Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 1 of 30 IN THE UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF TEXAS HOUSTON DIVISION The Board of Regents of the University of Houston System on behalf of the University of Houston System and CiVil Action N0- its Member Institutions; The University of Houston System; and The Board of Regents of the University of Houston System, JURY Plaintiffs, South Texas College of Law, Defendant. COMPLAINT Plaintiffs, The University of Houston System and its Member Institutions, through its Board of Regents, The University of Houston System, and the Board of Regents of the University of Houston System, (also referred to herein, collectively, as for their complaint against South Texas College of Law, pleads and alleges as follows: SUMMARY OF THIS CASE 1. South Texas College of Law (also referred to herein as recently announced a name change to ?Houston College of Law,? a name strikingly similar to the University of Houston Law Center and all of the various alternate marks associated with that institution ?Houston Law?). At the same time, STCL changed its colors to red and white?colors for many years nationally associated with the University of Houston (commonly referred to as the ?Cougar Red?). actions intentionally and willfully infringe upon intellectual property. Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 2 of 30 actions are also violations of the unfair competition laws in the State of Texas. Through this name change and by adopting color scheme, STCL is attempting to associate itself with the standing and reputation of the University of Houston System and the University of Houston Law Center. actions have resulted in, and likely will result in, confusion in the market place, causing damage to UH. UH brings this case after attempting to contact STCL before ?ling suit. Through this suit, UH seeks to protect its hard earned reputation and its well- known brand. THE PARTIES 2. The plaintiff Board of Regents of University of Houston System is an agency of the executive branch of the State of Texas, may sue on behalf of its members, and has an address at 128 Ezekiel Cullen Building, 4302 University Drive, Houston, Texas 77204-6001. The plaintiff University of Houston System is composed of all those institutions and entities presently under the governance, control, jurisdiction, and management of the Board of Regents of the University of Houston System, and has an address at 128 Ezekiel Cullen Building, 4302 University Drive, Houston, Texas 77204-6001. 3. The defendant, South Texas College of Law, is a domestic nonpro?t corporation having an address at 1303 San Jacinto Street, Houston, Texas 77002. Donald J. Guter, the dean of STCL, is the registered agent and may be served at 1303 San Jacinto Street, Houston, Texas 77002. NATURE OF ACTION AND JURISDICTION 4. This is an action for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. 1051 et seq., state and common law trademark infringement and unfair competition under Tex. Bus. Comm. Code, ?16.29 and the common law of the state of Texas. Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 3 of 30 5. This Court has jurisdiction over this action under 15 U.S.C. 1121 and 28 U.S.C. 1331 and 1338, and supplemental jurisdiction over claims under state law under 28 U.S.C. 1367(a). 6. This Court has personal jurisdiction over defendant South Texas College of Law because inter alia it resides within this judicial district, it does business in this judicial district and the conduct complained of in this Complaint occurred in this judicial district. 7. Venue is proper in this District pursuant to 28 U.S.C. 1391. FACTS COMMON TO ALL CLAIMS ASSERTED 8. On Wednesday, June 22, 2016, STCL announced, ?South Texas College of Law is changing its name to Houston College of Law.? 9. Concurrently, the STCL website was changed to re?ect this new name and its new red and white color scheme, as shown below: Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 4 of 30 HOUSTO A COLLEGEOF LAW 1 . SUPPORT THE COLLEGE PROSPECTIVE FAQLTV .IL lull All) "anus FRED PAWS LAWI EKILLS Mn PHI-MIG CAMPUS RESOURCES Didyau Arl'ln? Secu'i?y R?nt Walt? Caner Reamer Gents: The Houston College of Law Advocacy Canaan-n Program has trained student teams who Emrmom I . History at mustn't Beige of Lou have won 122 national championships, .mme WOIWM a history unmatched by any other mag-m Tam-gymmeaSenca-s institutiOn, Faculty In The News The Hone-m mantle pumsneo an mono,- President and Dam Omach J. Guter re Woeeclfetambmal [secures mtg-1mm South Texas College of Law Changes to Houston College of Law ALL NEWS Lzlie; '32? i9" inn: ?Hus-.1" 'e-as 39.152 ser: Lest-Ts .uetr'asrerjsf: 93.. 2192.3 39:3r1r'er'12 10. Thus, not only has STCL chosen a name for its legal education services that is substantially similar to names and trademarks for its legal education services, but STCL has appropriated red and white color scheme. Clearly, STCL intends to trade on the reputation and goodwill established by UH throughout its various colleges and campuses. 