Robin Singh Educational Services, Inc.v.Test Masters Educational Services, Inc.

Trademark Trial and Appeal Board

Mar 31, 2011

No. 91163136 (T.T.A.B. Mar. 31, 2011)

al Mailed: March 31, 2011

Opposition No. 91163136
Opposition No. 91164627
Opposition No. 91171241

Robin Singh Educational
Services, Inc.

v.

Test Masters Educational
Services, Inc.

Before Grendel, Wellington, and Mermelstein,
Administrative Trademark Judges.

Test Masters Educational Services, Inc. seeks to
register the following marks:
TESTMASTERS1 for “educational services, namely, providing
courses of instruction and materials to prepare students to
take and achieve higher scores on standardized tests” in
International class 41.

TESTMASTERS2 for “computer software featuring materials for
standardized test preparation, school admissions, namely
private secondary school, undergraduate and graduate school
selection, electronic applications, scholarships and
financial aid and careers, namely, interest assessment, job
search, job planning, job selection and career development
not including vocational training in the industrial arts” in
International Class 9; “printed materials, namely workbooks,

1 Serial No. 76413999, filed May 24, 2002, alleging March 17,
1992, as the date of first use and first use in commerce. The
application was amended to remove a geographic restriction on
August 27, 2002.
2 Serial No. 76456163, filed October 7, 2002, under Section 1(b)
of the Trademark Act.

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
2
textbooks, and instructors' guides for standardized test
preparation” in International Class 16; and “providing
temporary use of on-line, non-downloadable computer software
for standardized test preparation” in International Class
42.

TEST MASTERS3 for “educational services, namely, providing
courses of instruction and materials to prepare students to
take and achieve higher scores on standardized tests” in
International Class 41.

Robin Singh Educational Services, Inc. (“opposer”)
opposes registration of these marks on the following three
grounds:
(1) Applicant is bound by a prior jury determination that the
marks are merely descriptive, and that therefore
registration should be denied under Lanham Act § 2(e)(1)
because applicant has not shown that the marks have
become distinctive of the identified goods and services
under Section 2(f).

(2) In the event the jury’s finding of descriptiveness is not
binding here, and applicant’s mark is found to be
inherently distinctive, then registration should be
denied under Lanham Act § 2(d) because opposer was the
prior user of the mark.

(3) Assuming that the marks are merely descriptive, the
applications must be denied under Lanham Act § 2(d)
because opposer’s TESTMASTERS mark has acquired
distinctiveness

This case now comes up for consideration of the following
three motions4:

3 Serial No. 76306308, filed August 28, 2001, alleging March 17,
1992, as the date of first use and first use in commerce. The
application was amended to remove a geographic restriction on
August 23, 2002.
4 The Board’s order of September 8, 2010 is modified to the
extent that applicant’s consented motion (filed June 23, 2010)
for discovery is granted. See TTABVUE Entry No. 84.
3
(1) applicant’s motion (filed August 11, 2009) for summary
judgment asking the Board to:

(a) deny opposer’s claim under Section 2(d)
because opposer is barred by the doctrines of
collateral estoppel and res judicata from
proving priority as a matter of law; or

(b) in the alternative, identify as a matter of
law the date by which opposer must establish
secondary meaning in order to prove its
priority.

