For over a decade, two test prep companies operating under the name “TestMasters” have been quarreling in court for federal registration of the official trademark for “TestMasters” with the United States Patent and Trademark Office. Just last month, on August 21, 2015, the United States Court of Appeals for the Fifth Circuit put an end to the ongoing litigation in Test Masters Educ. Servs., Inc. v. Robin Singh Educ. Servs., Inc., deciding that neither company would receive registration of the name. The Court forewarned the litigants that if they continue to re-litigate this issue, they could face sanctions. This was the fourth appeal in the case that began back in August 1999.

In 1991, Robin Singh launched an LSAT prep company called “TestMasters” in California. Today, he offers courses on several exams in all fifty states. That same year, unbeknownst to Singh, Haku Irani instituted his company Test Masters Educational Services, Inc., (TES) in Texas. He, too, has since expanded his company to other states and now offers an LSAT course. In 1999, the United States Patent and Trademark Office approved Singh’s federal registration application. It wasn’t until Singh attempted to create a website under the domain name “testmasters.com” that he learned that someone else had beat him to the punch.

In this fourth appeal, referred to as TestMasters IV, the Court of Appeals reviewed de novo the District Court’s decision that “TestMasters” was a descriptive rather than a distinctive mark and that it had not acquired secondary meaning. Under trademark law, descriptive marks are generally not offered protection unless it can be proven that they have acquired secondary meaning, making them distinctive. A mark has acquired secondary meaning “when, in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.” Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 476 (5th Cir. 2008). After engaging in a seven-factor test, the Court affirmed the District Court’s decision and neither company could establish the requisite secondary meaning.

After closer examination of the evidence presented by Singh, it appears that the Court could have found in Singh’s favor. A survey conducted by an expert demonstrated that “58.1 percent of all students taking an LSAT course were aware of Singh’s TESTMASTERS mark.” Fifty-eight percent seems like a significant percentage. If the name “TestMasters” is mentioned to a law student, images of a smiling Robin Singh teaching logic games come to mind. Chelsea Fitzgerald, recipient of the Academic Excellence award in Intellectual Property Survey at Vanderbilt University Law School, calls Robin Singh’s test preparation course “the Cadillac of LSAT prep” and was confused to hear that another company has been using the same name. “My understanding of the law here,” stated Fitzgerald, “is that the overall strength of a trademark stems from its recognizability to the public. The ultimate test for infringement of a valid trademark is whether a reasonable consumer would be confused by another party’s use of the mark in commerce. In this case, so long as Singh’s mark was valid to begin with, the strength of his mark should have prevailed over the claims of the less well-known company, at least and especially in the major markets where TestMasters has been engaged in business for over two decades.” The Court, however, was not convinced that either company had established sufficient evidence of secondary meaning to warrant protection of the mark. For now, there will be no true master of TestMasters. It will be interesting to see if either party decides to re-litigate despite the court’s strong warning against doing so.

Jennifer Blasco

 

One Response to No True Master of TestMasters

  1. ngabrenya says:

    I am curious as to the methods employed by the Fifth Circuit in determining that the term had not acquired a secondary meaning. Is it only the breadth of the judges’ personal experiences that informs secondary meaning? Did they poll the public during their consideration of the arguments to determine how it recognized the term? Should they have done that? I, too, wonder if they will re-litigate. I think I would.