IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 14-20473

TEST MASTERS EDUCATIONAL SERVICES, INCORPORATED, 

 Plaintiff - Appellant

v.

STATE FARM LLOYDS, 

 Defendant - Appellee

Appeal from the United States District Court

for the Southern District of Texas

Before BARKSDALE, SOUTHWICK, and HIGGINSON, Circuit Judges.

STEPHEN A. HIGGINSON, Circuit Judge:

Test Masters Educational Services, Inc. (“TES”) filed this lawsuit against 

State Farm Lloyds, requesting a declaratory judgment that State Farm owes

TES a duty to defend. The district court granted summary judgment in favor 

of State Farm. For the reasons articulated below, we AFFIRM.

FACTS AND PROCEEDINGS

The underlying lawsuit in this duty-to-defend appeal is the latest in an 

ongoing series of lawsuits involving TES and Robin Singh Educational 

Services, Inc. (“Singh”).1 Both TES and Singh provide test preparation 

services, and both use the trade name or service mark “Testmasters.” TES’s

 

1 TES and Singh have been suing each other for over a decade. See, e.g., Test Masters 

Educ. Servs., Inc. v. Singh, 46 F. App’x 227, 2002 WL 1940083 (5th Cir. July 24, 2002) (per 

curiam); Test Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559 (5th Cir. 2005).

United States Court of Appeals

Fifth Circuit

FILED

June 29, 2015

Lyle W. Cayce

Clerk

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No. 14-20473

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corporate name is “Test Masters,” it uses the mark “Testmasters” on its 

website, and its website’s domain name is “testmasters.com.” Singh uses 

“TestMasters” as its trade name and service mark, and its website domain 

name is “testmasters.net.”

In the underlying lawsuit that triggered this appeal, TES sued Singh, 

alleging trademark infringement and various other claims. See Test Masters 

Educ. Servs., Inc. v. Robin Singh Educ. Servs., Inc., No. H-08-1771, 2013 WL 

1404816, at *4 (S.D. Tex. Apr. 5, 2013). Singh then filed counterclaims against 

TES. Singh’s original counterclaim alleged that TES’s website purported to 

offer live LSAT preparation courses across the country under the 

“Testmasters” name and mark, mimicked a map on Singh’s website, and made 

material misrepresentations about TES’s services to trick consumers into 

believing that TES’s services were associated with Singh’s. TES tendered the 

original counterclaims to State Farm, and State Farm, with a reservation of 

rights, agreed to pay for TES’s defense.

The State Farm policy in effect at the time provided liability coverage for 

“advertising injury” claims. “Advertisement[s]” included “notices that are 

published . . . on the Internet.” The policy’s definition of “advertising injury,”

in turn, included “injury arising out of . . . infringing upon another’s copyright, 

trade dress or slogan in your advertisement.” (emphasis added). Thus, the 

policy covered trade dress claims, but not trademark claims.

When State Farm initially provided a defense, it explained that it was 

providing coverage because Singh’s “counterclaim may allege facts sufficient 

to indicate trade dress infringement.” In its original counterclaims, Singh 

alleged that TES’s website contained a clickable map image of the United 

States that “mimicked” a map on Singh’s website. Singh, however, filed an 

Amended Counterclaim that removed all allegations related to the map. After 

it reviewed the Amended Counterclaim, State Farm withdrew its defense, 

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claiming that the Amended Counterclaim did not allege trade dress 

infringement, and instead only alleged trademark infringement.

TES then filed a lawsuit against State Farm, requesting a declaratory 

judgment that State Farm has a duty to defend against Singh’s Amended 

Counterclaim. After the parties filed cross-motions for summary judgment, the 

district court granted State Farm’s summary-judgment motion and denied 

TES’s. This appeal timely followed.

STANDARD OF REVIEW

This court reviews a district court’s grant of summary judgment de novo, 

applying the same standards as the district court. Rogers v. Bromac Title 

Servs., L.L.C., 755 F.3d 347, 350 (5th Cir. 2014).