(2) opposer’s motion (filed May 20, 2010) for summary
judgment in its favor on the ground that the applied-for
marks are merely descriptive and without secondary meaning
(as to applicant, but not opposer).
(3) applicant’s motion (filed November 5, 2010) to strike
and exclude Paul Kanarek as an expert witness for opposer.
Background
A review of the parties’ wide-ranging, long-standing
dispute over the use and registration of the mark
TESTMASTERS for educational services is in order.
Both opposer and applicant offer test preparation services
under the marks TESTMASTERS and TEST MASTERS. Opposer began
offering LSAT test preparation services in California in 1991,
and in 1996 opposer began its expansion beyond California.
Applicant began offering SAT, GMAT, MCAT and other test
preparation services in Texas in 1992, and in 2002 applicant
began its expansion beyond Texas. In recent years, the parties
4
have competed directly and nationally, with opposer offering test
preparation services for the SAT, GRE and GMAT (as well as the
LSAT), and applicant offering test preparation services for the
LSAT (as well as the SAT, GMAT and MCAT).5
In 1999, when opposer attempted to develop its website, it
discovered that applicant had already registered the Internet
domain name “testmasters.com.” Opposer then sent a demand letter
to applicant, which led to applicant filing suit in the U.S.
District Court for the Southern District of Texas seeking, among
other things, a declaratory judgment of non-infringement and a
ruling that opposer’s TESTMASTERS mark is descriptive and is
without secondary meaning. Opposer later filed its own suit
against applicant for trademark infringement in California, the
cases were consolidated and, in February 2001, the cases were
tried to a Texas jury which found that opposer’s mark was
descriptive but had acquired secondary meaning. The jury also
found that applicant had infringed opposer’s mark and committed
unfair competition in California, but that applicant was an
innocent prior user which had the exclusive right to use its mark
in Texas. Based on the jury’s findings, the Court ordered
applicant to transfer the domain name to opposer and ordered the

5 On March 23, 1991, opposer’s predecessor, Robin Singh, was
issued U.S. Registration No. 2234514 for the TESTMASTERS mark for
“educational services, namely, providing courses of instruction
and materials to prepare students to take and achieve higher
scores on standardized admission tests for graduate and
professional schools” in International Class 41. Such mark was
subsequently cancelled on March 11, 2003.
5
USPTO to modify opposer’s Registration No. 2234514 for
TESTMASTERS to exclude Texas and confer on applicant the
exclusive right to use its mark in Texas (“judgment is GRANTED in
favor of the Plaintiff as to its claim for concurrent use rights
of the mark ‘TESTMASTERS’ in the State of Texas.”).
On appeal, the U.S. Court of Appeals for the Fifth Circuit
agreed that opposer’s mark was descriptive, but held that opposer
did not introduce sufficient evidence to establish secondary
meaning. The court vacated the judgment for opposer on its
unfair competition claim and vacated the order requiring
applicant to transfer the domain name. Test Masters Educational
Services, Inc. v. Singh, 64 USPQ2d 1469 (5th Cir. 2002) (the
“First Appeal”). The appellate court also remanded the case for
an order that opposer’s trademark registration was invalid. On
September 5, 2002, pursuant to the decision in the First Appeal,
the district court ordered the USPTO to cancel opposer’s
Registration No. 2234514, and the USPTO complied on February 10,
2003.
On July 26, 2002, just two days after the Fifth Circuit
ordered cancellation of opposer’s registration because
TESTMASTERS is descriptive and without secondary meaning, opposer
filed a new geographically restricted application for
TESTMASTERS, Serial No. 78148012, claiming rights to all of the
United States except for the State of Texas. Applicant then

