*

Pursuant to 5TH CIR. R. 47.5, the court has determined that this opinion should not be published and

is not precedent except under the limited circumstances set forth in 5TH CIR. R. 47.5.4.

IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 06-20951

ROBIN SINGH EDUCATIONAL SERVICES INC.

Plaintiff-Appellant

v.

EXCEL TEST PREP INC.

Defendant-Appellee

-------------------------------------------------------------------------------------------------

ROBIN SINGH EDUCATIONAL SERVICES INC.

d/b/a TestMasters

Plaintiff-Appellant

v.

EXCEL TEST PREP

Defendant-Appellee

Appeal from the United States District Court

for the Southern District of Texas

USDC No. 4:05-CV-1085

Before REAVLEY, SMITH, and DENNIS, Circuit Judges.

PER CURIAM:*

This case presents the third iteration of the plaintiff’s trademark claims

before this court. The underlying question is whether the plaintiff Robin Singh

United States Court of Appeals

Fifth Circuit

F I L E D

April 16, 2008

Charles R. Fulbruge III

Clerk
No. 06-20951

1 While our previous decisions regarding this trademark dispute involve Mr. Robin

Singh as an individual litigant and this action involves “Robin Singh Educational Services,

Inc.” as his incorporated business, Robin Singh notes in its brief that it “is not asserting the

change of identity as an issue in this case.” Collateral estoppel would still apply because there

is privity. See generally Meza v. Gen. Battery Corp., 908 F.2d 1262, 1266-67 (5th Cir. 1990).

We will treat the individual Mr. Robin Singh and his incorporated business as the same entity

for the purposes of this opinion. 

2 Since we review the district court’s conclusion that collateral estoppel bars this action

de novo and also conclude that this action, as a matter of law, is collaterally estopped, we do

not need to reach the plaintiff’s appeal of the district court’s denial of its recusal motion as it

is, at most, harmless. Since the issues are fully briefed, there is little to be gained by vacating

the decision and remanding it on recusal grounds. See United States v. O’Keefe, 128 F.3d 885,

892-93 & n.7 (5th Cir. 1997).

3 Facts in this section that relate to plaintiff’s two previous cases before this court are

found in Test Masters Educ. Servs. v. Singh, 46 F. App’x 227, 2002 WL 1940083 (5th Cir. Jul.

24, 2002) (unpublished) (“Test Masters I”) andTest Masters Educ. Servs. v. Singh, 428 F.3d 559

(5th Cir. 2005) (“Test Masters II”). 

2

Educational Services, Inc. (“Robin Singh”)1can assert again that it has

established rights to a trademark despite failing to do so on two prior occasions

against a different, but related, party. The district court concluded that the

collateral estoppel doctrine bars Robin Singh’s action. We agree and affirm.2

BACKGROUND3

Plaintiff-appellant Robin Singh does business under the name

TestMasters, which offers test prep services. Robin Singh operates out of

Beverly Hills. It began business in 1991, and through 1996 only offered courses

in California. It applied for federal registration of the trademark

“TESTMASTERS” on June 23, 1995. Robin Singh’s application was initially

denied, because the United States Patent and Trademark Office (“PTO”) found

three substantially similar marks that had already been registered. After

determining that none of the three marks were still in use, the PTO approved
No. 06-20951

3

Robin Singh’s application in March 1999 (No. 2,234,514). 

Unbeknownstto Robin Singh until 1999, in 1991, Haku Israni established

the Test Masters Educational Services, Inc. (“TES”). The company is also in the

test preparation business; it helps individuals pass or achieve higher scores on

standardized tests and professional licensing exams. TES has offered courses

continuously since 1992. In May 1994, Haku Israni incorporated the business,

making his son Vivek Israni its sole owner and president. Most courses are

taught in Houston, where the company is headquartered, but some have been

taught in other cities around Texas. The company has never taught any courses

outside Texas. TES established a website in 1995: “www.testmasters.com.” 

