ATTORNEY FOR APPELLANT ATTORNEY FOR APPELLEES
William B. Keaton R. Mark Keaton
Rushville, Indiana Ft. Wayne, Indiana
______________________________________________________________________________
In the
Indiana Supreme Court
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No. 02S03-0602-CV-67
KEATON AND KEATON, AN INDIANA
PROFESSIONAL CORPORATION,
Appellant (Plaintiff below),
v.
R. MARK KEATON, PAUL A. KEATON,
D/B/A KEATON AND KEATON,
Appellees (Defendants below).
_________________________________
Appeal from the Allen Circuit Court, No. 02C01-0212-PL-153
The Honorable Thomas J. Felts, Judge
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On Petition To Transfer from the Indiana Court of Appeals, No. 02A03-0410-CV-478
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February 22, 2006
Boehm, Justice.
Unfair competition includes both the tort of “passing off” and trade name infringement.
We hold that “passing off” requires intentional misrepresentation or deception but trade name
infringement does not.
Facts and Procedural History
In 1971 Walter and William Keaton, a father and son, established a partnership for the
practice of law in Rushville, Indiana, under the name “Keaton and Keaton.” In 1978, the firm
incorporated under the name “Keaton and Keaton, P.C.” (the “Rushville P.C.”). Walter died in
1980 and William continued as the sole shareholder of the P.C., retaining the name “Keaton and
Keaton, P.C.” In 2002, two brothers, Mark and Paul Keaton, formed a general partnership under
the name “Keaton & Keaton” for the practice of law in Fort Wayne, Indiana. The brothers are
unrelated to the Rushville Keatons.
The Rushville P.C. filed a complaint for an injunction and damages against Paul and
Mark, d/b/a Keaton & Keaton (the “Fort Wayne firm”). The Rushville P.C.’s complaint alleged
the above facts and that: 1) the similarity of names had created confusion in the marketplace, 2)
the “natural and probable effect” of the Fort Wayne firm’s use of its surname was “to deceive the
public and pass off” the Fort Wayne firm’s services as those of the Rushville P.C., and 3) these
facts deprived the Rushville P.C. of the good will it had built up since 1971. Both sides filed
motions for summary judgment. In support of its motion, the Rushville P.C. designated three
instances of alleged confusion arising out of the Fort Wayne firm’s name: 1) on one occasion
the Rushville P.C. received medical records that had been requested by the Fort Wayne firm; 2)
on one occasion the Rushville Circuit Court sent an order to the Rushville P.C. in a case in which
the Fort Wayne firm was counsel; and 3) on one occasion the Rush County Clerk asked one of
the Fort Wayne brothers if he was related to William Keaton, and the Fort Wayne brother re-
sponded that they were not related.
The trial court granted summary judgment to the Fort Wayne firm, in effect allowing
both firms to continue to use their current names. The Court of Appeals affirmed. Keaton &
Keaton v. Keaton, 824 N.E.2d 1261, 1264 (Ind. Ct. App. 2005). It concluded that the Rushville
P.C. failed to designate evidence establishing a likelihood of public confusion. Id. at 1263. It
also held that in order to maintain a cause of action for unfair competition a plaintiff must show
that the defendant had a subjective intent to deceive. Id. at 1264.
I. Standard of Review
On review of a trial court’s decision to grant or deny summary judgment, we apply the
same standard as the trial court: we must decide whether there is a genuine issue of material fact
that precludes summary judgment and whether the moving party is entitled to judgment as a mat-
ter of law. Carie v. PSI Energy, Inc., 715 N.E.2d 853, 855 (Ind. 1999). When the parties have
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filed cross-motions for summary judgment we consider each motion separately to determine
whether the moving party is entitled to judgment as a matter of law. Ind. Farmers Mut. Ins.
Group v. Blaskie, 727 N.E.2d 13, 15 (Ind. Ct. App. 2000).
II. Unfair Competition
The complaint does not seek to characterize its theory of recovery other than as described
above. There are several related doctrines of unfair competition that the complaint suggests. We
agree with the Court of Appeals that the trial court properly granted summary judgment to the
Fort Wayne firm, but disagree as to some of the reasons why this is so.
