In RE:TAM en Banc

United States Court of Appeals

for the Federal Circuit

______________________

IN RE SIMON SHIAO TAM

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2014-1203

______________________

Appeal from the United States Patent and Trademark

Office, Trademark Trial and Appeal Board in No.

85/472,044.

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Decided: December 22, 2015

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RONALD D. COLEMAN, Archer & Greiner, P.C., Hack-

ensack, NJ, argued for appellant. Also represented by

JOEL GEOFFREY MACMULL; JOHN C. CONNELL, Had-

donfield, NJ; DARTH M. NEWMAN, Martin Law Firm LLC,

Pittsburgh, PA.

DANIEL TENNY, Appellate Staff, Civil Division, United

States Department of Justice, Washington, DC, argued

for appellee Michelle K. Lee. Also represented by

BENJAMIN C. MIZER, MARK R. FREEMAN, JOSHUA MARC

SALZMAN; NATHAN K. KELLEY, THOMAS W. KRAUSE, MOLLY

R. SILFEN, CHRISTINA HIEBER, THOMAS L. CASAGRANDE,

Office of the Solicitor, United States Patent and Trade-

mark Office, Alexandria, VA.

LEE ROWLAND, Speech, Privacy & Technology, Ameri-

can Civil Liberties Union Foundation, New York, NY,

argued for amici curiae American Civil Liberties Union,

2 IN RE TAM

American Civil Liberties Union of Oregon, American Civil

Liberties Union of the National Capital Area. Also repre-

sented by ESHA BHANDARI, BRETT MAX KAUFMAN; ARTHUR

B. SPITZER, American Civil Liberties Union of the Nation-

al Capital Area, Washington, DC; MATHEW W. DOS

SANTOS, ACLU of Oregon, Portland, OR.

JEFFREY JOSEPH LOPEZ, Drinker Biddle & Reath LLP,

Washington, DC, for amici curiae Amanda Blackhorse,

Marcus Briggs-Cloud, Phillip Gover, Jillian Pappan,

Courtney Tsotigh. Also represented by JESSE A. WITTEN.

MEGAN LEEF BROWN, Wiley Rein, LLP, Washington,

DC, for amici curiae Cato Institute, The Rutherford

Institute. Also represented by CHRISTOPHER J. KELLY,

JOSHUA S. TURNER, JENNIFER L. ELGIN, DWAYNE D. SAM;

Cato Institute also represented by ILYA SHAPIRO, Cato

Institute, Washington DC; The Rutherford Institute also

represented by DOUGLAS R. MCKUSICK, JOHN W.

WHITEHEAD, Charlottesville, VA.

MARC J. RANDAZZA, Randazza Legal Group, Las Ve-

gas, NV, for amicus curiae First Amendment Lawyers

Association. Also represented by RONALD D. GREEN, JR.

CHARANJIT BRAHMA, Troutman Sanders LLP, San

Francisco, CA, for amici curiae Fred T. Korematsu Center

for Law and Equality, National Asian Pacific American

Bar Association, South Asian Bar Association of Washing-

ton, DC. National Asian Pacific American Bar Association

also represented by GEORGE C. CHEN, Bryan Cave LLP,

Phoenix, AZ.

HUGH C. HANSEN, Fordham University School of Law,

New York, NY, as amicus curiae pro se.

LAWRENCE KURT NODINE, Ballard Spahr LLP, Atlan-

ta, GA, for amicus curiae International Trademark Asso-

IN RE TAM 3

ciation. Also represented by ROBERT D. CARROLL, Goodwin

Procter LLP, Boston, MA.

ROBERT LLOYD RASKOPF, Quinn Emanuel Urquhart &

Sullivan, LLP, New York, NY, for amicus curiae Pro-

Football, Inc. Also represented by SANFORD IAN

WEISBURST, TODD ANTEN.

PHILLIP R. MALONE, Juelsgaard Intellectual Property

and Innovation Clinic, Mills Legal Clinic, Stanford Law

School, Stanford, CA, for amicus curiae Public Knowledge.

Also represented by JEFFREY THEODORE PEARLMAN.

RICHARD L. STANLEY, Law Office of Richard L. Stan-

ley, Houston TX, for amicus curiae Richard L. Stanley.

______________________

Before PROST, Chief Judge, NEWMAN, LOURIE, DYK,

MOORE, O’MALLEY, REYNA, WALLACH, TARANTO, CHEN,

HUGHES, and STOLL, Circuit Judges.

Opinion for the court filed by Circuit Judge MOORE, in

which Chief Judge PROST and Circuit Judges NEWMAN,

O’MALLEY, WALLACH, TARANTO, CHEN, HUGHES, and

STOLL join.

Concurring opinion filed by Circuit Judge O’MALLEY, in

which Circuit Judge WALLACH joins.

Opinion concurring in part and dissenting in part filed by

Circuit Judge DYK, in which Circuit Judges LOURIE and

REYNA join with respect to parts I, II, III, and IV.

Dissenting opinion filed by Circuit Judge LOURIE.

Dissenting opinion filed by Circuit Judge REYNA.

MOORE, Circuit Judge.

Section 2(a) of the Lanham Act bars the Patent and

Trademark Office (“PTO”) from registering scandalous,

immoral, or disparaging marks. 15 U.S.C. § 1052(a). The

4 IN RE TAM

government enacted this law—and defends it today—

because it disapproves of the messages conveyed by

disparaging marks. It is a bedrock principle underlying

the First Amendment that the government may not

penalize private speech merely because it disapproves of

the message it conveys. That principle governs even

when the government’s message-discriminatory penalty is

less than a prohibition.

Courts have been slow to appreciate the expressive

power of trademarks. Words—even a single word—can be

powerful. Mr. Simon Shiao Tam named his band THE

SLANTS to make a statement about racial and cultural

issues in this country. With his band name, Mr. Tam

conveys more about our society than many volumes of

undisputedly protected speech. Another rejected mark,

STOP THE ISLAMISATION OF AMERICA, proclaims

that Islamisation is undesirable and should be stopped.

Many of the marks rejected as disparaging convey hurtful

speech that harms members of oft-stigmatized communi-

ties. But the First Amendment protects even hurtful

speech.

The government cannot refuse to register disparaging

marks because it disapproves of the expressive messages

conveyed by the marks. It cannot refuse to register marks

because it concludes that such marks will be disparaging

to others. The government regulation at issue amounts to

viewpoint discrimination, and under the strict scrutiny

review appropriate for government regulation of message

or viewpoint, we conclude that the disparagement pro-

scription of § 2(a) is unconstitutional. Because the gov-

ernment has offered no legitimate interests justifying

§ 2(a), we conclude that it would also be unconstitutional

under the intermediate scrutiny traditionally applied to

regulation of the commercial aspects of speech. We there-

fore vacate the Trademark Trial and Appeal Board’s

(“Board”) holding that Mr. Tam’s mark is unregistrable,

IN RE TAM 5

and remand this case to the Board for further proceed-

ings.

BACKGROUND

I. The Lanham Act

Congress enacted the Lanham Act in 1946 to provide

a national system for registering and protecting trade-

marks used in interstate and foreign commerce. Con-

gress’s purpose in enacting the Lanham Act was to

advance the two related goals of trademark law. First,

the purpose of the Lanham Act is to “protect the public so

it may be confident that, in purchasing a product bearing

a particular trade-mark which it favorably knows, it will

get the product which it asks for and wants to get.” Two

Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 782 n.15

(1992) (Stevens, J., concurring) (quoting S. Rep. No. 79-

1333, at 3 (1946)). Second, the Lanham Act ensures that

a markholder can protect “his investment from . . . misap-

propriation by pirates and cheats.” Id.; see also Inwood

Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 n.14

(1982) (“By applying a trademark to goods produced by

one other than the trademark’s owner, the infringer

deprives the owner of the goodwill which he spent energy,

time, and money to obtain. At the same time, the infring-

er deprives consumers of their ability to distinguish

among the goods of competing manufacturers.” (citations

omitted)).

“Registration is significant. The Lanham Act confers

important legal rights and benefits on trademark owners

who register their marks.” B&B Hardware, Inc. v. Hargis

Ind., Inc., 135 S. Ct. 1293, 1300 (2015) (quotation marks

omitted). These benefits—unavailable in the absence of

federal registration—are numerous, and include both

substantive and procedural rights. The holder of a federal

trademark has a right to exclusive nationwide use of that

mark where there was no prior use by others. See 15

U.S.C. §§ 1072, 1115. Because the common law grants a

6 IN RE TAM

markholder the right to exclusive use only in the geo-

graphic areas where he has actually used his mark, see 5

J. Thomas McCarthy, McCarthy on Trademarks and

Unfair Competition § 26:32 (4th ed.) (hereinafter “McCar-

thy”), holders of a federally registered trademark have an

important substantive right they could not otherwise

obtain. Also, a registered mark is presumed to be valid,

15 U.S.C. § 1057(b), and the mark becomes incontestable

(with certain exceptions) after five years of consecutive

post-registration use, id. § 1065; see also B&B Hardware,

135 S. Ct. at 1310 (“Incontestability is a powerful protec-

tion.”). A markholder may sue in federal court to enforce

his trademark, 15 U.S.C. § 1121, and he may recover

treble damages if he can show infringement was willful,

id. § 1117. He may also obtain the assistance of U.S.

Customs and Border Protection in restricting importation

of infringing or counterfeit goods, id. § 1124, 19 U.S.C.

§ 1526, prevent “cybersquatters” from misappropriating

his domain name, 15 U.S.C. § 1125(d), and qualify for a

simplified process for obtaining recognition and protection

of his mark in countries that have signed the Paris Con-

vention, see id. § 1141b (Madrid Protocol); Paris Conven-

tion for the Protection of Industrial Property art.

6quinquies, July 14, 1967, 21 U.S.T. 1583, 828 U.N.T.S.

305. Lastly, registration operates as a complete defense

to state or common law claims of trademark dilution. 15

U.S.C. § 1125(c)(6).

Under the Lanham Act, the PTO must register

source-identifying trademarks unless the mark falls into

one of several categories of marks precluded from regis-

tration. Id. § 1052 (“No trademark by which the goods of

the applicant may be distinguished from the goods of

others shall be refused registration on the principal regis-

ter on account of its nature unless . . . .” (emphasis add-

ed)). Many of these categories bar the registration of

deceptive or misleading speech, because such speech

actually undermines the interests served by trademark

IN RE TAM 7

protection and, thus, the Lanham Act’s purposes in

providing for registration. For example, a mark may not

be registered if it resembles a registered mark such that

its use is likely to “cause confusion, or to cause mistake, or

to deceive,” § 2(d), or if it is “deceptively misdescriptive,”

§ 2(e). These restrictions on registration of deceptive

speech do not run afoul of the First Amendment. See

Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm’n,

447 U.S. 557, 563 (1980) (“The government may ban

forms of communication more likely to deceive the public

than to inform it.”); see also Friedman v. Rogers, 440 U.S.

1, 13, 15–16 (1979); Ohralik v. Ohio State Bar Ass’n, 436

U.S. 447, 462–63 (1978).

Section 2(a), however, is a hodgepodge of restrictions.

Among them is the bar on registration of a mark that

“[c]onsists of or comprises immoral, deceptive, or scandal-

ous matter; or matter which may disparage or falsely

suggest a connection with persons, living or dead, institu-

tions, beliefs, or national symbols, or bring them into

contempt or disrepute.” Section 2(a) contains proscrip-

tions against deceptive speech, for example, the prohibi-

tion on deceptive matter or the prohibition on falsely

suggesting a connection with a person or institution. But

other restrictions in § 2(a) differ in that they are based on

the expressive nature of the content, such as the ban on

marks that may disparage persons or are scandalous or

immoral. These latter restrictions cannot be justified on

the basis that they further the Lanham Act’s purpose in

preventing consumers from being deceived. These exclu-

sions from registration do not rest on any judgment that

the mark is deceptive or likely to cause consumer confu-

sion, nor do they protect the markholder’s investment in

his mark. They deny the protections of registration for

reasons quite separate from any ability of the mark to

serve the consumer and investment interests underlying

trademark protection. In fact, § 2(a)’s exclusions can

undermine those interests because they can even be

8 IN RE TAM

employed in cancellation proceedings challenging a mark

many years after its issuance and after the markholder

has invested millions of dollars protecting its brand

identity and consumers have come to rely on the mark as

a brand identifier.

This case involves the disparagement provision of

§ 2(a). 1 Section 2(a)’s ban on the federal registration of

“immoral” or “scandalous” marks originated in the trade-

mark legislation of 1905. See Act of Feb. 20, 1905,

ch. 592, § 5(a), 33 Stat. 724, 725. The provision barring

registration based on disparagement first appeared in the

Lanham Act in 1946. Pub. L. 79-489, § 2(a), 60 Stat. 427,

428 (codified at 15 U.S.C. § 1052(a)). It had no roots in

the earlier trademark statute or the common law. There

were few marks rejected under the disparagement provi-

sion following enactment of the Lanham Act. Only in the

last several decades has the disparagement provision

become a more frequent ground of rejection or cancella-

tion of trademarks. Marks that the PTO has found to be

disparaging include: REDSKINS, Pro-Football, Inc. v.

Blackhorse, No. 1-14-CV-01043-GBL, 2015 WL 4096277

(E.D. Va. July 8, 2015) (2014 PTO cancellation determina-

1 We limit our holding in this case to the constitu-

tionality of the § 2(a) disparagement provision. Recogniz-

ing, however, that other portions of § 2 may likewise

constitute government regulation of expression based on

message, such as the exclusions of immoral or scandalous

marks, we leave to future panels the consideration of the

§ 2 provisions other than the disparagement provision at

issue here. To be clear, we overrule In re McGinley, 660

F.2d 481 (C.C.P.A. 1981), and other precedent insofar as

they could be argued to prevent a future panel from

considering the constitutionality of other portions of § 2 in

light of the present decision.

IN RE TAM 9

tion currently on appeal in Fourth Circuit); STOP THE

ISLAMISATION OF AMERICA, In re Geller, 751 F.3d

1355 (Fed. Cir. 2014); THE CHRISTIAN PROSTITUTE

(2013); AMISHHOMO (2013); MORMON WHISKEY

(2012); KHORAN for wine, In re Lebanese Arak Corp., 94

U.S.P.Q.2d 1215 (T.T.A.B. Mar. 4, 2010); HAVE YOU

HEARD THAT SATAN IS A REPUBLICAN? (2010);

RIDE HARD RETARD (2009); ABORT THE

REPUBLICANS (2009); HEEB, In re Heeb Media, LLC,

89 U.S.P.Q.2d 1071 (T.T.A.B. Nov. 26, 2008); SEX ROD,

Bos. Red Sox Baseball Club L.P. v. Sherman, 88

U.S.P.Q.2d 1581 (T.T.A.B. Sept. 9, 2008) (sustaining an

opposition on multiple grounds, including disparage-

ment); MARRIAGE IS FOR FAGS (2008); DEMOCRATS

SHOULDN’T BREED (2007); REPUBLICANS

SHOULDN’T BREED (2007); 2 DYKE MINIMUM (2007);

WET BAC/WET B.A.C. (2007); URBAN INJUN (2007);

SQUAW VALLEY, In re Squaw Valley Dev. Co., 80

U.S.P.Q.2d 1264 (T.T.A.B. June 2, 2006); DON’T BE A

WET BACK (2006); FAGDOG (2003); N.I.G.G.A.

NATURALLY INTELLIGENT GOD GIFTED AFRICANS

(1996); a mark depicting a defecating dog, Greyhound

Corp. v. Both Worlds, Inc., 6 U.S.P.Q.2d 1635 (T.T.A.B.

Mar. 30, 1988) (found to disparage Greyhound’s trade-

marked running dog logo); an image consisting of the

national symbol of the Soviet Union with an “X” over it, In

re Anti-Communist World Freedom Cong., Inc., 161

U.S.P.Q. 304 (T.T.A.B. Feb. 24, 1969); DOUGH-BOY for

“a prophylactic preparation for the prevention of venereal

diseases,” Doughboy Indus., Inc. v. Reese Chem. Co., 88

U.S.P.Q. 227 (T.T.A.B. Jan. 25, 1951).

A disparaging mark is a mark which “dishonors by

comparison with what is inferior, slights, deprecates,

degrades, or affects or injures by unjust comparison.”

Geller, 751 F.3d at 1358 (alterations omitted). To deter-

mine if a mark is disparaging under § 2(a), a trademark

examiner of the PTO considers:

10 IN RE TAM

(1) What is the likely meaning of the matter in

question, taking into account not only dictionary

definitions, but also the relationship of the matter

to the other elements in the mark, the nature of

the goods or services, and the manner in which

the mark is used in the marketplace in connection

with the goods or services; and

(2) If that meaning is found to refer to identifiable

persons, institutions, beliefs or national symbols,

whether that meaning may be disparaging to a

substantial composite of the referenced group.

Trademark Manual of Exam. Proc. (“TMEP”)

§ 1203.03(b)(i) (Jan. 2015 ed.) (citing Geller, 751 F.3d at

1358). If the examiner “make[s] a prima facie showing

that a substantial composite, although not necessarily a

majority, of the referenced group would find the proposed

mark, as used on or in connection with the relevant goods

or services, to be disparaging in the context of contempo-

rary attitudes,” the burden shifts to the applicant for

rebuttal. Id. If the applicant fails to rebut the prima

facie case of disparagement, the examiner refuses to

register the mark. The Trademark Manual of Examining

Procedure does not require an examiner who finds a mark

disparaging to consult her supervisor or take any further

steps to ensure the provision is applied fairly and consist-

ently across the agency. Compare TMEP § 1203.03 (no

discussion of action to take if examiner finds mark dis-

paraging), with TMEP § 1203.01 (requiring examiner who

finds a mark scandalous or immoral to consult his super-

visor). A single examiner, with no input from her super-

visor, can reject a mark as disparaging by determining

that it would be disparaging to a substantial composite of

the referenced group.