6
sought modification of the final judgment, which led to the
district court issuing an injunction on July 14, 2003, which
barred opposer from seeking registration of TESTMASTERS or TEST
MASTERS with the USPTO, interfering with or opposing applicant’s
registration of TESTMASTERS or TEST MASTERS with the USPTO or
using these marks or any confusingly similar marks within Texas
or directed at Texas. The Court ordered opposer to withdraw its
then-suspended application Serial No. 78148012, which opposer
ultimately did.
On June 23, 2003, less than one year after the Fifth
Circuit’s decision in the First Appeal, opposer filed another
federal suit against applicant, this time in the U.S. District
Court for the Central District of California (“California case”).
While the causes of action included unfair competition, trademark
infringement, false designation of origin and deceptive
advertising, the facts recited in opposer’s complaint were
somewhat different from the earlier dispute decided by the Fifth
Circuit in the First Appeal. In this California case, opposer
focused on applicant’s alleged changes to its website which,
according to opposer, resulted in a false suggestion that
applicant was opposer. Opposer requested an injunction barring
applicant from using TESTMASTERS outside of Texas, requiring a
disclaimer of affiliation with opposer on applicant’s website and
enjoining further acts of unfair competition.
7
The California court transferred the case to the Southern
District of Texas, where applicant filed a motion to dismiss
based on res judicata. The Texas district court granted
applicant’s motion on October 7, 2004, specifically rejecting
opposer’s argument that the recent growth and public exposure of
its business justified re-litigating the issue of secondary
meaning. This decision and the July 14, 2003, injunction were
again appealed to the Fifth Circuit (the “Second Appeal”).
On appeal, the Fifth Circuit stated that “[t]he issue of
whether res judicata bars relitigating the issue of secondary
meaning [based on changed circumstances] here is a difficult
one,” but ultimately concluded “that our prior cases do not
support allowing [opposer] to re-litigate his claim.” Test
Masters Educational Services, Inc. v. Singh, 428 F.3d 559, 573-
74, 76 USPQ2d 1865, 1873 (5th Cir. 2005), cert. denied, 547 U.S.
1055 (2006). However, the Fifth Circuit recognized that changed
circumstances could at some point in the future allow
relitigation of the secondary meaning issue: “The case law has
not developed, and we do not today decide, precise time contours
for the re-litigation of secondary meaning.” Id. at 575. In any
event, the Court affirmed the dismissal of opposer’s claims for
infringement. In addition, the Fifth Circuit modified the
district court’s order preventing opposer from challenging
applicant’s attempts to register TESTMASTERS at the USPTO,
finding that the order should have been circumscribed “to only
8
enjoin [opposer] from opposing or interfering with [applicant’s]
right to the mark within Texas.” Id. at 578.
On November 13, 2003, opposer filed yet another suit in
California, alleging, inter alia, infringement of the mark
TESTMASTERS by Excel Test Prep, Inc. (“Excel”),6 which was
transferred to the Southern District of Texas. Excel filed a
motion for summary judgment on res judicata and collateral
estoppel grounds. The District Court granted Excel’s motion and
found that opposer had not alleged or demonstrated through
evidence that a significant intervening factual change had
occurred. The district court dismissed opposer’s claims in its
September 28, 2006, order. On appeal for the third time, the
Fifth Circuit on April 16, 2008, again affirmed, finding
opposer’s claims barred by collateral estoppel. Robin Singh
Educ. Servs., Inc. v. Excel Test Prep Inc., 274 Fed. Appx. 399,
86 USPQ2d 1430, 1435 (5th Cir. 2008)(the “Third Appeal”). The
Fifth Circuit found that opposer had not presented “allegations
of any factual developments in its establishment of secondary
meaning post-2003,…” and noted that opposer had once again
presented “the same types of factual allegations that deal
primarily with [opposer’s] recent business success,” which was
not dispositive of the question of secondary meaning. Id. The
Fifth Circuit stated that “Robin Singh failed to establish

6 The district court found that Excel and applicant herein are
privies.

9
secondary meaning anywhere in the United States, and therefore is
estopped from trying to re-establish ‘secondary meaning’ anywhere
in the United States….” Id. at 405.
At the same time the parties were fighting over TESTMASTERS
in various federal courts, they were engaged in multiple
proceedings before the Board which were eventually consolidated
under this proceeding.
In its order7 of August 30, 2007, issued after the Fifth
Circuit’s decision in the Second Appeal but prior to the Fifth
Circuit’s decision in the Third Appeal, the Board issued a
decision with regard to several pending motions at the time which
turned, at least in part, on whether the Fifth Circuit’s decision
in the Second Appeal collaterally estopped opposer from
proceeding with its opposition. The Board found that applicant
had established that the threshold elements of collateral
estoppel applied. However, the Board found that opposer was not
collaterally estopped from trying to prove in these consolidated
proceedings that its mark has acquired distinctiveness under an
exception to the collateral estoppel doctrine. Under such
exception, “[c]hanges in facts essential to a judgment will
render collateral estoppel inapplicable in a subsequent action
raising the same issues.” Montana v. United States, 440 U.S. at
159; see also, Opryland USA v. Great American Music Show, 970
F.2d 847, 853, 23. The Board noted that opposer relied on this

