Test Masters Educ Svc, Inc. v. Robin Singh Educ Svc, Inc., et al

Filing

PUBLISHED OPINION FILED. [13-20250 Affirmed in Part, Vacated in Part 13-20327 Affirmed in Part, Vacated in Part 14-20113 Affirmed in Part, Vacated in Part ] Judge: PEH , Judge: WED , Judge: LHS Mandate pull date is 09/11/2015; denying motion to dismiss appeal for lack of jurisdiction filed by Appellee Test Masters Educational Services, Incorporated [7455022-2] in 13-20327 [13-20250, 13-20327, 14-20113]

Case: 13-20250

Document: 00513165585

Page: 1

Date Filed: 08/21/2015

IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
No. 13-20250

United States Court of Appeals
Fifth Circuit

FILED
August 21, 2015

TEST MASTERS EDUCATIONAL SERVICES, INC.,

Lyle W. Cayce
Clerk

Plaintiff - Appellant
v.
ROBIN SINGH EDUCATIONAL SERVICES, INC.; ROBIN SINGH,
Defendants - Appellees
_______________________________________________
Cons w/ 13-20327
ROBIN SINGH EDUCATIONAL SERVICES, INCORPORATED; ROBIN
SINGH, doing business as Testmasters;
v.

Plaintiffs - Appellants

TESTMASTERS EDUCATIONAL SERVICES, INCORPORATED,
Defendant - Appellee
v.
DANIEL J SHEEHAN, JR.,
Appellant
_________________________
Cons/W 14-20113
TEST MASTERS EDUCATIONAL SERVICES, INCORPORATED,

Case: 13-20250

Document: 00513165585

Page: 2

Date Filed: 08/21/2015

Plaintiff - Appellee
v.
ROBIN SINGH EDUCATIONAL SERVICES, INCORPORATED; ROBIN
SINGH,
Defendants - Appellants

Appeals from the United States District Court
for the Southern District of Texas
Before HIGGINBOTHAM, DAVIS, and SOUTHWICK, Circuit Judges.
LESLIE H. SOUTHWICK, Circuit Judge:
This consolidated appeal involves a dispute between two test preparation
companies with competing claims to the TESTMASTERS trademark. The
parties have been litigating the issue for over a decade. This is the fourth time
one of the parties has appealed to this court. We are again asked to consider
various issues related to their trademark dispute, mainly whether each party
is entitled to federal registration of the mark. The district court granted both
parties’ motions for summary judgment, denying nationwide registration to
both. In addition, we have before us an appeal from a different district court’s
order finding one of the parties and his attorney to be in contempt, and
ordering the attorney to be briefly jailed. We VACATE the finding of contempt
entered against Daniel Sheehan. We otherwise AFFIRM.
FACTUAL AND PROCEDURAL BACKGROUND
Both parties are in the test preparation business.

They each offer

courses designed to help individuals pass or achieve higher scores on various
2

Case: 13-20250

Document: 00513165585

Page: 3

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
standardized tests. The problem, and the catalyst of this ongoing litigation, is
that both parties offer these courses using the “TESTMASTERS” name. 1
Test Masters Educational Services, Inc. (“TES”) operates under the
name “Testmasters.” TES was founded by Haku Israni in 1991 and started
offering test preparation courses for multiple entrance and licensing exams in
1992. TES initially concentrated on engineering licensing exams, but has since
expanded to offer courses for a variety of other exams, including the LSAT.
Until 2002, TES offered live courses only in Texas, primarily in Houston; it has
since expanded to offer courses outside of the state. Vivek (“Roger”) Israni,
Haku Israni’s son, is the current owner and president of TES.
Robin Singh Educational Services, Inc. and its owner, Robin Singh
(collectively “Singh”), started offering test preparation courses under the name
“TestMasters” in 1991. Singh initially offered only LSAT courses in California,
but has since expanded to offer courses nationwide for a variety of exams.
Singh applied for federal registration of TESTMASTERS in June 1995.
The United States Patent and Trademark Office (“PTO”) initially denied his
application, finding that there were three substantially similar marks already
registered. In March 1999, after determining that none of the three marks
were still in use, the PTO approved Singh’s application.
Apparently, neither party knew of the other until that time. After the
PTO granted Singh registration of the mark, he attempted to create a website.
He discovered that TES already owned the domain name “testmasters.com.”
Singh’s attorney sent TES a demand letter, claiming that TES’s use of the
domain name infringed Singh’s trademark rights.

The parties have, at various times described the trademark they seek as
“Testmasters,” “TestMasters,” “Test Masters,” and “TESTMASTERS.” For consistency with
this court’s prior opinions, we will refer to the mark as “TESTMASTERS” or “the mark.”
1

3

Case: 13-20250

Document: 00513165585

Page: 4

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
It was at this point that the first of the numerous lawsuits seeking
recognition of a trademark was filed. We will give a brief summary of the state
of the issues at the end of each respective decision by this court.
The first suit was brought by TES against Singh in August 1999. In our
decision we held that TESTMASTERS is descriptive, that TES’s rights to the
mark were limited to Texas, and that Singh had failed to prove that the mark
had acquired secondary meaning. See Test Masters Educ. Servs. v. Singh, 46
F. App’x 227 (5th Cir. 2002) (“Testmasters I”).
Two days after our Testmasters I decision, Singh filed a new lawsuit. At
its conclusion, we again held that the mark was descriptive, TES had no rights
to the mark outside of Texas, Singh was enjoined from interfering with TES’s
use of the mark in Texas, and Singh could challenge TES’s claim to the mark
outside of Texas. See Test Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559
(5th Cir. 2005) (“Testmasters II”).
Singh filed the third suit in November 2003, before the second suit was
resolved. We held that there had not been a significant intervening factual
change to allow re-litigation of the secondary meaning issue. See Robin Singh
Educ. Servs. Inc. v. Excel Test Prep Inc., 274 F. App’x 399, 406 (5th Cir. 2008)
(“Testmasters III”).
Today’s appeal earns the label Testmasters IV. The origins of part of the
case are a series of three applications TES filed in 2001 with the PTO for
nationwide registration of the TESTMASTERS mark. Singh filed oppositions
to all three applications. The Trademark Trial and Appeal Board (“TTAB”)
consolidated the three matters. In August 2007, the TTAB granted Singh leave
to amend his notices of opposition to assert that TES’s mark lacked
distinctiveness. In particular, Singh was allowed to amend his opposition to
assert that TES was bound by the jury’s finding in 2001 that the mark is
descriptive. In that same decision, the TTAB held that collateral estoppel did
4