II. Facts of This Case

Mr. Tam is the “front man” for the Asian-American

dance-rock band The Slants. Mr. Tam named his band

IN RE TAM 11

The Slants to “reclaim” and “take ownership” of Asian

stereotypes. J.A. 129–30. The band draws inspiration for

its lyrics from childhood slurs and mocking nursery

rhymes, J.A. 130, and its albums include “The Yellow

Album” and “Slanted Eyes, Slanted Hearts.” The band

“feel[s] strongly that Asians should be proud of their

cultural heri[ta]ge, and not be offended by stereotypical

descriptions.” J.A. 52. With their lyrics, performances,

and band name, Mr. Tam and his band weigh in on cul-

tural and political discussions about race and society that

are within the heartland of speech protected by the First

Amendment.

On November 14, 2011, Mr. Tam filed the instant ap-

plication (App. No. 85/472,044) seeking to register the

mark THE SLANTS for “Entertainment in the nature of

live performances by a musical band,” based on his use of

the mark since 2006. 2 The examiner refused to register

Mr. Tam’s mark, finding it likely disparaging to “persons

of Asian descent” under § 2(a). The examiner found that

the mark likely referred to people of Asian descent in a

disparaging way, explaining that the term “slants” had “a

long history of being used to deride and mock a physical

feature” of people of Asian descent. J.A. 42. And even

though Mr. Tam may have chosen the mark to “reappro-

priate the disparaging term,” the examiner found that a

2 This is Mr. Tam’s second application for the mark

THE SLANTS. In 2010, Mr. Tam filed App.

No. 77/952,263 seeking to register the mark for “Enter-

tainment, namely, live performances by a musical band.”

The examiner found the mark disparaging to people of

Asian descent under § 2(a) and therefore refused to regis-

ter it. Mr. Tam appealed that refusal to the Board, but

the case was dismissed for failure to file a brief.

12 IN RE TAM

substantial composite of persons of Asian descent would

find the term offensive. J.A. 43.

The Board affirmed the examiner’s refusal to register

the mark. The Board wrote that “it is abundantly clear

from the record not only that THE SLANTS . . . would

have the ‘likely meaning’ of people of Asian descent but

also that such meaning has been so perceived and has

prompted significant responses by prospective attendees

or hosts of the band’s performances.” In re Tam,

No. 85472044, 2013 WL 5498164, at *5 (T.T.A.B. Sept. 26,

2013) (“Board Opinion”). To support its finding that the

mark likely referred to people of Asian descent, the Board

pointed to dictionary definitions, the band’s website,

which displayed the mark next to “a depiction of an Asian

woman, utilizing rising sun imagery and using a stylized

dragon image,” and a statement by Mr. Tam that he

selected the mark in order to “own” the stereotype it

represents. Id. The Board also found that the mark is

disparaging to a substantial component of people of Asian

descent because “[t]he dictionary definitions, reference

works and all other evidence unanimously categorize the

word ‘slant,’ when meaning a person of Asian descent, as

disparaging,” and because there was record evidence of

individuals and groups in the Asian community objecting

to Mr. Tam’s use of the word. Id. at *7. The Board there-

fore disqualified the mark for registration under § 2(a).

Mr. Tam appealed, arguing that the Board erred in

finding the mark disparaging and that § 2(a) is unconsti-

tutional. On appeal, a panel of this Court affirmed the

Board determination that the mark is disparaging. 3 In re

Tam, 785 F.3d 567, 570–71 (Fed. Cir. 2015) (“Panel Opin-

3 We reinstate the panel’s holding that Mr. Tam’s

mark is disparaging.

IN RE TAM 13

ion”), reh’g en banc granted, opinion vacated, 600 F. App’x

775 (Fed. Cir. 2015) (“En Banc Order”). Although the

term “slants” has several meanings, the panel found that

substantial evidence supported the Board’s finding that

the mark likely refers to people of Asian descent. Panel

Op. at 570–71. This included an article in which Mr. Tam

described the genesis of the band’s name by explaining: “I

was trying to think of things that people associate with

Asians. Obviously, one of the first things people say is

that we have slanted eyes. . . .” Id. at 570 (quoting J.A.

130). Moreover, the band’s Wikipedia page stated that

the band’s name is “derived from an ethnic slur for

Asians.” Id. (quoting J.A. 57). The Wikipedia entry

quoted Mr. Tam: “We want to take on these stereotypes

that people have about us, like the slanted eyes, and own

them. We’re very proud of being Asian—we’re not going

to hide that fact. The reaction from the Asian community

has been positive.” J.A. 57. The record included an image

from the band’s website in which the mark THE SLANTS

is set against Asian imagery. Id. (citing J.A. 59). Finally,

the record included unrebutted evidence that both indi-

viduals and Asian groups have perceived the term as

referring to people of Asian descent. Id. at 570–71 (citing,

e.g., J.A. 95 (“[Mr. Tam] was initially slated to give the

keynote address at the 2009 Asian American Youth

Leadership Conference in Portland. But some conference

supporters and attendees felt the name of the band was

offensive and racist, and out of respect for these opinions

the conference organizers decided to choose someone less

controversial.”)).

The panel also found that substantial evidence sup-

ported the Board’s finding that the mark is disparaging to

a substantial composite of people of Asian descent. Panel

Op. at 571. It noted that the definitions in evidence

universally characterize the word “slant” as disparaging,

offensive, or an ethnic slur when used to refer to a person

of Asian descent, including the dictionary definitions

14 IN RE TAM

provided by Mr. Tam. Id. The record also included a

brochure published by the Japanese American Citizens

League describing the term “slant,” when used to refer to

people of Asian descent, as a “derogatory term” that is

“demeaning” and “cripple[s] the spirit.” Id. (quoting J.A.

48–49). Finally, the record included news articles and

blog posts discussing the offensive nature of the band’s

name. Id. (citing Board Op. at *2–3; J.A. 45, 51, 94–98,

100).

Having found the mark disparaging under § 2(a), the

panel held that binding precedent foreclosed Mr. Tam’s

arguments that § 2(a) is unconstitutional, including Mr.

Tam’s argument that § 2(a) violates the First Amendment

on its face. Panel Op. at 572–73. As the panel explained,

in McGinley, our predecessor court held that the refusal to

register a mark under § 2(a) does not bar the applicant

from using the mark, and therefore does not implicate the

First Amendment. Id. at 572 (citing In re McGinley, 660

F.2d 481, 484 (C.C.P.A. 1981)). The entirety of the

McGinley analysis was:

With respect to appellant’s First Amendment

rights, it is clear that the PTO’s refusal to register

appellant’s mark does not affect his right to use it.

No conduct is proscribed, and no tangible form of

expression is suppressed. Consequently, appel-

lant’s First Amendment rights would not be

abridged by the refusal to register his mark.

660 F.2d at 484 (citations omitted). In subsequent cases,

panels of this Court relied on the holding in McGinley.

See In re Fox, 702 F.3d 633, 635 (Fed. Cir. 2012); In re

Boulevard Entm’t, Inc., 334 F.3d 1336, 1343 (Fed. Cir.

2003); In re Mavety Media Grp., 33 F.3d 1367, 1374 (Fed.

Cir. 1994). Additional views by the panel’s authoring

judge questioned whether the en banc court should recon-

sider the constitutionality of § 2(a) en banc. Panel Op. at

573–85 (Moore, J., additional views).

IN RE TAM 15

More than thirty years have passed since the decision

in McGinley, and in that time both the McGinley decision

and our reliance on it have been widely criticized. 4 Id. at

4 See, e.g., Ritchie v. Simpson, 170 F.3d 1092, 1103

& n.1 (Fed. Cir. 1999) (Newman, J., dissenting); Pro-

Football Inc. v. Harjo, No. 99-1385 (CKK), 2000 WL

1923326, at *4 (D.D.C. Dec. 11, 2000); Stephen Baird,

Moral Intervention in the Trademark Arena: Banning the

Registration of Scandalous and Immoral Trademarks, 83

TRADEMARK REPORTER 661, 685–86 (1993); Justin G.

Blankenship, The Cancellation of Redskins as a Disparag-

ing Trademark: Is Federal Trademark Law an Appropri-

ate Solution for Words That Offend?, 72 U. COLO. L. REV.

415, 443–44 (2001); Terence Dougherty, Group Rights to

Cultural Survival: Intellectual Property Rights in Native

American Cultural Symbols, 29 COLUM. HUM. RTS. L. REV.

355, 383 (1998); Bruce C. Kelber, “Scalping the Redskins:”

Can Trademark Law Start Athletic Teams Bearing Native

American Nicknames and Images on the Road to Racial

Reform?, 17 HAMLINE L. REV. 533, 556 (1994); Paul Ku-

ruk, Goading a Reluctant Dinosaur: Mutual Recognition

Agreements as a Policy Response to the Misappropriation

of Foreign Traditional Knowledge in the United States, 34

PEPP. L. REV. 629, 662 n.209 (2007); Michelle B. Lee,

Section 2(a) of the Lanham Act as a Restriction on Sports

Team Names: Has Political Correctness Gone Too Far?, 4

SPORTS L.J. 65, 66–67 (1997); Jeffrey Lefstin, Does the

First Amendment Bar Cancellation of Redskins?, 52 STAN.

L. REV. 665, 676–77 (2000); Nell Jessup Newton, Memory

and Misrepresentation: Representing Crazy Horse, 27

CONN. L. REV. 1003, 1030 n.109 (1995); Ron Phillips, A

Case for Scandal and Immorality: Proposing Thin Protec-

tion of Controversial Trademarks, 17 U. BALT. INTELL.

PROP. L.J. 55, 67–68 (2008); Jendi Reiter, Redskins and

Scarlet Letters: Why “Immoral” and “Scandalous” Trade-

16 IN RE TAM

573–74. Furthermore, the McGinley analysis was curso-

ry, without citation to legal authority, and decided at a

time when the First Amendment had only recently been

applied to commercial speech. Id. at 574, 581 (citing Cent.

Hudson, 447 U.S. at 566). First Amendment jurispru-

dence on the unconstitutional conditions doctrine and the

protection accorded to commercial speech has evolved

significantly since the McGinley decision. Id. at 574; see

also id. at 574–580 (describing evolution of commercial

speech doctrine and unconstitutional conditions doctrine).

Other courts’ reliance on the reasoning in McGinley

further reinforces the importance of taking this case en

banc. Without analysis, the Fifth Circuit wrote that “[w]e

join our sister circuit in rejecting [the applicant’s] argu-

ment that prohibiting him from registering a mark with

the PTO violates his [F]irst [A]mendment rights.” Test

Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559, 578 n.9

(5th Cir. 2005). And a district court in the Eastern Dis-

trict of Virginia relied upon McGinley when it concluded

that the cancellation of trademark registrations under

§ 2(a) did not implicate the First Amendment. Pro-

Football, Inc., 2015 WL 4096277, at *8–10 (“[T]he Court

agrees with the Federal Circuit and Fifth Circuit and

holds that Section 2(a) of the Lanham Act does not impli-

cate the First Amendment.”).

For these reasons, we sua sponte ordered rehearing

en banc. We asked the parties to file briefs on the follow-

ing issue:

marks Should Be Federally Registrable, 6 FED. CIR. BAR.

J. 191, 197 (1996); Lilit Voskanyan, The Trademark

Principal Register as a Nonpublic Forum, 75 U. CHI. L.

REV. 1295, 1302 (2008).

IN RE TAM 17

Does the bar on registration of disparaging marks

in 15 U.S.C. § 1052(a) violate the First Amend-

ment?

En Banc Order at 775. In addition to the parties’ briefs,

we received ten amicus briefs. We heard oral argument

on October 2, 2015.

DISCUSSION

I. Section 2(a)’s Denial of Important Legal Rights to

Private Speech Based on Disapproval of the Mes-

sage Conveyed Is Subject to, and Cannot Survive,

Strict Scrutiny

Strict scrutiny is used to review any governmental

regulation that burdens private speech based on disap-

proval of the message conveyed. Section 2(a), which

denies important legal rights to private speech on that

basis, is such a regulation. It is therefore subject to strict

scrutiny. It is undisputed that it cannot survive strict

scrutiny.

A. The Disparagement Provision, Which Discriminates

Based on Disapproval of the Message, Is Not Content

or Viewpoint Neutral

“Content-based regulations are presumptively inva-

lid.” R.A.V. v. City of St. Paul, 505 U.S. 377, 382 (1992);

see also Ashcroft v. ACLU, 542 U.S. 656, 660 (2004).

“Content-based laws—those that target speech based on

its communicative content—are presumptively unconsti-

tutional and may be justified only if the government

proves that they are narrowly tailored to serve compelling

state interests.” Reed v. Town of Gilbert, 135 S. Ct. 2218,

2226 (2015); see also Police Dep’t of Chi. v. Mosley, 408

U.S. 92, 95 (1972) (“[A]bove all else, the First Amendment

means that the government has no power to restrict

expression because of its message, its ideas, its subject

matter, or its content.”). A message is content based even

when its reach is defined simply by the topic (subject

18 IN RE TAM

matter) of the covered speech. See Reed, 135 S. Ct. at

2230.

Viewpoint-based regulations, targeting the substance

of the viewpoint expressed, are even more suspect. They

are recognized as a particularly “egregious form of content

discrimination,” id., though they have sometimes been

discussed without being cleanly separated from topic

discrimination, see, e.g., Mosley, 408 U.S. at 95. Such

measures “raise[] the specter that the government may

effectively drive certain ideas or viewpoints from the

marketplace.” Simon & Schuster, Inc. v. Members of N.Y.

State Crime Victims Bd., 502 U.S. 105, 116 (1991); see

also Sorrell v. IMS Health Inc., 131 S. Ct. 2653, 2667

(2011); Rosenberger v. Rector & Visitors of Univ. of Va.,

515 U.S. 819, 828 (1995). “The First Amendment requires

heightened scrutiny whenever the government creates ‘a

regulation of speech because of disagreement with the

message it conveys.’” Sorrell, 131 S. Ct. at 2664 (quoting

Ward v. Rock Against Racism, 491 U.S. 781, 791 (1989)).

This is true whether the regulation bans or merely bur-

dens speech. “[H]eightened judicial scrutiny is warrant-

ed” when an act “is designed to impose a specific, content-

based burden on protected expression.” Id.; see also

Rosenberger, 515 U.S. at 828 (“[T]he government offends

the First Amendment when it imposes financial burdens

on certain speakers based on the content of their expres-

sion.”). “The distinction between laws burdening and

laws banning speech is but a matter of degree. The

Government’s content-based burdens must satisfy the

same rigorous scrutiny as its content-based bans.” United

States v. Playboy Entm’t Grp., Inc., 529 U.S. 803, 812

(2000). “Lawmakers may no more silence unwanted

speech by burdening its utterance than by censoring its

content.” Sorrell, 131 S. Ct. at 2664; see also infra at 27–

38.

It is beyond dispute that § 2(a) discriminates on the

basis of content in the sense that it “applies to particular

IN RE TAM 19

speech because of the topic discussed.” Reed, 135 S. Ct. at

2227. Section 2(a) prevents the registration of disparag-

ing marks—it cannot reasonably be argued that this is

not a content-based restriction or that it is a content-

neutral regulation of speech. And the test for disparage-

ment—whether a substantial composite of the referenced

group would find the mark disparaging—makes clear that

it is the nature of the message conveyed by the speech

which is being regulated. If the mark is found disparag-

ing by the referenced group, it is denied registration.

“Listeners’ reaction to speech is not a content-neutral

basis for regulation.” Forsyth Cty. v. Nationalist Move-

ment, 505 U.S. 123, 134 (1992).

And § 2(a) does more than discriminate on the basis of

topic. It also discriminates on the basis of message con-

veyed, “the idea or message expressed,” Reed, 135 S. Ct.

at 2227; it targets “viewpoints [in] the marketplace,”

Simon & Schuster, 502 U.S. at 116. It does so as a matter

of avowed and undeniable purpose, and it does so on its

face. 5

5 Both parties agree that this appeal is appropriate-

ly viewed as involving a facial challenge. A law is facially

invalid if “a substantial number of its applications are

unconstitutional, judged in relation to the statute’s plain-

ly legitimate sweep.” Wash. State Grange v. Wash. State

Republican Party, 552 U.S. 442, 449 n.6 (2008) (internal

quotation marks omitted). In other words, to succeed in

his facial challenge, Mr. Tam must “demonstrate a sub-

stantial risk that application of the provision will lead to

the suppression of speech.” Nat’l Endowment for the Arts

v. Finley, 524 U.S. 569, 580 (1998). The marks refused

registration under the disparagement provision are

protected speech. And the government refused to register

all of these marks because it found they convey a dispar-

20 IN RE TAM

First, the government enacted and continues to de-

fend § 2(a) “because of disagreement with the message

[disparaging marks] convey[].” Sorrell, 131 S. Ct. at 2664.

When the government refuses to register a mark under

§ 2(a), it does so because it disapproves of “the message a

speaker conveys” by the mark. Reed, 135 S. Ct. at 2227.

Underscoring its hostility to these messages, the govern-

ment repeatedly asserts in its briefing before this court

that it ought to be able to prevent the registration of “the

most vile racial epithets and images,” Appellee’s En Banc

Br. 1, and “to dissociate itself from speech it finds odious,”

id. 41. The legislative history of § 2(a) reinforces this

conclusion. See Hearings on H.R. 4744 Before the Sub-

comm. on Trademarks of the House Comm. on Patents,

76th Cong., 1st Sess. 18–21 (1939) (statement of Rep.