7 Entry No. 22 in TTABVUE.
10
exception, asserting that the facts essential to the issue of
secondary meaning have changed significantly since issuance of
the February 2001 order considered in the First Appeal. The
Board also noted that opposer made the same arguments to the
Fifth Circuit in the Second Appeal, arguing there that the facts
had changed since issuance of the February 2001 order at issue in
the First Appeal. The Board acknowledged that the Fifth Circuit
rejected these arguments in the Second Appeal, but noted that the
circuit court specifically stated that the question was “a
difficult one.” Test Masters Educational Services, 428 F.3d at
573, 576, 76 USPQ2d at 1875. The Board also noted that the Fifth
Circuit acknowledged that opposer “presented evidence that his
Testmasters company has become more successful since the prior
judgment,” Id., 428 F.3d at 574, 76 USPQ2d at 1875, and
overturned the district court decision preventing opposer from
pursuing its claims against applicant in the USPTO.
In its August 30, 2007 order, the Board stated as follows:
It is now almost two years after the decision
in the Second Appeal, and almost four years after
the decision by the district court which led to the
Second Appeal, and opposer has alleged in its
filings additional intervening factual changes
which, opposer claims, establish that its mark has
acquired distinctiveness.

Whether the operative date is 2003 or 2005, the
amount of time since the earlier litigation is
relatively short. Applicant claims that the amount
of time is too short for opposer to show an
intervening factual change sufficient to overcome
collateral estoppel. We do not agree, however, that
the amount of time is too short for opposer to at
least attempt to prove its claims. As our primary
11
reviewing court stated in finding that six months
was enough time for the acquisition of secondary
meaning, “[t]he effect of mass exposure achievable
with today’s communications media can not be ignored
in determination of secondary meaning.” L.A. Gear,
Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1130, 25
USPQ2d 1913, 1923 (Fed. Cir.), cert. denied, 510
U.S. 908 (1993); see also, Metro Kane Imports, Ltd.
v. Federated Department Stores, Inc., 625 F. Supp.
313, 316, 228 USPQ 761 (S.D.N.Y. 1985), aff’d, 800
F.2d 1128 (2d Cir. 1986) (“While a relatively short
period of time has expired since the previous
litigation, there is no basis to hold that a party
is precluded as a matter of law from demonstrating
that secondary meaning can be acquired within a few
months.”).