11. If STCL is allowed to rebrand itself as Houston College of Law, the market of law students, potential law students, lawyers and consumer of legal services (among others) likely, and inevitably, will be confused into believing there is some sponsorship of STCL by or that there is some af?liation between STCL and or that UH warrants, backs or approves of the legal education services provided by or that UH and STCL are one and the same entity -4- Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 5 of 30 since the UH System has four main campuses and three other campuses all around the city of Houston. None of which is true. 12. STCL has admitted that the national name recognition of South Texas College of Law is minimal (around Rather than undertake an aggressive marketing campaign or other legitimate effort to raise its pro?le and standing, STCL simply, yet willfully, chose to appropriate red and white color scheme and change its name to a confusingly similar version of the well-known University of Houston registered and common law trademarks. A. Hard Earned Reputation and Well-Known Brand 13. UH was founded in 1927 and of?cially became the University of Houston in 1934. Two years later, UH acquired land for a permanent campus, and its ?rst building opened in 1939. UH became a state institution in 1963 and joined the newly created University of Houston System in 1977. 14. Since 1934, UH has provided education services under the University of Houston brand, and has acquired a national reputation for excellence in those services. UH is ranked in Tier 1 in the prestigious Carnegie Research University Rankings based on research funding and performance. It is rated in the top 15% of all universities by the Princeton Review based on survey information from more than 122,000 students. A Phi Beta Kappa chapter was granted to UH in 2015?an honor enjoyed by only approximately 10 percent of the nation?s institutions of higher education that have quali?ed for this elite academic organization. 15. Today, UH is a major public research and teaching institution, serving more than 42,000 students annually with nearly 300 undergraduate and graduate programs in 12 colleges, including a college of law. Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 6 of 30 16. Red and White are the of?cial school colors of UH and have been since the university seal was adopted in 1938. HOUSTON 17. Every Friday is Cougar Red Friday at UH. Students, faculty and alumni wear red and white to show pride and passion for the institution. 18. The University of Houston name is extremely well known throughout the United States and beyond. The publicity, public recognition and reputation of UH have been established in academics, sports and law. 19. The brand University of Houston is a widely recognized symbol of marketplace goodwill and is the subject of numerous federal trademark registrations. For example, and without limitation, UH owns the following United States Trademark Registrations. 20. U.S. Reg. No. 0,0747,078, used in connection with ?educational services rendered through the medium of television and radio and sporting events? in International Class 41. This trademark was registered on the Principal Register on March 19, 1963, and has become incontestable. A reproduction of the mark is shown below: UNIVERSITY OF HOUSTON 21. U.S. Reg. No. 0,917,683, used in connection with, among other things, ?catalogs, reports, brochures, books, directories, calendars, general information and other pamphlets for students; and lab manuals? in International Class 9. This trademark was registered on the Principal Register on August 3, 1971. A reproduction of this mark is shown below: Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 7 of 30 22. US. Reg. No. 2,749,347, used in connection with, among other things, ?educational services, namely providing college and graduate level course of instruction, continuing education courses and seminars and opportunities for students to participate in educational research programs in International Class 41. This trademark was registered on the Principal Register on August 12, 2003 and is incontestable. A reproduction of the mark is shown below: Unix-emit}! of Houston Clear Lake 23. US. Reg. No. 3,866,209, used in connection with, among other things various printed materials, clothing, advertising and ?educational services, namely providing college and graduate level course of instruction, continuing education courses and seminars in legal Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 8 of 30 in International Classes 16, 25, 35 and 41. This trademark was registered on the Principal Register on October 26, 2010. A reproduction of this mark is shown below: HOUSTON 24. U.S. Reg. No. 4,116,569, used in connection with, among other things, various printed materials, clothing and ?educational services, namely providing college and graduate level course of instruction, continuing education courses and seminars in the legal ?eld[] in International Classes 16, 25 and 41. This trademark was registered on the Principal Register on March 27, 2012. A reproduction of this mark is shown below: UNIVERSITY OF HOUSTON 25. U.S. Reg. No. 4,169,550, used in connection with, among other things, clothing and ?educational services, namely providing college and graduate level course of instruction, continuing education courses and seminars in the ?elds of legal in International Classes 25 and 41. This trademark was registered on the Principal Register on July 10, 2012. A reproduction of the mark is shown below: Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 9 of 30 26. US. Reg. No. 4,235,596, used in connection with, among other things, ?educational services, namely providing college and graduate level course of instruction, and seminars in the ?elds of legal in International Class 41. This trademark was registered on the Principal Register on November 6, 2012. A reproduction of the mark is shown below. 