As Steve wrote about a few weeks ago, the South Texas College of Law changed its name in June to the Houston College of Law, with a newly designed brand, shown below.
This rebranding effort sought to market the school’s urban location in Houston. Since June, the school spent tens of thousands of dollars on a rebranding and marketing campaign, including billboards, banners, revising its website and social media, changing letterhead, etc. Unfortunately, soon after the announcement, the University of Houston filed a lawsuit in federal court, alleging that the new name infringed on the University of Houston Law Center name and design. Both brands use the word “Houston” and use the colors red and white.
The University of Houston argued in federal court that the public would likely confuse the two names and believe that the two schools were affiliated with each other. As Steve discussed in his post, the federal court granted a preliminary injunction, holding there was a “substantial likelihood of success on the merits” of the University of Houston’s infringement case.
In response to this unfavorable preliminary-injunction decision, and after five months of litigation, the Houston College of Law recently agreed to select a new name in order to settle the lawsuit. On Monday, it was announced that the Houston College of Law would rebrand back to its original name, with the addition of “Houston” at the end. The school also agreed to use the color blue, rather than red and white. The new name will be the South Texas College of Law Houston, with the design shown below.
As of today’s post, the school’s website still uses the “Houston College of Law” name and brand–but there is a prominent announcement on the home page regarding the second name change. The South Texas lawyers estimate this second rebranding will cost over $400,000, although the University of Houston disputes that figure.
A couple takeaways. First, before embarking on a major rebranding effort, it is critical to undergo a comprehensive trademark search, both for registered and unregistered marks, particularly those in the same geographic area. It appears that South Texas did so in this case, but determined that its rebranded mark would not infringe on the University of Houston mark. Nevertheless, if a search reveals a mark with significant similarities, sometimes it is best to revise the proposed mark. Other times, it can be helpful in some cases to communicate with the owner of the similar mark, either formally or informally, to determine if there are objections (although such communication is not always advisable). Dealing with objections beforehand can allow the parties to agree to modifications and avoid disputes. This can save substantial time and money on multiple rebranding efforts and litigation, as seen in this case.
Second, I’m not sure that the second “Houston” re-brand is a significant improvement from the original “South Texas College of Law.” The additional word could add some clunkiness to an already long name. On the other hand, adding the word “Houston” seemed to be the major goal of the rebrand–reminding prospective students of the school’s urban location–so there could be some benefit. What do you think? Which of the three brands (original, first rebrand, or second rebrand) do you like the best?