Case: 13-20250

Document: 00513165585

Page: 5

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
not bar Singh from attempting to prove his claims regarding secondary
meaning.
Meanwhile, TES, in June 2008, filed a new suit against Singh in the
United States District Court for the Southern District of Texas, alleging
trademark infringement and other claims. TES sought an order from the
district court directing the PTO to grant its pending applications for
registration. Singh filed counterclaims, asserting trademark infringement and
seeking an order directing the PTO to reinstate his prior registration of the
mark for the District of Columbia and all states except Texas. This time, the
case was assigned to Judge Atlas instead of Judge Gilmore, who had handled
the three prior cases.
In October 2008, on Singh’s motion, the district court stayed the case to
allow the TTAB to complete its proceedings. The stay would be lifted in June
2011. In March 2011, the TTAB denied TES’s applications for nationwide
registration, holding that the mark was descriptive and that TES had failed to
demonstrate “substantially exclusive use” of the descriptive mark. Following
that ruling, TES filed an appeal of the TTAB decision in district court; that
appeal was consolidated with the proceedings before Judge Atlas. In October
2012, the PTO issued TES registration of the mark for the state of Texas.
In April 2013, the district court affirmed the TTAB’s decision denying
TES geographically unrestricted use of the mark, granting Singh’s motion
requesting a declaration that the mark is descriptive rather than distinctive,
granting Singh summary judgment on TES’s infringement claims, and
dismissing Singh’s infringement counterclaims based on collateral estoppel.
One month before Judge Atlas ruled on the parties’ motions for summary
judgment, TES filed a motion to hold Singh in contempt of the long-standing
injunction in the case pending before Judge Gilmore. Those proceedings went
ahead separately. We discuss them in more detail later. Because of the
5

Case: 13-20250

Document: 00513165585

Page: 6

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
complexity of the parallel proceedings, TES filed a motion to alter or amend
the judgment in order to ensure that the two proceedings would remain
separate. The district court denied the motion and TES then filed its initial
notice of appeal to this court.
Singh filed for reconsideration. In February 2014, the district court
denied the motion but clarified “that all issues related to Singh’s alleged
violation of the Permanent Injunction issued by Judge Gilmore were not
reached by this Court’s April 13 Memorandum and Order.” That ruling was in
response to TES’s request that the court confirm it had not addressed Singh’s
possible violations of the permanent injunction before Judge Gilmore.
Separately, Singh moved to dismiss his state-law infringement claims
against TES, which the district court granted without prejudice. The district
court entered its final judgment on February 21, 2014. Both parties appealed.
DISCUSSION
“This court reviews a district court’s grant of summary judgment de
novo, applying the same standards as the district court.” Barker v. Hercules
Offshore, Inc., 713 F.3d 208, 212 (5th Cir. 2013) (citation and quotation marks
omitted). Summary judgment is appropriate “if the movant shows that there
is no genuine dispute as to any material fact and the movant is entitled to
judgment as a matter of law.” FED. R. CIV. P. 56(a). “The applicability of
collateral estoppel is a question of law,” also reviewed de novo. Kariuki v.
Tarango, 709 F.3d 495, 506 (5th Cir. 2013).
I. TES’s Trademark Appeal
A. Standing
TES argues Singh has no standing to oppose its trademark registration.
It states that “whether the matter is viewed as a literal Article III injury and
6

Case: 13-20250

Document: 00513165585

Page: 7

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
redressability problem, a prudential ‘zone of interest’ analysis, or as the direct
effects of estoppel and bar, Singh’s opposition to TES’s application based on his
own asserted rights and use of the same mark should not have been
entertained.” Thus, Singh’s opposition to TES’s registration should have been
dismissed because he had previously lost on the secondary meaning issue.
The district court rejected this argument: “The court notes specifically
that Singh is not permanently enjoined from claiming the trademark, only
from ‘pursuing registration’ of the trademark. There is no injunction in place
that precludes Singh from claiming common law trademark protection . . . .”
We agree. This court in Testmasters II vacated the injunction “insofar
as it enjoins Singh from opposing or interfering with TES’s contention that it
has rights to the TESTMASTERS mark outside of Texas . . . .” Testmasters II,
428 F.3d at 580. Singh has standing.
B. Secondary Meaning Claim
TES’s primary contention on appeal is that the district court erred in
concluding that it had failed to demonstrate that its use of the mark has
acquired secondary meaning in “unrestricted geographic and subject matter
areas.”
“In order to be registered as a trademark, a mark must be capable of
distinguishing the applicant’s goods from those of others, or stated another
way, a mark must be distinctive.” Id. at 566 (citation and internal quotation
marks omitted). “A mark is inherently distinctive if by its intrinsic nature the
mark serves to identify the particular source of the product.” Id. “Descriptive
marks are marks that denote a characteristic or quality of an article or service,
such as its color, odor, function, dimensions, or ingredients.” Id. (citation and
internal quotation marks omitted). Descriptive marks cannot be protected
unless they acquire distinctiveness through secondary meaning. Id.
7