27. US. Reg. No. 4,650,772, used in connection with a variety of printed materials and merchandise in International Classes 16, 21, 25 and 28. This trademark was registered on the Principal Register on December 9, 2014. A reproduction of the mark is shown below: HOUSTON B. UH Law Center?s Well-Known Trademarks and Reputation 28. The College of Law was founded in 1947, with an inaugural class of 28 students and one professor. 29. Today, College of Law is also known as the University of Houston Law Center. Screen shots from the Houston Law Center?s webpage are shown below. Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 10 of 30 UHHome Maps Mobile ?Help Aimee}: HOUSTON LAW CENTER Admissions Faculty Students Alumni Library News 5 Events Academia Gluing i a . L. 7? f. .nr?x -. Apply Now ABA Required Disclosurs Career Development Of?ce CLE Email Contact For The Media Class Schedule HOUSTON LAW CENTER 30. College of Law is also known as ?Houston Law.? An example of how UH presents ?Houston Law? to the relevant market are shown below. This ad ran in Newsweek magazine August 17-201 1. -10- Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 11 of 30 CHOOSE HOUSTON LAW THEY TOOK IT TO THE SUPREME COURT AND Our students shepherdetl a case through the lower courts and on to the nation's highest. stunning the immigration would with a unanimous decision. Hands-on training is a large part of what we do at the University of Houston Law Center. Our clinic and advocacy programs are nationally known. 'ihere is no better place to hone your skills. But that's just part of what we o?'er. The Law Center combines the best of all worlds: . Exeellence in education with multiple ?Top 'l?en" specialty programs . Reasonable tuition and fees - A campus recognized as one of the most diverse in the United States We are a Tier One law school in a Tier One university. And. our home is Houston: the nation's fourth largest city with a robust legal employment market and an affordable cost oflit?tng to make the most ot?your budget 'Ihere's a lot to like about our school. Find out more. at ww w.law.uh.ed u. HOUSTON i LAW CENTER -11- Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 12 of 30 31. UH also has promoted its HOUSTON LAW brand through clothing and merchandise, an example of which is shown below. -12- Case 4:16-cv-Ol839 Document 1 Filed in TXSD on 06/27/16 Page 13 of 30 32. Not surprisingly, the student legal journal is named Houston Law Review, and continues the red and white color scheme of UH and UH Law Center baht-b;- RM 1! 33. For 2016, Law Center is ranked 50th of U.S. law schools by U.S. News World Report based on a multi-factor analysis including bar passage, job placement, and LSAT score. The UH Law Center is ranked 29th by the National Law Journal among "Go to" law schools based on the percent of graduates hired by the top 250 law ?rms in U.S. (2016). 34. The UH Law Center is ranked among the Top 50 law schools in the nation in 2011 for best standard of living according to an exclusive study conducted by National Jurist magazine. -13- Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 14 of 30 35. The UH Law Center was ranked 34th in 2010 by Super Lawyers? organization based on the number of alumni of the school who have been voted as "Super Lawyers" in their ?elds by their peers. 36. The Houston Law Review, published by the UH Law Center, was ranked in the top 3.2% (51st) of more than 1,600 law journals by Washington Lee based on the number of citations to articles in the Review. (2014). 37. The UH Journal of International Law ranked in the top 25% of all law journals by Washington Lee University based on the number of citations to articles in the Journal. (2013). 38. The UH Intellectual Property and Information Law Institute ranked 8th nationally by U.S. News World Report based on assessment of peers in intellectual property law. (2016). 39. The UH Health Law and Policy Institute is ranked 2nd nationally by U.S. News World Report based on assessment of peers in health law. (2016). 40. The UH Law Center part-time program is ranked 6th nationally by U.S. News World Report. (2016). 41. The UH Journal of Health Law and Policy is ranked in the top 15% of health law journals nationally by Washington Lee University based on the number of citations to articles in the Journal. (2010). 42. The UH Law Center is recognized as a 'Best Value? in The National Jurist magazine's annual survey. 43. The UH Law Center is recognized as a 'Most Diverse' law school by preLaw and The National Jurist magazines. 44. UH have strong common law rights in the names UNIVERSITY OF HOUSTON, UNIVERSITY OF HOUSTON LAW CENTER, HOUSTON LAW and the red and white colors, having used the marks prominently for its education services without interruption. 14- Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 15 of 30 45. As a result, branding strategy based around the UNIVERSITY OF HOUSTON, the UNIVERSITY OF HOUSTON LAW CENTER, HOUSTON LAW and the red and white colors, as shown above, points the relevant market directly and immediately to UH, and serves as identity and persona in the eyes of consumers, purchasers, and potential purchasers and has done so since long prior to any commercial activities undertaken by STCL under the newly coined HOUSTON COLLEGE OF LAW. 46. The UNIVERSITY OF HOUSTON, UNIVERSITY OF HOUSTON LAW CENTER and HOUSTON LAW brands are famous and are widely known by the relevant public as a designation of source of high quality UH education services. The UH trademarks became famous long before STCL commenced any use of its confusingly similar marks. 