Opposer’s Motion for Summary Judgment
We turn first to opposer’s cross-motion for summary
judgment in its favor on the ground that the applied-for marks
are merely descriptive and without secondary meaning (as to
applicant, but not opposer).
As a threshold matter, we must first determine if opposer
has standing to bring this opposition against applicant. In
order to have standing, a plaintiff must have a real interest in
the proceeding and a reasonable basis for its belief of damage.
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999). We find that opposer’s use of a nearly identical mark for
similar or identical services is a sufficient basis for standing,
notwithstanding the prior federal decisions finding opposer’s
mark merely descriptive.
In support of its motion, opposer argues that the applied-
for marks are merely descriptive; that during the years of
12
litigation between the parties applicant “vociferously argued
(successfully) that the TESTMASTERS mark is merely descriptive”;
during the 1999 civil action, the parties litigated the inherent
protectability of the TESTMASTER mark and the jury in 2001 found
that the marks are descriptive; that applicant now seeks to
register the TESTMASTERS and TEST MASTERS marks without any claim
of secondary meaning, but the law of estoppel bars this argument;
that applicant never pled secondary meaning in its applications
or in any of these oppositions and it cannot raise the issue now
on summary judgment because it is an unpleaded defense; that
estoppel aside, applicant cannot, as a matter of law, prove
secondary meaning; and that because applicant can never show that
it has made “substantially exclusive” use of the mark, judgment
should be entered for opposer.
In response, applicant argues that opposer is precluded from
attempting to prove that opposer has attained secondary meaning
in the mark; that opposer wrongly asserts that applicant is
estopped by the prior litigation from arguing that its
TESTMASTERS marks are inherently distinctive; that the prior
litigation established that opposer’s alleged mark is merely
descriptive (without secondary meaning) for its LSAT prep
services, and collateral estoppel clearly precludes opposer from
arguing that its mark is inherently distinctive; that there has
never been a finding that applicant’s marks, as it uses them for
the goods and services in the applications opposed herein, are
13
merely descriptive; that the USPTO examined each application and
approved it for publication without issuing a descriptiveness
refusal; that if opposer carries its burden of establishing that
applicant’s marks are merely descriptive, it would be clear error
to find that applicant cannot, as a matter of law, establish
secondary meaning in those marks; and that applicant has produced
and will present at trial more than enough evidence to support a
finding of secondary meaning.
In reply, opposer asserts that the Board should enter
summary judgment in favor of opposer because, as a matter of law,
applicant cannot establish that it is the substantially exclusive
user of the marks — a prerequisite for applicant to obtain
registration; that opposer “wins by a landslide on every measure
of acquired distinctiveness…”; and that there is no triable issue
of fact as to whether applicant is the substantially exclusive
user of the marks.
Summary Judgment Standard
Summary judgment is only appropriate when there is no
genuine dispute as to any material fact and the moving party is
entitled to judgment as a matter of law. See Fed. R. Civ. P.
56(a). The mere fact that cross-motions for summary judgment on
an issue have been filed does not necessarily mean that there is
no genuine dispute of material fact, and that trial is
unnecessary. The Board may not resolve issues of material fact;
it may only ascertain whether a genuine dispute regarding a
14
material fact exists. See, Lloyd’s Food Products, Inc. v. Eli’s,
Inc., 987 F.2d 766, 766, 25 USPQ2d 2027, 2029 (Fed. Cir. 1993).
A factual dispute is genuine if, on the evidence of record, a
reasonable fact finder could resolve the matter in favor of the
non-moving party. See Opryland USA Inc. v. Great American Music
Show Inc., 970 F.2d 847, 23 USPQ 1471, 1472 (Fed. Cir. 1992); Old
Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542,
1544 (Fed. Cir. 1992).
Analysis
We begin our analysis by first determining if the mark(s)
have been found to be merely descriptive.
We look to the eleven questions that were posed to the jury
in the 1999 case, when the issue of descriptiveness was decided.8
TTAVUE Entry No. 6. Among these questions was the following:
(1) “Did the plaintiff [applicant] prove by a preponderance of
the evidence that the defendant’s [opposer’s] mark is merely
descriptive?” The jury answered in the affirmative. There is no
question that this issue was actually litigated as the parties
disputed the issue, the jury resolved it, and it was affirmed in
the First Appeal. Given that the parties’ marks are identical or
virtually identical and the goods and services are essentially
the same, we find that both parties’ marks are merely descriptive
and, therefore, are not inherently distinctive. According to the

8 In the appeal of this case and the subsequent civil actions
between the parties, the issue of the descriptiveness of the
TESTMASTERS mark was not at issue.
15
transcript of the 2001 trial, applicant’s own founder, Haku
Israni testified that applicant “picked [the name] TEST MASTERS
because is is extremely descriptive. Test Masters means
mastering the test. We don’t even have to explain to anybody
what Test Masters is… [W]e thought that was the most logical
name, most descriptive name one can think of.” See Opposer’s
Reply Brief, Ex. 1, TTABVUE Entry No. 103. Given the prior jury
verdict, applicant’s admissions of descriptiveness, and the
parties’ usage of essentially identical marks for essentially
identical services, there is no genuine dispute as to the
descriptiveness of either parties’ mark for the services at issue
here.
Having determined that the marks are descriptive, we
consider whether applicant has acquired distinctiveness in its
marks. We note that applicant seeks to register the mark
TESTMASTERS and TEST MASTERS without any claim of secondary
meaning under Section 2(f) in its applications and that it has
not pled secondary meaning in these opposition proceedings.9 But
applicant, in its answer, denied paragraph 21 of the Amended
Notice of Opposition which states, in relevant part, as follows:
“The mark TESTMASTERS has not become distinctive of goods and
services offered by Applicant.” Hence, opposer’s suggestion that

