Fifth Circuit Holds Federal Jurisdiction Is Not Automatic In Malpractice Action Arising From Federal Trademark Suit

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...