Case: 13-20250

Document: 00513165585

Page: 8

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
“Secondary meaning occurs 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) (citation and internal
quotation marks omitted). “A mark has acquired secondary meaning when it
has come through use to be uniquely associated with a specific source.” Id.
(citation and quotation marks omitted). This court uses the following sevenfactor test to determine whether a mark has acquired secondary meaning:
(1) length and manner of use of the mark or trade dress, (2) volume
of sales, (3) amount and manner of advertising, (4) nature of use of
the mark or trade dress in newspapers and magazines, (5)
consumer-survey evidence, (6) direct consumer testimony, and (7)
the defendant’s intent in copying the [mark].
Id. (citation and quotation marks omitted). “These factors in combination may
show that consumers consider a mark to be an indicator of source even if each
factor alone would not prove secondary meaning.” Id.
TES does not appeal the district court’s determination that “TES is
judicially estopped from asserting that the [m]ark is other than descriptive.”
Therefore, the only issue is whether the district court erred in concluding that
TES had failed to establish secondary meaning.
TES begins by arguing that the district court “should not have afforded
any weight to the TTAB’s holding” because the TTAB applied a “substantially
exclusive use” standard to evaluate secondary meaning instead of this court’s
seven-factor test. A review of the district court’s ruling reveals it did not rely
on the TTAB decision, but instead conducted its own review. This preliminary
argument is thus meritless.
TES next argues that the issue of secondary meaning should not have
been resolved on summary judgment because it presented overwhelming
evidence on each of the seven secondary meaning factors. First, with regard to
8

Case: 13-20250

Document: 00513165585

Page: 9

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
length and manner of use of the mark, TES noted that it has consistently used
the TESTMASTERS mark since it started doing business in 1991 in connection
with a wide range of test preparation courses. The district court explained that
the undisputed evidence showed that: (1) TES and Singh have both been in the
test preparation business “for many years,” (2) Singh first started using the
mark in California while TES first started using the mark in Texas, and (3)
Singh is the prior user of the mark for LSAT courses and TES is the prior user
of the mark for engineering exams.
As to the second factor, TES presented the district court with evidence
relating to its volume of sales, including evidence showing that it has: (1) held
thousands of live courses in 22 states, (2) earned tens of millions of dollars in
revenue between 2002 and 2011, and (3) enrolled students with home
addresses in 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. 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.
Next, TES contends that it put forth evidence showing that it has spent
over $100,000 on advertising each year since 1999. The district court properly
pointed out that the evidence showed that both parties advertised extensively;
TES’s advertising is directed primarily at engineering students while Singh’s
is directed primarily at students preparing for the LSAT.
With regard to the fourth factor, use of the mark in newspapers and
magazines, TES offered the following evidence: (1) TES has been the subject of
9

Case: 13-20250

Document: 00513165585

Page: 10

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
interviews on National Public Radio and the BusinessMakers Radio Show, (2)
TES’s president received media coverage after being named “Entrepreneur of
the Year” in 2012 by the Houston Asian Chamber of Commerce, (3) articles on
TES have appeared in The Asian Business Journal, (4) TES has advertised in
several newspapers, and (5) TES has a significant internet presence. The
district court acknowledged that TES has made a “sizeable investment in
website design” and uses the mark on its website. The court did not comment
on TES’s other evidence.
On the fifth factor, TES submitted evidence of a survey conducted by Dr.
Isabella Cunningham, Chair of the Department of Advertising and Public
Relations at the University of Texas. The survey polled 300 people who had
recently taken or were planning on taking engineering exams. Half of the
respondents were from Texas and the other half were from Arizona, Florida,
and South Carolina.

Of those interviewed, 50.7 percent stated that they

associated “Testmasters” with one company. The district court found TES’s
survey evidence “unpersuasive” for two reasons. First, though the respondents
stated that they identified “Testmasters” with one company, they did not
identify which company. The district court concluded that the “one company”
could have been Singh “or any company other than TES . . . .” Second, the
court noted that the survey was flawed because it was directed only at people
taking engineering exams and half of those polled were from Texas. The court
explained that TES has exclusive use of the TESTMASTERS mark in Texas
and it is, therefore, “not surprising that where half the survey respondents are
in Texas, half the survey respondents would recognize the name ‘Testmasters’
and associate it with ‘one company’. . . .”

These observations are valid

characterizations of the survey.
TES’s evidence on the sixth factor, direct consumer testimony, included:
(1) thousands of letters and e-mails from satisfied customers, (2) statements
10

Case: 13-20250

Document: 00513165585

Page: 11

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
from individuals explaining that they identify TESTMASTERS solely with
TES, (3) thousands of evaluation forms submitted by customers, and (4)
evidence of referral fees paid to former students.

The district court

acknowledged TES’s evidence of consumer views, but, as with the survey
evidence, found it unpersuasive because it was primarily from engineering
students.

Singh also presented consumer-testimony evidence showing

“confusion by persons registering for TES’s LSAT preparation course believing
they were registering for Singh’s course.” The court correctly concluded that
“[e]ach party’s evidence shows that, in its strongest subject matter area, it is
well-known and there may be some consumer confusion.”
On the seventh and final factor, the defendant’s intent in copying the
mark, TES contended that Singh has continued to use the mark in spite of
repeated judicial determinations. TES also asserted that it has sought to avoid
consumer confusion by having all customers enrolled in its LSAT course sign
a form disclosing Singh’s existence, but Singh has made no similar effort. The
district court concluded that there is no evidence of copying, as the record
establishes that Singh was using the mark in California before TES began
using it in Texas.
TES contends that the district court’s “fundamental error was its failure
to evaluate the evidence of secondary meaning introduced by TES
independently of Singh’s competing and . . . entirely improper effort to show
that the mark had instead developed secondary meaning as to his LSAT
classes.” Thus, TES asserts that the district court should have analyzed the
secondary meaning issue without considering any evidence introduced by
Singh. To the extent this argument arises from the contention that Singh does
not have standing to oppose its registration claim, we have already rejected
that argument. TES provides no authority indicating that the district court
was required to consider its evidence of secondary meaning in a vacuum. The
11

Case: 13-20250

Document: 00513165585

Page: 12

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
court’s role at the summary judgment stage was to determine whether there
was a genuine dispute of material fact regarding the existence of secondary
meaning. “In assessing a claim of secondary meaning, the major inquiry is the
consumer’s attitude toward the mark.”

