What next for trademark jurisprudence at the Supreme Court? Experts have their say

  • Justice Anthony Kennedy announces he will step down from US Supreme Court
  • Predicted that his retirement will lead to a conservative majority on the bench
  • Trademark experts split on future; “could broaden the ability to enforce”

Justice Anthony Kennedy of the US Supreme Court announced his imminent retirement on Wednesday, meaning that US President Donald Trump will now have a second opportunity to nominate a justice. With the prospect of a more right-thinking Supreme Court bench, leading IP attorneys are split over what it means for trademark cases.

In a letter sent to the President, Justice Kennedy confirmed his decision to step down, and said it “has been the greatest honour and privilege to serve our nation in the federal judiciary for 43 years, 30 of those years on the Supreme Court”. His retirement will take effect from July 31 2018. The move, which was not necessarily expected to happen before the midterm elections later this year, and subsequent replacement appointment is set to transform the Supreme Court. As CNN notes, it will lead to Trump nominating a second justice to the bench, and he is expected to replace Kennedy with a “young, conservative jurist”. This means, therefore, that there would be five conservative justices (of nine), meaning a conservative majority for years (and possibly decades) to come.

The implications of this could be far-reaching, especially with respect to issues like the death penalty, affirmative action, same-sex marriage and abortion. But when it comes to those related to trademarks and related rights, the consequences of a more conservative bench are unclear. John C Nishi, member and trademarks and copyrights practice group co-chair at Dickinson Wright, tells World Trademark Review that it is hard to make predictions: “It hasn’t been my impression that anyone on the Supreme Court has a particular bias as to trademark matters, and it’s extremely hard to know whether any of the potential replacements might push things one way or another.” Agreeing with that sentiment is Paul F Kilmer, a partner at Holland & Knight, who says that “trademark law seems to be neither liberal nor conservative”, adding that “I doubt that replacing Justice Kennedy on the Supreme Court will have an impact on trademark jurisprudence”.

On the flip-side, Monica Riva Talley, a director and head of the trademark and brand protection practice at Sterne Kessler, notes there could be a couple of ways that yesterday’s development shapes the future. “There are two possible ways in which a more conservative court may impact the interpretation of trademark rights and the Lanham Act,” she explains. “First, conservative courts seem skeptical of laws that may chill lawful speech. The portion of the Lanham Act that prohibits registration of disparaging marks was already struck down as unconstitutional by the current Court (Matal v Tam), and the similar prohibition on registration of scandalous and immoral marks is on shaky ground, awaiting possible review by the Supreme Court. Second, conservative courts are reputed to be more pro-business, so it is conceivable that such a court would be open to a broadening the ability to enforce accorded to trademark owners.”

It is, of course, too early to tell whether Trump’s nominee (expected to come from the White House’s previously published list – although a Fox News personality could be his surprise pick) will have a significant impact on IP jurisprudence in the future. But it is near-certain that the highest court in the United States will be considerably more conservative-leaning in the future.

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