A. “Passing Off”
The Rushville P.C. alleges that “The natural and probable tendency and effect of the de-
fendants using the plaintiff’s name is to deceive the public so as to pass off the defendants’ ser-
vices for that of the plaintiff.” The tort of “passing off” (also called “palming off”) is a species
of unfair competition that emerged in the nineteenth century as a type of fraud. 1 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition § 5:2 (West 4th ed. 2005). Under
this doctrine, liability is imposed for the intentional misrepresentation of goods or services as
those of another. Restatement (Third) of Unfair Competition § 9 cmt. d (1995). To the extent
the above quoted language from the complaint seeks to state a claim for the tort of “passing off,”
we agree that the trial court properly granted summary judgment to the Fort Wayne firm. “Pass-
ing off” is nothing more than a subspecies of fraud. See, e.g., Internat’l News Serv. v. Associ-
ated Press, 248 U.S. 215, 258 (1918) (Brandeis, J., dissenting) (“In the ‘passing off’ cases (the
typical and most common case of unfair competition), the wrong consists in fraudulently repre-
senting by word or act that defendant’s goods are those of plaintiff.”); Gulf Coast Bank v. Gulf
Coast Bank & Trust Co., 652 So. 2d 1306, 1315 (La. 1995) (“The law of trademark infringement
originally was based on deceit and fraud and evolved into a distinct tort of ‘passing off’ . . . .”);
see also McCarthy, supra, at § 5:2. Accordingly, like common law fraud, it requires a showing
of intentional deception by the defendant. The Rushville P.C. conceded at a hearing on the cross
motions for summary judgment that the Fort Wayne firm and its partners never intentionally mis-
represented themselves or their partnership as being the same as or associated with the Rushville
P.C. and that they never passed off their services as those of the Rushville P.C. Accordingly,
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since the Rushville P.C. failed to designate any evidence of intentional misrepresentation or de-
ception by the Fort Wayne firm or anyone associated with it, the trial court properly granted
summary judgment to the Fort Wayne firm on the passing off claim.
B. Trade Name Infringement
The Rushville P.C.’s complaint also alleges that “The defendants’ use of the plaintiff’s
name . . . has created confusion in the marketplace” as to the source of the defendants’ legal ser-
vices. The Court of Appeals treated this as a claim for unfair competition and cited Hammons
Mobile Homes, Inc. v. Laser Mobile Home Transport, Inc., 501 N.E.2d 458, 461 (Ind. Ct. App.
1986), trans. denied, for the proposition that actionable unfair competition consists of passing off
and requires a showing that the defendant intended to deceive. We do not agree that unfair com-
petition is limited to passing off. Nor does every ground of unfair competition require inten-
tional wrongdoing. In Bartholomew County Beverage Co. v. Barco Beverage Corp., 524 N.E.2d
353, 358 (Ind. Ct. App. 1988) the Court of Appeals correctly observed that “Although the law of
unfair competition has been defined as the palming off of ones goods or services as that of some
one else, and the attempt thereof, the tort of unfair competition is much broader and also includes
actions for the interference with a contract or business relationship, as well as for predatory price
cutting.” (internal citations omitted). See also Moseley v. Secret Catalogue, Inc., 537 U.S. 418,
428 (2002) (“Traditional trademark infringement law is part of a broader law of unfair competi-
tion that has its sources in English common law, and was largely codified in the Trademark Act
of 1946 (Lanham Act)”) (internal citations omitted).
Use of confusingly similar corporate, business and professional names has been labeled
unfair competition by courts. See Moseley, 537 U.S. at 428; McCarthy, supra, at § 1:10. It is
more precisely described as trade name infringement, which like passing off, is a subspecies of
unfair competition. We take the Rushville P.C.’s allegation of “confusion in the marketplace” as
asserting a claim for trade name infringement. A trade name is “a word, name, symbol, device,
or other designation, or a combination of such designations, that is distinctive of a person’s busi-
ness or other enterprise and that is used in a manner that identifies that business or enterprise and
distinguishes it from the businesses or enterprises of others.” Restatement (Third) of Unfair
Competition § 12. Both the Rushville P.C. and the Fort Wayne firm are using a variant of the
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common surname of their principals as a trade name. At common law, trade name infringement
exists when a defendant’s use of a name is likely to cause confusion as to the source of goods or
products, irrespective of whether the defendant has a subjective intent to deceive or confuse. B-
lue Ribbon Feed Co. v. Farmers Union Cent. Exch., Inc., 731 F.2d 415, 418 (7th Cir. 1984);
Hulburt Oil & Grease Co. v. Hulburt Oil & Grease Co., 371 F.2d 251, 256 (7th Cir. 1966);
Metro. Life Ins. Co. v. Metro. Ins. Co., 277 F.2d 896, 900 (7th Cir. 1960); Restatement (Third)
of Unfair Competition § 20 cmt. c. Although evidence of an intent to deceive is not required for
trade name infringement, it can create a rebuttable inference of a likelihood of confusion. See
Restatement (Third) of Unfair Competition § 20 cmt. c. And once infringement is established,
the scope of relief may also be more extensive if the defendant had an intent to deceive. Id. at §§
35-37.