47. Because of substantial use and promotion of the UNIVERSITY OF HOUSTON, UNIVERSITY OF HOUSTON LAW CENTER, HOUSTON LAW and the red and white colors, trademarks have become well-known, have become distinctive of educational services, and have come to identify and indicate the source of education services to the public. UH has developed for itself and its education services an excellent reputation among actual and prospective students and others in the ?eld of higher education. 48. UH has acted with diligence in policing unauthorized uses and misuses by other parties of trademarks similar to or identical to trademarks. 49. UH has never authorized or licensed STCL to use any of trademarks, including its red and white color scheme. -15- Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 16 of 30 C. STCL Infringing Activities 50. In stark contrast to the reputation and renown of UH regarding education services, and particularly legal education services, as of 2016 STCL was not ranked at all in the US. News Rankings of Best Law Schools. 51. In fact, STCL has struggled since its inception to shed its image as a ?night school.? In the late 1990s, STCL attempted to af?liate with Texas University to increase its cache and image. That af?liation, which did not involve a wholesale name change, was rejected by the Texas Higher Education Coordinating board. STCL was left to polish its image and raise its pro?le once again by itself. 52. According to STCL, four years ago it began investigating a name change as a way to increase recognition. Apparently, that investigation concluded that changing its name from South Texas College of law to the confusingly similar Houston College of Law and changing its color scheme to a confusingly similar red and white would increase its pro?le and recognition among the relevant market. 53. STCL apparently concluded that riding on the substantial reputational coattails of UH and the University of Houston Law Center was the only way for STCL to stand out among other law schools. 54. On information and belief, on or about March 22, 2016, STCL registered the URL houstoncollegeo?awcom. -16- Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 17 of 30 Damn Harm: Regstrar: continuum Lu: Soornsor-ing Regard WM ID: 146 W5 Sew: ngoduddy.m Hamil LRL: Wifmgoduddym Name Server: m.wmonmcm Haw SEVE: W.WONTROLCDH Sans: dia?ehee?u?bited Stuns: diemw 5mm W'fiumawepp?c?em?gns?u?ohibuc 51:40.6: Wihi?d Masai 11de Date: er?urvl?l? ELIE: Envy-2016 Expilntm Data: llama-2026 55. On May 12, 2016, STCL ?led a trademark application with the United States Patent and Trademark Of?ce seeking to register the following trademark substantially as shown below. HOUSTON COLLEGE OF LAW EST. 1923 5 6. The trademark application provides a date of ?rst use in commerce of April 6, 2016, for ?education services, namely, providing course of instruction at the graduate law school level and distribution connection therewith; Providing courses of instruction at the graduate law school level.? That application has yet to be examined by a Trademark Attorney at the United States Patent and Trademark Of?ce. 57. On its website, the mark as used by STCL appears in a bright red font, nearly identical to the color mark adopted by UH. Compare: -17- Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 18 of 30 HOUSTON COLLEGE OF LAW HT with: UN HOUSTON LAW CENTER 58. STCL is obligated to refrain from knowingly making false statements to the United States Patent and Trademark Of?ce, yet it alleged that STCL began providing legal education services in the state of Texas under the confusingly similar HOUSTON COLLEGE OF LAW trademark at least as early as April 6, 2016. 59. However, it was not actually until about June 22, 2016, that STCL formally announced that it had changed its name to HOUSTON COLLEGE OF LAW. Dean Guter sent letters to STCL alumni citing low name recognition of South Texas College of Law as a motivation for the change. 60. On information and belief, STCL also sent letters about its name change to UH graduates. Two examples of recent comments received from two UH Law Center graduates are reprinted below. -18- Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 19 of 30 head with 'Interest Dean aynes 'letter regarding outh Texas changing-it slnameto 'Houston' College of-Law. "Foday= received 'a *letter 'fr orn Donald Gunter, President and 'Dean of- Houston College -of-1aw 'his bidto ?share {the} exciting-news he expressed his eon?den ce- that would ~"continue to distinguish our graduates by the'p ra ctical skill, strong work ethic, 'and- dedicated -s entice-which they have always exempli? appreciate his compliment (and they - do haven ?ne school) but i never attended ?5 outh Texas. graduated from The University of Houston Schoolof 'Law in- 99 1 .So apparently thename-change-is 'confus ing, even-to Dean- Guter. Just thought you would like-to know. Mitch . Is.st Dean aynes, I-just received -a letter in the mail with Houston College -o Law 'letterh ead on it this mo mingE-I- was immediately to nfused. andidly, {have always believed that UH needs to thange our 5 chool- name back to College - of Law -or School -of Law and was excited to see- we were. -H owever, immediately -s aw the '?ne print that said "formerly South Texas College- of -Law. 