DISCUSSION

Texas law governs this diversity case. To determine whether an insurer 

has a duty to defend, Texas courts apply the eight-corners rule. “Under that 

rule, courts look to the facts alleged within the four corners of the [third-party 

plaintiff’s] pleadings, measure them against the language within the four 

corners of the insurance policy, and determine if the facts alleged present a 

matter that could potentially be covered by the insurance policy.” Ewing 

Constr. Co. v. Amerisure Ins. Co., Inc., 420 S.W.3d 30, 33 (Tex. 2014). When 

reviewing the pleadings, courts must focus on the factual allegations, not the 

asserted legal theories or conclusions. Id. Courts consider the factual 

allegations “without regard to their truth or falsity” and resolve “all doubts 

regarding the duty to defend . . . in the insured’s favor.” Id. Even if the 

underlying complaint only “potentially includes a covered claim, the insurer 

must defend the entire suit.” Zurich Am. Ins. Co. v. Nokia, Inc., 268 S.W.3d 

487, 491 (Tex. 2008) (emphasis added). “Thus, even if the allegations are 

groundless, false, or fraudulent the insurer is obligated to defend.” Id. (internal 

quotation marks, alteration, and citation omitted). “Courts may not, 

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however, (1) read facts into the pleadings, (2) look outside the pleadings, or 

(3) imagine factual scenarios which might trigger coverage.” Gore Design 

Completions, Ltd. v. Hartford Fire Ins. Co., 538 F.3d 365, 369 (5th Cir. 2008) 

(internal quotation marks and citation omitted); see also Nat’l Union Fire Ins. 

Co. of Pittsburgh, Pa. v. Merchants Fast Motor Lines, Inc., 939 S.W.2d 139, 142 

(Tex. 1997) (per curiam) (“We will not read facts into the pleadings.”). “The 

insured has the initial burden to establish coverage under the policy.” Ewing 

Constr. Co., 420 S.W.3d at 33.

TES’s insurance policy with State Farm covered trade dress—not 

trademark—claims. Thus, a central question in this appeal is: what is trade 

dress? “Trade dress” is distinct from a “trademark” or a “service mark.” See 

Int’l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822 (9th Cir. 1993) 

(contrasting trademarks and trade dress). Although the concepts often overlap, 

“trade dress protection is generally focused more broadly” than trademark 

protection. See 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair 

Competition § 8:1 (4th ed. 1996) [hereinafter McCarthy]. Under the Lanham 

Act, a “trademark” and a “service mark” include “any word, name, symbol, or 

device . . . used . . . to identify and distinguish [goods or services, respectively].” 

15 U.S.C. § 1127. Relatedly, a “trade name” means “any name used by a person 

to identify his or her business . . . .” Id. Thus, “Testmasters” is a company “trade 

name” and also a “service mark.” 

The Act does not define “trade dress,” but courts have filled that gap. The 

term “refers to the total image and overall appearance of a product and may 

include features such as the size, shape, color, color combinations, textures, 

graphics, and even sales techniques that characterize a particular product.” 

Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 251 (5th Cir. 2010) 

(internal quotation marks and citation omitted); see also KLN Steel Prods. Co.

v. CNA Ins. Cos., 278 S.W.3d 429, 441 (Tex. App. 2008) (“Trade dress . . . 

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consists of the total image of a product or service, including product features 

such as design, size, shape, color, packaging labels, [and] color 

combinations . . . .” (alterations in original) (internal quotation marks and 

citation omitted)). 

An unregistered trade dress may be protectable under section 43(a) of 

the Lanham Act if the trade dress is distinctive and nonfunctional. See TrafFix 

Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28–29 (2001); EppendorfNetheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 354–55 (5th Cir. 2002). 