In 1999, Robin Singh decided to create his own website, but discovered

TES had the rights to the domain name for “TESTMASTERS.” Robin Singh

sued TES for trademark infringement under both federal and state law. After

a five-day trial, the jury found (1) the “TESTMASTERS” mark was a descriptive

mark that had a secondary meaning, sufficient to constitute a legally protected

trademark; and (2) TES infringed on the mark, but was immune, because it was

a prior innocent user. The district court ordered the PTO to modify the

trademark registration to permit TES to use the mark in Texas, and ordered

TES to transfer its rights to the domain name to Robin Singh. Both sides

appealed. In Test Masters I, this court concluded that Robin Singh presented

“little or no evidence regarding secondary meaning” and invalidated Robin

Singh’s trademark registration. 2002 WL 1940083, at *4. We vacated the

district court’s order. Id. at *5. Two days after the Test Masters I decision was

issued, on July 26, 2002, Robin Singh applied again to the PTO to register the

“TESTMASTERS” mark. In response, TES moved the district court to modify
No. 06-20951

4

Test Masters I’s final judgment to include a permanentinjunction against Robin

Singh barring it from registering the trademark and infringing upon TES’s

usage of the mark in Texas. About one year later, on July 11, 2003, the district

court granted TES’s motion and entered an order permanently enjoining Robin

Singh from (1) pursuing registration of the “TESTMASTERS” or “TEST

MASTERS” marks with the PTO; (2) interfering with or opposing TES’s

registration of the “TESTMASTERS” or “TEST MASTERS” marks with the PTO;

and (3) using the marks or any confusingly similar marks within Texas or

directed at Texas, including but not limited to uses via the Internet. No appeals

were taken. 

Before the district court issued its July 11 order, Robin Singh filed a

lawsuit against TES in the District Court of the Central District of California,

on June 23, 2003, alleging that TES was misusing the “TESTMASTERS”

trademark in California to mislead consumers into thinking that TES was

affiliated with Robin Singh through its website. The court transferred the action

to the Southern District of Texas which dismissed the case with prejudice

concluding that res judicata barred the new action because the action presented

the same operative set of facts as the operative facts in Test Masters I. The

district court also rejected Robin Singh’s contention that the “secondary

meaning” ofthe trademark needs to be re-litigated only sixteen months after the

Test Masters I decision. 

In its decision, the district court re-iterated the provisions of its July 11

order. It also enjoined Robin Singh from “communicating directly with,

threatening, or harassing Test Masters Educational Services, Inc., its employees,

staff, counsel, counsel’s employees, or counsel’s staff.” The district court ordered
No. 06-20951

5

Robin Singh to withdraw its still pending trademark registration application.

The district court denied TES’s motion for contempt and sanctions. Both parties

appealed. 

This court in Test Masters II affirmed the district court’s judgment, albeit

for different reasons. We concluded that while “true” res judicata did not bar

Robin Singh from pursuing his claims in Test Masters II, collateral estoppel did.

428 F.3d at 572-76. First, we found the issues to be “incontrovertibly identical”

to the issue presented in Test Masters I, namely,“whether the ‘TESTMASTERS’

trademark had acquired secondary meaning.” Id. at 572. We also concluded

that the alleged new facts used to urge re-litigation in Test Masters II as an

exception to collateral estoppel, i.e., facts concerning Robin Singh’s business

success post-Test Masters I and facts alleging the establishment of secondary

meaning nationwide, did not suggest “a change in the minds of the public in the

relevant geographic area” that would justify re-litigation. Id. at 576 & n.7. We

concluded that Robin Singh must “allege a significant intervening factual

change” to justify re-litigation. Id. at 576. On First Amendment grounds, we

vacated the district court’s injunction order insofar as it enjoined Robin Singh

from opposing TES’s assertion that it has rights to the “TESTMASTERS” mark

outside of the state of Texas, and insofar as the order enjoined Robin Singh from

engaging in any communications with TES, its counsel and their staff. 

While the Test Masters II appeal was still pending, Robin Singh sued

defendant Excel Test Prep (“Excel”) in the Northern District of California in

November 2003. Haku Israni, TES’s founder, is the co-owner of Excel, along

with other members of his immediate family. Robin Singh alleges Excel is using

the “TESTMASTERS” name and is advertising itself as an affiliate of a
No. 06-20951

4 At the present moment, Robin Singh and TES are proceeding before the PTO over the

underlying trademark issue in this case, i.e., who has rights to the “TESTMASTERS” mark.