Zatarains, Inc. v. Oak Grove

Smokehouse, Inc., 698 F.2d 786, 795 (5th Cir. 1983), abrogated on other
grounds by KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S.
111 (2004). “The mark must denote to the consumer a single thing coming
from a single source . . . .” Id. (citations and quotation marks omitted). Given
this fundamental inquiry, which required the court to determine whether TES
had raised a dispute of fact as to whether consumers associate the mark with
only its company, we find no error in the district court’s consideration of
evidence presented by both parties in conducting its analysis.
As to TES’s assertion that its evidence was more than sufficient to
survive summary judgment, we disagree. What TES needed to show was that
the mark had “secondary meaning on a nationwide basis for all test
preparation courses.” Instead, the evidence indicated, at most, that the mark
has acquired a secondary meaning for professional engineering examinations.
It did not show that the mark had a secondary meaning for any other, much
less all, test preparation services. We agree that TES’s evidence did not show
that consumers associate the mark solely with TES with respect to all test
preparation services.
The district court conducted a thorough analysis of each of the seven
factors and did not, as TES contends, assign inadequate weight to its evidence.
TES has not raised a factual dispute regarding the existence of secondary
meaning.

12

Case: 13-20250

Document: 00513165585

Page: 13

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
C. Singh’s State-Law Counterclaims
TES urges that the district court erred in granting Singh’s motion to
dismiss his state-law counterclaims without prejudice under Federal Rule of
Civil Procedure 41(a)(2).
Motions for voluntary dismissal generally “should be freely granted
unless the non-moving party will suffer some plain legal prejudice other than
the mere prospect of a second lawsuit.” Elbaor v. Tripath Imaging, Inc., 279
F.3d 314, 317 (5th Cir. 2002). “Therefore, faced with a Rule 41(a)(2) motion
the district court should first ask whether an unconditional dismissal will
cause the non-movant to suffer plain legal prejudice. If not, it should generally,
absent some evidence of abuse by the movant, grant the motion.” Id. In
granting the motion, the district court explained that TES had not alleged any
potential prejudice other than the prospect of additional litigation.
We find no error in the district court’s grant of Singh’s Rule 41 motion
for voluntary dismissal.
II. Singh’s Trademark Cross-appeal
A. Collateral Estoppel
Singh contends that the district court erred in applying the doctrine of
collateral estoppel.

In Testmasters I, this court held that Singh failed to

establish that his mark had acquired secondary meaning. See 46 F. App’x at
*5. In Testmasters II, Singh again tried to litigate the secondary meaning
issue. See 428 F.3d at 570–76. This court held that the second suit was barred
by collateral estoppel. See id. at 576. Singh tried once more in Testmasters III;
this court again held that Singh’s claim was barred. See 274 F. App’x at 404.
Now, Singh argues that he is no longer barred by collateral estoppel because
there has been a “significant intervening factual change.”
13

Case: 13-20250

Document: 00513165585

Page: 14

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
“Collateral estoppel precludes a party from litigating an issue already
raised in an earlier action between the parties only if: (1) the issue at stake is
identical to the one involved in the earlier action; (2) the issue was actually
litigated in the prior action; and (3) the determination of the issue in the prior
action was a necessary part of the judgment in that action.” Testmasters II,
428 F.3d at 572. In Testmasters II, we recognized an exception for instances
in which there has been a “significant intervening factual change.” See id. at
572–76.

We identified two cases in which we had allowed the issue of

secondary meaning to be re-litigated. See id. at 573 (citing Tex. Pig Stands,
Inc. v. Hard Rock Café Int’l, Inc., 951 F.2d 684 (5th Cir. 1992); Cont’l Motors
Corp. v. Cont’l Aviation Corp., 375 F.2d 857 (5th Cir. 1967)).
Texas Pig Stands involved litigation between two restaurants, Texas Pig
Sandwich and Hard Rock Café, over rights to the term “pig sandwich.” 951
F.2d at 687. Texas Pig, who had registered the term, sued Hard Rock for
infringement. Id. at 688. After a jury found Hard Rock guilty of deliberate
infringement, it appealed to this court, claiming that Texas Pig was collaterally
estopped from claiming that “pig sandwich” was a valid trademark. Id. at 689.
Hard Rock relied on a 1930 Texas state court decision involving Texas Pig’s
predecessor, Pig Stands, Inc., in which the court held that “pig sandwich” had
not acquired secondary meaning.

Id. at 690.

argument and allowed re-litigation of the issue.

We rejected Hard Rock’s
Id.

We explained that

although the term did not have secondary meaning in 1930, it could eventually
acquire secondary meaning. Id. The Texas Pig Stands decision was based in
part on this court’s earlier decision in Continental Motors, “which held that in
the interim between initiation of [an] action and a prior decision on the same
question, the mark at issue had acquired secondary meaning because of [a]
‘change in economic fact,’ which had created in the public an image of the mark
14

Case: 13-20250

Document: 00513165585

Page: 15

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
as associated with its source.”

Testmasters II, 428 F.3d at 573 (citing

Continental Motors, 375 F.2d at 862).
In Testmasters II, we explained that, unlike in Texas Pig Stands and
Continental Motors, Singh had not alleged a “significant intervening factual
change.” Id. at 576. We declined to hold that a specific number of years must
pass before secondary meaning may be re-litigated, but we also held that Singh
had failed to allege a “set of facts that would suggest that there has been a
change in the minds of the public in the relevant geographic area such that
they could immediately associate the ‘TESTMASTERS’ mark with his test
preparation corporation.” Id.
Singh now argues that, after 13 more years, his “allegations and evidence
show dramatic changes in every factor relevant to the secondary meaning
analysis” and he has thus met his burden of demonstrating an intervening
factual change to justify re-litigation of secondary meaning. In particular,
Singh notes that his annual revenues have increased from just over $3 million
in 2001 to an average of $14 million between 2008 and 2010. Singh also notes
that he has greatly expanded his advertising and has received “extensive
media exposure.” Furthermore, in 2009, Singh’s expert conducted a survey,
which showed that 58.1 percent of all students taking an LSAT course were
aware of Singh’s TESTMASTERS mark. Singh also suggests that the growth
of the internet since 2001 is “dramatic” and “significant” and customer
confusion between TES and Singh has since “become epidemic.” Finally, Singh
argues that the district court erred in holding that there are no special
circumstances that warrant reconsideration of the secondary meaning issue.
The district court concluded that Singh’s “business-growth” argument
was insufficient.

