United States Court of Appeals 

for the Federal Circuit ______________________

IN RE: SIMON SHIAO TAM,

Appellant

______________________

2014-1203

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 85472044.

______________________

Decided: April 20, 2015 

______________________

RONALD D. COLEMAN, Goetz Fitzpatrick PLLC, New 

York, NY, argued for appellant. Also represented by JOEL 

GEOFFREY MACMULL. 

MOLLY R. SILFEN, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, argued for 

appellee Michelle K. Lee. Also represented by CHRISTINA 

HIEBER, THOMAS L. CASAGRANDE, NATHAN K. KELLEY. 

______________________

Before LOURIE, MOORE, and O’MALLEY, Circuit Judges.

MOORE, Circuit Judge.

Simon Shiao Tam appeals from the decision of the 

Trademark Trial and Appeal Board (the Board) affirming 

the examining attorney’s refusal to register the mark 

THE SLANTS because it is disparaging. We affirm.
2 IN RE TAM

BACKGROUND

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

rock band The Slants. In 2010, Mr. Tam filed Application 

No. 77/952,263 (’263 application) seeking to register the 

mark THE SLANTS for “Entertainment, namely, live 

performances by a musical band.” Mr. Tam attached 

specimens featuring the band name set against Asian 

motifs to the ’263 application. The examining attorney

found the mark disparaging to people of Asian descent 

under 15 U.S.C. § 1052(a) (“§ 2(a)”) and therefore refused 

to register it. Mr. Tam appealed that refusal to the 

Board, but the case was dismissed for failure to file a brief 

and the application was deemed abandoned. On November 14, 2011, six days after the abandonment of the ’263 

application, Mr. Tam filed a second application (Application No. 85/472,044, or the ’044 application) seeking to 

register the mark THE SLANTS for essentially identical 

services as in the ’263 application. In the ’044 application, Mr. Tam claims use of the mark since 2006. Unlike 

the specimens attached to the ’263 application, the specimens attached to the ’044 application do not contain 

Asian motifs. The examining attorney again found the 

mark THE SLANTS disparaging and declined to register 

it. In making this determination, the examining attorney

cited to materials that he had gathered in response to Mr. 

Tam’s earlier application. Mr. Tam responded and a final 

office action issued.

The Board affirmed the examining attorney’s refusal 

to register the mark. The Board found 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

(TTAB Sept. 26, 2013). To support this conclusion, the 

Board pointed to the band’s website, which displayed the 
IN RE TAM 3

mark next to “a depiction of an Asian woman, utilizing 

rising sun imagery and using a stylized dragon image,” 

and to a statement by Mr. Tam that he selected the mark 

in order to “own” the stereotype it represents. Tam, 2013 

WL 5498164, at *5. 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 “slant.” Tam, 

2013 WL 5498164, at *7. The Board therefore disqualified the mark for registration under § 2(a). Mr. Tam

appeals. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(4). 

DISCUSSION

Mr. Tam argues that the Board erred in finding the 

mark THE SLANTS disparaging under § 2(a) of the 

Lanham Act and therefore unregistrable. Mr. Tam also 

challenges the constitutionality of § 2(a). 

I. Disparagement Analysis

Section 2(a) of the Lanham Act provides that the Patent and Trademark Office (PTO) may refuse to register a

trademark that “[c]onsists of or comprises immoral, 

deceptive, or scandalous matter; or matter which may 

disparage or falsely suggest a connection with persons, 

living or dead, institutions, beliefs, or national symbols, or 

bring them into contempt, or disrepute.” 15 U.S.C. 

§ 1052(a). A disparaging mark “‘dishonors by comparison 

with what is inferior, slights, deprecates, degrades, or 

affects or injures by unjust comparison.’” In re Geller, 751 

F.3d 1355, 1358 (Fed. Cir. 2014) (quoting Pro-Football, 

Inc. v. Harjo, 284 F. Supp. 2d 96, 124 (D.D.C. 2003)) 
4 IN RE TAM

(alterations omitted). In Geller, we applied a two-part 

test to determine if a mark may be 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

(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. 

Id. This determination is “a conclusion of law based upon 

underlying factual inquiries.” Id. We review the Board’s 

factual findings for substantial evidence, and its ultimate 

conclusion de novo. Id. 

A. Use of Prior Applications

As a threshold matter, Mr. Tam argues that the examining attorney and the Board should not have considered 

evidence gathered by the examining attorney while evaluating the earlier ’263 application. We disagree. The 

examining attorney may look to evidence outside the 

application, such as dictionary definitions and newspaper 

articles, when determining the “manner of use” of the 

mark. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 

966–69 (Fed. Cir. 2007). Mr. Tam claims use of the mark 

THE SLANTS back to 2006, before he filed the ’263 

application. Evidence gathered in response to the ’263 

application is relevant to determining the mark’s manner 

of use for the time period during which Mr. Tam asserts 

the mark was in use. While the evidence gathered during 

the evaluation of the ’263 application derives from an 

abandoned application dated before the ’044 application’s 

filing date, its use was not improper. 
IN RE TAM 5

B. Likely Meaning

To determine if a mark is disparaging, we first consider “the likely meaning of the matter in question.” 