'I'm gues sing- they got tired -o -b eing-confused with Texas 8 outhern and decided the non?rsion should be-a step - up instead. Regardless, there is no question that the proposed name thange 'Will createa *terrible? amount of eonmsion that will -be 'a negative 'forthe-alumni, students and faculty of Law. Pleas e?keep the ??ght ?am 'very busy but will ?help in any way that -I -can.- Thanks and God-Bless: Brian-'03 Grad. 61. The STCL website also has been changed to the new red and White HOUSTON COLLEGE OF LAW brand. -19- Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 20 of 30 SUPPORT THE COLLEGE COLLEGE OF LAW whim HI um I. HOUSTON le?f'v IJJENTE Mi} lvr-Elz'FIJ: EhlLl 5 I FtES?UierJ?i Aili??flr'd [hat-gm Anna?)?! Dm?yau $113?? "w Liam West-at: (laws: The Houston College of Law Advocacy . Program has trained student teams who egm?mmr I - mm.deu. Ills-11ean have won 122 national championships, a history unmatched by any other ii?a?f?? a Sully mom a Tar. M1111 and Mr lthl- Erundfusu?ibwlh:mli?dtr Faculty in The News Tre- mama-ms OLD-stud ar- ooe: or and Doll Hormel South Texas College of Law Changes to Houston College of Law ALL NEWS s" "?Ian 62. Apparently, diplomas for the current graduating class will be in the name of STCL, but the website exhorts graduates to obtain replacement diplomas in the new name of HOUSTON COLLEGE OF LAW. ALUMNI I've already graduated. Can I order a diploma printed with "Houston College of Law"? ?es. Net-ember 20?6. alumni Will be able to order a diploma With Houston College ofLaw Ordering Instructions. Will be avarlaule onlrne. and we communicate aiumnr when this feature IS read-g. Male sure you are Dan orthe alumni onlme so you can reserve updates on this option. as well as other alumnl news. You can Sign up at Which name should I list an my resume and firm?s website? To EHSLIFE and clarity, we asl. that alumna lust Houston College ofLarr' on these and all other appropriate places -20- Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 21 of 30 63. Thus, STCL advertises and promotes is legal education services in Texas and through the United States under the infringing HOUSTON COLLEGE OF LAW brand. 64. use of HOUSTON COLLEGE OF LAW and the red and white color scheme, alone and in combination, is likely to cause, and is in fact causing confusion, mistake or deception within the relevant consuming public as to the source or origin of its education services; is likely to dilute goodwill in its trademarks, and is likely to tarnish or disparage trademarks. 65. Because of infringing and otherwise unlawful conduct, there is a likelihood that actual confusion will occur, if such has not already occurred, among students, prospective students and/or others regarding the origin of services provided and/or the sponsorship or af?liation with UH. 66. acts are causing and unless enjoined will continue to cause damage and irreparable harm to UH, and to its valuable reputation and goodwill with students, prospective students, alumni, employers, potential employers, clients and potential clients. -21- Case 4:16-cv-Ol839 Document 1 Filed in TXSD on 06/27/16 Page 22 of 30 COUNT I INFRINGEMENT OF FEDERAL TRADEMARK 67. UH repeats the allegations of the preceding paragraphs as if fully set forth herein. 68. use of trademarks, or marks confusingly similar thereto, is likely to cause confusion, mistake, or deception as to origin, sponsorship or approval and therefore constitutes federal trademark infringement in violation of 15 U.S.C. 1114(1). 69. Because of conduct, UH has suffered, will suffer and/or continues to suffer damages including, without limitation, the loss of revenue and reputation but for acts, in an amount to be proven at trial and the loss of goodwill and exclusivity in trademarks. 70. As a direct and proximate result of above-described conduct, STCL has been unjustly enriched and should be ordered to disgorge any and all pro?ts earned as a result of such unlawful conduct. 71. Unless enjoined by this Court, above-described conduct will cause irreparable injury, for which UH has no adequate remedy at law, in the nature of injury to the reputation and goodwill of trademarks as well as confusion and deception among customers. UH is entitled to injunctive relief pursuant to 15 U.S.C. 1116. 72. actions were taken in willful, deliberate, and/or intentional disregard of rights. UH is entitled to recover treble damages, attorneys? fees, and the costs of this litigation pursuant to 15 U.S.C. 1117. -22- Case 4:16-cv-Ol839 Document 1 Filed in TXSD on 06/27/16 Page 23 of 30 COUNT II FEDERAL UNFAIR COMPETITION AND FALSE DESIGNATION OF ORIGIN 73. UH repeats the allegations of the preceding paragraphs as if fully set forth herein. 74. The acts of STCL complained of herein constitute unfair competition and false designation of origin in Violation of Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a). 75. activities are likely to cause confusion, or to cause mistake or to deceive as to af?liation, connection, or association of STCL and their goods and services with UH, or as to the origin, sponsorship or approval of goods and services by UH, all in violation of 15 U.S.C. 1125(a). 76. Because of conduct, UH has suffered, will suffer and/or continues to suffer damages including, without limitation, the loss of revenue and reputation but for acts, in an amount to be proven at trial and the loss of goodwill and exclusivity in trademarks. 77. As a direct and proximate result of above-described conduct, STCL has been unjustly enriched and should be ordered to disgorge any and all pro?ts earned as a result of such unlawful conduct. 