The court also rejected Singh’s argument regarding his

increased internet presence. Finally, the court held that a sufficient amount
of time had not yet passed.
15

Case: 13-20250

Document: 00513165585

Page: 16

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
We find no error in the district court’s application of collateral estoppel.
A “significant intervening factual change” must be shown.

Evidence of

increased business success alone is insufficient to show a significant
intervening change. Id. Instead, Singh must provide evidence showing “a
change in the minds of the public . . . such that they could immediately
associate the ‘TESTMASTERS’ mark with his [business].” Id. He has again
provided no such evidence. He also has not shown any special circumstances
warranting re-litigation.
B. Related Goods and Services
Singh next argues that the district court ignored the “doctrine of related
goods and services.”

In applying collateral estoppel, the district court

concluded that “Singh’s infringement counterclaims are based on Singh’s
position that its use of the [m]ark has acquired secondary meaning nationwide
(except Texas) for all preparation courses for all standardized tests in all
subject matter areas.” Singh argues that this characterization of the pleadings
is incorrect. Instead, he argues that his pleadings, fairly interpreted, included
claims that he had “protectable rights” in the mark nationwide and had
established secondary meaning by virtue of his dominance in the LSAT
preparation market. According to him, “[b]y requesting protection for test
preparation goods and services generally, [he] did not become obligated to
separately prove secondary meaning in each division of the industry.”
It is true that if a party has a valid trademark, infringement occurs when
someone else uses the same mark for related goods and services when such use
could lead to confusion in either of two ways: “(1) likelihood of confusion as to
the ‘affiliation, connection or association’ of one person or entity with another
or (2) likelihood of confusion as to the ‘origin, sponsorship or approval’ of one
entity’s goods or services with those of another.” 4 J. THOMAS MCCARTHY,
16

Case: 13-20250

Document: 00513165585

Page: 17

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 24.6 (2014) (citations
omitted). The two users of the mark do not even need to be competitors as to
the specific product so long as the possibility of confusion in one of these ways
would arise. Id.; see also Elvis Presley Enters., Inc. v. Capece, 141 F.3d 188,
202 (5th Cir. 1998).
Regardless of whether the district court’s characterization of this part of
Singh’s pleadings was correct, collateral estoppel still applies. Because Singh
has not shown the necessary association by the public of the mark with his
business, the doctrine of related goods and services does not offer Singh a way
to escape the preclusive effects of the prior judgment.
C. Limited Trademark
Finally, Singh argues that the district court erred in failing to hold, sua
sponte, that the mark has acquired secondary meaning with respect to LSAT
courses. The district court noted that “[i]t is conceivable that Singh would not
be collaterally estopped from asserting and presenting evidence on the
different, more narrow, issue that its use has acquired secondary meaning for
LSAT preparation courses. Singh has not indicated any interest, however, in
pursuing a more narrow claim.” According to Singh, even though he had not
“indicated any interest . . . in pursuing” the more narrow claim, the court
should have sua sponte ruled on the issue.
In his motion for reconsideration, Singh argued that the issue had been
tried by implied consent, and regardless, he should be allowed to amend his
pleadings to allege this claim.

The district court denied the motion for

reconsideration, providing detailed reasons.

On appeal, Singh makes a

conclusory argument without addressing any aspects of the district court’s
opinion. He has therefore waived review of this argument. See United States
v. Scroggins, 599 F.3d 433, 446–47 (5th Cir. 2010).
17

Case: 13-20250

Document: 00513165585

Page: 18

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
III. Contempt Appeal
This consolidated case also includes an appeal of several contempt orders
entered by the district court, in the proceeding before Judge Gilmore, against
Singh and his lawyer, Daniel Sheehan.
The contempt orders stem from the permanent injunctions entered by
the district court in 2003 and 2004.

In 2003, the court issued an order

permanently enjoining Singh from: (1) pursuing federal registration of the
TESTMASTERS mark in the PTO, (2) interfering with or opposing TES’s
application for federal registration of the TESTMASTERS mark, and (3) using
the mark within or directing use of the mark at the state of Texas. In 2004, in
response to TES’s claims that Singh had engaged in repeated harassment, the
district court issued a new injunction, which largely reiterated the first but
also “enjoined Singh from communicating directly with, threatening, or
harassing [TES], its employees, its staff, or TES’s counsel, counsel’s employees,
or counsel’s staff.” The district court warned Singh that he should abide by the
injunction “this time to avoid the future risk of sanctions by this Court against
him and his counsel.”
Singh challenged the injunction before this court in Testmasters II. We
reversed the injunction insofar as it enjoined Singh from directly
communicating with TES, but affirmed insofar as it barred Singh from
threatening or harassing TES and its employees. See 428 F.3d at 580.
According to TES, Singh was undeterred by the injunction and continued
his “campaign of terror.” TES provides examples of alleged violations. Among
these, Singh: continued to advertise in Texas, instructed employees to post
negative comments about TES on various websites, and aided in the posting of
defamatory videos online. One posting referenced a state-court paternity suit
involving TES’s founder, Haku Israni; the posting labeled Israni a “deadbeat
dad” and mentioned the minor child involved in the suit by name.
18

Case: 13-20250

Document: 00513165585

Page: 19

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
In March 2013, TES filed a motion for order to show cause, arguing that
Singh’s actions constituted harassment in violation of the injunction.

