Reviving Robin Singh’s hopes that his company TestMasters may prevail in a malpractice claim against its former trademark attorney, a three-judge panel for the U.S. Court of Appeals for the Fifth Circuit recently vacated a summary judgment win for Duane Morris, LLP and one of its partners, Richard Redano, holding that the district court lacked subject matter jurisdiction to hear the state law malpractice claim because it did not arise under federal trademark law. Singh v. Duane Morris, Case No. 07-20321 (5th Cir., July 30, 2008) (Smith, J.).

The underlying trademark infringement action involved a dispute over the use of the name “Testmaster” between two companies offering Law School Admissions Test (LSAT) preparation services. A Texas-based company, Test Masters Educational Services, Inc., brought a federal trademark infringement action against Singh’s California-based company TestMasters. After a five-day trial, a jury determined that Singh’s “TestMasters” mark had acquired secondary meaning. On appeal, however, the Court of Appeals reversed, holding that Singh had presented insufficient evidence to establish secondary meaning. (See IP Update, Vol. 11, No. 5, Three Strikes at Secondary Meaning—And You're Out !)

Thereafter, Singh filed a malpractice suit against Duane Morris and Redano in Texas state court, claiming that Redano had mishandled the representation by failing to introduce available evidence at trial that would have shown the existence of secondary meaning. Redano removed the malpractice action to federal court, claiming that its outcome depended on resolving questions of federal trademark law. The district court denied Singh’s motion to remand the action to state court, concluding that it possessed subject matter jurisdiction over the action. Ultimately, the district court granted Redano’s motion for summary judgment in part and dismissed Singh’s malpractice claims.

On July 30, however, a three-judge panel of the Court of Appeals vacated the district court’s grant of summary judgment and dismissed the case for lack of jurisdiction, holding that a state-law malpractice claim does not arise under federal law merely because the alleged malpractice occurred in a prior federal trademark suit. The court stated, “This is not a case in which the federal issue requires resolution of an important question of law.” Rather, the court noted, “the federal issue is predominantly one of fact—whether Singh had sufficient evidence that his trademark had acquired secondary meaning.” The court noted that while the issue was “obviously significant to Singh’s claim,” the issue “does not require resort to the experience, solicitude, and hope of uniformity that a federal forum offers.” Singh plans to refile the malpractice action in state court.