The Slants, a Portland-based, Asian-American rock group was back in court Wednesday, January 18th. This time at the highest court in the land: the Supreme Court of the United States. The justices agreed to hear oral arguments in the case Lee v. Tam to decide whether or not the disparaging trademark rule of the Lanham Act violates the first amendment.

In a previous article, we discussed how the group tried to trademark their band name with the United States Patent and Trademark Office (USPTO) only to be denied under the Lanham Act. The USPTO found the group’s name would disparage, among others, “institutions, beliefs or national symbols,” specifically, people of Asian descent.

The group appealed the USPTO’s rejection, and the United States Court of Appeals for the Federal Circuit (CAFC) held that the failure to register The Slants’ trademark amounted to a violation of the First Amendment. Judge Kimberly A. Moore said even though the rejected trademarks “convey hurtful speech that harms members of oft-stigmatized communities,” the First Amendment “protects even hurtful speech.”

Justices of the Supreme Court listened to oral arguments and heavily questioned both sides starting with Deputy Solicitor General Malcolm Stewart. Stewart’s opening statements discussed why the trademark was denied and added that a copyright, which is closely tied to the first amendment, would apply sufficient intellectual property protection to the Slants.

Justice Kennedy responded to Stewart and called into question his opening statements, noting that such positions “ignore the fact that we have a culture in which we have tee shirts and logos and rock bands and so forth that are expressing a point of view. They are using the market to express views.”

Chief Justice Roberts added to Kennedy’s sentiment and stated “I’m concerned that your government program argument is circular. The claim is you’re not registering on my mark because it’s disparaging, and your answer is, well, we run a program that doesn’t include disparaging trademarks, so that’s why you’re excluded. It doesn’t seem to me to advance the argument very much.”

Justice Breyer stated “What purpose or objective of trademark protection does this particular disparagement provision help along or further?” he asked. “And I’m thinking of the provision that says you can say something nice about a minority group, but you can’t say something bad about them.”

Stewart responded that a trademark is a source identifier and not expressive in its own right and added “[a]s long as you are promoting your own product, saying nice things about people, we’ll put up with that level of distraction.”

Justice Ginsberg questioned if the applicant’s filed for “Slants are Superior” if that would be denied “[w]ould that then be take[n] outside the disparagement bar?”

When it was John Connell’s turn to speak, the justices wasted no time presenting their questions. Connell, attorney for the band’s front man Simon Tam, opened with the argument that if his client’s band were called the “Proud Asians” this case would not have amounted to anything. In regard to Justice Kennedy’s comment, Connell confirmed his position that the First Amendment should absolutely protect speech as far as trademarks are concerned.

Justice Sonia Sotamayor, a trademark specialist in private practice, told Connell, “[n]o one is stopping your client from calling itself The Slants. No one is stopping them from advertising themselves that way.” Sotomayor further stated that this trademark application is almost “asking the government to endorse your name to the extent of protecting it.”

Connell stated that the denial of the trademark was a burden to his client because he was “denied the benefits of legal protections that are necessary for him to compete in the marketplace with another band.”

Justice Sotomayor countered that “[h]e can still compete. He’s just not getting as much as he would like, but he’s not stopped from doing what he’s doing.”

Chief Justice Roberts told Connell “it seems to me that you’re defining the government program differently than the government would.”

Connell respectfully disagreed and stated that the Lanham Act is not clear and its purpose is to reduce “consumer confusion and the protection of the goodwill of the mark holder. “

The case was submitted and a decision is expected to be issued prior to the court’s term in in June.

To read the arguments in its entirety click here.