A

contempt hearing was held on May 16 and 17. Singh was not required to
attend the hearing. On May 16, Sheehan appeared on Singh’s behalf. Sheehan
argued that: (1) the postings were protected by the First Amendment, and
regardless, (2) the injunction did not prohibit such postings. The court asked
Sheehan whether he had ever discussed removing the postings with Singh.
Sheehan responded that he could not answer that because of the attorneyclient privilege. In response, the court informed Sheehan that he would be
incarcerated in an effort to coerce Singh to remove the postings. Sheehan was
handcuffed by the United States Marshals and escorted to a federal detention
center in Houston. Later that day, Sheehan’s associate began working with
Singh to remove the postings. After being informed of these efforts, the court
had Sheehan released from custody. The court ordered Sheehan to appear the
next day. At the May 17 hearing, the court acknowledged Singh’s progress
toward remedying the contempt. The court then issued a series of orders
instructing Singh to remove the harassing publications. The court ordered
that Sheehan not be re-incarcerated but reserved the right to continue
monitoring Singh’s efforts.
On May 24, TES filed a motion requesting additional contempt sanctions
against Singh. The district court granted the motion in part and ordered Singh
to publish a “remedial posting” on “ripoffreport.com” in response to the
“deadbeat dad” post he had previously made. The order required Singh to post,
in part, that he “would now like to retract his prior complaint.”
Along with its March 2013 contempt motion, TES filed a motion to file
under seal. TES claimed the conduct giving rise to the contempt motion
included willful violations of a Texas state court sealing order. The district
court ordered the record of the contempt proceedings sealed, but gave no
19

Case: 13-20250

Document: 00513165585

Page: 20

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
written reasons. On May 31, Singh filed a motion to unseal the records. Singh
later discovered the state-court records were not actually sealed as TES had
claimed; he amended the motion to unseal to disclose that fact. In May 2014,
Judge Gilmore “unequivocally denied” the motion, noting that it was
“scurrilous” and that she “fe[lt] inclined to impose sanctions.”
We review a finding of contempt for abuse of discretion but not in a
perfunctory way. Hornbeck Offshore Servs., L.L.C. v. Salazar, 713 F.3d 787,
792 (5th Cir. 2013). “Facts found by the district court will be accepted as true
unless clearly erroneous, but the interpretation of the scope of the injunctive
order[ ] is a question of law to be determined by the independent judgment of
this Court.” Id. (citation and internal quotation marks omitted). We review a
district court’s decision to seal a judicial record for abuse of discretion. United
States v. Holy Land Found. For Relief & Dev., 624 F.3d 685, 689 (5th Cir. 2010).
“Whether an alleged contemnor was afforded due process is a question of law
we review de novo.” Waste Mgmt. of Wash., Inc. v. Kattler, 776 F.3d 336, 339
(5th Cir. 2015).
Singh and Sheehan have filed separate briefs, raising distinct issues.
A. Singh’s Appeal
1. First Amendment Claims
Singh argues that the district court erred by holding him in contempt for
exercising his First Amendment rights. He contends that the district court
erred both by: (1) finding him in contempt for posting truthful information
online intended to alert consumers to “a scam perpetrated by TES” and (2)
ordering him to post a remedial statement.

20

Case: 13-20250

Document: 00513165585

Page: 21

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
a. Internet Postings
First, Singh argues that the internet postings are protected by the First
Amendment. This is the second time Singh has challenged the injunction on
First Amendment grounds before this court. In Testmasters II, we rejected
Singh’s argument that the injunction’s prohibition on harassment violated the
First Amendment, explaining:
Courts have made a distinction between communication and
harassment. The difference is one between free speech and
conduct that may be proscribed. Although restrictions based upon
conduct may incidentally restrict speech, the courts have found
that such a restriction poses only a minimal burden on speech.
Thus the courts do have the power to enjoin harassing
communications. Courts also have the power to enjoin repeated
invasions of privacy.
428 F.3d at 580 (internal citations omitted).

We determined that “[t]he

cantankerous relationship between these parties is clearly evident from the
record in this case,” and “[t]here is enough evidence presented in the record to
justify an injunction order prohibiting Singh from threatening or harassing
TES, its employees, its staff, TES’s counsel, counsel’s employees, or counsel’s
staff.” Id. We concluded that the injunction went too far by prohibiting all
communications between the parties’ attorneys and employees, but upheld its
restriction on harassing and threatening conduct. Id.
Singh acknowledges that this court recognized a “fundamental difference
between harassing conduct and free speech” in Testmasters II. But Singh
argues that the conduct described previously by this court involved direct
interactions between parties, while the conduct here was merely published for
third parties to view. Thus, Singh contends, the conduct at issue here does not
fall outside the purview of the First Amendment.
The district court correctly concluded that the relevant conduct is
governed by the injunction.

Because this court has already upheld the
21

Case: 13-20250

Document: 00513165585

Page: 22

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
injunction’s prohibition on harassing conduct, we need not reach Singh’s
various constitutional arguments.