78. Unless enjoined by this Court, above-described conduct will cause irreparable injury, for which UH has no adequate remedy at law, in the nature of injury to the reputation and goodwill of trademarks as well as confusion and deception among customers. UH is entitled to injunctive relief pursuant to 15 U.S.C. 1116. 79. actions were taken in willful, deliberate, and/or intentional disregard of rights. UH is entitled to recover treble damages, attorneys? fees, and the costs of this litigation pursuant to 15 U.S.C. 1117. -23- Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 24 of 30 COUNT FEDERAL FALSE ADVERTISING 80. UH repeats the allegations of the preceding paragraphs as if fully set forth herein. 81. The acts of STCL complained of herein constitute false advertising in violation of Section 43(a) ofthe Lanham Act, 15 U.S.C. 1125(a) (1) (B). 82. As stated above, STCL has made and continues to make false, misleading and inaccurate statements regarding UH, its connection with UH, and has failed to correct those known incorrect opinions formed from advertising and commercial speech. 83. UH and STCL are competitors in legal education services, and UH believes it is, or is likely to be, damaged by such false, misleading and inaccurate statements and omissions. UH has a reasonable basis for believing its interests are likely to be damaged because there is both a likely injury in the form of lost revenue, lost market share and damaged goodwill. false, misleading and inaccurate statements and omissions have caused those injuries. 84. Because of conduct, UH has suffered, will suffer and/or continues to suffer damages including, without limitation, the loss of revenue and reputation but for acts, in an amount to be proven at trial and the loss of goodwill and exclusivity in Trademarks. 85. As a direct and proximate result of above-described conduct, STCL has been unjustly enriched and should be ordered to disgorge any and all pro?ts earned as a result of such unlawful conduct. 86. Unless enjoined by this Court, above-described conduct will cause irreparable injury, for which UH has no adequate remedy at law, in the nature of injury to the reputation and goodwill of trademarks as well as confusion and deception among customers. UH is entitled to injunctive relief pursuant to 15 U.S.C. 1116. -24- Case 4:16-cv-Ol839 Document 1 Filed in TXSD on 06/27/16 Page 25 of 30 87. actions were taken in willful, deliberate, and/or intentional disregard of rights. UH is entitled to recover treble damages, attorneys? fees, and the costs of this litigation pursuant to 15 U.S.C. 1117. COUNT IV FEDERAL DILUTION BY BLURRING OR TARNISHMENT 88. UH repeats the allegations of the preceding paragraphs as if fully set forth herein. 89. By the actions set forth above, STCL has commenced use of a mark or trade name in commerce that is likely to cause dilution by blurring and/or tamishment of famous marks, and UH is entitled to injunctive relief to prevent the same under 17 U.S.C. 1125 (1). 90. trademarks are distinctive and famous marks. trademarks have long been used on and in connection with legal education services, have long been the subject of substantial advertising and promotion, and are widely recognized by the public. 91. acts as alleged above were commenced and committed from a time well after trademarks became famous. 92. acts have lessened the capacity of trademarks to identify and distinguish the legal education services of UH. acts have blurred and/or tarnished the unique association that has heretofore existed between trademarks and the legal education services offered by UH. Accordingly, acts are in violation of 15 U.S.C. 1125(c)(1) in that they have caused a dilution of the distinctive quality of trademarks all to the irreparable injury and damage of UH. -25- Case 4:16-cv-Ol839 Document 1 Filed in TXSD on 06/27/16 Page 26 of 30 COUNT STATE UNFAIR COMPETITION TEXAS BUS. COMM. CODE, 16.29 94. UH repeats the allegations of the preceding paragraphs as if fully set forth herein. 95. The actions of STCL complained of above constitute unfair competition in violation of the law of the State of Texas. 96. use of a confusingly similar name and trademark, HOUSTON COLLEGE OF LAW, alone and in combination with the colors red and white, is calculated to deceive the relevant consuming public into accepting and purchasing services in the mistaken belief that they are services, or that they are sponsored by, connected with, or supplied under the supervision of UH. 97. adoption and use of accused mark on its goods and services constitutes unfair competition. By such use, STCL has represented that their goods and services are actually those supplied by UH. This use creates likelihood that the public will be confused or deceived. 98. actions constitute dilution, unfair competition, palming off, passing off, unjust enrichment and misappropriation of rights under Tex. Bus. Comm. Code, 16.29 and the common law of the State of Texas. Such actions permit, and will continue to permit, STCL to use and bene?t from the goodwill and reputation earned by UH to readily obtain customer acceptance of the goods and services offered for sale, and to give goods and services a salability they would not otherwise have, all at expense. 99. As a result of acts, UH has already suffered damage and will continue to suffer damage, while STCL profits at expense. activities entitle UH to pro?ts and to damages for such acts of unfair competition. 