Thomas E. Robertson) (Rep. Maroney) (“[W]e would not

want to have Abraham Lincoln gin.”); id. (Rep. Rogers)

(stating that a mark like “Abraham Lincoln gin ought not

to be used,” and that § 2(a) “would take care of [such]

abuses”). From its enactment in 1946 through its defense

of the statute today, the government has argued that the

aging message. More than a “substantial number” of

§ 2(a)’s applications of the disparagement provision rest

on disapproval of the expressive message conveyed—every

rejection under the disparagement provision is a message-

based denial of otherwise-available legal rights. Thus, we

conclude that § 2(a) is invalid on its face. That conclusion

follows from the standards for First Amendment facial

invalidation and also fits the rationale for those stand-

ards: it avoids maintaining on the books a rule that

called for case-by-case litigation over particular marks,

based on speakers’ intent and government interests or

other factors, which would threaten to produce the very

chilling effect that First Amendment facial-invalidity

standards condemn.

IN RE TAM 21

prohibited marks ought not to be registered because of the

messages the marks convey. When the government

discriminates against speech because it disapproves of the

message conveyed by the speech, it discriminates on the

basis of viewpoint. Sorrell, 131 S. Ct. at 2664.

The legal significance of viewpoint discrimination is

the same whether the government disapproves of the

message or claims that some part of the populace will

disapprove of the message. This point is recognized in the

Supreme Court’s long-standing condemnation of govern-

ment impositions on speech based on adverse reactions

among the public. See, e.g., Snyder v. Phelps, 562 U.S.

443, 460–61 (2011); R.A.V., 505 U.S. 377; Texas v. John-

son, 491 U.S. 397, 414 (1989).

Second, the disparagement provision at issue is view-

point discriminatory on its face. The PTO rejects marks

under § 2(a) when it finds the marks refer to a group in a

negative way, but it permits the registration of marks

that refer to a group in a positive, non-disparaging man-

ner. In this case the PTO refused to register Mr. Tam’s

mark because it found the mark “disparaging” and “objec-

tionable” to people of Asian descent. Tam, 2013 WL

5498164, at *6. But the PTO has registered marks that

refer positively to people of Asian descent. See, e.g.,

CELEBRASIANS, ASIAN EFFICIENCY. Similarly, the

PTO has prohibited the registration of marks that it

found disparaged other groups. See, e.g., Pro-Football,

2015 WL 4096277 (affirming cancellation of REDSKINS);

Geller, 751 F.3d 1355 (affirming rejection of STOP THE

ISLAMISATION OF AMERICA); Lebanese Arak Corp., 94

U.S.P.Q.2d 1215 (refusing to register KHORAN for wine);

Heeb Media, 89 U.S.P.Q.2d 1071 (refusing to register

HEEB); Squaw Valley Dev. Co., 80 U.S.P.Q.2d 1264

(refusing to register SQUAW VALLEY for one class of

goods, but registering it for another). Yet the government

registers marks that refer to particular ethnic groups or

religions in positive or neutral ways—for example,

22 IN RE TAM

NAACP, THINK ISLAM, NEW MUSLIM COOL,

MORMON SAVINGS, JEWISHSTAR, and PROUD 2 B

CATHOLIC.

The government argues that § 2(a) is viewpoint neu-

tral because it does not eliminate any particular view-

point—only particular words. Appellee’s En Banc Br. 39–

40. It argues that under § 2(a), two marks with diametri-

cally opposed viewpoints will both be refused, so long as

those marks use the same disparaging term. Id. 39–40.

It points to Mr. Tam—who does not seek to express an

anti-Asian viewpoint—as proof. It cites a statement in

R.A.V. that a hypothetical statute that prohibited “odious

racial epithets . . . to proponents of all views” would not be

viewpoint discriminatory. Id. 40 (quoting 505 U.S. at

391); see also Ridley v. Mass. Bay Transp. Auth., 390 F.3d

65, 90–91 (1st Cir. 2004) (holding that “guidelines prohib-

iting demeaning or disparaging ads are themselves view-

point neutral”).

The R.A.V. statement does not apply here. The gov-

ernment’s starting point—that it rejects marks conveying

diametrically opposed viewpoints, if they contain the

same offensive word—is incorrect. The PTO looks at what

message the referenced group takes from the applicant’s

mark in the context of the applicant’s use, and it denies

registration only if the message received is a negative one.

Thus, an applicant can register a mark if he shows it is

perceived by the referenced group in a positive way, even

if the mark contains language that would be offensive in

another context. For example, the PTO registered the

mark DYKES ON BIKES, U.S. Reg. No. 3,323,803, after

the applicant showed the term was often enough used

with pride among the relevant population. In Squaw

Valley, the Board allowed the registration of the mark

SQUAW VALLEY in connection with one of the applied-

for classes of goods (namely, skiing-related products), but

not in connection with a different class of goods. 80

U.S.P.Q.2d at *22. Section 2(a) does not treat identical

IN RE TAM 23

marks the same. A mark that is viewed by a substantial

composite of the referenced group as disparaging is reject-

ed. It is thus the viewpoint of the message conveyed

which causes the government to burden the speech. This

form of regulation cannot reasonably be argued to be

content neutral or viewpoint neutral.

The government’s argument also fails because denial

of registration under § 2(a) turns on the referenced

group’s perception of a mark. Speech that is offensive or

hostile to a particular group conveys a distinct viewpoint

from speech that carries a positive message about the

group. STOP THE ISLAMISATION OF AMERICA and

THINK ISLAM express two different viewpoints. Under

§ 2(a), one of these viewpoints garners the benefits of

registration, and one does not. The government enacted

§ 2(a), and defends it today, because it is hostile to the

messages conveyed by the refused marks. Section 2(a) is

a viewpoint-discriminatory regulation of speech, created

and applied in order to stifle the use of certain disfavored

messages. Strict scrutiny therefore governs its First

Amendment assessment—and no argument has been

made that the measure survives such scrutiny.

B. The Disparagement Provision Regulates the Ex-

pressive Aspects of the Mark, Not Its Function As

Commercial Speech

The government cannot escape strict scrutiny by ar-

guing that § 2(a) regulates commercial speech. True,

trademarks identify the source of a product or service,

and therefore play a role in the “dissemination of infor-

mation as to who is producing and selling what product,

for what reason, and at what price.” Va. State Bd. of

Pharmacy v. Va. Citizens Consumer Council, Inc., 425

U.S. 748, 765 (1976). But they very commonly do much

more than that. And, critically, it is always a mark’s

expressive character, not its ability to serve as a source

identifier, that is the basis for the disparagement exclu-

24 IN RE TAM

sion from registration. The disparagement provision

must be assessed under First Amendment standards

applicable to what it targets, which is not the commercial-

speech function of the mark.

This case exemplifies how marks often have an ex-

pressive aspect over and above their commercial-speech

aspect. Mr. Tam explicitly selected his mark to create a

dialogue on controversial political and social issues. With

his band name, Mr. Tam makes a statement about racial

and ethnic identity. He seeks to shift the meaning of, and

thereby reclaim, an emotionally charged word. He advo-

cates for social change and challenges perceptions of

people of Asian descent. His band name pushes people.

It offends. Despite this—indeed, because of it—Mr. Tam’s

band name is expressive speech.

Importantly, every time the PTO refuses to register a

mark under § 2(a), it does so because it believes the mark

conveys an expressive message—a message that is dis-

paraging to certain groups. STOP THE ISLAMISATION

OF AMERICA is expressive. In refusing to register the

mark, the Board explained that the “mark’s admonition to

‘STOP’ Islamisation in America ‘sets a negative tone and

signals that Islamization is undesirable and is something

that must be brought to an end in America.’” Geller, 751

F.3d at 1361. And by finding HEEB and SQUAW

VALLEY disparaging, the PTO necessarily did so based

on its finding that the marks convey an expressive mes-

sage over and above their function as source identifiers—

namely, an expressive message disparaging Jewish and

Native American people. It was these expressive messag-

es that the government found objectionable, and that led

the government to refuse to register or to cancel the

marks. In doing so, the government made moral judg-

ments based solely and indisputably on the marks’ ex-

pressive content. Every single time registration is refused

or cancelled pursuant to the disparagement provision, it

is based upon a determination by the government that the

IN RE TAM 25

expressive content of the message is unsuitable because it

would be viewed by the referenced group as disparaging

them.

“Commercial speech is no exception” to the need for

heightened scrutiny of content-based impositions seeking

to curtail the communication of particular information or

messages. Sorrell, 131 S. Ct. at 2664. Indeed, “[a] con-

sumer’s concern for the free flow of commercial speech

often may be far keener than his concern for urgent

political dialogue.” Id. (internal quotation marks omit-

ted). Strict scrutiny must apply to a government regula-

tion that is directed at the expressive component of

speech. That the speech is used in commerce or has a

commercial component should not change the inquiry

when the government regulation is entirely directed to

the expressive component of the speech. This is not a

government regulation aimed at the commercial compo-

nent of speech. See Va. State Bd. of Pharmacy, 425 U.S.

at 765 (commercial speech involves the “dissemination of

information as to who is producing and selling what

product, for what reason, and at what price”); see id. at

762 (defining “commercial speech” as speech that does “no

more than propose a commercial transaction”); Bd. of Trs.

of State Univ. of N.Y. v. Fox, 492 U.S. 469, 473–74 (1989);

City of Cincinnati v. Discovery Network, Inc., 507 U.S.

410, 423 (1993).

In R.A.V., the Supreme Court explained the key point:

under First Amendment law, government measures often

affect speech that has a dual character, and when they do,

which First Amendment standard is applicable depends

on which aspect of the speech is targeted by the measure

being reviewed. See 505 U.S. at 385 (“The proposition

that a particular instance of speech can be proscribable on

the basis of one feature (e.g., obscenity) but not on the

basis of another (e.g., opposition to the city government) is

commonplace and has found application in many con-

texts.”). In particular, commercial speech that is “inextri-

26 IN RE TAM

cably intertwined” with expressive speech is treated as

expressive speech under the First Amendment when the

expressive aspect is being regulated. Riley v. Nat’l Fed’n

of the Blind, 487 U.S. 781, 796 (1988). Here, § 2(a) tar-

gets speech that is of “public concern,” because it “can be

fairly considered as relating to any matter of political,

social, or other concern to the community.” Snyder v.

Phelps, 562 U.S. 443, 453 (2011) (internal quotation

marks omitted). It therefore “occupies the highest rung of

the hierarchy of First Amendment values, and is entitled

to special protection.” Id. at 452 (internal quotation

marks omitted).

Because § 2(a) discriminates on the basis of the con-

tent of the message conveyed by the speech, it follows that

it is presumptively invalid, and must satisfy strict scruti-

ny to be found constitutional. “In the ordinary case it is

all but dispositive to conclude that a law is content-based

and, in practice, viewpoint-discriminatory.” Sorrell, 131

S. Ct. at 2667. The government here does not even argue

that § 2(a) satisfies strict scrutiny.

II. Section 2(a) Is Not Saved From Strict Scrutiny

Because It Bans No Speech or By Government-

Speech or Government-Subsidy Doctrines

Faced with the daunting prospect of defending a con-

tent- and viewpoint-discriminatory regulation of speech,

the government argues that § 2(a) does not implicate the

First Amendment at all. First, the government suggests

that § 2(a) is immune from First Amendment scrutiny

because it prohibits no speech, but leaves Mr. Tam free to

name his band as he wishes and use this name in com-

merce. Second, the government suggests that trademark

registration is government speech, and thus the govern-

ment can grant and reject trademark registrations with-

out implicating the First Amendment. Finally, the

government argues that § 2(a) merely withholds a gov-

ernment subsidy for Mr. Tam’s speech and is valid as a

IN RE TAM 27

permissible definition of a government subsidy program.

We reject each of the government’s arguments.

A. Strict Scrutiny Applies to § 2(a), Which Significant-

ly Chills Private Speech on Discriminatory Grounds,

Though It Does Not Ban Speech

The government argues that § 2(a) does not implicate

the First Amendment because it does not prohibit any

speech. Appellee’s En Banc Br. 17. The government’s

argument is essentially the same as that of our predeces-

sor court in McGinley: “it is clear that the PTO’s refusal

to register appellant’s mark does not affect his right to

use it. No conduct is proscribed, and no tangible form of

expression is suppressed.” 660 F.2d at 484 (citations

omitted). But the First Amendment’s standards, includ-

ing those broadly invalidating message discrimination,

are not limited to such prohibitions. See Pitt News v.

Pappert, 379 F.3d 96, 111–12 (3d Cir. 2004) (Alito, J.)

(“The threat to the First Amendment arises from the

imposition of financial burdens that may have the effect of

influencing or suppressing speech, and whether those

burdens take the form of taxes or some other form is

unimportant.”).

The point has been recognized in various doctrinal

settings. “For if the government could deny a benefit to a

person because of his constitutionally protected speech or

associations, his exercise of those freedoms would in effect

be penalized and inhibited. This would allow the gov-

ernment to produce a result which it could not command

directly.” Perry v. Sindermann, 408 U.S. 593, 597 (1972)

(internal quotation marks and alterations omitted). This

premise—that denial of a benefit would chill exercise of

the constitutional right—undergirds every unconstitu-

tional conditions doctrine case, discussed infra. See, e.g.,

Speiser v. Randall, 357 U.S. 513, 518 (1958) (“It is settled

that speech can be effectively limited by the exercise of

the taxing power. To deny an exemption to claimants who

28 IN RE TAM

engage in certain forms of speech is in effect to penalize

them for such speech.” (citation omitted)); Bd. of Cty.

Comm’rs v. Umbehr, 518 U.S. 668, 674 (1996) (loss of a

valuable benefit “in retaliation for speech may chill

speech on matters of public concern”); Legal Servs. Corp.

v. Velazquez, 531 U.S. 533, 545 (2001); Rosenberger, 515

U.S. at 835 (explaining that “[v]ital First Amendment

speech principles are at stake here,” including danger

arising “from the chilling of individual thought and ex-

pression”).

The general principle is clear: “Lawmakers may no

more silence unwanted speech by burdening its utterance

than by censoring its content.” Sorrell, 131 S. Ct. at 2664.

“[T]he government’s ability to impose content-based

burdens on speech raises the specter that the government

may effectively drive certain ideas or viewpoints from the

marketplace.” Simon & Schuster, 502 U.S. at 116. A law

may burden speech even when it does so indirectly. In

Sorrell, the challenged statute did not directly ban speech,

but rather forbade certain pharmaceutical marketing

executives from obtaining and using information that

could help them market their products more effectively.

131 S. Ct. at 2659–60. The Court found that the state

“ha[d] burdened a form of protected expression,” while

leaving “unburdened those speakers whose messages are

in accord with its own views.” Id. at 2672.

Here, too, § 2(a) burdens some speakers and benefits

others. And while it is true that a trademark owner may

use its mark in commerce even without federal registra-

tion, it has been widely recognized that federal trademark

registration bestows truly significant and financially

valuable benefits upon markholders. B&B Hardware, 135

S. Ct. at 1300; Park ’N Fly, Inc. v. Dollar Park & Fly, Inc.,

469 U.S. 189, 199–200 (1985) (valuable new rights were

created by the Lanham Act); McCarthy at § 19:9, :11

(“Registration of a mark on the federal Principal Register

confers a number of procedural and substantive legal

IN RE TAM 29

advantages over reliance on common law

rights. . . . Registration on the Principal Register should

be attempted if it is at all possible.”); McCarthy at § 2:14

(“Businesspeople regard trademarks as valuable assets

and are willing to pay large sums to buy or license a well-

known mark.”); Lee Ann W. Lockridge, Abolishing State

Trademark Registrations, 29 Cardozo Arts & Ent. L.J.

597, 605 (2011) (“[T]he incentives to pursue federal regis-

tration. . . are now so significant as to make federal

registration indispensable for any owner making an

informed decision about its trademark rights. A federal

registration is the only rational choice.”); Susan M. Rich-

ey, The Second Kind of Sin: Making the Case for a Duty to

Disclose Facts Related to Genericism and Functionality in

the Trademark Office, 67 Wash. & Lee L. Rev. 137, 174

(2010) (“Federal registration has evolved into a powerful

tool for trademark holders . . . .”); Patricia Kimball

Fletcher, Joint Registration of Trademarks and the Eco-

nomic Value of a Trademark System, 36 U. Miami L. Rev.

297, 298–99 (1982) (“Federal registration under the

Lanham Act is advantageous, however, because it in-

creases the owner’s legal rights in the mark, making the

mark itself more valuable. Thus, trademark owners have

significant legal and economic interests in obtaining

federal registration of trademarks.”).

Denial of these benefits creates a serious disincentive

to adopt a mark which the government may deem offen-

sive or disparaging. Br. of Amici Curiae ACLU 12 (“If a

group fears that its chosen name will be denied federal

trademark protection by the government’s invocation of

Section 2(a), it will be less likely to adopt the name, at

least in part because the associative value of the trade-

mark itself is lessened when it is unlikely that a group

will be the exclusive holder of that mark.”); Br. of Amicus

Curiae Pro-Football, Inc. 15 (“Section 2(a) certainly works

to chill speech . . . . Through it, the Government uses

threatened denial of registration to encourage potential

30 IN RE TAM

registrants not to use ‘disparaging’ names. Faced with

the possibility of being denied a registration—or worse,

cancellation after years of investment-backed brand

development—new brand owners are more likely to avoid

brand names that may be arguably controversial for fear

of later being deemed ‘disparaging.’”); Br. of Amicus

Curiae First Amendment Lawyers Ass’n 7 (“Individuals

and businesses refrain from using certain terms as

trademarks for fear the PTO might see the terms as

immoral, scandalous, or derogatory, in violation of section

2(a). Such self-censorship narrows the spectrum of speech

in the public marketplace.”); Br. of Amici Curiae Ruther-

ford Inst. 12 (“Denial of registration indisputably has the

effect of placing applicants at a legal and financial disad-

vantage.”); Jeffrey Lefstin, Does the First Amendment Bar

Cancellation of Redskins?, 52 Stan. L. Rev. 665, 678

(2000) (“[I]t is clear that section 2(a) of the Lanham Act,

by denying the valuable registration right to scandalous

or disparaging trademarks, imposes a financial disincen-

tive to the use of such marks in commercial communica-

tion.”); Michelle B. Lee, Section 2(a) of the Lanham Act as

a Restriction on Sports Team Names: Has Political Cor-

rectness Gone Too Far?, 4 Sports L.J. 65, 69 (1997) (“Use

[of disparaging marks] is discouraged by cancellation of

registration by a loss of the benefits that go along with it.