When alleging a trade dress claim, the plaintiff must identify the discrete 

elements of the trade dress that it wishes to protect. See 1 McCarthy § 8:3; see 

also Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 116 (2d Cir. 2001) (“[W]e 

hold that a plaintiff seeking to protect its trade dress in a line of products must 

articulate the design elements that compose the trade dress.”). 

Courts have extended trade dress protection to the overall “motif” of a 

restaurant, see Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 765, 767 

(1992), and to the use of a lighthouse as part of the design for a golf hole, see 

Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 537, 539–42 (5th Cir. 1998), 

abrogated on other grounds by TrafFix Devices, Inc., 532 U.S. 23; see also 1 

McCarthy § 8:4.50 (citing additional examples of trade dress, including a 

magazine cover design, and the layout and appearance of a mail-order catalog). 

A growing number of courts have confronted whether trade dress protection 

can extend to websites, so-called “web dress” protection. See, e.g., Fair Wind 

Sailing, Inc. v. Dempster, 764 F.3d 303, 310 (3d Cir. 2014); see also 1 McCarthy 

§ 8:7.25 (discussing the possibility of “web dress” or “site dress” claims).

With this definition of “trade dress” in mind, we turn to the allegations 

in Singh’s Amended Counterclaim. To start, Singh cites section 43(a) of the 

Lanham Act, which encompasses trade dress infringement claims. See 15 

U.S.C. § 1125(a)(1); TrafFix Devices, Inc., 532 U.S. at 28–29; Eppendorf-

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Netheler-Hinz GMBH, 289 F.3d at 354. This provision, however, also covers a 

range of other claims, including trademark infringement and false 

advertising.2 Cf. Seven-Up Co. v. Coca-Cola Co., 86 F.3d 1379, 1383 (5th Cir. 

1996) (recognizing that section 43(a) “provides protection against a myriad of

deceptive commercial practices” (internal quotation marks and citation 

omitted)). More importantly, this statutory citation alone is not sufficient to 

trigger coverage. “[C]ourts look to the factual allegations showing the origin of 

the damages claimed, not to the legal theories or conclusions alleged.” Ewing 

Constr. Co., 420 S.W.3d at 33.

Next, TES highlights Singh’s allegation that “TES changed its website 

so that it was confusingly similar to Singh’s.” TES argues that this allegation, 

at the very least, introduces some uncertainty as to whether Singh was 

alleging a trademark or trade dress infringement claim. To be clear, the dutyto-defend standard requires the court to resolve all doubts and ambiguities in 

TES’s favor. Id.; Zurich Am. Ins. Co., 268 S.W.3d at 491. And it is possible that 

an allegation that TES is using a “confusingly similar” website could be the 

basis of a trade dress infringement claim. TES, however, does not read this 

allegation in its full context. This paragraph of Singh’s Amended Counterclaim 

alleges that “TES changed its website so that it was confusingly similar to 

 

2 Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1), provides protection against 

the use in commerce of:

any word, term, name, symbol, or device, or any combination thereof, or any 

false designation of origin, false or misleading description of fact, or false or 

misleading representation of fact, which—

(A) is likely to cause confusion, or to cause mistake, or to deceive . . . as 

to the origin, sponsorship, or approval of his or her goods, services, or 

commercial activities by another person, or 

(B) in commercial advertising or promotion, misrepresents the nature, 

characteristics, qualities, or geographic origin of his or her or another 

person’s goods, services or commercial activities . . . .

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Singh’s, purporting to offer LSAT preparation courses in every state, although 

TES had never before offered LSAT courses anywhere, and had never before 

offered any test preparation courses outside of the state of Texas.” Read in its 

entirety, the Amended Counterclaim focuses on factual misrepresentations on 

TES’s website, not on any alleged trade dress, or “look and feel,” in the website 

itself.3

The district court reached the same conclusion. The district court 

concluded that “[t]he Amended Counterclaims allege that [TES’s] website was 

‘confusingly similar’ to Singh’s because of the use of the Test Masters Mark 

and [TES’s] list of putative nationwide course locations, but does not allege any 

facts regarding any inherently distinctive ‘look and feel’—or ‘trade dress’—of 

the website.” The district court further emphasized that “[a]bsent some 

allegation of aesthetic similarity to another’s advertisement, a claim that 

defendant infringed a trademark does not itself comprise a claim for trade 

dress infringement.” We agree with the district court.