100. Unless STCL is enjoined, UH has no adequate remedy at law and will be irreparany harmed. -26- Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 27 of 30 101. acts complained of herein have been and are grossly negligent, deliberate, willful, intentional, in bad faith, malicious, with full knowledge and conscious disregard of rights and with intent to cause confusion, dilution, and to trade off vast good will in its trademarks, making this an exceptional case and entitling UH to enhanced damages and attorney?s fees. COUNT VI INFRINGEMENT OF COMMON LAW TRADEMARK 102. UH repeats the allegations of the preceding paragraphs as if fully set forth herein. 103. acts described above constitute common law trademark infringement. 104. Because of above-described conduct, UH has suffered and continues to suffer damages including, without limitation, unjust enrichment damages, in an amount to be proven at trial based on gross sales less only elements of cost or deduction allowed by this Court. 105. Unless enjoined by this Court, above-described conduct will cause irreparable injury, for which UH has no adequate remedy at law, in the nature of injury to the reputation and goodwill of UH as well as confusion and deception among customers. 106. acts complained of herein have been and are grossly negligent, deliberate, willful, intentional, in bad faith, malicious, with full knowledge and conscious disregard of rights and with intent to cause confusion, dilution, and to trade off of the vast good will in trademarks, making this an exceptional case and entitling UH to enhanced damages and attorney?s fees at least as provided under Texas Civil Practices Remedies Code 41.003. -27- Case 4:16-cv-Ol839 Document 1 Filed in TXSD on 06/27/16 Page 28 of 30 COUNT VII COMMON LAW UNFAIR COMPETITION 108. UH repeats the allegations of the preceding paragraphs as if fully set forth herein. 109. activities complained of constitute common law unfair competition under Texas common law in that they are likely to cause consumers to believe that products originate from the same source as, or are sponsored or approved by UH, or that there is an association, af?liation or connection between STCL and UH. 110. Upon information and belief, actions are with the knowledge of trademarks and with the intent to cause confusion and/or trade on reputation and goodwill. 111. UH has and will continue to be irreparany harmed and damaged by conduct and UH lacks an adequate remedy at law to compensate for this harm and damage. PRAYER FOR RELIEF WHEREFORE, UH prays that: 1. STCL and all agents, servants, employees, attorneys, and all those persons in active concert or participation with any of them, be permanently enjoined from and ordered to: Cease using trademarks, and any other mark that is confusingly similar to any of trademarks, including, but not limited to the HOUSTON COLLEGE OF LAW name and the colors (red and white); cease using trademarks, or any other mark that is likely to cause confusion, in any manner that violates the rights of and modify all of signage, advertising, social media usage, product packaging, and promotional material to eliminate infringement of trademarks or any confusingly similar mark; -28- Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 29 of 30 Cease making any unfair, untrue, or misleading statements about either legal education services, or the education services of UH, and remove any and all unfair, untrue, or misleading statements about own or services, any connection between the parties, or the products and services of Compelling destruction of all infringing works, business materials, brochures, web pages, advertising, signage, temporary signage or logos, invoices, business cards, or business materials, sales decks, and the like within the care, custody or control of STCL that violate the rights of UH. 2. UH be awarded all damages it sustains as a result of infringement and unfair competition, and that said damages be trebled; 3. An accounting be directed to determine pro?ts resulting from activities complained of herein, and that such pro?ts be paid over to UH, increased as the Court ?nds to be just under the circumstances of this case; 4. UH be awarded statutory damages, costs and fees as provided for in 15 U.S.C. 1117(d), and applicable Texas Statutes. 5. UH recover its costs of this action and prejudgment and post-judgment interest, and attorney fees as provided by Federal Rules of Civil Procedure; 6. UH be awarded its attorney?s fees and the costs of this action under trademark law, Texas law or Texas common law; and 7. UH recover such other and further relief as the Court may deem just and appropriate. -29- Case 4:16-cv-01839 Document 1 Filed in TXSD on 06/27/16 Page 30 of 30 JURY DEMAND UH hereby demands a trial by jury on all issues triable as of right by a jury. Of Counsel: SUTTON MCAUGHAN DEAVER PLLC Elizabeth W. King Texas Bar No. 00788710 S.D. Tex. No. 433,387 Robert J. McAughan, Jr. Texas Bar No. 00786096 S.D. Tex. No. 16,501 Albert B. Deaver, Jr. Texas Bar No. 05703800 S.D. Tex. No. 11,300 Jeffrey A. Andrews Texas Bar No. 24050227 S.D. Tex. No. 608,251 Three Riverway, Suite 900 Houston, Texas 77056 Telephone: (713) 800-5700 Facsimile: (713) 800-5699 THE BUZBEE LAW FIRM s/Anthony G. Buzbee by permission ABD Anthony G. Buzbee Lead Attorney Texas Bar No. 24001820 S.D. Tex. No. 22,679 tbuzbee@txattorneys.com JP Morgan Chase Tower 600 Travis Suite 7300 Houston, TX 77002 Telephone: (713) 223-5393 Facsimile: (713) 223-5909 Attorneys For Plainti?fs The Board of Regents of the University of Houston System on behalf of the University of Houston System and its Member Institutions; The University of Houston System; and The Board of Regents of the University of Houston System -30- Case 4:16-cv-01839 Document 1-1 Filed in TXSD on 06/27/16 Page 1 of 1 .1844 (Rev. 11/15) CIVIL COVER SHEET The 44 civil cover sheet and the information contained herein neither re lace nor supplement the filing and service of pleadings or other papers as re uired by law, except as provrded by local rules of?court. This form, approved by the Judicial Co erence ofthe nited States in eptember 1974, is required for the use ofthe lerlc ofCourt for the purpose of initiating the Civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.) 