Because intent to deceive is not a required element of a claim of common law trade name
infringement, we do not agree with the conclusion of the trial court and the Court of Appeals that
intent to deceive is a necessary component of the Rushville P.C.’s claim. We nevertheless agree
that the Court of Appeals was correct in affirming the trial court’s grant of summary judgment to
the Fort Wayne firm. As a reviewing court, we are not limited to reviewing the trial court’s rea-
sons for granting or denying summary judgment but rather may affirm a grant of summary
judgment upon any theory supported by the evidence. Bernstein v. Glavin, 725 N.E.2d 455, 458-
59 (Ind. Ct. App. 2000), trans. denied. We conclude that the undisputed facts establish the Rush-
ville P.C. is not entitled to the statewide protection it seeks, and that the evidence does not sup-
port even localized protection.
In order to state a cognizable claim for trade name infringement, a plaintiff must make a
threshold showing of a protectable trade name. At common law it was held that every person
had an absolute right to use his own name as his own property and had the same right to use and
enjoy it as any other species of property. See, e.g., Thaddeus Davids Co. v. Davids Mfg. Co.,
233 U.S. 461, 470-71 (1914); Brown Chem. Co. v. Meyer, 139 U.S. 540, 544 (1891). Modern
authority holds that a trade name, including a personal name, is protectable if it is distinctive.
See Restatement (Third) of Unfair Competition §§ 9-12. Personal names, including surnames,
are not “inherently distinctive” and are only protectable as trademarks or trade names upon proof
of secondary meaning. Id. at § 14 cmt. e. Secondary meaning denotes that the name, in this case
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the surname “Keaton,” or the brand “Keaton and Keaton,” although not inherently distinctive,
has come to be uniquely associated with a particular business through use. Id. The existence of
secondary meaning is a question of fact, with the burden of proof on the person claiming rights
in the name. Id. at § 13 cmt. a. Tracking the original common law roots of this doctrine, we
think that where the alleged trade name is the surname of the alleged infringer, the burden is
even higher.
In the present case, the Rushville P.C. has failed to meet its burden to demonstrate that
the name “Keaton” has acquired a unique association with the Rushville P.C. At best, the evi-
dence designated by the Rushville P.C. showed one isolated instance of confusion by the clerk of
the court in Rushville where the Rushville P.C. is a well known and respected local firm. This is
woefully insufficient to establish that the Rushville P.C.’s use of its name has recognition by the
general public or any significant statewide segment of consumers of legal services. Law firms
with the same or similar names are abundant, and there is no evidence that the Rushville P.C. has
any name recognition in Fort Wayne over 100 miles from Rushville. To the extent the Rushville
P.C. has demonstrated a secondary meaning in its locale, we agree with the trial court that the
three instances of alleged name confusion designated by the Rushville P.C. in its motion for
summary judgment are insufficient as a matter of law to establish actionable infringement. See
Hammons Mobile Homes, 501 N.E.2d at 462 (a person cannot be held liable for “incidental
damages to a rival in business using the same name”) (internal quotations omitted). The Rush-
ville P.C. has not identified any injury it has suffered arising from the alleged instances of confu-
sion. Accordingly, we conclude that the trial court properly granted summary judgment to the
Fort Wayne firm on the Rushville P.C.’s trade name infringement claim.
Conclusion
Transfer is granted. The trial court’s grant of summary judgment to the Fort Wayne firm
on all of the Rushville P.C.’s claims is affirmed.
Shepard, C.J., Sullivan, and Rucker, JJ. concur.
Dickson, J., concurs in result.
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