No Winners in Appeal Over ‘Testmasters’ Mark

(CN) - Two competing providers of test-preparation courses do not deserve nationwide trademark registration, and one is in contempt for harassing the other, the Fifth Circuit ruled.

Founded in 1991, Test Masters Educational Services Inc. dba Testmasters started offering test-preparation courses in 1992, mostly in Houston, but has since expanded out of state.

Robin Singh Educational Services Inc. also started offering test-preparation courses under the name "TestMasters" in 1991, at first in California, but later nationwide.

The U.S. Patent and Trademark Office denied Singh's application for federal registration of Testmasters in 1995, based on three similar marks already registered, but approved the application in March 1999 after finding that none of the three marks were still in use.

When Singh discovered that TES already owned the testmasters.com domain name in 1999, it sent a demand letter claiming that it infringed Singh's trademark rights.

TES then filed an August 1999 federal complaint against Singh in Houston, and Singh filed his own suit against TES in California in June 2000, which was later consolidated into the Texas suit.

Over the next eight years, the New Orleans-based Fifth Circuit resolved this and two other related suits.

In June 2008, TES filed a new suit against Singh in Houston federal court, alleging trademark infringement and other claims.

The Trademark Trial and Appeal Board consolidated, and in March 2011 denied, three applications TES had filed with it, finding that the company had failed to show "substantially exclusive use" of the descriptive mark.

A federal judge affirmed the board's decision in April 2013, finding that the mark is descriptive rather than distinctive, and awarding Singh summary judgment.

The court granted both parties summary judgment on Feb. 21, 2014, denying nationwide registration to both.

A three-judge panel of the Fifth Circuit affirmed Friday, despite TES' claims that it made tens of millions from 2002 to 2011 from students from all 50 states.

"The District Court concluded that the evidence showed that Singh's company is larger and has significantly more business outside of Texas," Judge Leslie Southwick wrote for the court. "TES's revenue outside of Texas is primarily from engineering courses. The court determined that TES's evidence showing customer enrollment in all 50 states was unreliable because its figures were based on the student's home address as opposed to where the courses were actually offered. The court found this to be an unpersuasive attempt by TES to claim use of the mark in states in which it actually offers no courses. We find no error."

Singh's attorney, Daniel Sheehan said he is "very disappointed" that the court ignored evidence of a change in the public opinion of Singh. Consumer statements, emails and college newspaper articles support the view that Singh's business has grown into the nation's second-largest LSAT course provider since 2002.

TES needed - but failed - to show that the mark had secondary meaning on a nationwide basis for all test preparation courses, the ruling states.

"Instead, the evidence indicated, at most, that the mark has acquired a secondary meaning for professional engineering examinations," Southwick wrote. "It did not show that the mark had a secondary meaning for any other, much less all, test preparation services."

Singh failed, however, to show "a change in the minds of the public . . . such that they could immediately associate the 'Testmasters' mark with his [business]," the panel found, finding no error in the district court's application of collateral estoppel.

The panel likewise upheld an order finding Singh in contempt for an online post that called Haku Israni, the founder of TES, a "deadbeat dad" based on a paternity suit.

Singh's attorney called the contempt ruling against his client "completely unjustified."

Sheehan noted that the court did not require Singh's presence at the related hearing, and did not allow any witnesses or even view much of the material it ordered removed.

Though the lower court had also held Sheehan in contempt, and briefly jailed the attorney, the panel vacated that order.

David Miller, an attorney for TES, said the company will continue its promotion activities.

"We were encouraged by the court's denial of Mr. Singh's claims, but disappointed by the failure to obtain the national mark," Miller said.

Christopher Kratovil, another attorney for TES, added that "the almost 30-page opinion speaks for itself."

TES is "very pleased that the Fifth Circuit declined to award the mark to Singh and affirmed the district court's strong finding of contempt against Singh," Kratovil said.

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