1. PLAINTIFFS DEFENDANTS The Board of Regents of the Uan. of Houston System on behalf of the South Texas College of Law Univ. of Houston System and Its Member Institutions; The University of Houston System; and the Board of Regents of the Univ. of Houston County of Residence ofFirst Listed Plaintiff Harris County of Residence ofFirst Listed Defendant (EXCEPTIN U.S. PLAINTIFF CASES) (IN US. PLAINTIFF CASES ONLY) NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE TRACT OF LAND INVOLVED. (C) Attorne (Firm_Name, Address, and Tele none Number) Attorneys (If Known) The Buzbee law Firm, 600 Traws, 7300, Houston, TX 77002, 713223-5393 Sutton McAL?gjhan Deaver PLLC, 3 Riverway. Ste 900, Houston, TX 7705f 71 3?800?57 II. (Place an in One Box Only) (Place an in One Boxfor Plafnn?? (For Diversity Cases Only) and One Boxfor Defendant) E1 1 US. Government CK 3 Federal Question PTF DEF PTF DEF Plaintiff I (US. Gorernment Nott a Party) Citizen of This State Incorporated or Principal Place Cl 4 CI 4 of Business In This State 2 US Government 4 Diversity Citizen of Another State 2 l3 2 Incorporated and Principal Place CI 5 CI 5 Defendant (Indicate Citizenship quariies in Item 111) of Business In Another State Citizen or Subject ofa l3 3 l3 3 Foreign Nation 6 6 Foreign Country One Box On (Place an in 1 10 Insurance I PERSONAL INJURY PERSONAL INJURY Cl 422 Appeal 28 USC 158 a Iii; . . 625 Drug Related Seizure 375 False Claims Act 120 Marine 310 Airplane l] 365 Personal Injury - of Property 21 USC 881 CI 423 Withdrawal l3 376 Qui Tam (31 USC 130 Miller Act 315 Airplane Product Product Liability CI 690 Other 28 USC 157 3729(a)) 140 Negotiable Instrument Liability 367 Health Care/ Cl 400 State Reapportionment 150 Recovery of Overpayment Cl 320 Assault, Libel Pharmaceutical . 410 Antitrust Enforcement ofJudgment Slander Personal Injury Cl 820 Copyrights Cl 430 Banks and Banking [3 151 Medicare Act Cl 330 Federal Employers? Product Liability Cl 830 Patent 450 Commerce 152 Recovery of Defaulted Liability [3 368 Asbestos Personal 84D Trademark Cl 460 Deportation Student Loans El 340 Marine Injury Product Cl 470 Racketeer Influenced and (Excludes Veterans) Cl 345 Marine Product Liability Corrupt Organizations Cl 153 Recovery of Overpayment Liability PERSONAL PROPERTY Cl 710 Fair Labor Standards El 861 HIA (1395ff) Cl 480 Consumer Credit ofVeteran?s Benefits 350 Motor Vehicle El 370 Other Fraud Act Cl 862 Black Lung (923) 490 Cable/Sat TV 160 Stockholders? Suits CI 355 Motor Vehicle El 371 Truth in Lending Cl 720 Labor/Management l3 863 (405(g)) Cl 850 Secur'ities/Corrunodities/ CI 190 Other Contract Product Liability El 380 Other Personal Relations Cl 864 SSID Title XVI Exchange 195 Contract Product Liability Cl 360 Other Personal Property Damage Cl 740 Railway Labor Act Cl 865 RSI (405(g)) Cl 890 Other Statutory Actions 13 196 Franchise Injury Cl 385 Property Damage l] 751 Family and Medical 891 Agricultural Acts Cl 362 Personal Injury - Product Liability Leave Act El 893 Environmental Matters Medical Mal ractice 790 Other Labor Litigation Cl 895 Freedom of Information i i 4 ?i 7*"i l3 791 Employee Retirement - Act [3 210 Land Condemnation Cl 440 Other Civil Rights Habeas Corpus: Income Security Act Cl 870 Taxe (U.S. Plai tiff Cl 896 Arbitration Cl 220 Foreclosure 441 Voting 463 Alien Detainee or Defendant) l3 899 Administrative Procedure Cl 230 Rent Lease Ejectment ID 442 Employment [3 510 Motions to Vacate 871 Party Act/Review or Appeal of Cl 240 Torts to Land [3 443 Housing/ Sentence 26 USC 7609 Agency Decision Cl 245 Tort Product Liability Accommodations Cl 530 General [3 950 Constitutionality of 290 All Other Real Property CI 445 Amer. w/Disabilities - Cl 535 Death Penalty it, i State Statutes Employment Other: E1 462 Naturalization Application Cl 446 Amer. w/Disabilities 540 Mandamus Other [3 465 Other Immigration Other E1 550 Civil Rights Actions 448 Education 555 Prison Condition Cl 560 Civil Detainee - Conditions of Con?nement V. (Place an in One Box Only) IS 1 Original El 2 Removed from El 3 Remanded from El 4 Reinstated or Cl 5 Transferred from El 6 Multidistrict Proceeding State Court Appellate Court Reopened Another District Litigation (5306605)) Cite the US Civil Statute under which you are filin (Do not cite jurisdictionalstatutes unless diversity): 15 USC sec. 1114; 15 use. sec. 1125:g CAUSE OF ACTION Brief description of cause: Trademark infringement; common law trademark infringement and unfair competition VII. REQUESTED IN CHECK IF THIS IS A CLASS ACTION DEMAND 3 CHECK YES only if demanded in complaint: COMPLAINT: UNDER RULE 23, JURY DEMAND: 12$ Yes El No RELATED ee instructions IF ANY JUDGE DOCKET NUMBER DATE a FOR OFFICE USE ONLY . RECEIPT AMOUNT APPLY IFP JUDGE MAG.