TESTMASTERS malpractice case dismissed for lack of jurisdiction

In Singh v Duane Morris LLP (Case 07-20321, July 30 2008), reviving Robin Singh’s hopes that his company TestMasters might prevail in a malpractice claim against its former trademark attorney, the US Court of Appeals for the Fifth Circuit has vacated a summary judgment in favour of 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 law.
The underlying trademark infringement action involved a dispute over the use of the name Testmasters between two companies offering test preparation services. Test Masters Educational Services Inc, a Texas-based company, 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. However, on appeal, the US Court of Appeals for the Fifth Circuit reversed, holding that Singh had presented insufficient evidence to establish secondary meaning (for further details please see "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 appeal, the US Court of Appeals for the Fifth Circuit 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 that “this is not a case in which the federal issue requires resolution of an important question of law”. Rather, the court noted that “the federal issue is predominantly one of fact - whether Singh had sufficient evidence that his trademark had acquired secondary meaning”. The court held that while the issue was “obviously significant to Singh’s claim”, it “[did] not require resort to the experience, solicitude and hope of uniformity that a federal forum offers”. 
Singh has announced that he is planning to re-file the malpractice action in state court. 
Rita W Siamas, McDermott Will & Emery LLP, Orange County

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