Attorney Malpractice in Trademark Case Not a Federal Question

No Federal Jurisdiction for Lawsuit Against Attorney Singh v. Duane Morris LLP, —F.3d—, 2008 WL 2908912 (C.A. 5, July 30, 2008)

Robin Singh, owner of a test prep company which used the name “Testmasters”, sued his attorney Richard Redano and law firm Duane Morris LLP for malpractice after an unsuccessful federal trademark lawsuit. Redano represented Singh in the trademark case, where the Fifth Circuit held that Singh’s “Testmasters” mark was invalid since Singh failed to present evidence of secondary meaning in the mark. Singh claimed that Redano should have known to present available evidence that would have established the secondary meaning.

Singh filed the malpractice laswuit in Texas state court, but the case was removed to a federal court. Redano contended that federal jurisdiction was proper because the outcome of Singh’s malpractice case depended on resolving federal trademark law. The District Court (S.D. Tex.) denied Singh’s motion to remand, holding that the court had jurisdiction under 28 U.S.C. 1331 and 1338 and the All Writs Act.

On appeal, the Fifth Circuit reversed, holding that the existence of a federal question necessary to resolve a state-law claim was not sufficient to permit federal jurisdiction over Singh’s malpractice suit. First, the Court held that the federal issue in Singh’s case was not substantial. Federal trademark law established no remedy for parties such as Singh to recover against negligent attorneys, and the existence of available evidence to establish secondary meaning in a trademark was not an important federal issue.

Second, the Fifth Circuit held that allowing federal jurisdiction in Singh’s malpractice case disrupted the balance of federal and state judicial responsibilities. Legal malpractice has traditionally been an issue resolved by state law. Finding federal jurisdiction in a malpractice case regarding federal trademark law would effectively extend federal jurisdiction over any malpractice case concerning an attorney’s representation of a client in a federal case.

The Fifth Circuit declined to follow Air Measurement Tech, Inv. v. Akin Gump Strauss Hauer & Field LLP, 504 F.3d 1262 (Fed.Cir. 2007) where the court granted federal jurisdiction in a malpractice case involving an attorney’s representation of a client in a federal patent case.

The Fifth Circuit also held that the All Writs Act did not confer federal jurisdiction in Singh’s malpractice case. The All Writs Act is applicable only under “extraordinary circumstances,” which the Court held were not present here.

Plaintiff Lawyer(s) – Plaintiff Law Firm(s)
John McGrath Phalen – Daniel Sheehan Associates
Daniel J. Sheehan, Jr – Daniel Sheehan Associates

Defendant Lawyer(s) – Defendant Law Firm(s)
Gabriela Angelina Gallegos – Vinson & Elkins
George M. Kryder – Vinson & Elkins

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