Under Singh’s interpretation of the

injunction, he could post harassing comments about TES anywhere on the
internet and it would not constitute harassment as long as he did not directly
communicate with TES or its staff. Singh provides no law in support of this
argument and his interpretation defeats the purpose of the injunction, which
is to protect TES from harassment.
b. Remedial Statement
Singh also appeals the district court’s order requiring him to publish the
following remedial statement online at ripoffreport.com:
Robin Singh and Robin Singh Educational Services previously
posted on March 25, 2010, a Complaint Review of Dr. Haku Israni
and his website testmasters.com. Singh and Dr. Israni were
involved in litigation at that time and Singh would now like to
retract his prior complaint. No credence should be paid to that
complaint or any of its contents.
The district court ordered that this statement be posted in response to Singh’s
original “deadbeat dad” posting, which discussed the state court paternity suit
involving Israni.
Singh contends that this order violates his First Amendment right “not
to speak.” He explains that the district court required him to “say things that
simply are not true” because he does not wish to retract his complaint about
Israni and believes credence should be paid to his comments.
We conclude that Singh’s statements constitute commercial speech.
“Commercial speech is ‘expression related solely to the economic interests of
the speaker and its audience.’” White Buffalo Ventures v. Univ. of Tex. at
Austin, 420 F.3d 366, 374 (5th Cir. 2005) (quoting Cent. Hudson Gas & Elec.
Corp. v. Pub. Serv. Comm’n, 447 U.S. 557, 561 (1980)). Though the posting
22

Case: 13-20250

Document: 00513165585

Page: 23

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
focused solely on Israni’s personal life, Singh must have made it with the
economic interest of harming TES.
Having concluded that the speech was commercial, the question becomes
whether the remedial statement was appropriate.

When regulations are

directed at deceptive or misleading commercial speech and require a disclosure
rather than a “flat prohibition[]” on speech, the Supreme has created a
standard to gauge the regulation.

See Zauderer v. Office of Disciplinary

Counsel of the Supreme Court of Ohio, 471 U.S. 626, 651 (1985).

Under

Zauderer, a required disclosure need only be “reasonably related to the
[government’s] interest in preventing deception of consumers.” Id.
This standard applies because Singh’s original posting was deceptive.
The district court’s order was reasonably related to its interest in preventing
consumer deception by correcting the misleading information. The analysis is
complicated by Singh’s argument that the required disclosure was “false”
because it says he would “like” to retract the statements. We see no relevant
falsehood. Whether Singh enjoyed taking this medicine is an insignificant
question of phrasing.
2. Injunction’s Prohibitions
Singh asserts that the injunction prohibiting harassment was too vague
to put him on notice that he was prohibited from “speaking about matters of
public concern.” A party may be held in civil contempt of an injunction order
if there is clear and convincing evidence that: (1) the injunction was in effect
at the time of the allegedly contemptuous conduct, (2) the injunction neither
vaguely nor ambiguously required the party to perform or abstain from certain
conduct, and (3) the party failed to comply with the injunction’s requirements.
Oaks of Mid City Resident Council v. Sebelius, 723 F.3d 581, 585 (5th Cir.
2013). A party can only be held in contempt for violating “a definite and specific
23

Case: 13-20250

Document: 00513165585

Page: 24

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
order of the court requiring him to perform or refrain from performing a
particular act . . . .” Hornbeck, 713 F.3d at 792 (citation and quotation marks
omitted).
The original injunction prohibiting harassment was a result of TES’s
allegations that Singh, among other things, made harassing phone calls to TES
dozens of times a day, confronted TES’s counsel outside a courtroom, and
allowed his attorney and other employees to obtain billing and insurance
information about TES under false pretenses. He contends that none of the
alleged conduct that resulted in the injunction had anything to do with his
internet postings, which were made to “combat consumer confusion.” Further,
there was never any indication prior to the May hearing that the antiharassment injunction limited his “right to free speech.” Moreover, according
to Singh, this court’s reversal of part of the injunction in Testmasters II made
it reasonable for him to believe “that his right to speak publicly about TES
remained intact.”
We disagree. A district court enjoys “a degree of flexibility in vindicating
its authority against actions that, while not expressly prohibited, nonetheless
violate the reasonably understood terms of the order.” Id. The district court
was within its discretion in finding Singh’s actions were harassment in
violation of the injunction. Singh’s argument is meritless.
3. Sealed Records
Singh next argues that the district court abused its discretion by sealing
the record of the contempt proceedings. The public has a common-law right to
inspect and copy judicial records. S.E.C. v. Van Waeyenberghe, 990 F.2d 845,
848 (5th Cir. 1993) (citations omitted). That right “is not absolute.” Id. “Every
court has supervisory power over its own records and files, and access has been
denied where court files might have become a vehicle for improper purposes.”
24

Case: 13-20250

Document: 00513165585

Page: 25

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
Id. (citation and quotation marks omitted). Examples of an improper purpose
recognized by the Supreme Court include using records “to gratify private spite
or promote public scandal . . . .” Nixon v. Warner Commc’ns., Inc., 435 U.S.
589, 598 (1978) (citations and quotation marks omitted).
In exercising its discretion, a district court must “balance the public’s
common law right of access against the interests favoring nondisclosure.” Van
Waeyenberghe, 990 F.2d at 848. In Van Waeyenberghe, we held that a district
court abused its discretion by sealing judicial records. Id. at 849. We reversed
based on a lack of “evidence in the record that the district court balanced the
competing interests prior to sealing the final order.” Id. TES wanted the
records sealed in anticipation of Singh’s “republish[ing] the descriptions of his
harassing conduct and the evidence attached thereto, invoking the public’s
common law right to inspect and copy court records in an attempt to avoid
liability under the 2004 injunction and this Court’s judgments . . . .” TES
claims the sealing was necessary to avoid further damage.
Singh argues that, like in Van Waeyenberghe, the district court abused
its discretion by failing to balance the competing interests prior to sealing the
relevant records. The argument is unconvincing. Though the district court did
not conduct an on-the-record analysis, we find it implicit in the record that
such an analysis was made. The district court has an extensive history with
these parties and is uniquely familiar with the facts of the case. We do not see
that the district court abused its discretion in sealing records that might have
been used for improper purposes.
4. Reassignment
Singh and Sheehan both argue that we should reassign the case being
handled by Judge Gilmore to a different district judge for future proceedings.
See 28 U.S.C. § 2106.

Ordering reassignment of a case is an “extraordinary
25

Case: 13-20250

Document: 00513165585

Page: 26

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
power that is rarely invoked.” In re DaimlerChrysler Corp., 294 F.3d 697, 700
(5th Cir. 2002) (citation and internal quotation marks omitted). Two tests help
us resolve issues of reassignment.

See id. at 700–01.