These benefits go well beyond those granted by the com-

mon law, and a loss of them will remove advantages

which make the property more valuable.”).

For those reasons, the § 2(a) bar on registration cre-

ates a strong disincentive to choose a “disparaging” mark.

And that disincentive is not cabined to a clearly under-

standable range of expressions. The statute extends the

uncertainty to marks that “may disparage.” 15 U.S.C.

§ 1052(a). The uncertainty as to what might be deemed

IN RE TAM 31

disparaging is not only evident on its face, given the

subjective-reaction element and shifting usages in differ-

ent parts of society. 6 It is confirmed by the record of PTO

grants and denials over the years, from which the public

would have a hard time drawing much reliable guidance. 7

6 In 1939, the Assistant Commissioner of Patents

testified during congressional hearings on the Lanham

Act that “it is always going to be just a matter of the

personal opinion of the individual parties as to whether

they think it is disparaging.” See Hearings on H.R. 4744

Before the Subcomm. on Trademarks of the House Comm.

on Patents, 76th Cong., 1st Sess. 18–21 (1939) (statement

of Leslie Frazer, Assistant Comm’r of Patents) (Mr. Fra-

zer). And further interpretation has helped little. The

definition of a disparaging mark—a mark that “dishonors

by comparison with what is inferior, slights, deprecates,

degrades, or affects or injures by unjust comparison”—

provides little clarity. Geller, 751 F.3d at 1358 (altera-

tions omitted). In In re In Over Our Heads, the PTO

admitted that “[t]he guidelines for determining whether a

mark is scandalous or disparaging are somewhat vague

and the determination of whether a mark is scandalous or

disparaging is necessarily a highly subjective one.”

No. 755,278, 1990 WL 354546, at *1 (T.T.A.B. 1990)

(alterations and quotation marks omitted).

7 The PTO’s record of trademark registrations and

denials often appears arbitrary and is rife with incon-

sistency. The PTO denied the mark HAVE YOU HEARD

SATAN IS A REPUBLICAN because it disparaged the

Republican Party, App. Ser. No. 85/077647, but did not

find the mark THE DEVIL IS A DEMOCRAT disparag-

ing, App. Ser. No. 85/525,066 (abandoned after publica-

tion for other reasons). The PTO registered the mark

FAGDOG three times and refused it twice, at least once

32 IN RE TAM

Such uncertainty of speech-affecting standards has

long been recognized as a First Amendment problem, e.g.,

in the overbreadth doctrine. See Broadrick v. Oklahoma,

413 U.S. 601, 613, 615 (1973). It has also been recognized

as a problem under Fifth Amendment vagueness stand-

ards as they have been specially applied in the First

Amendment setting. 8 All we need say about the uncer-

as disparaging. Compare Reg. Nos. 2,926,775; 2,828,396;

and 3,174,475, with App. Ser. Nos. 76/454,927 and

75/950,535. The PTO refused to register the marks FAG

FOREVER A GENIUS!, App. Ser. No. 86/089,512, and

MARRIAGE IS FOR FAGS, App. Ser. No. 77/477,549, but

allowed the mark F*A*G FABULOUS AND GAY, Reg.

No. 2,997,761 (abandoned after publication for other

reasons). And PTO examiners have registered

DANGEROUS NEGRO, CELEBRETARDS, STINKY

GRINGO, MIDGET-MAN, and OFF-WHITE TRASH—all

marks that could be offensive to a substantial composite

of the referenced group. We see no rationale for the PTO’s

seemingly arbitrary registration decisions, let alone one

that would give applicants much guidance.

8 A vague law that regulates speech on the basis of

message “raises special First Amendment concerns be-

cause of its obvious chilling effect on free speech.” Reno v.

ACLU, 521 U.S. 844, 871–72 (1997). Thus, if a “law

interferes with the right of free speech or of association, a

more stringent vagueness test should apply.” Vill. of

Hoffman Estates v. Flipside, Hoffman Estates, Inc., 455

U.S. 489, 499 (1982). The Supreme Court reiterated these

principles just three years ago:

Even when speech is not at issue, the void for

vagueness doctrine addresses at least two con-

nected but discrete due process concerns: first,

that regulated parties should know what is re-

IN RE TAM 33

tainty here, however, is that it contributes significantly to

the chilling effect on speech.

The disincentive to choose a particular mark extends

to any mark that could require the expenditure of sub-

stantial resources in litigating to obtain registration in

the first place. And the disincentive does not stop there,

because the disparagement determination is not a one-

time matter. Even if an applicant obtains a registration

initially, the mark may be challenged in a cancellation

proceeding years later. Thus, after years of investment in

promoting a registered mark and coming to be known by

it, a mark’s owner may have to (re)litigate its character

under § 2(a) and might lose the registration. This effec-

tively forces the mark’s owner to find a new mark and

make substantial new investments in educating the

public that the products known by the old mark are now

known by the new mark and, more generally, in establish-

ing recognition of the new mark. The “disparagement”

standard steers applicants away from choosing a mark

that might result in these problems any time in the

future.

Not surprisingly, “those who are denied registration

under Section 2(a) often abandon the denied application

quired of them so they may act accordingly; sec-

ond, precision and guidance are necessary so that

those enforcing the law do not act in an arbitrary

or discriminatory way. See Grayned v. City of

Rockford, 408 U.S. 104, 108–109 (1972). When

speech is involved, rigorous adherence to those re-

quirements is necessary to ensure that ambiguity

does not chill protected speech.

F.C.C. v. Fox Television Stations, Inc., 132 S. Ct. 2307,

2317–18 (2012).

34 IN RE TAM

and file a new one, indicating that they have changed

their name rather than bear the costs of using a ‘dispar-

aging’ mark or challenge the PTO’s determination.” Br. of

Amicus Curiae Pro-Football, Inc. 15. In many cases, as

soon as a trademark examiner issues a rejection based

upon disparagement, the applicant immediately abandons

the trademark application. See, e.g., AMISHHOMO

(abandoned 2013); MORMON WHISKEY (abandoned

2012); HAVE YOU HEARD THAT SATAN IS A

REPUBLICAN? (abandoned 2010); DEMOCRATS

SHOULDN’T BREED (abandoned 2008); REPUBLICANS

SHOULDN’T BREED (abandoned 2008); 2 DYKE

MINIMUM (abandoned 2007); WET BAC/WET B.A.C.

(abandoned 2007); DON’T BE A WET BACK (abandoned

2006); FAGDOG (abandoned 2003).

The importance of the benefits of federal trademark

registration explains the strength of the incentive to avoid

marks that are vulnerable under § 2(a). For example, the

holder of a federally registered trademark has a right to

exclusive nationwide use of that mark anywhere there is

not already a prior use that proceeds registration. See 15

U.S.C. §§ 1072, 1115. In the absence of federal registra-

tion, if a trademark owner has any common law rights,

they are “limited to the territory in which the mark is

known and recognized by those in the defined group of

potential customers.” McCarthy at § 26:2. Without the

recognition of nationwide constructive use conferred by

federal registration, a competitor can swoop in and adopt

the same mark for the same goods in a different location.

Without federal registration, the applicant does not have

prima facie evidence of the mark’s validity or its owner-

ship or exclusive use of the mark. 15 U.S.C. § 1057(b).

And a common law trademark can never become incon-

testable. Id. § 1065. Without federal registration, a

trademark user cannot stop importation of goods bearing

the mark, or recover treble damages for willful infringe-

ment. Id. §§ 1117, 1124. It cannot prevent “cybersquat-

IN RE TAM 35

ters” from misappropriating the mark in a domain name.

Id. § 1125(d). The common law provides no rights like

these.

Contrary to the suggestion by the government,

Mr. Tam is likely also barred from registering his mark in

nearly every state. Three years after the enactment of

the Lanham Act, the United States Trademark Associa-

tion prepared the Model State Trademark Act—a bill

patterned on the Lanham Act in many respects. McCar-

thy at § 22:5. The Model Act contains language barring a

mark from registration if it “consists of or comprises

matter which may disparage . . . persons, living or dead,

institutions, beliefs, or national symbols, or bring them

into contempt, or disrepute.” 1964 Model State Trade-

mark Act, § 2. Following the lead of the federal govern-

ment, virtually all states have adopted the Model Act and

its disparagement provision. McCarthy at § 22:5. Thus,

not only are the benefits of federal registration unavaila-

ble to Mr. Tam, so too are the benefits of trademark

registration in nearly all states. 9

The government argues that the denial of Mr. Tam’s

registration “does not eliminate any common-law rights

that might exist in [his] mark.” Appellee’s En Banc Br.

20. But as the government’s use of “might” indicates, it is

unclear whether Mr. Tam could actually enforce any

common law rights to a disparaging mark. 10 The 1964

9 And even if Mr. Tam could register his mark in a

state, the benefits of state registration are limited by the

boundaries of the individual state or the geographic scope

of the actual use of the mark within the state. They are

by no means the nationwide benefits afforded to federally

registered trademarks.

10 Not surprisingly, holders of disparaging marks

like Mr. Tam have not argued that they lack these com-

36 IN RE TAM

Model State Trademark Act, which most states have

adopted, provides that “[n]othing herein shall adversely

affect the rights or the enforcement of rights in marks

acquired in good faith at any time at common law.” § 14.

However, the term “mark” is defined as “any trademark

or service mark entitled to registration under this Act

whether registered or not.” § 1.C (emphasis added).

Common law rights to a mark may thus be limited to

marks “entitled to registration.” Whether a user of an

unregistrable, disparaging mark has any enforceable

common law rights is at best unclear. See Justin G.

Blankenship, The Cancellation of Redskins as a Disparag-

ing Trademark: Is Federal Trademark Law an Appropri-

ate Solution for Words That Offend?, 72 U. Colo. L. Rev.

415, 451 (2001) (“[A]ny mark that is canceled under

section 2(a) of the Lanham Act for being scandalous or

disparaging is unlikely to find much protection under

common law principles either, although this will ultimate-

ly be determined by state courts applying their own

common law principles.”); Llewellyn Joseph Gibbons,

Semiotics of the Scandalous and the Immoral and the

Disparaging: Section 2(A) Trademark Law After Lawrence

v. Texas, 9 Marq. Intell. Prop. L. Rev. 187, 232 (2005)

(“[A]s immoral, scandalous, and/or disparaging marks

may not be registered under either state or federal law,

nor do they enjoy common law protection, there appears

to be no way of establishing a legally recognized property

right in these marks.”); Stephen Baird, Moral Intervention

in the Trademark Arena: Banning the Registration of

Scandalous and Immoral Trademarks, 83 TRADEMARK

REPORTER 661, 795 (1993) (disparaging marks are pre-

sumably “unprotect[a]ble pursuant to state common law”).

mon law rights on account of their marks not being regis-

trable. They have little incentive to give this argument

away.

IN RE TAM 37

The Restatement (Third) of Unfair Competition notes that

the Lanham Act and the Model State Trademark Bill both

prohibit registration of disparaging marks and that

adoption and use of such marks may preclude enforce-

ment under the common law doctrine of unclean hands.

Restatement (Third) of Unfair Competition § 32 cmt. c

(1995). The government has not pointed to a single case

where the common-law holder of a disparaging mark was

able to enforce that mark, nor could we find one. The

government’s suggestion that Mr. Tam has common-law

rights to his mark appears illusionary. 11

11 The government also argues that Mr. Tam “may”

have rights under 15 U.S.C. § 1125(a) (“Section 43(a)”).

First, those rights would not include the benefits afforded

to federally registered marks. Furthermore, it is not at

all clear that Mr. Tam could bring a § 43(a) unfair compe-

tition claim. Section 43(a) allows for a federal suit to

protect an unregistered trademark, much like state

common law. But there is no authority extending § 43(a)

to marks denied under § 2(a)’s disparagement provision.

To the contrary, courts have suggested that § 43(a) is only

available for marks that are registrable under § 2. See

Two Pesos, 505 U.S. at 768 (section 43(a) “protects quali-

fying unregistered trademarks and . . . the general princi-

ples qualifying a mark for registration under § 2 of the

Lanham Act are for the most part applicable in determin-

ing whether an unregistered mark is entitled to protection

under § 43(a)”); Yarmuth-Dion, Inc. v. D’ion Furs, Inc.,

835 F.2d 990, 992 (2d Cir. 1987) (requiring a plaintiff to

“demonstrate that his [unregistered] mark merits protec-

tion under the Lanham Act”); see also Renna v. Cty. of

Union, 88 F. Supp. 3d 310, 320 (D.N.J. 2014) (“Section 2

declares certain marks to be unregistrable because they

are inappropriate subjects for trademark protection. It

38 IN RE TAM

Whether Mr. Tam has enforceable common-law rights

to his mark or could bring suit under § 43(a) does not

change our conclusion. Federal trademark registration

brings with it valuable substantive and procedural rights

unavailable in the absence of registration. These benefits

are denied to anyone whose trademark expresses a mes-

sage that the government finds disparages any group,

Mr. Tam included. The loss of these rights, standing

alone, is enough for us to conclude that § 2(a) has a

chilling effect on speech. Denial of federal trademark

registration on the basis of the government’s disapproval

of the message conveyed by certain trademarks violates

the guarantees of the First Amendment.

B. Trademark Registration Is Not Government

Speech

The government suggests, and several amici argue,

that trademark registration is government speech, and as

such outside the coverage of the First Amendment. See

Appellee’s En Banc Br. 41–42; Br. of Amici Curiae Nat’l

Asian Pacific Am. Bar Ass’n 19–22; Br. of Amici Curiae

Blackhorse 13–23. “The Free Speech Clause restricts

government regulation of private speech; it does not

regulate government speech.” Pleasant Grove City v.

Summum, 555 U.S. 460, 467 (2009). Although we find it

difficult to understand the government’s precise position

as to how trademark registration constitutes government

speech, we conclude that there is no government speech at

issue in the rejection of disparaging trademark registra-

follows that such unregistrable marks, not actionable as

registered marks under Section 32, are not actionable

under Section 43, either.”). And we have found no case

allowing a § 43(a) action on a mark rejected or cancelled

under § 2(a).

IN RE TAM 39

tions that would insulate § 2(a) from First Amendment

review.

Wisely, the government does not argue that a mark-

holder’s use or enforcement of its federally registered

trademark is government speech. Use of a mark by its

owner is clearly private speech. Trademarks identify the

source of a product, and are often closely associated with

the actual product. A mark’s purpose—to identify the

source of goods—is antithetical to the notion that a

trademark is tied to the government. The fact that COCA

COLA and PEPSI may be registered trademarks does not

mean the government has endorsed these brands of cola,

or prefers them over other brands. We see no reason that

a markholder’s use of its mark constitutes government

speech.

Instead, the government appears to argue that

trademark registration and the accoutrements of registra-

tion—such as the registrant’s right to attach the ® symbol

to the registered mark, the mark’s placement on the

Principal Register, and the issuance of a certificate of

registration—amount to government speech. See Oral

Argument at 52:40–53:07; 54:20–54:32. This argument is

meritless. Trademark registration is a regulatory activi-

ty. These manifestations of government registration do

not convert the underlying speech to government speech.

And if they do, then copyright registration would likewise

amount to government speech. Copyright registration has

identical accoutrements—the registrant can attach the ©

symbol to its work, registered copyrights are listed in a

government database, and the copyright owner receives a

certificate of registration. The logical extension of the

government’s argument is that these indicia of registra-

tion convert the underlying speech into government

speech unprotected by the First Amendment. Thus, the

government would be free, under this logic, to prohibit the

copyright registration of any work deemed immoral,

scandalous, or disparaging to others. This sort of censor-

40 IN RE TAM

ship is not consistent with the First Amendment or gov-

ernment speech jurisprudence.

In Walker v. Texas Division, Sons of Confederate Vet-

erans, Inc., the Supreme Court detailed the indicia of

government speech. 135 S. Ct. 2239 (2015). The Court

concluded that specialty license plates were government

speech, even though a state law allowed individuals,

organizations, and nonprofit groups to request certain

designs. The Court found several considerations weighing

in favor of this holding. It emphasized that “the history of

license plates shows that, insofar as license plates have

conveyed more than state names and vehicle identifica-

tion numbers, they long have communicated messages

from the States.” Id. at 2248. It stressed that “[t]he State

places the name ‘TEXAS’ in large letters at the top of

every plate,” that “the State requires Texas vehicle own-

ers to display license plates, and every Texas license plate

is issued by the State,” that “Texas also owns the designs

on its license plates,” and that “Texas dictates the manner

in which drivers may dispose of unused plates.” Id. As a

consequence, the Court reasoned, “Texas license plate

designs ‘are often closely identified in the public mind

with the State.’” Id. (quoting Summum, 555 U.S. at 472

(alteration omitted)). Amidst all of its other aspects of

control, moreover, “Texas maintains direct control over

the messages conveyed on its specialty plates.” Id. at

2249. “Indeed, a person who displays a message on a

Texas license plate likely intends to convey to the public

that the State has endorsed that message.” Id.

The government’s argument in this case that trade-

mark registration amounts to government speech is at

odds with the Supreme Court’s analysis in Walker and

unmoored from the very concept of government speech.

