This case deals with two Indiana law firms, both of which are named "Keaton and Keaton." The firm with prior usage rights to the name sued the more recently formed partnership under a theory of unfair competition. The plaintiff alleged that the defendant's name created confusion in the marketplace and served to deceive the public as to the true source of the legal services rendered. Both the trial court and the Indiana Court of Appeals granted summary judgment in favor of defendant, essentially allowing the two firms to continue operating under their current names. The Supreme Court affirmed.
The Indiana Supreme Court held that "passing off" (also called "palming off") and trade name infringement are both species of unfair competition. However, while the former requires intentional misrepresentation or deception, the latter does not. "Passing off" is a common law tort wherein one party misrepresents its goods or services as those of another. As the Court stated, "like common law fraud, it requires a showing of intentional deception by the defendant." Since the plaintiff failed to offer any evidence of intentional misrepresentation or deception on the part of the defendant, the Court affirmed the summary judgment ruling on the "passing off" claim.
The Court next turned to the concept of trade name infringement. Referring to Moseley, the famous United States Supreme Court decision regarding trademark dilution, the Court defined trade name infringement as the use of a similar corporate or other distinctive business name that is likely to cause confusion as to the source of goods or services. In common law, such a claim does not require a showing of intent to deceive, but, rather is predicated on the concept of protecting the public from confusion in the marketplace. Regardless, in affirming the lower court's decision, the Indiana Supreme Court concluded that as a surname, the name of plaintiff's firm is not inherently distinctive and, therefore, not protectable absent a showing of secondary meaning. Apparently, plaintiff failed to prove that its firm name had developed statewide recognition.
Note: Interestingly enough, Section 1211.01(b)(i) of the Trademark Manual of Examination Procedure states that "[a] combination of two surnames is not primarily merely a surname, within the meaning of ยง2(e)(4), unless there is evidence of record showing that the combination would be perceived by the public primarily merely as a surname." Does the fact that plaintiff in this case combined two identical surnames somehow change this rule?
Further Note: Naturally, the plaintiff could not file under Section 32 of the Lanham Act since it did not possess a federal trademark registration. However, it is puzzling as to why plaintiff did not add a claim under Section 43(a) for false designation of origin.
Keaton and Keaton v. Keaton, 2006 WL 401206 (Ind., February 22, 2006).
