By Leigh Jones / Associate editor

5th Circuit throws out malpractice summary judgment win for Duane Morris 

The 5th U.S. Circuit Court of Appeals has thrown out a summary judgment win for Duane Morris in a lawsuit alleging that one of the law firm’s partners bungled a trademark infringement case involving an LSAT test-prep company.

The three-judge panel found on July 30 that the federal district court lacked subject-matter jurisdiction in granting summary judgment to the law firm, after deciding that the state law malpractice claim did not arise from the federal trademark law and therefore was not properly in federal court.

The decision means that the plaintiff could revive the case in state court.

In Singh v. Duane Morris, No. 07-20321, plaintiff Robin Singh sued Duane Morris and Richard Redano, a partner in the law firm’s Houston office, after Redano had represented Singh, the owner of Testmasters, a California company that prepares students to take the Law School Admission Test (LSAT). Singh’s company was battling a trademark infringement action against Houston-based Test Masters Educational Services, which also provides LSAT and other standardized test-prep services.

At trial, a jury found that Singh’s company had established a “secondary meaning” with its Testmasters’ trademark, meaning that through advertising or massive exposure Singh’s company had established its trademark in the minds of consumers as originating from one particular source.

However, on appeal, the 5th Circuit reversed, finding that Singh had presented insufficient evidence at trial to show a secondary meaning. (The latest decision noted that Singh filed two subsequent lawsuits that unsuccessfully sought to establish secondary meaning in the Testmasters mark.)

Following the reversal, Singh filed a malpractice action in Texas state court, which Duane Morris removed to federal court. After Singh sought to remand the case back to state court, U.S. District Judge Vanessa Gilmore denied the motion and concluded that the federal court had jurisdiction.

The judge then granted in part Redano’s motion for summary judgment and dismissed the malpractice claims.

In the July 30 decision by the appeals court, the panel took a fresh look at the subject matter jurisdiction issue and determined that the case did not involve an important matter of federal law.

“Not only is the federal interest insubstantial, but federal jurisdiction over this state-law malpractice claim would upend the balance between federal and state judicial responsibilities,” wrote Judge Jerry E. Smith, for the panel.

The court therefore vacated the lower court’s decision granting summary judgment and dismissed the case for lack of jurisdiction.

Duane Morris General Counsel Michael J. Silverman said the law firm was “disappointed” in the outcome.

“[We] obviously felt that the federal district court had jurisdiction over this matter,” Silverman said in a written statement. “We are reviewing the court’s opinion and considering our next steps.” Singh said that he plans to refile the case in state court.

“We’re excited,” he said. Testmasters is seeking $29 million in damages from the law firm, he said.

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