When the government registers a trademark, the only

message it conveys is that a mark is registered. The vast

array of private trademarks are not created by the gov-

ernment, owned or monopolized by the government, sized

IN RE TAM 41

and formatted by the government, immediately under-

stood as performing any government function (like

unique, visible vehicle identification), aligned with the

government, or (putting aside any specific government-

secured trademarks) used as a platform for government

speech. There is simply no meaningful basis for finding

that consumers associate registered private trademarks

with the government.

Indeed, the PTO routinely registers marks that no one

can say the government endorses. See, e.g., RADICALLY

FOLLOWING CHRIST IN MISSION TOGETHER, U.S.

Reg. No. 4,759,522; THINK ISLAM, U.S. Reg. No.

4,719,002 (religious marks); GANJA UNIVERSITY, U.S.

Reg. No. 4,070,160 (drug-related); CAPITALISM SUCKS

DONKEY BALLS, U.S. Reg. No. 4,744,351; TAKE YO

PANTIES OFF, U.S. Reg. No. 4,824,028; and MURDER 4

HIRE, U.S. Reg. No. 3,605,862. As the government itself

explains, “the USPTO does not endorse any particular

product, service, mark, or registrant” when it registers a

mark. Appellee’s En Banc Br. 44. For decades, the gov-

ernment has maintained that:

[J]ust as the issuance of a trademark registration

by this Office does not amount to government en-

dorsement of the quality of the goods to which the

mark is applied, the act of registration is not a

government imprimatur or pronouncement that

the mark is a “good” one in an aesthetic, or any

analogous, sense.

In re Old Glory Condom Corp., 26 U.S.P.Q.2d 1216, 1219–

20 n.3 (T.T.A.B. Mar. 3, 1993); see also McCarthy at

§ 19:3.50 (“[G]overnment registration of a mark is neither

a government endorsement of the quality of the goods to

which the mark is applied nor a government pronounce-

ment that the mark is a good or reliable one in any moral

or commercial sense.”); Jeffrey Lefstin, Does the First

Amendment Bar Cancellation of Redskins?, 52 Stan. L.

42 IN RE TAM

Rev. 665, 684 (2000) (“The overwhelming majority of the

public encounters trademarks in their roles as product

identifiers, not as the beneficiaries of a federal registra-

tion scheme. The public is unlikely to believe that a

registered trademark designation accompanying a word

or logo on a product reflects government endorsement.”).

Trademarks are understood in society to identify the

source of the goods sold, and to the extent that they

convey an expressive message, that message is associated

with the private party that supplies the goods or services.

Trademarks are not understood to convey a government

message or carry a government endorsement.

The government argues that use of the ® symbol, be-

ing listed in a database of registered marks, and having

been issued a registration certificate makes trademark

registration government speech. These incidents of

registration do not convert private speech into govern-

ment speech. The government does not own the trade-

mark designs or the underlying goods to which the

trademark is affixed as the state owned the license plates

in Walker. Markholders are not even required to use the

® symbol on their goods. 15 U.S.C. § 1111. And if simply

affixing the ® symbol converted private speech into gov-

ernment speech then the government would be free to

regulate the content, viewpoint, and messages of regis-

tered copyrights. A copyright registration likewise allows

the copyright owner to affix a © symbol, 17 U.S.C. § 401,

but this symbol does not convert the copyrighted work

into government speech or permit the government to

grant some copyrights and deny others on account of the

work’s message. Just as the public does not associate the

copyrighted works Nigger: The Strange Career of a Trou-

blesome Word or Fifty Shades of Grey with the govern-

ment, neither does the public associate individual

trademarks such as THE SLANTS with the government.

Similarly, a registered mark’s placement on the Prin-

cipal Register or publication in the PTO’s Official Gazette

IN RE TAM 43

does not morph the private expression being registered

into government expression. As a preliminary matter, it

is not entirely clear what the Principal Register is. There

is apparently no government-published book of all trade-

mark registrations; instead, the Principal Register is at

most an internet database hosted on the PTO’s website.

See U.S. Patent and Trademark Office, Search Trademark

Database, available at http://www.uspto.gov/trademarks-

application-process/search-trademark-database. If being

listed in a government database or published in a list of

registrations were enough to convert private speech to

government speech, nearly every action the government

takes—every parade permit granted, every property title

recorded, every hunting or fishing license issued—would

amount to government speech. The government could

record recipients of parade permits in an official database

or publish them weekly, thus insulating content-based

grants of these permits from judicial review. Governmen-

tal agencies could assign TV and radio licenses and states

could refuse to license medical doctors with no First

Amendment oversight by “registering” these licenses in

an online database, or by allowing licensees to display a

mark by their name. The fact that the government rec-

ords a trademark in a database of all registered trade-

marks cannot possibly be the basis for concluding that

government speech is involved.

Finally, the issuance of a registration certificate

signed by the Director with the seal of the United States

Patent and Trademark Office does not convert private

expression or registration into government speech. This

is a certificate, a piece of paper, which the trademark

owner is free to do with as it wishes. The government

maintains no control over the certificates. The govern-

ment does not require companies to display their trade-

mark registration certificate, or dictate the manner in

which markholders may dispose of unused registration

certificates. It is not public like license plates or monu-

44 IN RE TAM

ments. When copyrights are granted, the copyright owner

receives a similar registration certificate with the seal

and signed by the Registrar of Copyrights. 17 U.S.C.

§ 410(a). And patents issue “in the name of the United

States of America, under the seal of the Patent and

Trademark Office,” with a gold seal and red ribbon at-

tached. 35 U.S.C. § 153; see also U.S. Patent and Trade-

mark Office, Patent Process Overview, available at

http://www.uspto.gov/patents-getting-started/patent-

process-overview#step7 (explaining that patent grants are

issued with “a gold seal and red ribbon on the cover”).

These certificates do not convert the registered subject

matter into government speech such that the government

is free to regulate its content. The public simply does not

view these registration certificates as the government’s

expression of its ideas or as the government’s endorse-

ment of the ideas, inventions, or trademarks of the pri-

vate speakers to whom they are issued.

In short, the act of registration, which includes the

right (but not the obligation) to put an ® symbol on one’s

goods, receiving a registration certificate, and being listed

in a government database, simply cannot amount to

government speech. The PTO’s processing of trademark

registrations no more transforms private speech into

government speech than when the government issues

permits for street parades, copyright registration certifi-

cates, or, for that matter, grants medical, hunting, fish-

ing, or drivers licenses, or records property titles, birth

certificates, or articles of incorporation. To conclude

otherwise would transform every act of government

registration into one of government speech and thus allow

rampant viewpoint discrimination. When the government

registers a trademark, it regulates private speech. It does

not speak for itself.

IN RE TAM 45

C. Section 2(a) Is Not a Government Subsidy Exempt

from Strict Scrutiny

We reject the government’s argument that § 2(a)’s

message-based discrimination is merely the government’s

shaping of a subsidy program. The government’s defense

is contrary to the long-established unconstitutional condi-

tions doctrine. The Supreme Court has repeatedly invali-

dated denials of “benefits” based on message-based

disapproval of private speech that is not part of a gov-

ernment-speech program. In such circumstances, denial

of an otherwise-available benefit is unconstitutional at

least where, as here, it has a significant chilling effect on

private speech. Bd. of Cty. Comm’rs, 518 U.S. at 674

(1996) (explaining that “the threat of the loss of [a valua-

ble financial benefit] in retaliation for speech may chill

speech on matters of public concern”); id. (“[r]ecognizing

that constitutional violations may arise from the deter-

rent, or ‘chilling,’ effect of governmental efforts that fall

short of a direct prohibition against the exercise of First

Amendment rights”) (citations and alterations omitted)).

Under the unconstitutional conditions doctrine:

[E]ven though a person has no ‘right’ to a valuable

governmental benefit and even though the gov-

ernment may deny him the benefit for any num-

ber of reasons, there are some reasons upon which

the government may not rely. It may not deny a

benefit to a person on a basis that infringes his

constitutionally protected interests—especially,

his interest in freedom of speech.

Perry, 408 U.S. at 597. The Supreme Court, applying this

doctrine, held that a state college could not refuse to

retain a professor because of his public criticism of that

college’s policy, even though the professor had no right to

reemployment, and even though the government had not

directly prohibited the professor from speaking. Id. at

597–98. This is because “[t]o deny [a benefit] to claimants

46 IN RE TAM

who engage in certain forms of speech is in effect to

penalize them for such speech.” Speiser v. Randall, 357

U.S. 513, 518 (1958); Perry, 408 U.S. at 597 (“For if the

government could deny a benefit to a person because of

his constitutionally protected speech or associations, his

exercise of those freedoms would in effect be penalized

and inhibited.”).

Since Perry, the Supreme Court has wrestled with

how to apply the unconstitutional conditions doctrine

while protecting Congress’s ability to direct government

spending. The Spending Clause of the U.S. Constitution,

which grants Congress the power “[t]o lay and collect

Taxes, Duties, Imposts and Excises, to pay the Debts and

provide for the common Defence and general Welfare of

the United States,” U.S. Const. Art. I, § 8, cl. 1, “provides

Congress broad discretion to tax and spend for the ‘gen-

eral Welfare,’ including by funding particular state or

private programs or activities.” Agency for Int’l Dev. v.

Alliance for Open Soc’y Int’l, Inc., 133 S. Ct. 2321, 2327–

28 (2013). This includes “the authority to impose limits

on the use of such funds to ensure they are used in the

manner Congress intends,” even when these limits ex-

clude protected speech or other constitutionally protected

conduct. Id. at 2328 (citing Rust v. Sullivan, 500 U.S.

173, 195 n.4 (1991)). The Court reasoned that “if a party

objects to a condition on the receipt of federal funding,” it

can always decline the funds. Id.

“[W]hen the Government appropriates public funds to

establish a program it is entitled to define the limits of

that program.” United States v. Am. Library Ass’n, 539

U.S. 194, 211 (2003) (quoting Rust, 500 U.S. at 194). For

purposes of a message-discriminatory condition on the

grant of government funds, the Supreme Court has said

that the government can “disburse[] public funds to

private entities to convey a governmental message.”

Legal Servs. Corp. v. Velazquez, 531 U.S. 533, 541 (2001)

(citation omitted). When it does so, “it may take legiti-

IN RE TAM 47

mate and appropriate steps to ensure that its message is

neither garbled nor distorted by the grantee.” Id. There-

fore, “viewpoint-based funding decisions can be sustained

in instances . . . in which the government used private

speakers to transmit specific information pertaining to its

own program.” Id. (citations omitted).

Thus, in Rust, the government could prohibit the ex-

penditure of public federal family planning funds on

abortion-related counseling because the government

distributed those funds to promote the conveying of a

particular message. Rosenberger, 515 U.S. at 833 (citing

Rust, 500 U.S. at 194); Velazquez, 531 U.S. at 541 (noting

that Rust must be understood as resting on the conclusion

that it involved “government speech”). Relatedly, alt-

hough there was no majority opinion in American Library

Ass’n, the Court upheld a specific congressional determi-

nation not to give money for technology to be used for

supporting particular speech (pornography) in particular

circumstances (in public libraries where non-user patrons

likely would inadvertently see it), even then only upon

confirming the minor nature of the burden on the user

patrons involved. 539 U.S. at 211–12 (upholding condi-

tioning public libraries’ receipt of federal subsidies on

their use of Internet filtering software, because Congress

was entitled to insist that “public funds be spent for the

purposes for which they were authorized” (quotation

marks omitted)). Earlier, the Court had recognized that

tax exemptions or deductions were a form of subsidy for

First Amendment analysis. Regan v. Taxation with

Representation of Wash., 461 U.S. 540, 544 (1983) (“Both

tax exemptions and tax-deductibility are a form of subsidy

that is administered through the tax system.”); id. (ex-

plaining that tax-exempt status “has much the same

effect as a cash grant to an organization”).

The government’s discretion to direct its spending,

while broad, is not unbounded, and the limits take ac-

count of the real-world effect on the speech of those sub-

48 IN RE TAM

ject to the conditions. If a program arises under the

Spending Clause, Congress is free to attach “conditions

that define the limits of the government spending pro-

gram—those that specify the activities Congress wants to

subsidize.” Agency for Int’l Dev., 133 S. Ct. at 2328.

However, Congress does not have the authority to attach

“conditions that seek to leverage funding to regulate

speech outside the contours of the program itself.” Id.

“Congress cannot recast a condition on funding as a mere

definition of its program in every case, lest the First

Amendment be reduced to a simple semantic exercise.”

Velazquez, 531 U.S. at 547. The Court held that Congress

could not restrict appropriations aimed at combating the

spread of HIV/AIDS to only organizations having policies

affirmatively opposing prostitution and sex trafficking,

which would make such organizations unable to convey a

contrary message. Agency for Int’l Dev., 133 S. Ct. at

2230–31. The Court struck down Congress’s conditioning

of funding to public broadcasters on their refraining from

editorializing, even with their non-federal money. FCC v.

League of Women Voters, 468 U.S. 364 (1984). And in

Regan, the Court, in upholding the subsidy of certain

organizations for lobbying, took pains to note the relative-

ly easy work-around for other unsubsidized organizations

to achieve a comparable position for lobbying and the

absence of any attempt to suppress ideas. 461 U.S. at

548; see Leathers v. Medlock, 499 U.S. 439, 452 (1991)

(discussing Regan).

The government argues that trademark registration

is a form of government subsidy that the government may

refuse where it disapproves of the message a mark con-

veys. It contends: “Congress has at least as much discre-

tion to determine which terms and symbols should be

registered and published by a federal agency as it would

to determine which private entities should receive federal

funds.” Appellee’s En Banc Br. 29. But as already de-

scribed, trademark registration is not a program through

IN RE TAM 49

which the government is seeking to get its message out

through recipients of funding (direct or indirect). And for

the reasons described above, the denial of registration has

a major chilling effect on private speech, because the

benefits of registration are so substantial. Nor is there a

ready work-around to maintain private speech without

significant disadvantage. Markholders cannot, for exam-

ple, realistically have two brand names, one inoffensive,

non-disparaging one (which would be able to secure

registration) and a second, expressive, disparaging one

(which would be unregistrable and unprotectable).

In any event, the scope of the subsidy cases has never

been extended to a “benefit” like recognition of legal rights

in speakers against private interference. The cases

cannot be extended to any “program” conferring legal

rights on the theory that the government is free to dis-

tribute the legal rights it creates without respecting First

Amendment limits on content and viewpoint discrimina-

tion. Not surprisingly, the subsidy cases have all involved

government funding or government property.

The government cites Ysursa v. Pocatello Education

Ass’n, 555 U.S. 353 (2009), and Davenport v. Washington

Education Ass’n, 551 U.S. 177 (2007), in support of its

subsidy defense of § 2(a). Appellee’s En Banc Br. 28–29.

But they are inapposite. Both Davenport and Ysursa

center on challenges to the constitutionality of state laws

limiting the ability of public-sector unions to spend on

political speech non-members’ money the unions obtain

through the government’s affirmative use of its own

payroll systems. Davenport, 551 U.S. at 180 (considering

constitutionality of law prohibiting payroll deductions for

political spending unless the union had the affirmative

consent of the non-member); Ysursa, 555 U.S. at 355

(considering constitutionality of law completely prohibit-

ing payroll deductions for political spending). Even in the

context of use of government property, the Court focused

on the absence of viewpoint discrimination, holding that

50 IN RE TAM

the programs placed a “reasonable, viewpoint-neutral

limitation” on the unions’ abilities to enlist the govern-

ment’s aid in acquiring the money of government employ-

ees for spending on political speech to which particular

employees might object. Davenport, 551 U.S. at 189; see

also Ysursa, 555 U.S. at 361 n.3. The prohibitions were

not “aimed at the suppression of dangerous ideas.” Ys-

ursa, 555 U.S. at 359 (alterations omitted); see also Dav-

enport, 551 U.S. at 190 (“Quite obviously, no suppression

of ideas is afoot.”).

These cases do not speak to Congress’s power to enact

viewpoint-discriminatory regulations like § 2(a). The

government does not shy away from the fact that the

purpose of § 2(a) is to discourage, and thereby eliminate,

disparaging marks, particularly marks that include “the

most vile racial epithets,” “religious insults,” “ethnic

caricatures,” and “misogynistic images.” Appellee’s En

Banc Br. 1–3. On its face, § 2(a) is aimed at the suppres-

sion of dangerous ideas, unlike the provisions in Ysursa

and Davenport. Moreover Ysursa and Davenport both

took place in “the unique context of public-sector agency-

shop arrangements,” where the government was “act[ing]

in a capacity other than as regulator.” Davenport, 551

U.S. at 188, 190. Thus, the risk that the government

“may effectively drive certain ideas or viewpoints from the

marketplace [was] attenuated.” Id. at 188. Section 2(a) is

regulation of speech that targets expressive content and

thereby threatens to drive ideas or viewpoints from the

marketplace.

In determining if a condition on a favorable govern-

ment action is unconstitutional, courts—both before and

after Davenport and Ysursa—have distinguished between

government actions that implicate the government’s

power to spend and government actions that do not. For

example, the Ninth Circuit considered the constitutionali-

ty of a treaty under which certain “educational, scientific

and cultural audio-visual materials” were granted various

IN RE TAM 51

benefits, including exemption from import duties. Bull-

frog Films, Inc. v. Wick, 847 F.2d 502, 503 (9th Cir. 1988).

The government argued, as it does here, that the regula-

tions stemming from the treaty did not “punish or directly

obstruct [filmmakers’] ability to produce or disseminate

their films,” but amount to “the government simply de-

clining to pay a subsidy.” Id. at 509. The Ninth Circuit

rejected the government’s “benign characterization” of the

regulations and held that the trade benefits were not a

subsidy because “no Treasury Department funds [were]

involved.” Id. at 509. Because the trade benefits were not

a subsidy, the Ninth Circuit held that the unconstitution-

al conditions doctrine applied, and found the treaty and

implementing regulations unconstitutional. Id. at 511.

