter because the stakes are so low. But 2016 has seen a minor spike in real trademark disputes between institutions of higher education.
Most recently, the University of Houston filed suit against the former South Texas College of Law, after the latter school changed its name to Houston College of Law – and adopted a red and white color scheme similar to the University’s. Last week a federal judge issued a preliminary injunction against the College, barring them from using the Houston name pending the final disposition of the suit. A hearing is scheduled for later this week to determine how the injunction is to be implemented, but for all practical purposes this order likely tolls the death knell of the Houston College of Law name, and the end of the case, since the college will now be compelled to change its name – either back to South Texas or to something new. It seems doubtful that they would have much appetite for a third name change later on. Lesson Learned: “Initial interest confusion” is not dead! The College argued that no one would ever be so confused as to enroll in the wrong law school, but the court found that use of the Houston name would give the College a degree of credibility it had not earned that would benefit it in the early stages of school selection when prospective students are less familiar with the schools. Lesson No. 2: If you are going to adopt a name similar to a nearby competitor’s, it’s not going to help your case if you also adopt their color scheme.
The University of Houston’s preliminary injunction win came just months after a panel of the Eleventh Circuit Court of Appeals held exactly the opposite in denying an appeal by Florida International University, whose lawsuit against for-profit Florida National University had been dismissed at the trial court. Affirming the dismissal of the case, the Court of Appeals reasoned that “potential college students are relatively sophisticated consumers who are unlikely to be easily or meaningfully confused by similar sounding university names.” FIU was also hampered by the fact that its name was not particularly distinctive, and the defendant could point to a dozen other schools with names featuring the words FLORIDA and UNIVERSITY. Lessons Learned: Defendants will cite the FIU case for the proposition that academic plaintiffs in trademark cases face a higher burden on the issue of likelihood of confusion because the process of selecting a college is so deliberative and careful. Schools having geographic names should also think very carefully before acting to enforce a name that may face distinctiveness hurdles as well.
Back in January, a religious college in Pennsylvania originally known as Baptist Bible College found itself having to go through a second name change in a year’s time. The school had changed its name in April 2015 to Summit University of Pennsylvania, only to face a federal lawsuit from another bible college in Montana also called Summit University. What’s more, the Montana school held a federal trademark registration for SUMMIT UNIVERSITY dating back nearly forty years. The case settled relatively quickly with the Pennsylvania school agreeing to change its name again. They ultimately chose Clarks Summit University, after a nearby town, and the new, new name was fully rolled out in July. Lessons Learned:According to published reports, the Pennsylvania school was aware of the Montana school at the time they selected the Summit name, but believed that the addition of the geographic limitation “of Pennsylvania” would be sufficient to avoid any conflict. But geographic terms have no inherent trademark significance and so provide little insulation against trademark claims. Better to select, and thoroughly vet, a name that is more distinctive and uniquely your own.
Robert O’Connell is Of Counsel in the Boston office of Fish & Richardson. His practice focuses on trademark and copyright strategic advice, prosecution and enforcement, including all aspects of domestic and international trademark law; registration and...