This analysis is consistent with the conclusion this court reached in 

America’s Recommended Mailers Inc. v. Maryland Casualty Co., 339 F. App’x 

467 (5th Cir. 2009) (per curiam). Like here, the insurance policy in that case 

had an identical definition of “advertising injury,” which covered trade dress 

claims, but not trademark claims. See id. at 468. The insured allegedly copied

the AARP logo in a direct mail advertising. Id. at 469. This court observed that 

using this logo was a trademark claim, not a trade dress claim. Id. As a result, 

this court affirmed the district court’s grant of summary judgment, holding 

 

3 At oral argument, TES contended that Singh’s earlier allegations about the clickable 

map were still in the case even though Singh had removed the map allegations from the 

Amended Counterclaim. TES provided no legal support for this argument, and we will not 

read allegations into the Amended Counterclaim that do not exist. See Gore Design 

Completions, Ltd., 538 F.3d at 369; Nat’l Union Fire Ins. Co. of Pittsburgh, Pa., 939 S.W.2d 

at 142.

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that there was no duty to defend. Id. at 469–70. Although America’s 

Recommended Mailers is not binding circuit precedent, this unpublished 

opinion is persuasive authority supporting the district court’s conclusion. See 

United States v. Weatherton, 567 F.3d 149, 153 n.2 (5th Cir. 2009). 

KLN Steel Products Co. v. CNA Insurance Cos., a case that TES cites, 

also supports the conclusion that Singh alleged a trademark—not a trade 

dress—infringement claim. 278 S.W.3d at 440–42. Again, KLN Steel

confronted a similar definition of “advertising injury” in the insurance policy—

it included trade dress, but not trademark, claims. Id. at 440. The underlying 

complaint alleged misappropriation of the dimensions and other design 

features of a bed. See id. at 442. The court explained that these allegations 

could not be read as pleading a trade dress claim triggering coverage because 

none of the features was alleged to be distinctive and nonfunctional. See id.

The same conclusion is true here. The term “trade dress” is not 

mentioned in Singh’s Amended Counterclaim, and there are no allegations

suggesting that Singh even has a protectable trade dress. For example, there 

are no allegations describing the content or overall image of Singh’s website. 

Moreover, an allegation that TES is using a “confusingly similar” website is 

not sufficient to trigger coverage. Consumer confusion is an element of both a 

trademark infringement claim and a trade dress infringement claim. See

TrafFix Devices, Inc., 532 U.S. at 28 (explaining that a trade dress “may not be 

used in a manner likely to cause confusion”); Nola Spice Designs, L.L.C. v. 

Haydel Enters., Inc., 783 F.3d 527, 536 (5th Cir. 2015) (recognizing that 

likelihood of confusion is an element of a trademark infringement claim). The 

central focus in this coverage dispute, however, is not on the confusion, but on 

what allegedly is causing the confusion. The alleged confusion in this case 

stems from the use of a similar service mark (“Testmasters”), and the false 

representation that TES offers a similar service (live LSAT courses offered 

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nationwide). None of the allegations possibly states a claim for confusingly 

similar trade dress.

In short, the factual allegations in Singh’s Amended Counterclaim do not 

potentially include a trade dress infringement claim. Instead, the Amended 

Counterclaim alleges trademark infringement and false advertising claims. 

Neither of those claims is covered under the policy. The district court was 

therefore correct to grant summary judgment in favor of State Farm. 

CONCLUSION

For the reasons stated above, we AFFIRM the judgment of the district 

court.

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