The Fifth Circuit, sitting en banc, recently considered

the constitutionality of a Texas law allowing charitable

organizations to hold bingo games so long as the resulting

funds were not used for lobbying. Dep’t of Tex., Veterans

of Foreign Wars v. Tex. Lottery Comm’n, 760 F.3d 427, 430

(5th Cir. 2014) (en banc). The Texas Lottery Commission

argued that the restrictions were constitutional because

they fell within the state government’s spending power,

which is analogous to the federal government’s spending

power. Id. at 434. The Fifth Circuit agreed that “the

government may attach certain speech restrictions to

funds linked to the public treasury—when either granting

cash subsidies directly from the public coffers . . . or

approving the withholding of funds that otherwise would

go to the public treasury.” Id. at 435. But it found the

Texas bingo program “wholly distinguishable . . . because

no public monies or ‘spending’ by the state are involved.”

Id. at 436. Reasoning that the bingo program’s primary

function is regulatory, further “underscor[ing] the incon-

gruity of [applying] the ‘subsidy’ paradigm to the bingo

program,” the Fifth Circuit applied the unconstitutional

conditions doctrine and found the lobbying provision

unconstitutional. Id. at 437–41.

52 IN RE TAM

Similarly, the D.C. Circuit recently held that a presi-

dential directive barring lobbyists from serving on inter-

national trade advisory committees implicated the First

Amendment. Autor v. Pritzker, 740 F.3d 176, 177 (D.C.

Cir. 2014). The government argued that “when [it] ap-

propriates public funds to establish a program, its deci-

sion not to use program funds to subsidize the exercise of

a fundamental right does not infringe” the First Amend-

ment. Id. at 182 (quotations and alterations omitted).

The D.C. Circuit rejected this argument because member-

ship in the advisory committees was a non-financial—

albeit valuable—benefit. Id. at 182–83. Explaining that

“[t]he Supreme Court has never extended the [spending

exception] to situations not involving financial benefits,”

the D.C. Circuit found the directive could be an unconsti-

tutional condition, and remanded for further considera-

tion. Id. at 183–84.

Trademark registration does not implicate Congress’s

power to spend or to control use of government property. 12

Trademark registration is not a subsidy. The benefits of

trademark registration, while valuable, are not monetary.

Unlike a subsidy consisting of, for example, HIV/AIDS

funding, or tax exemptions, a trademark registration does

not directly affect the public fisc. Instead, a registered

trademark redefines the nature of the markholder’s rights

as against the rights of other citizens, depriving others of

their ability to use the mark. Like the programs in Bull-

frog and Texas Lottery Commission, the system of trade-

mark registration is a regulatory regime, not a

government subsidy program.

12 Counsel for the United States at oral argument

disclaimed the notion that a government forum approach

was appropriate in the context of trademark registration.

See Oral Argument at 1:14:25–1:14:58; 1:16:20–1:17:15.

IN RE TAM 53

The government also argues that because the PTO is

funded by appropriations, any government spending

requirement is met here. Appellee’s En Banc Br. 29–30

(citing 35 U.S.C. § 42(c)(1)–(2)). Trademark registration

fees are collected and, “[t]o the extent and in the amounts

provided in advance in appropriations Acts,” made avail-

able “to carry out the activities of the [PTO].” 35 U.S.C.

§ 42(c)(1). However, since 1991 these appropriations have

been funded entirely by registration fees, not the taxpay-

er. Figueroa v. United States, 466 F.3d 1023, 1028 (Fed.

Cir. 2006); see also 56 Fed. Reg. 65147 (1991); Omnibus

Budget Reconciliation Act of 1990, Pub. L. No. 101-508, S.

10101, 1990 U.S.C.C.A.N. (104 Stat.) 1388. The fact that

registration fees cover all of the operating expenses asso-

ciated with registering marks is further evidence that,

despite conveying valuable benefits, trademark registra-

tion is not a government subsidy.

While PTO operations are fully underwritten by regis-

tration fees, some federal funds are nonetheless spent on

the registration and enforcement of trademarks. For

example, PTO employee benefits, including pensions,

health insurance, and life insurance, are administered by

the Office of Personnel Management and funded from the

general treasury. Figueroa, 466 F.3d at 1028. And regis-

tering a trademark may lead to additional government

spending, such as when the trademark owner seeks to

enforce the trademark through the federal courts and

U.S. Customs and Border Patrol. This spending, howev-

er, is attenuated from the benefits bestowed by registra-

tion. Trademark registration does not implicate the

Spending Clause merely because of this attenuated

spending, else every benefit or regulatory program pro-

vided by the government would implicate the Spending

Clause. The Copyright Office is only partially funded by

user fees, but copyright registration is nonetheless not a

subsidy. Copyright Office Fees: Registration, Recordation

and Related Services; Special Services; Licensing Division

54 IN RE TAM

Services; FOIA Services, 79 Fed. Reg. 15910-01 (Mar. 24,

2014) (setting fees to recover “a significant part of the

costs to the Office of registering copyright claims”). It

would be unreasonable to argue that the government

subsidizes an author when it grants him a copyright.

Similarly, the programs in Bullfrog and Texas Lottery

Commission were likely funded in some part by the gov-

ernment—perhaps also by government benefits paid to

employees administering the programs—but the Ninth

Circuit and the Fifth Circuit considered only whether the

conditioned benefits were paid for by government spend-

ing, and not whether the programs were subsidized in

more indirect ways. And while the government argued in

Autor that the government had appropriated public funds

to establish the international trade advisory committees,

740 F.3d at 182, the D.C. Circuit nonetheless found that

membership on these advisory committees was not a

financial benefit, id. at 183.

The fact that the Lanham Act derives from the Com-

merce Clause, not the Spending Clause, is further evi-

dence that trademark registration is not a subsidy. The

purpose of the Lanham Act is to regulate marks used in

interstate commerce, prevent customer confusion, and

protect the goodwill of markholders, 15 U.S.C. § 1127, not

to subsidize markholders. Moreover, the government

funding cases have thus far been limited to situations

where the government has chosen to limit funding to

individuals that are advancing the goals underlying the

program the government seeks to fund. See generally

Agency for Int’l Dev., 133 S. Ct. at 2324–25; Rust, 500 U.S.

at 191; cf. American Library Ass’n, 539 U.S. at 211 (it is

not unconstitutional for the government to insist that

“public funds be spent for the purposes for which they

were authorized”). The restriction on the registration of

disparaging marks bears no relation to the objectives,

goals, or purpose of the federal trademark registration

program. Preventing disparaging marks does not protect

IN RE TAM 55

trademark owners’ investments; in fact, because § 2(a)

can be brought in cancellation proceedings decades after a

mark is granted, this provision actually undermines this

important purpose of the Lanham Act. And the dispar-

agement proscription has never been alleged to prevent

consumer confusion or deception. The government’s

viewpoint- and content-based discrimination in this case

is completely untethered to the purposes of the federal

trademark registration program. It would be a radical

extension of existing precedent to permit the government

to rely upon its power to subsidize to justify its viewpoint

discrimination, when that discrimination has nothing to

do with the goals of the program in which it is occurring.

Were we to accept the government’s argument that

trademark registration is a government subsidy and that

therefore the government is free to restrict speech within

the confines of the trademark program, it would expand

the “subsidy” exception to swallow nearly all government

regulation. In many ways, trademark registration resem-

bles copyright registration. Under the logic of the gov-

ernment’s approach, it follows that the government could

refuse to register copyrights without the oversight of the

First Amendment. Congress could pass a law prohibiting

the copyrighting of works containing “racial slurs,” “reli-

gious insults,” “ethnic caricatures,” and “misogynistic

images.” Appellee’s En Banc Br. 2–3. It is difficult to

imagine how trademark registration with its attendant

benefits could be deemed a government subsidy but

copyright registration with its attendant benefits would

not amount to a government subsidy. And if both must be

treated as government subsidies by virtue of their confer-

ence of benefits or advantages, though not public money,

then the government has the right to make content- or

viewpoint-based determinations over which works to

grant registration. This idea—that the government can

control speech by denying the benefits of copyright regis-

tration to disfavored speech—is anathema to the First

56 IN RE TAM

Amendment. With this, the government agrees, arguing

that copyright registration, unlike trademark registra-

tion, is protected by the First Amendment. Oral Arg. at

36:45–38:50. But the government has advanced no prin-

cipled reason to treat trademark registration differently

than copyright registration for present purposes. The

government admits that any message-based regulation of

copyrights would be subject to the First Amendment. We

agree, and extend the government’s reasoning to § 2(a)’s

message-based regulation of trademarks. These registra-

tion programs are prototypical examples of regulatory

regimes. The government may not place unconstitutional

conditions on trademark registration. We reject the

government’s argument that it is free to restrict constitu-

tional rights within the confines of its trademark registra-

tion program.

III. Section 2(a) Is Unconstitutional Even Under the

Central Hudson Test for Commercial Speech

As discussed above, § 2(a) regulates expressive

speech, not commercial speech, and therefore strict scru-

tiny is appropriate. Trademarks have at times been

referred to as commercial speech. See, e.g., Friedman v.

Rogers, 440 U.S. 1, 11 (1979) (holding that the trade name

of an optometrist was commercial speech). They are, after

all, commercial identifiers, the symbols and words by

which companies distinguish and identify their brands.

Va. State Bd. of Pharmacy v. Va. Citizens Consumer

Council, Inc., 425 U.S. 748, 765 (1976) (defining commer-

cial speech as the “dissemination of information as to who

is producing and selling what product, for what reason,

and at what price”). It does not follow, however, that all

government regulation of trademarks is properly re-

viewed under the Central Hudson intermediate scrutiny

standard. Section 2(a) bars registration of disparaging

marks. This regulation is squarely based on the expres-

sive aspect of the speech, not its commercial-speech

aspects. It should therefore be evaluated under the First

IN RE TAM 57

Amendment standards applicable to the regulation of

expressive speech. Discrimination against a mark by

virtue of its offensive, disparaging nature discriminates

against the mark’s political or social message. Sec-

tion 2(a) should be subject to strict scrutiny, and be inval-

idated for its undisputed inability to survive such

scrutiny.

Even if we were to treat § 2(a) as a regulation of

commercial speech, it would fail to survive. In Central

Hudson, the Supreme Court laid out the intermediate-

scrutiny framework for determining the constitutionality

of restrictions on commercial speech. 447 U.S. at 566.

First, commercial speech “must concern lawful activity

and not be misleading.” Id. If this is the case, we ask

whether “the asserted governmental interest is substan-

tial,” id., and whether the regulation “directly and mate-

rially advanc[es]” the government’s asserted interest and

is narrowly tailored to achieve that objective. Lorillard

Tobacco Co. v. Reilly, 533 U.S. 525, 555–56 (2001). “Un-

der a commercial speech inquiry, it is the State’s burden

to justify its content-based law as consistent with the

First Amendment.” Sorrell, 131 S. Ct. at 2667.

First, we ask whether the regulated activity is lawful

and not misleading. Cent. Hudson, 447 U.S. at 563–64.

Unlike many other provisions of § 2, the disparagement

provision does not address misleading, deceptive, or

unlawful marks. There is nothing illegal or misleading

about a disparaging trademark like Mr. Tam’s mark.

Next, for speech that is lawful and not misleading, a

substantial government interest must justify the regula-

tion. Id. at 566. But § 2(a) immediately fails at this step.

The entire interest of the government in § 2(a) depends on

disapproval of the message. That is an insufficient inter-

est to pass the test of intermediate scrutiny, as the Su-

preme Court made clear in Sorrell. 131 S. Ct. at 2668

(law must not “seek to suppress a disfavored message”);

58 IN RE TAM

id. at 2670 (rejecting message-based interest as “contrary

to basic First Amendment principles”); see id. at 2667–68

(finding it unnecessary to rely on strict scrutiny; rejecting

justification under Central Hudson); Bolger v. Youngs

Drug Prods. Corp., 463 U.S. 60, 69–72 (1983); Carey v.

Population Servs., Int’l, 431 U.S. 678, 701 & n.28 (1977).

The government proffers several interests to justify

its bar on disparaging trademarks. It argues principally

that the United States is “entitled to dissociate itself from

speech it finds odious.” Appellee’s En Banc Br. 41. This

core argument rests on intense disapproval of the dispar-

aging marks. See, e.g., Appellee’s En Banc Br. 1 (“the

most vile racial epithets and images”); id. at 2–3 (“racial

slurs . . . or religious insults, ethnic caricatures, misogyn-

istic images, or any other disparaging terms or logos”); id.

at 14 (“racial epithets”); id. at 21 (“racial slurs and similar

disparagements”); id. at 22 (“including the most vile racial

epithets”); id. at 41 (“speech [the government] finds

odious”); id. at 44 (“racial slurs”). And that disapproval is

not a legitimate government interest where, as here, for

the reasons we have already discussed, there is no plausi-

ble basis for treating the speech as government speech or

as reasonably attributed to the government by the public.

The government also argues that it has a legitimate

interest in “declining to expend its resources to facilitate

the use of racial slurs as source identifiers in interstate

commerce.” Appellee’s En Banc Br. 43. The government’s

interest in directing its resources does not warrant regu-

lation of these marks. As discussed, trademark registra-

tion is user-funded, not taxpayer-funded. The

government expends few resources registering these

marks. See supra at 53–55. Its costs are the same costs

that would be incidental to any governmental registra-

tion: articles of incorporation, copyrights, patents, prop-

erty deeds, etc. In fact, the government spends far more

significant funds defending its refusal decisions under the

statute. See McGinley, 660 F.2d at 487 (Rich, J., dissent-

IN RE TAM 59

ing) (“More ‘public funds’ are being expended in the

prosecution of this appeal than would ever result from the

registration of the mark.”). Finally, labeling this sort of

interest as substantial creates an end-run around the

unconstitutional conditions doctrine, as virtually all

government benefits involve the resources of the federal

government in a similar sense. Nearly every government

act could be justified under this ground, no matter how

minimal. For example, the government could also claim

an interest in declining to spend resources to issue per-

mits to racist, sexist, or homophobic protests. The gov-

ernment cannot target speech on this basis, even if it

must expend resources to grant parade permits or close

down streets to facilitate such speech.

This holds true even though the government claims to

have a “compelling interest in fostering racial tolerance.”

Appellee’s En Banc Br. 43 (citing Bob Jones Univ. v.

United States, 461 U.S. 574, 604 (1983)). Bob Jones

University does not stand for the broad proposition the

government claims. Bob Jones University is a case about

racially discriminatory conduct, not speech. The Court

held that the government has an interest in combating

“racial discrimination in education,” not a more general

interest in fostering racial tolerance that would justify

preventing disparaging speech. Id. at 595.

The invocation of the general racial-tolerance interest

to support speech regulation is a sharply different matter,

as the Supreme Court explained in R.A.V.:

One must wholeheartedly agree with the Minne-

sota Supreme Court that “[i]t is the responsibility,

even the obligation, of diverse communities to con-

front [virulent notions of racial supremacy] in

whatever form they appear,” but the manner of

that confrontation cannot consist of selective limi-

tations upon speech. St. Paul’s brief asserts that

a general “fighting words” law would not meet the

60 IN RE TAM

city’s needs because only a content-specific meas-

ure can communicate to minority groups that the

“group hatred” aspect of such speech “is not con-

doned by the majority.” The point of the First

Amendment is that majority preferences must be

expressed in some fashion other than silencing

speech on the basis of its content.

505 U.S. at 392 (first alteration in original; citations

omitted). What is true of direct “silencing” is also true of

the denial of important legal rights. “[I]n public debate

we must tolerate insulting, and even outrageous, speech

in order to provide adequate breathing space to the free-

doms protected by the First Amendment.” Snyder, 562

U.S. at 458 (quoting Boos v. Barry, 485 U.S. 312, 322

(1988)) (alterations omitted). The case law does not

recognize a substantial interest in discriminatorily regu-

lating private speech to try to reduce racial intolerance.

Moreover, at the level of generality at which the gov-

ernment invokes “racial tolerance,” it is hard to see how

one could find that § 2(a) “directly and materially ad-

vanc[es]” this interest and is narrowly tailored to achieve

that objective. Lorillard Tobacco Co., 533 U.S. at 555–56.

Disparaging speech abounds on the Internet and in books

and songs bearing government registered copyrights. And

the PTO has granted trademark registrations of many

marks with a racially charged character. Further, the

connection to a broad goal of racial tolerance would be

even weaker to the extent that the government suggests,

contrary to our conclusion in II.A supra, that denial of

registration has no meaningful effect on the actual adop-

tion and use of particular marks in the marketplace.

Finally, the government argues that it has a legiti-

mate interest in “allowing States to make their own

determinations about whether trademarks should be

unenforceable on grounds of public policy.” Appellee’s En

Banc Br. 44. However, this interest cannot stand alone.

IN RE TAM 61

If § 2(a) is otherwise unconstitutional, the government

cannot render it constitutional by arguing that it is neces-

sary so that states can partake in the same unconstitu-

tional message-based regulation of trademarks. The

government, in essence, argues that it has a legitimate

interest in leaving the door open for states to violate the

Constitution. This interest is certainly not legitimate, let

alone substantial.

We conclude that the government has not presented

us with a substantial government interest justifying the

§ 2(a) bar on disparaging marks. All of the government’s

proffered interests boil down to permitting the govern-

ment to burden speech it finds offensive. This is not a

legitimate interest. With no substantial government

interests, the disparagement provision of § 2(a) cannot

satisfy the Central Hudson test. We hold the disparage-

ment provision of § 2(a) unconstitutional under the First

Amendment.

CONCLUSION

Although we find the disparagement provision of

§ 2(a) unconstitutional, nothing we say should be viewed

as an endorsement of the mark at issue. We recognize

that invalidating this provision may lead to the wider

registration of marks that offend vulnerable communities.