TES has submitted a pending application to the PTO for registering “TESTMASTERS” as its

trademark. Robin Singh opposes the registration and contends it is not collaterally estopped

from asserting ownership of the trademark. In an August 30, 2007 ruling, provided by Robin

Singh in a Rule 28(j) letter, the PTO declined to bar Robin Singh on collateral estoppel grounds

from proceeding to establish a right to register “TESTMASTERS” as its trademark. There are

several reasons why this PTO decision has no bearing on this appeal, except for its limited

persuasive value. First, we review all res judicata determinations de novo. Test Masters II,

428 F.3d at 571. Second, several Circuit courts have noted that federal courts are not

obligated to defer to PTO proceedings nor are PTO’s findings on infringement binding on

federal courts. E.g., PHC, Inc. v. Pioneer Healthcare, Inc., 75 F.3d 75, 80 (1st Cir. 1996) (“First,

the [PTO] is not an ordinary administrative agency whose findings control unless set aside

after court review under a highly deferential standard. Under the Lanham Act, where a

contested Board proceeding has already addressed the validity of the mark, the Board’s

findings can be challenged in a civil action in district court through new evidence, and, at least

to a large extent, the issues can be litigated afresh.”) (citing 15 U.S.C. § 1071(b)); Rhoades v.

Avon Prods., Inc, 504 F.3d 1151, 1162-165 (9th Cir. 2007). Moreover, the pending action

before the PTO is significantly different from the pending action in this case for collateral

estoppel purposes. The plaintiff alleges post-2003 facts related to the secondary meaning issue

in the PTO proceedings that are not alleged in this case. For these reasons, we decline to take

judicial notice of the PTO action for this decision. See Elvis Presley Enters., Inc. v. Capece, 141

F.3d 188, 205 n.8 (5th Cir. 1998). Even if we did take judicial notice, the PTO decision would

be irrelevant. 

6

“Testmasters” in Texas, i.e., TES. For example, Excel linked its website to the

“www.testmasters.com” website owned and operated by TES. Robin Singh

alleges trademark infringement and intertwined state law claims. 

The California district court transferred the case to the Southern District

of Texas. The Texas district court dismissed the case on collateral estoppel

grounds concluding that there is no significant intervening factual change to

justify re-litigation. Robin Singh timely appeals.4

ANALYSIS

I. Standard of Review

The district court dismissed this case on collateral estoppel grounds in a

Rule 56(c) motion for summary judgment. We “review a grant of summary
No. 06-20951

7

judgment de novo, viewing all evidence in the light most favorable to the

nonmoving party and drawing all reasonable inferences in that party’s favor.”

Pierce v. Dep’t of U.S. Air Force, 512 F.3d 184, 186 (5th Cir. 2007) (internal

citations and quotations omitted). “Summary judgment is proper when the

evidence reflects no genuine issues of material fact and the non-movant is

entitled to judgment as a matter of law.” Id. “We may affirm a summary

judgment on any ground supported by the record, even if it is different from that

relied on by the district court.” Id.

II. Collateral Estoppel Bars Plaintiff’s Claims

The dispositive issue on appeal is whether “collateral estoppel” bars a

trademark infringement action based on allegations of changed factual

circumstances. Cf. Test Masters II, 428 F.3d at 576 (“Because he has not alleged

a significant intervening factual change, we find that our previous holding bars

Singh’s current claim.”). 

Trademark law protects holders of “distinctive” marks from infringement

and confusion in the marketplace. “The holder of a distinctive mark is entitled

to trademark protection and can enjoin the use of similar marks that might

cause confusion in the market.” Test Masters II, 428 F.3d at 566. There are

several ways a mark can be considered distinctive. In this case, the jury found

that the “TESTMASTERS” mark is a descriptive mark. 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.”) (internal quotations

omitted). In order for a descriptive mark to be distinctive, and therefore

protected under trademark law, the descriptive mark must have a “secondary

meaning” in the minds of the public, i.e., association of the trademark with the
No. 06-20951

8

alleged trademark holder. A descriptive mark can become distinctive if over

time “it has developed secondary meaning, which 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.” Id. (internal quotations omitted). The

question presented to our court in Test Masters II and in this case is: when does

a final judicial decision collaterally estop a renewed attempt to re-allege the

establishment of secondary meaning. 

“Collateral estoppel applies when, in the initial litigation, (1) the issue at

stake in the pending litigation is the same, (2) the issue was actually litigated,

and (3) the determination of the issue in the initial litigation was a necessary

part of the judgment.” Harvey Specialty & Supply, Inc. v. Anson Flowline Equip.