9 TBMP Section 314 (2d ed. rev. 2004) states as follows: “A
party may not obtain summary judgment on an unpleaded issue, nor
may a party defend against a motion for summary judgment by
asserting the existence of genuine issues of material fact as to
an unpleaded claim or defense.”
16
it was not put on notice of applicant’s acquired distinctiveness
argument is incorrect. Although opposer did not have to state in
its pleading that applicant’s mark has not acquired
distinctiveness, its having done so, along with applicant’s
denial of that allegation, is the equivalent of applicant’s
having explicitly set out its own pleading of acquired
distinctiveness under a heading identifying it as a defense.
In support of its position (set forth in its brief in
response) that if the marks are found to be merely descriptive
its marks have acquired distinctiveness, applicant has submitted
some evidence and indicates that it “can and will present” more
evidence to show secondary meaning at trial.
"Distinctiveness is acquired by 'substantially exclusive and
continuous use' of the mark in commerce." In re Owens-Corning
Fiberglass Corporation, 774 F.2d 1116, 227 USPQ 417, 424 n. 11
(Fed. Cir. 1985), citing Levi Strauss & Co. v. Genesco, Inc., 742
F.2d 1401, 222 USPQ 939, 942 (Fed. Cir. 1984). In order to
establish acquired distinctiveness, applicant must show that the
primary significance of the proposed marks in the minds of
consumers is not the goods or services but the source of those
goods and services. See In re Steelbuilding.com, 415 F.3d 1293,
75 USPQ2d 1420, 1422 (Fed. Cir. 2005); In re Ennco Display
Systems Inc., 56 USPQ2d 1279 (TTAB 2000).
Acquired distinctiveness may be shown by direct or
circumstantial evidence. Direct evidence includes testimony,
17
declarations or surveys of consumers as to their state of mind.
Circumstantial evidence is evidence from which consumer
association might be inferred, such as years of use, extensive
amounts of sales and advertising, and any similar evidence
showing wide exposure of the mark to consumers. There is no
fixed rule for the amount of proof necessary to demonstrate
acquired distinctiveness; however, the evidence required is in
proportion to the degree of non-distinctiveness of the mark at
issue. Yamaha Int. Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988). Thus, even long
periods of substantially exclusive use may not be sufficient to
demonstrate acquired distinctiveness. Moreover, the burden is
particularly heavy when that use has not been exclusive. In re
Gibson Guitar Corp., 61 USPQ2d 1948, 1952 (TTAB 2001) (66 years
of use not sufficient given similarity of configuration to other
guitars). See also Flowers Industries Inc. v. Interstate Brands
Corp., 5 USPQ2d 1580, 1588-89 (TTAB 1987) ("long and continuous
use alone is insufficient to show secondary meaning where the use
is not substantially exclusive").
After having carefully considered the evidence of record, we
find that there is no genuine issue of material fact that
applicant has failed to show the substantially exclusive use of
the marks, which is a prerequisite for proving acquired
18
distinctiveness. See Levi Strauss, 222 USPQ at 942.10 Based on
the record, we find opposer’s use has been substantial. Such use
is fatal to applicant’s claim of acquired distinctiveness. Thus,
we agree with opposer’s assessment that the effect of its use is
so extensive that applicant’s use fails to qualify as
“substantially exclusive.” “When the record shows that
purchasers are confronted with more than one (let alone numerous)
independent users of a term or device, an application for
registration under Section 2(f) cannot be successful, for
distinctiveness on which purchasers may rely is lacking under
such circumstances.” Levi Strauss, 222 USPQ at 940-941.
Conclusion
In view thereof, opposer's motion for summary judgment on
the basis that applicant's marks are descriptive and have not
acquired distinctiveness is hereby GRANTED. Judgment is entered
against applicant and registration of the marks in all three
subject applications is refused.
Having reached this conclusion, we need not reach the
remaining pending motions.11 Applicant’s motion to strike,

10 Given the extent of evidence submitted by both parties,
allowing a trial on this matter would not change our conclusion.
There is no triable issue of fact as to whether applicant is the
substantially exclusive user of the marks; it is clear that it is
not.
11 In addition, inasmuch as opposer did not move for summary
judgment on its 2(d) claim, we need not reach this remaining
claim.
19
motion for summary judgment, and any requests of the parties not
addressed herein are deemed moot.12

12 We have not considered or relied on the specific evidence at
issue in applicant’s motion to strike in reaching our decision
herein.