Even Mr. Tam, who seeks to reappropriate the term

“slants,” may offend members of his community with his

use of the mark. See Br. of Amici Curiae Nat’l Asian

Pacific Am. Bar Ass’n 3, 5. But much the same can be

(and has been) said of many decisions upholding First

Amendment protection of speech that is hurtful or worse.

Whatever our personal feelings about the mark at issue

here, or other disparaging marks, the First Amendment

forbids government regulators to deny registration be-

cause they find the speech likely to offend others. Even

when speech “inflict[s] great pain,” our Constitution

protects it “to ensure that we do not stifle public debate.”

62 IN RE TAM

Snyder, 562 U.S. at 461. The First Amendment protects

Mr. Tam’s speech, and the speech of other trademark

applicants.

We hold that the disparagement provision of § 2(a) is

unconstitutional because it violates the First Amendment.

We vacate the Board’s holding that Mr. Tam’s mark is

unregistrable, and remand this case to the Board for

further proceedings.

United States Court of Appeals

for the Federal Circuit

______________________

IN RE SIMON SHIAO TAM

______________________

2014-1203

______________________

Appeal from the United States Patent and Trademark

Office, Trademark Trial and Appeal Board in No.

85/472,044.

______________________

O’MALLEY, Circuit Judge, with whom WALLACH, Circuit

Judge, joins, concurring.

I agree that the disparagement provision of 15 U.S.C.

§ 1052(a) (“§ 2(a)”) is unconstitutional on its face. I agree,

moreover, that § 2(a) cannot survive the searching consti-

tutional scrutiny to which the majority subjects it under

the First Amendment to the United States Constitution.

On this point, the majority rightly dispenses with this

court’s precedent in In re McGinley, 660 F.2d 481 (CCPA

1981) and its progeny. I write separately, however,

because, I believe § 2(a) is also unconstitutionally vague,

rendering it unconstitutional under the Fifth Amendment

to the United States Constitution.

While the majority acknowledges the vague and un-

certain application of § 2(a), Maj. Op. 30–33, it finds that

“[a]ll we need say about the uncertainty here, however, is

that it contributes significantly to the chilling effect on

speech,” id. at 32–33. I agree with the majority’s concern

about the uncertain nature of § 2(a), but believe those

2 IN RE TAM

concerns should lead us to do more than note 2(a)’s un-

doubted chilling effect on speech. I find § 2(a)’s dispar-

agement provision to be so vague that I would find it to be

unconstitutional, whether or not it could survive Appel-

lant’s First Amendment challenge.

DISCUSSION

Section 2(a) provides that the Trademark Trial and

Appeal Board (“Board”) may refuse an application when

the trademark “[c]onsists of or comprises . . . matter

which may disparage . . . persons, living or dead, insti-

tutions, beliefs, or national symbols, or bring them into

contempt, or disrepute.” (emphasis added). As the majori-

ty correctly notes, the language of the statute creates

“uncertainty as to what might be deemed disparaging.”

Maj. Op. 30–31. Both would-be applicants and the Board

are left to guess at what may have the potential to dis-

parage a broad range of persons, institutions, symbols,

and even undefined “beliefs.” And, they are left to guess

at whether “may disparage” is the equivalent of bringing

into contempt or disrepute, or is a distinct category of

impropriety from these latter evils.

Where, as here, the language of a statute evades clari-

ty, “[t]he area of proscribed conduct will be adequately

defined and the deterrent effect of the statute contained

within constitutional limits only by authoritative con-

structions sufficiently illuminating the contours of an

otherwise vague prohibition.” Dombrowski v. Pfister, 380

U.S. 479, 490–91 (1965). The Board has developed a two-

step test to determine whether a mark is disparaging:

(1) What is the likely meaning of the matter in

question, taking into account not only dictionary

definitions, but also the relationship of the matter

to the other elements in the mark, the nature of

the goods or services, and the manner in which

the mark is used in the marketplace in connection

with the goods or services; and

IN RE TAM 3

(2) If that meaning is found to refer to identifiable

persons, institutions, beliefs or national symbols,

whether that meaning may be disparaging to a

substantial composite of the referenced group.

Trademark Manual of Exam. Proc. (“TMEP”)

§ 1203.03(b)(i) (Oct. 2015 ed.) (citing, inter alia, In re

Geller, 751 F.3d 1355, 1358 (Fed. Cir. 2014); Harjo v. Pro-

Football Inc., 50 U.S.P.Q.2d 1705, 1740–41 (T.T.A.B.

1999)). Thus, the Board has concluded that a mark may

disparage within the meaning of § 2(a) when a majority of

the Board believes it “dishonor[s] by comparison with

what is inferior, slight[s], deprecate[s], degrade[s], or

affect[s] or injure[s] by unjust comparison.” Pro-Football,

Inc. v. Harjo, 284 F. Supp. 2d 96, 124 (D.D.C. 2003)

(internal quotation marks omitted) (quoting Harjo v. Pro-

Football, Inc., 50 U.S.P.Q.2d 1705, 1737 n.98 (T.T.A.B.

1999)).

The two-step test does little to alleviate § 2(a)’s uncer-

tainty. Indeed, by adding the caveat that a mark can be

rejected whenever a mark’s meaning may be disparaging

to “a substantial composite” of an “identifiable” group,

(TMEP § 1203.03(b)(i)), the TMEP compounds the confu-

sion the statute engenders. Thus a mark need only

potentially disparage a subset of any group as long as that

group can be “identifi[ed].”

One need only examine the disparate ways in which

§ 2(a) has been applied to see the confusion. While it is

true that a “fertile legal ‘imagination can conjure up

hypothetical cases in which the meaning of [disputed]

terms will be in nice question,’” Grayned v. City of Rock-

ford, 408 U.S. 104, 112 n.15 (1972) (alteration in original)

(quoting Am. Commc’ns Ass’n v. Douds, 339 U.S. 382, 412

(1950)), the arbitrary application of § 2(a) is easily

demonstrated. The majority discusses numerous exam-

ples of inconsistent registration decisions. Maj. Op. 31

n.7. These include examples where there is no conceiva-

4 IN RE TAM

ble difference between the applied-for marks, yet one is

approved and the other rejected. Compare HAVE YOU

HEARD SATAN IS A REPUBLICAN (Trademark Appli-

cation Serial No. 85,077,647) (rejected because it dispar-

aged the Republican Party), with THE DEVIL IS A

DEMOCRAT, Registration No. 85,525,066 (accepted and

later abandoned for other reasons). I agree with the

majority that there appears to be “no rationale for the

PTO’s seemingly arbitrary registration decisions, let alone

one that would give applicants much guidance.” Maj. Op.

31 n.7. 1

For § 2(a) to survive a vagueness challenge, the Su-

preme Court requires it “give the person of ordinary

1 Amici also were easily able to uncover examples of

inconsistencies in the application of the § 2(a). See Br. for

American Civil Liberties Union, the American Civil

Liberties Union of Oregon, and the American Civil Liber-

ties Union of the Nation’s Capital as Amici Curiae 22–24

(discussing “a long line of arbitrary and contradictory

decisions” as evidenced by the “countless examples of such

irregularities,” including, but not limited to, examples

where the same mark is rejected in one instance and

accepted in another, even for the same use—for example

compare MADONNA, In re Riverbank Canning Co., 95

F.2d 327 (CCPA 1938) (affirming rejection of mark for use

on wines as scandalous), with MADONNA, Registration

No. 3,545,635 (accepted for use on wine) (Dec. 16, 2008);

and MESSIAS, In re Sociedade Agricola E. Comerical Dos

Vinhos Messias, S.A.R.L., 159 U.S.P.Q. 275 (T.T.A.B.

1968) (rejected for use on wine and brandy), with IL

MESSIA, Registration No. 4,093,035 (accepted for use on

wine) (Jan. 31, 2012)). These examples further highlight

the subjective nature of the registration standard under

§ 2(a): it is an unstable standard that apparently depends

on shifting sensibilities over time.

IN RE TAM 5

intelligence a reasonable opportunity to know what is

prohibited, so that he may act accordingly.” Grayned, 408

U.S. at 108. Further, “if arbitrary and discriminatory

enforcement is to be prevented, laws must provide explicit

standards for those who apply them.” Id. Given the

subjective and hypothetical language of the statute and

its well-documented, inconsistent application by the

Board, § 2(a) is void for vagueness under even a lax test

for vagueness. But the standard we should apply to § 2(a)

is not lax.

“The degree of vagueness that the Constitution toler-

ates . . . depends in part on the nature of the enactment.”

Hoffman Estates v. Flipside, Hoffman Estates, Inc., 455

U.S. 489, 498 (1982). “[P]erhaps the most important

factor affecting the clarity that the Constitution demands

of a law is whether it threatens to inhibit the exercise of

constitutionally protected rights. If, for example, the law

interferes with the right of free speech . . . , a more strin-

gent vagueness test should apply.” Id. at 499. The First

Amendment concerns articulated by the majority support

application of a “more stringent vagueness test”—one that

§ 2(a) simply cannot pass.

a. First Amendment Concerns Require a Stringent

Vagueness Test

As the majority points out, “[i]t is beyond dispute that

§ 2(a) discriminates on the basis of content.” Maj. Op. 18.

“[T]he test for disparagement—whether a substantial

composite of the referenced group would find the mark

disparaging—makes clear that it is the nature of the

message conveyed by the speech which is being regulated.

If the mark is found disparaging by the referenced group,

it is denied registration.” Id. at 19. Indeed, the problems

with § 2(a) are more substantial than the majority even

acknowledges—not only is a trademark’s registrability

adjudged by the message it conveys, but the message

6 IN RE TAM

conveyed is adjudged by the potential sensibilities of a

broad range of potential listeners.

Under First Amendment principles, “content-based

regulation of speech . . . raises special First Amendment

concerns because of its obvious chilling effect on free

speech.” Reno v. ACLU, 521 U.S. 844, 872 (1997). Indeed,

“[b]road prophylactic rules in the area of free expression

are suspect. Precision of regulation must be the touch-

stone in an area so closely touching our most precious

freedoms.” Edenfield v. Fane, 507 U.S. 761, 777 (1993)

(internal quotation marks omitted) (quoting NAACP v.

Button, 371 U.S. 415, 438 (1963)). The Supreme Court’s

emphasis on precision for content-based regulations is

premised on its understanding of

at least two connected but discrete due process

concerns: first, that regulated parties should know

what is required of them so they may act accord-

ingly; second, precision and guidance are neces-

sary so that those enforcing the law do not act in

an arbitrary or discriminatory way. When speech

is involved, rigorous adherence to those require-

ments is necessary to ensure that ambiguity does

not chill protected speech.

FCC v. Fox Television Stations, Inc., 132 S. Ct. 2307, 2317

(2012) (citing Grayned, 408 U.S. at 108–109).

b. Section 2(a) is Void for Vagueness

Section 2(a)’s undeniable chilling effect on speech re-

quires it to pass a “more stringent test” for vagueness in

order to pass constitutional muster. Hoffman, 455 U.S. at

498. Recognizing that due process vagueness challenges

are more difficult to sustain where civil regulation—as

distinct from criminal penalty provisions—are at issue, I

believe § 2(a)’s inherent ambiguity makes it difficult for

would-be applicants to discern its boundaries and leads to

IN RE TAM 7

inconsistent and unreliable actions on the part of the

government as it seeks to regulate on the basis of content.

First, the imprecise, content-based regulation of

trademark registration affects the types of marks sought

by would-be registrants. “Vague laws force potential

speakers to ‘“steer far wider of the unlawful

zone” . . . than if the boundaries of the forbidden areas

were clearly marked.’” Brown v. Entm’t Merchants Ass’n,

131 S. Ct. 2729, 2743 (2011) (quoting Baggett v. Bullitt,

377 U.S. 360, 372 (1964)). The majority opinion rightly

concludes that, given the Board’s inconsistency, “the

public would have a hard time drawing much reliable

guidance.” Maj. Op. 31. The “uncertainty of speech-

affecting standards has long been recognized as a First

Amendment problem,” and the uncertainty inherent in

§ 2(a) “contributes significantly to the chilling effect on

speech.” Maj. Op. 32–33. 2

Next, the absence of clear standards for the applica-

tion of § 2(a) provides the government with virtually

unlimited ability to pick and choose which marks to allow

and which to deny. And neither § 2(a) itself nor the

TMEP’s two-step test provides the PTO, the courts, or the

2 Numerous amici have come to the same conclu-

sion. See, e.g., Br. for First Amendment Lawyers Ass’n as

Amicus Curiae 14 (“The multitude of Section 2(a) cases

show that Section 2(a) does not convey ‘sufficiently defi-

nite warning as to the proscribed conduct when measured

by common understanding and practices,’ as required by

the Constitution.” (quoting Roth v. United States, 354

U.S. 476, 491 (1957)); Br. for Pro-Football, Inc. as Amicus

Curiae 33 n.13 (“Even if Section 2(a) sought to advance a

legitimate state interest, its language is impermissibly

vague to advance that interest. The statute provides no

guidance as to which trademarks will be deemed dispar-

aging, scandalous, or immoral.”).

8 IN RE TAM

public with any certainty as to what may disparage a

given subset of any given population or group of believers.

That is simply inadequate under the Fifth Amendment.

See Nat’l Endowment for the Arts v. Finley, 524 U.S. 569,

588 (1998) (“Under the First and Fifth Amendments,

speakers are protected from arbitrary and discriminatory

enforcement of vague standards.”); Grayned, 408 U.S. at

108–09 (1972) (“[I]f arbitrary and discriminatory en-

forcement is to be prevented, laws must provide explicit

standards for those who apply them. A vague law imper-

missibly delegates basic policy matters to policemen,

judges, and juries for resolution on an ad hoc and subjec-

tive basis, with the attendant dangers of arbitrary and

discriminatory application.”) (footnotes omitted). Cf.

Kolender v. Lawson, 461 U.S. 352, 357–58 (1983) (noting

in the context of a criminal penalty scheme that, although

the vagueness doctrine “focuses both on actual notice to

citizens and arbitrary enforcement, we have recognized

recently that the more important aspect of vagueness

doctrine ‘is not actual notice, but the other principal

element of the doctrine—the requirement that a legisla-

ture establish minimal guidelines to govern law enforce-

ment.’ Where the legislature fails to provide such

minimal guidelines, a criminal statute may permit ‘a

standardless sweep [that] allows policemen, prosecutors,

and juries to pursue their personal predilections.’” (quot-

ing Smith v. Goguen, 415 U.S. 566, 574, 575 (1974))).

Other circuits to have considered the use of the sub-

jective terms connoting insult—like disparagement—

have expressed similar concerns about the absence of

objective standards governing their application.

In Dambrot v. Central Michigan University, 55 F.3d

1177 (6th Cir. 1995), for example, the Sixth Circuit con-

sidered the discriminatory harassment policy of Central

Michigan University (“CMU”). That policy defined racial

and ethnic harassment as:

IN RE TAM 9

any intentional, unintentional, physical, verbal, or

nonverbal behavior that subjects an individual to

an intimidating, hostile or offensive educational,

employment or living environment by . . . (c) de-

meaning or slurring individuals

through . . . written literature because of their ra-

cial or ethnic affiliation; or (d) using symbols, [epi-

thets] or slogans that infer negative

connotations about the individual’s racial or

ethnic affiliation.

Id. at 1182 (emphases added). The court found the policy

impermissibly vague because it required “one [to] make a

subjective reference” and because “different people find

different things offensive.” Id. at 1184. As such, the

policy’s enforcement was too tied to subjective reference

and, thus, both failed to “provide fair notice” and gave rise

to an “unrestricted delegation of power” to university

officials. Id. See also Wynn Oil Co. v. Purolator Chem.

Corp., 536 F.2d 84, 86 (5th Cir. 1976) (finding the subsec-

tion of an “injunction which restrains defendants from

‘slandering and disparaging the Wynn Oil Co. and its

products’ [to be] impermissively vague”).

In Ridley v. Massachusetts Bay Transportation Au-

thority, 390 F.3d 65 (1st Cir. 2004), the First Circuit

upheld the validity of the Massachusetts Bay Transporta-

tion Authority’s (“MBTA”) “guideline prohibiting demean-

ing or disparaging material,” id. at 93, because, in that

case, “there [was] no serious concern about either notice

or chilling effects[] where there [were] no consequences

for submitting a non-conforming advertisement and

having it rejected” id. at 94. But that court specifically

distinguished the guidelines at issue—“given the nature

of the MBTA’s advertising program and its chief purpose

of raising revenue without losing ridership,” id. at 94—

from “the concern over subjective decision making[, which

has the] most effect in government licensing schemes” id.

at 95. While the trademark registration scheme is not a

10 IN RE TAM

traditional public forum making use of a licensing scheme

to “maintain basic order,” it implicates the “[e]xcessive

discretion and vagueness inquiries under the First

Amendment” in much the same way. Id. at 94. As the

majority notes, trademark registrants receive substantial

benefits from the fact of registration, Maj. Op. 5–6; denial

of those benefits based on the subjective views of govern-

mental employees about the potential subjective views of

those who might be exposed to the proposed mark is an

essentially standardless measure.

In McGinley, we found § 2(a)’s ban on scandalous sub-

ject matter, “sufficiently precise to enable the PTO and

the courts to apply the law fairly and to notify a would-be

registrant that the mark he adopts will not be granted a

federal registration.” 660 F.2d at 484. While I agree that

the PTO is capable of “notify[ing] a would-be registrant”

of its decision to deny registration under § 2(a), the law is

by no means precise enough to “enable the PTO and the

courts to apply [it] fairly.” Id. As the majority points out,

the Board has allowed use of a term by one trademark

holder while disallowing use of precisely the same term by

another based apparently on its view of how use of that

term might be received by the audience the Board has

chosen to “identify.” Maj. Op. 21–23. This fact alone

evidences the absence of explicit standards for the appli-

cation of § 2(a).