Inc., 434 F.3d 320, 323 (5th Cir. 2005). “Complete identity of parties in the two

suits is not required. A preclusion defense, subject to certain conditions, may be

invoked by a non-party against a party to the prior suit, and, in limited

instances, against a non-party by a party to the prior suit.” Terrell v. DeConna,

877 F.2d 1267, 1270 (5th Cir. 1989). This is a case of defensive non-mutual

collateral estoppel. See United States v. Mollier, 853 F.2d 1169, 1175 n.7 (5th

Cir. 1988). “Defensive use of collateral estoppel occurs when a defendant seeks

to prevent a plaintiff from relitigating an issue the plaintiff has previously

litigated unsuccessfully in another action against the same or a different party.”

United States v. Mendoza, 464 U.S. 154, 159 n.4 (1984). 

The disputed “collateral estoppel” element in this case is whether the

issue at stake in this pending case is identical to the issue in Test Masters I, and,

therefore, likewise barred by collateral estoppel under the reasoning of Test

Masters II. In Test Masters II, we concluded that the lawsuit in Test Masters II
No. 06-20951

5 Robin Singh also contends that since this case concerns non-mutual collateral estoppel

and not mutual collateral estoppel, this case can be distinguished from Test Masters II. In Test

Masters II, we noted that our application of collateral estoppel to that case was “bolstered” by

the fact that Test Masters II only involved mutual collateral estoppel. 428 F.3d at 575 n.6.

Even though this case is technically a non-mutual collateral estoppel case, considerations here

equally favor the application of collateral estoppel since the parties here are related to the

parties in previous litigation over the same issues and represent similar interests. Therefore,

in the interests of judicial economy, collateral estoppel should apply, because the plaintiff here

is relitigating identical issues by merely “switching adversaries.” Parklane Hosiery Co. v.

Shore, 439 U.S. 322, 329 (1979) (internal citations omitted); Acevedo-Garcia v. Monroig, 351

F.3d 547, 574 (1st Cir. 2003) (“[P]ermitting litigants to assert collateral estoppel in a defensive

pose promotes efficiency by discouraging speculative lawsuits and conserving the resources of

defendants.”). Moreover, unlike the “offensive” use of collateral estoppel, here, the appellee is

asserting the less controversial “defensive” use of collateral estoppel. Blonder-Tongue Labs.,

Inc. v. Univ. of Illinois Found., 402 U.S. 313, 329-30 (1971) (“Also, the authorities have been

more willing to permit a defendant in a second suit to invoke an estoppel against a plaintiff

who lost on the same claim in an earlier suit than they have been to allow a plaintiff in the

second suit to use offensively a judgment obtained by a different plaintiff in a prior suit against

the same defendant.”).

9

presented “the incontrovertibly identical” issue as in Test Masters I -- “whether

the ‘TESTMASTERS’ trademark had acquired secondary meaning” -- and

therefore was collaterally estopped. Test Masters II, 428 F.3d at 572-73. In this

case, the plaintiff again raises the identical issue, namely whether the

“TESTMASTERS” trademark had acquired secondary meaning. For the same

reasons as in Test Masters II, this case is collaterally estopped. Robin Singh

offers two reasons why the issues are not identical: (1) the relevant geographic

region is different; and (2) there is a significant factual change in secondary

meaning since the decision in Test Masters I that justifies re-litigation. We

conclude that both arguments are without merit.5

A. Robin Singh’s “Geographical Distinction” Argument is without

merit.

First, Robin Singh argues that the relevant geographic area for secondary
No. 06-20951

10

meaning purposes distinguishes this case from the previous case. It contends

that because this case concerns secondary meaning in northern California and

Test Masters I concerns secondary meaning in southern California, the issues are

not “identical.” This argument is without merit. 

Even if we assume arguendo, as suggested by Robin Singh, that Test

Masters I concerned only secondary meaning in southern California, Robin

Singh’s argument still fails. In Test Masters II, we specifically concluded that

Test Masters I collaterally estops Robin Singh from alleging the establishment

of secondary meaning nationwide. See Test Masters II, 428 F.3d at 576 & n.7

(“Here, the relevant geographic area is the entire nation since he is alleging that

hisTESTMASTERS mark has acquired secondary meaning nationwide, and not

just in his primary market of California.”). In other words, the plaintiff’s change

in geographical focus from California to the entire nation for “secondary

meaning” analysis did not affect our conclusion in Test Masters II that the

“secondary meaning” issues were identical in Test Masters I and Test Masters II

for collateral estoppel purposes. Id. at 576 & n.7. For the same reasons, Robin

Singh’s current switch in geographical focus from “secondary meaning” in

southern California and nationwide in Test Masters I and Test Masters II

respectively to northern California in this case does not affect our conclusion

that the “secondary meaning” issue in this case is identical to the two Test

Master cases for collateral estoppel purposes. Our decision in Int’l Breweries,

Inc. v. Anheuser-Busch, Inc., 364 F.2d 261 (5th Cir. 1966) supports this holding.