First, we consider

whether the facts “might reasonably cause an objective observer to question
[the judge’s] impartiality.” Id. at 701 (citations and quotation marks omitted).
Second, we consider the following factors:
(1) whether the original judge would reasonably be expected upon
remand to have substantial difficulty in putting out of his or her
mind previously-expressed views or findings determined to be
erroneous or based on evidence that must be rejected, (2) whether
reassignment is advisable to preserve the appearance of justice,
and (3) whether reassignment would entail waste and duplication
out of proportion to any gain in preserving the appearance of
fairness.
Id. at 700–01 (citations omitted).
Singh provides numerous examples that, according to him, show that
Judge Gilmore has “anti-Singh” views and is unable to remain objective. Singh
made a similar argument in Testmasters II, which we rejected. See 428 F.3d
at 581–82.

There, we stated that “‘judicial rulings alone almost never

constitute a valid basis’ for finding bias or impartiality.” Id. at 581 (quoting
Liteky v. United States, 510 U.S. 540, 555 (1994)).

We reviewed “the

substantial record that has accumulated over the course of these parties’ long
litigious relationship,” and concluded that “any district court might become
exasperated with both parties”; we therefore denied Singh’s request for
reassignment. Id.
We again decline to reassign this case to a different district judge.

26

Case: 13-20250

Document: 00513165585

Page: 27

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
B. Sheehan’s Appeal
1. Due Process
Sheehan contends that the district court violated his right to due process
by failing to provide him with proper notice and an adequate opportunity to
respond. He argues that the show cause order, which named only Singh, was
insufficient to provide him notice that he could potentially be held in contempt.
“In general, due process requires that one charged with contempt of court be
advised of the charges against him, have a reasonable opportunity to meet
them by way of defense or explanation, have the right to be represented by
counsel, and have a chance to testify and call other witnesses.”

Waste

Management, 776 F.3d at 339–40 (citation and internal quotation marks
omitted).
Waste Management involved a due-process argument similar to that
made by Sheehan here. See id. at 339–41. There, an attorney held in contempt
argued that he had not been afforded adequate due process. Id. at 339. The
motion to show cause listed the client “as the sole potential contemnor whose
liability was to be addressed at the hearing.” Id. We vacated the contempt
order, holding that the notice was insufficient: “This notice did not signal to
[the attorney] that he could be found in contempt because it identified [the
client] alone as the party whose contempt liability was to be adjudicated.” Id.
at 340. “Adequate notice typically takes the form of a show-cause order and a
notice of hearing identifying each litigant who might be held in contempt.” Id.
at 340 & n.12 (citing McGuire v. Sigma Coatings, Inc., 48 F.3d 902, 907 (5th
Cir. 1995) (explaining that show-cause notice must put the potential
contemnor on notice that sanctions “were being considered against him
personally”)).
Sheehan, similarly, was not provided adequate due process. He had no
notice that he may potentially be held in contempt. In Waste Management, we
27

Case: 13-20250

Document: 00513165585

Page: 28

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
vacated the contempt order, but went on to examine the merits of the contempt
finding. See id. at 340–41. We do the same here.
2. Contempt Finding
Sheehan argues that the district court erred by finding him in contempt.
A party may be held in civil contempt of an injunction order if there is clear
and convincing evidence that: (1) the injunction was in effect at the time of the
allegedly contemptuous conduct, (2) the injunction neither vaguely nor
ambiguously required the party to perform or abstain from certain conduct,
and (3) the party failed to comply with the injunction’s requirements. Oaks of
Mid City, 723 F.3d at 585 (citations omitted).

In a contempt proceeding,

evidence is clear and convincing if it “produces in the mind of the trier of fact
a firm belief or conviction as to the truth of the allegations sought to be
established . . . .” Id. (citation and quotation marks omitted).
Sheehan argues that under this stringent standard, the evidence does
not show clearly or convincingly that he “did anything that the injunction
orders prohibited or failed to do something that the injunction orders required.”
The relevant section of the injunction prohibited Singh from harassing TES.
Sheehan concedes that this prohibition was also binding on him as Singh’s
attorney, but he urges that there is no evidence that he engaged in any of the
conduct at issue.
Sheehan explains that the district court mentioned four bases for finding
him in contempt: (1) for espousing positions unsupported by law, (2) for failing
to tell his client that he might violate the injunction by posting materials
online, (3) for assisting Singh by convincing him that he was entitled to First
Amendment protection, and (4) because an attorney can be responsible for his
client’s conduct. Sheehan argues that the first three bases cannot support a
finding of contempt because there is still no evidence that he violated the
28

Case: 13-20250

Document: 00513165585

Page: 29

Date Filed: 08/21/2015

No. 13-20250 c/w 13-20327; 14-20113
injunction. The fourth basis fails because vicarious liability does not allow an
agent to be held responsible for the actions of his principal.
There was not clear and convincing evidence upon which to find that
Sheehan violated the injunction’s requirements. We accept that the injunction
was binding on Sheehan as Singh’s attorney, but there was insufficient
evidence to find that he personally violated the injunction.

We therefore

conclude that the district court abused its discretion by finding Sheehan in
contempt. 2
This case demonstrates how open our courts are to litigants, so open as
at times to lead to questionable litigation. This controversy has been before
the district courts and this court four times. The parties are reminded that
access to our courts is not unlimited. Litigation over a controversy must
eventually come to an end. Further attempts to re-litigate issues related to
this controversy without a substantial justification for renewing the quarrel
may subject the litigants to sanctions. We VACATE the contempt findings as
to Sheehan. We AFFIRM in all other respects. 3

Sheehan also contends that “apart from whether [he] violated any aspect of the
injunction orders, there remains the question whether the district court abused its discretion
in ordering him to be incarcerated for up to five days or until Singh removed the [i]nternet
postings.” Having concluded that the district court erred in holding Sheehan in contempt,
we find it unnecessary to reach that issue.
3 All pending motions are DENIED.
2

29