As it turns out, the PTO’s Assistant Commissioner

was correct in 1939 in expressing concern that “the word

‘disparage’ . . . is going to cause a great deal of difficulty in

the Patent Office, because . . . it is always going to be just

a matter of the personal opinion of the individual parties

as to whether they think it is disparaging.” Hearing on

H.R. 4744 Before the Subcomm. on Trademarks of the H.

Comm. on Patents, 76th Cong. 21 (1939) (statement of

Leslie Frazer). The Board has likewise commented on the

vague and subjective nature of § 2(a). See, e.g., In re In

Over Our Heads, 1990 WL 354546, at *1 (T.T.A.B. 1990)

IN RE TAM 11

(“[T]he guidelines for determining whether a mark is

scandalous or disparaging are somewhat vague and the

determination of whether a mark is scandalous or dispar-

aging is necessarily a highly subjective one.”) (bracketing

and quotation marks omitted); Harjo v. Pro-Football, Inc.,

1999 WL 375907, at *35 (T.T.A.B. 1999) (noting that

whether a mark is disparaging “is highly subjective and,

thus, general rules are difficult to postulate”).

“It is a basic principle of due process that an enact-

ment is void for vagueness if its prohibitions are not

clearly defined.” Grayned, 408 U.S. at 108. The need for

clarity is especially relevant when a law implicates First

Amendment rights, as § 2(a) indisputably does. Section

2(a) does not provide a “person of ordinary intelligence a

reasonable opportunity to know what is prohibited, so

that he may act accordingly.” Id. And inconsistent,

indeed seemingly rudderless, application of § 2(a) demon-

strates the “arbitrary and discriminatory enforcement”

that occurs when regulations do not “provide explicit

standards for those who apply them.” Id.

While I agree with the majority’s thoughtful First

Amendment analysis, I do not believe it is the only predi-

cate to the conclusion that § 2(a) is unconstitutional.

CONCLUSION

For the above reasons, I concur in the majority’s con-

clusions and separately concur in the result.

United States Court of Appeals

for the Federal Circuit

______________________

IN RE SIMON SHIAO TAM

______________________

2014-1203

______________________

Appeal from the United States Patent and Trademark

Office, Trademark Trial and Appeal Board in No.

85/472,044.

______________________

DYK, Circuit Judge, concurring in part and dissenting in

part, with whom Circuit Judges LOURIE and REYNA join

with respect to parts I, II, III, and IV.

The majority is correct that the bar on registration of

disparaging marks is unconstitutional as applied to Mr.

Tam. But in my view the majority errs in going beyond

the facts of this case and holding the statute facially

unconstitutional as applied to purely commercial speech.

It is noteworthy that the majority seeks to justify its

sweeping holding by describing § 2(a) as being something

it is not. The provision bars the registration of marks

that “disparage . . . or bring into contempt, or disrepute.”

15 U.S.C. § 1052(a) (otherwise identified as § 2(a)). The

majority repeatedly asserts that “[t]he government enact-

ed § 2(a), and defends it today, because it is hostile to the

2 IN RE TAM

messages conveyed by the refused marks.” 1 Maj. Op. at

23. In my view, there is nothing in the statute itself or

the legislative history that supports this interpretation.

On its face, and as interpreted by the Trademark Trial

and Appeal Board (“the Board”), the statute is designed to

preclude the use of government resources not when the

government disagrees with a trademark’s message, but

rather when its meaning “may be disparaging to a sub-

stantial composite of the referenced group.” In re Lebanese

Arak Corp., 94 U.S.P.Q.2d 1215, 1217 (T.T.A.B. 2010)

(emphasis added). The PTO uses an objective test in

making this determination, looking to dictionaries, the

relationship of the matter to the other elements of the

mark, the nature of the goods or services, and the manner

in which the mark is used in the marketplace in connec-

tion with the goods or services. See id. 2

1 The majority frequently characterizes the statute

as “discriminat[ing] on the basis of message conveyed”

and hence “viewpoint.” Maj. Op. at 19. “It does so as a

matter of avowed and undeniable purpose, and it does so

on its face.” Id. “Denial of these benefits creates a serious

disincentive to adopt a mark which the government may

deem offensive or disparaging.” Id. at 29. “The entire

interest of the government in § 2(a) depends on disap-

proval of the message.” Id. at 57. “All of the govern-

ment’s proffered interests boil down to permitting the

government to burden speech it finds offensive.” Id. at 61.

2 To be sure, the Board may have rendered incon-

sistent results in some cases, but this has no bearing on

the facial validity of § 2(a). See, e.g., Nat’l Endowment for

the Arts v. Finley, 524 U.S. 569, 587 (1998); Red Lion

Broad. Co. v. F.C.C., 395 U.S. 367, 396 (1969). In any

event, when the government is not acting in its sovereign,

IN RE TAM 3

Thus the purpose of the statute is to protect un-

derrepresented groups in our society from being bombard-

ed with demeaning messages in commercial advertising.

The question is whether the statute so designed can

survive First Amendment scrutiny. My answer is that

the statute is constitutional as applied to purely commer-

cial trademarks, but not as to core political speech, of

which Mr. Tam’s mark is one example. Ultimately, unlike

the majority, I do not think that the government must

support, or society tolerate, disparaging trademarks in

the name of commercial speech. The majority’s opinion

not only invalidates the bar on disparaging marks in

§ 2(a) but may also effectively invalidate the bar on scan-

dalous marks and the analogous provisions of the Model

State Trademark Act. See 1964 Model State Trademark

Act, § 2(b). The government need not support the inevita-

ble consequence of this decision—“the wider registration

of marks that offend vulnerable communities.” Maj. Op.

at 61.

I

As the majority notes, the Supreme Court has long

recognized the protection of offensive speech that consti-

tutes core political expression. “The right to free speech

. . . may not be curtailed simply because the speaker’s

message may be offensive to his audience.” Hill v. Colo-

rado, 530 U.S. 703, 716 (2000). Underpinning the First

Amendment’s protection of core speech that is disparaging

is the fundamental constitutional value of preserving an

“uninhibited marketplace of ideas in which truth will

ultimately prevail,” a marketplace that provides “suitable

access to social, political, esthetic, moral, and other ideas

and experiences.” Red Lion, 395 U.S. at 390. Integral to

regulatory capacity, “the consequences of imprecision are

not constitutionally severe.” Finley, 524 U.S. at 589.

4 IN RE TAM

an “uninhibited marketplace of ideas” is the ability to

incite debate. “[A] principal function of free speech under

our system of government is to invite dispute. It may

indeed best serve its high purpose when it induces a

condition of unrest, creates dissatisfaction with conditions

as they are, or even stirs people to anger.” Texas v. John-

son, 491 U.S. 397, 408–09 (1989). Thus to maintain a

“meaningful dialogue of ideas,” “we must tolerate insult-

ing, and even outrageous, speech in order to provide

adequate breathing space to the freedoms protected by

the First Amendment.” Snyder v. Phelps, 562 U.S. 443,

452, 458 (2011) (internal quotation marks, citations, and

alterations omitted). 3 At bottom, as Justice Holmes

described, in the core speech area the First Amendment

enshrines the “principle of free thought—not free thought

for those who agree with us but freedom for the thought

that we hate.” U.S. v. Schwimmer, 279 U.S. 644, 654–55

(1929) (Holmes, J., dissenting).

But this principle simply does not apply in the com-

mercial context. For example, it is well established that

racially or sexually disparaging speech in the workplace,

when severe, may constitute a violation of Title VII,

either as harassment or the creation of a hostile work

environment. See, e.g., Faragher v. City of Boca Raton,

524 U.S. 775, 787–88 (1998); Rogers v. Western-Southern

Life Ins. Co., 12 F.3d 668, 675 (7th Cir. 1993). The same

is necessarily true in the context of federal public accom-

modations law governing commercial establishments. No

case of which I am aware suggests that imposing liability

for disparaging speech in those commercial contexts, even

3 See also, e.g., Cohen v. California, 403 U.S. 15, 25

(1971); Hess v. Indiana, 414 U.S. 105, 107 (1973); Denver

Area Educ. Telecomm. Consortium, Inc. v. F.C.C., 518

U.S. 727, 753–54 (1996).

IN RE TAM 5

when separated from conduct, violates the First Amend-

ment.

So too in the area of commercial speech race or sex

disparagement can claim no First Amendment protection.

Unlike core political expression, the “extension of First

Amendment protection to commercial speech is justified

principally by the value to consumers of the information

such speech provides.” Zauderer v. Office of Disciplinary

Counsel of Supreme Court of Ohio, 471 U.S. 626, 651

(1985). Its constitutional protection derives not from any

dialogic function in the marketplace of ideas, but rather

from its “informational function” in the marketplace of

goods and services, Central Hudson Gas & Elec. Corp. v.

Pub. Serv. Comm’n of N.Y., 447 U.S. 557, 563 (1980), in

other words, “who is producing and selling what product,

for what reason, and at what price.” Va. State Bd. Of

Pharmacy v. Va. Citizens Consumer Council, Inc., 425

U.S. 748, 765 (1976); see also Sorrell v. IMS Health Inc.,

131 S. Ct. 2653, 2673–74 (Breyer, J., dissenting). We

protect the dissemination of this information to ensure

that “private economic decisions” are “intelligent and well

informed.” Va. State Bd. Of Pharmacy, 425 U.S. at 765.

Speech proposing a commercial transaction is “an ar-

ea traditionally subject to government regulation.” 44

Liquormart, Inc. v. Rhode Island, 517 U.S. 484, 499

(1996) (citing and quoting Ohralik v. Ohio State Bar

Ass’n, 436 U.S. 447, 456 (1978)). The Court has “been

careful to distinguish commercial speech from speech at

the First Amendment’s core,” Florida Bar v. Went For It,

Inc., 515 U.S. 618, 623 (1995), recognizing the “com-

monsense distinctions that exist between commercial and

noncommercial speech.” 44 Liquormart, 517 U.S. at 502

(quoting Virginia Bd. of Pharmacy, 425 U.S. at 771

n.24). The “greater objectivity” and “greater hardiness” of

commercial speech and the different constitutional values

underlying its protection “likely diminish[] the chilling

6 IN RE TAM

effect that may attend its regulation.” 44 Liquormart, 517

U.S. at 499 (internal quotation marks and citations

omitted). Accordingly, the Court has explained that “the

State may regulate some types of commercial advertising

more freely than other forms of protected speech,” id. at

498 (internal quotations marks and citations omitted),

and “the State may at times prescribe what shall be

orthodox in commercial advertising,” Hurley v. Irish-

American Gay, Lesbian & Bisexual Group of Boston, 515

U.S. 557, 573 (1995) (internal quotation marks and cita-

tions omitted)—something it could never do with core

political speech.

Recognizing the more limited protection of commercial

speech, the Court has repeatedly upheld regulations

“protect[ing] consumers from misleading, deceptive, or

aggressive sales practices,” because such regulations are

“consistent with the reasons for according constitutional

protection to commercial speech” in the first place. 44

Liquormart, 517 U.S. at 501; see also, e.g., Florida Bar,

515 U.S. 618 (1995); Metromedia, Inc. v. City of San

Diego, 453 U.S. 490 (1981); Bates v. State Bar of Ariz., 433

U.S. 350 (1977). “There can be no constitutional objection

to the suppression of commercial messages that do not

accurately inform the public about lawful activity.”

Central Hudson, 447 U.S. at 563.

This stands in stark contrast to core political speech,

for which “constitutional protection does not turn upon

‘the truth . . . of the ideas and beliefs which are offered.’”

N. Y. Times Co. v. Sullivan, 376 U.S. 254, 271 (1964)

(quoting NAACP v. Button, 371 U.S. 415, 445 (1963)).

“The erroneous statement is inevitable in free debate, and

[] it must be protected [absent a showing of actual malice]

if the freedoms of expression are to have the breathing

space that they need to survive.” Id. at 271–72 (internal

quotation marks, citations, and alterations omitted).

“Authoritative interpretations of the First Amendment

IN RE TAM 7

guarantees have consistently refused to recognize an

exception for any test of truth.” N. Y. Times, 376 U.S. at

271. See also Hustler Magazine, Inc. v. Falwell, 485 U.S.

46, 52 (1988).

To be sure, the Court has held that commercial adver-

tising cannot be restricted just because the product or

service may be offensive to some members of the audi-

ence. See Bolger v. Youngs Drug Prods. Corp., 463 U.S.

60, 71 (1983); Carey v. Population Servs. Int’l, 431 U.S.

678, 701 (1977). But, at the same time, the Court has

explained that the manner of advertising itself may be

restricted to protect the audience’s privacy interests. See

Florida Bar v. Went For It, Inc., 515 U.S. 618, 630 (1995).

“[T]he existence of [First Amendment] protection does not

deprive the State of all power to regulate such advertising

in order to minimize its offensiveness.” Bolger, 463 U.S.

at 84 (1983) (Stevens, J., concurring) (citing and quoting

from Carey, 431 U.S. at 716 (Stevens, J., concurring)).

For example, in Florida Bar the Court upheld a ban

on lawyer advertising targeted to recent accident victims

and their families. 515 U.S. at 634–35. There the Court

distinguished Bolger, which rejected a total ban on adver-

tising related to contraceptives, because the government’s

interest in Bolger had been only to shield citizens from

generally “offensive” and “intrusive” products. See id. at

630–31. That interest, the Court explained, was entirely

different from the interest in “protecting the personal

privacy and tranquility of [Florida’s] citizens from crass

commercial intrusion by attorneys upon their personal

grief in times of trauma.” Id. at 630 (alterations omitted).

The Court thus had “little trouble crediting the Bar’s”

“privacy-based” interest as “substantial,” and held that it

was sufficient to justify the advertising ban. Id. at 625,

629, 635.

8 IN RE TAM

Disparagement as defined by the Board “is essentially

a violation of one’s right of privacy—the right to be let

alone from contempt or ridicule.” TMEP § 1203.03(b).

While in the trademark context the dissemination of the

disparaging material is not limited to the disparaged

group, the disparaged group is nonetheless targeted in the

sense that it is singled out for ridicule. Furthermore, the

fact that the dissemination of the disparaging advertising

is not limited to the disparaged group makes the govern-

ment’s interest here all the greater—the effect on the

disparaged group is amplified, not lessened, by dissemi-

nating the disparaging material to the public at large.

This well-recognized disparity in the types of re-

strictions that are permissible as applied to commercial as

opposed to political speech derives from the very different

constitutional values underlying their protection in the

first place. The Court has recognized that the govern-

ment has greater authority to “distinguish between the

relative value of different categories of commercial

speech” than of noncommercial speech. Metromedia, 453

U.S. at 514. Specifically, the government has a distinct

and substantial interest in “proscribing intrusive and

unpleasant formats” for commercial expression. Members

of City Council of L.A. v. Taxpayers for Vincent, 466 U.S.

789, 806 (1984); see also Lehman v. City of Shaker

Heights, 418 U.S. 298, 304 (1974); Metromedia, 453 U.S.

at 514. Indeed, “it may not be the content of the speech,

as much as the deliberate ‘verbal or visual assault,’ that

justifies proscription.” Hill, 530 U.S. at 716 (quoting

Erznoznik v. Jacksonville, 422 U.S. 205, 210–11, n.6

(1975)).

Unlike core political speech, where offensiveness or

disparagement has recognized value in its tendency to

provoke debate, disparagement in commercial advertising

furthers no First Amendment value. Indeed, neither

counsel at oral argument nor the majority in its opinion

IN RE TAM 9

has identified any First Amendment value served by

disparaging speech in the commercial context. Thus even

blanket bans on commercial speech may be the kind of

consumer protective regulations that are consistent with

the “informational function” of commercial advertising.

See Central Hudson, 447 U.S. at 563.

The majority, apparently recognizing that purely

commercial speech is entitled to lesser protection, urges

that all disparaging trademarks deserve heightened First

Amendment protection because they have an expressive

component. See Maj. Op. at 23–24. While I agree that

some marks, including Mr. Tam’s, have an expressive

component, it would seem beyond debate that many do

not, as is the case with respect to routine product identifi-

ers. Indeed, the Supreme Court confirmed the lack of an

expressive component in most trade names in Friedman

v. Rogers, where it explicitly distinguished between

advertisements that “editorialize on any subject, cultural,

philosophical, or political,” which might be entitled to

greater First Amendment protection, and the “mere

solicitation of patronage implicit in a trade name,” which

“is a form of commercial speech and nothing more.” 440

U.S. 1, 11, n.10 (1979). The Court again recognized this

distinction in S.F. Arts & Athletics Inc. v. U.S. Olympic

Comm’n, 483 U.S. 522, 535 (1987). “To the extent that

[the statute] applies to uses for the purpose of trade [or] to

induce the sale of any goods or services, its application is

to commercial speech.” Id. (alterations omitted).

In short, many trademarks lack the kind of “expres-

sive character” that would merit First Amendment pro-

tection for offensive content, and a regulation of the use of

those marks could satisfy the Central Hudson test for

commercial speech—a substantial government interest

reflected in a narrowly tailored regulation. The majority’s

contrary conclusion seems to me to be unsupported.

10 IN RE TAM

II

Even if disparaging commercial speech were protected

from government ban or regulation, this case does not

turn on the legitimacy of a regulation or a “blanket ban”

on disparaging commercial speech. The refusal to register

disparaging marks is not a regulation or “blanket ban” on

anything. Rather, it involves the denial of a subsidy, and

because it is a subsidy, it may be content based. It is

“well established that the government can make content-

based distinctions when it subsidizes speech.” Davenport

v. Wash. Educ. Ass’n, 551 U.S. 177, 18

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