            IN THE UNITED STATES COURT OF APPEALS
                     FOR THE FIFTH CIRCUIT United States Court of Appeals
                                                    Fifth Circuit

                                                                                         FILED
                                                                                        April 16, 2008
                                             No. 06-20951
                                                                                  Charles R. Fulbruge III
                                                                                          Clerk
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


        *
          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 R. 47.5, the court has determined that this opinion should not be published and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.
                                         No. 06-20951

Educational Services, Inc. (“Robin Singh”)1 can 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



       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”) and Test Masters Educ. Servs. v. Singh, 428 F.3d 559
(5th Cir. 2005) (“Test Masters II”).

                                                2
                                 No. 06-20951

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


                                       3
                                     No. 06-20951

Test Masters I’s final judgment to include a permanent injunction 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” of the 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


                                           4
                                 No. 06-20951

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


                                        5
                                         No. 06-20951

“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

       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
                                  No. 06-20951

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


                                        7
                                   No. 06-20951

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


                                         8
                                         No. 06-20951

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



       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
                                  No. 06-20951

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
his TESTMASTERS 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


                                        10
                                 No. 06-20951

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


                                       11
                                         No. 06-20951

576 (emphasis added). The change must allege “a significant intervening 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


       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 not implicate California state claims under section 17200 of the 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
                                      No. 06-20951

                                CONCLUSION
       For the foregoing reasons, the district court judgment is
       AFFIRMED.




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