In Int’l Breweries, we concluded that since a previous court had already decided

that the plaintiff could only establish “secondary meaning” in one local area and

could not do so anywhere outside of that local area, the plaintiff was barred by
No. 06-20951

11

estoppel from later attempting to re-establish “secondary meaning” in those

areas outside of the proscribed local area. 364 F.2d at 264. For the same

reasons, Robin Singh’s action is barred here. Robin Singh failed to establish

secondary meaning anywhere in the United States, and therefore is estopped

from trying to re-establish “secondary meaning” anywhere in United States,

including northern California. 

Moreover, while Robin Singh suggests Test Masters I was limited to

evidence of secondary meaning from southern California, this court in Test

Masters II read Test Masters I as explicitly ruling on the entire California

market. Test Masters II, 428 F.3d at 571-72 (“The operative facts in the first

action included: . . . TES has never done business in California, whereas

California is Singh’s main market. . .”). Consistent with Test Masters II’s

reading of Test Masters I, we have held that a “state” is the appropriate

geographical region when considering trademark disputes; thus, we read Test

Masters I as a decision that applies to the entire state of California. Sheila’s

Shine Prod., Inc. v. Sheila Shine, Inc., 486 F.2d 114, 124 (5th Cir. 1973).

Accordingly, Robin Singh’s attempt to distinguish the issue in this action from

Test Masters I because this suit only concerns the northern California market is

without merit. 

B. No “Significant Intervening Factual Change.”

In Test Masters II, we concluded that secondary meaning could be

established in subsequent re-litigation and exempted from collateral estoppel if

the plaintiff alleges some “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 [trademark] with [the plaintiff].” 428 F.3d at
No. 06-20951

6 Collateral estoppel also bars Robin Singh’s state law claims, which are the same ones

(except for, arguably, a trademark dilution claim) asserted and barred by estoppel in Test

Masters II. See Test Masters II, 428 F.3d at 576 (“Singh’s common law and federal statutory

claims for trademark protection are fatally intermixed with the issue of secondary meaning.

. . . Because we have previously held that Singh’s mark has no secondary meaning, the district

court was correct in granting [defendant’s] motion to dismiss Singh’s federal statutory and

state common-law infringement claims.”). Robin Singh’s argument that the “secondary

meaning”issue does notimplicate California state claims under section 17200 ofthe California

Business & Professions Code is without merit. This same argument was made and rejected

in Test Masters II. Id. While the Test Masters II complaint arguably does not include the

“trademark dilution” claim now asserted in this action, the Test Masters II complaint does

allege a general violation of the California statute that prohibits trademark dilution, i.e.,

California Business and Professions Code § 14330. Assuming arguendo that “trademark

dilution” is a new claim, it is still barred by collateral estoppel for the same reasons identified

in Test Masters II: the state claim is “fatally intermixed with the issue of secondary meaning.”

Id. In order to establish the “famousness” required for an action under section 14330, a

12

576 (emphasis added). The change must allege “a significantintervening factual

change” Id. In this present action, Robin Singh does not present allegations of

any factual developments in its establishment of secondary meaning post-2003.

In fact, Robin Singh presents similar facts and evidence concerning the same

time-frame as the facts and evidence presented to this court in Test Masters II.

Therefore, Robin Singh does not allege any factual change since the ruling in

Test Masters II and again presents the same types of factual allegations that

deal primarily with Robin Singh’s recent business success. As we noted in Test

Masters II, Robin Singh’s business “success is not dispositive of the question of

secondary meaning.” 428 F.3d at 576. For the same reasons as in Test Masters

II, wherein we found no significant factual change during that same time-period

since Test Masters I, we also conclude here that no significant intervening

factual change has occurred during that same time period based on similar

factual allegations. See id. We agree with the district court and now apply

collateral estoppel to bar this new action.6
No. 06-20951

plaintiff must at least be able to establish the same facts needed to establish “secondary

meaning.” See Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 875-76 (9th Cir. 1999)

(including the considerations for famousness, which overlap with establishment of “secondary

meaning”); Accuride Int’l, Inc. v. Accuride Corp., 871 F.2d 1531, 1539 (9th Cir. 1989). 

13

CONCLUSION

For the foregoing reasons, the district court judgment is

AFFIRMED.