Geller, 751 F.3d at 1358. The Board found that the mark 

THE SLANTS refers to people of Asian descent. Substantial evidence supports this finding. Mr. Tam argues that 

the mark does not refer to people of Asian descent. His 

argument seems to rely on 1) the fact that the term 

“slant” has a number of alternative, more common meanings; 2) that none of the specimens attached to the ’044 

application include Asian imagery or otherwise reference 

people of Asian descent; and 3) that the PTO has granted 

a number of unrelated trademark applications containing 

the term “slant.” We are not persuaded by Mr. Tam’s 

argument. 

There is no dispute that the term “slants” has a number of meanings, one of which refers to people of Asian 

descent. The Board cited a number of traditional and 

slang dictionaries defining the word with reference to 

people of Asian descent, ranging from Oxford Reference 

Online to www.urbandictionary.com. Tam, 2013 WL 

5498164, at *1–2 & n.3. Even the dictionary entries

supplied by Mr. Tam include as possible definitions for

the term “slant” “a disparaging term for a person of East 

Asian birth or ancestry,” J.A. 219 (The American Heritage

Dictionary of the English Language), and “[a] person with 

slanting eyes, spec. one of Oriental descent,” J.A. 234–36 

(Oxford English Dictionary). 

The fact that the term “slants” has some innocuous 

meanings—and that some trademarks have issued with 

those innocuous meanings—does not foreclose the possibility that the term may also be used in an offensive 

manner, even when the non-disparaging meanings are 

more common. See Tam, 2013 WL 5498164, at *5. Rather, the existence of these other meanings makes it 

necessary to examine how the applicant uses the mark in 
6 IN RE TAM

the marketplace to determine its likely meaning—as the 

Board did. 

The evidence here supports the Board’s finding that 

the mark THE SLANTS likely refers to people of Asian 

descent. For example, an article in the record includes a

quote attributed to Mr. Tam where he describes 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. . . .” J.A. 130. The record also contains the 

band’s entry in Wikipedia, which states that the band’s 

name is “derived from an ethnic slur for Asians.” J.A. 57. 

The Wikipedia entry quotes 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.” Id. Furthermore, the record includes an image from the band’s 

website in which the mark THE SLANTS is set against “a 

depiction of an Asian woman, utilizing rising sun imagery 

and using a stylized dragon image,” as described by the 

Board. Tam, 2013 WL 5498164, at *2, 5 (citing J.A. 59). 

Finally, the record includes evidence that both individuals 

and Asian groups have perceived the term as referring to 

people of Asian descent. Tam, 2013 WL 5498164, at *2–3 

(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.”)). On this record, we find 

that substantial evidence supports the Board’s determination that the mark THE SLANTS likely refers to people of 

Asian descent.
IN RE TAM 7

Mr. Tam also argues that we should not consider this 

evidence because it is unauthenticated hearsay and does

not satisfy the requirements of 37 C.F.R. § 2.122(a), which 

applies the Federal Rules of Evidence to inter partes 

proceedings. However, § 2.122(a) does not apply to ex 

parte proceedings. For ex parte proceedings, the Board 

has adopted a “somewhat more permissive stance with 

respect to the admissibility and probative value of evidence.” TRADEMARK TRIAL & APPEAL BOARD MANUAL OF 

PROCEDURE § 1208. In ex parte proceedings, the Board 

permits the examining attorney to consider Internet 

material. Id. § 1208.03. We see no error in the Board’s 

procedures.

C. Whether the Meaning May Be Disparaging to a Substantial Composite of the Referenced Group

If the likely meaning of the mark “is found to refer to 

identifiable persons, institutions, beliefs or national 

symbols,” we next consider “whether that meaning may 

be disparaging to a substantial composite of the referenced group.” Geller, 751 F.3d at 1360. Substantial 

evidence supports the Board’s finding that the mark THE 

SLANTS is likely offensive to a substantial composite of 

people of Asian descent. 

First, 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. Tam, 2013 WL 5498164, at *1–2, 7 & n.3. This

includes the dictionaries provided by Mr. Tam in his 

response to office action. J.A. 219, 234–36. Additionally, 

the record includes 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.” J.A. 48–49. The record also includes news articles 

and blog posts discussing the offensive nature of the 
8 IN RE TAM

band’s name, which led to the cancellation of the band’s 

scheduled performance at a conference for Asian youth.

Tam, 2013 WL 5498164, at *2–3 (citing J.A. 45, 51, 94–98, 

100). We find there is substantial evidence—even without 

a marketing survey or some other quantitative measure of 

the term’s offensiveness—supporting the Board’s finding 

that the mark is disparaging to a substantial composite of 

people of Asian descent. The Board does not have the 

resources, nor is it required, to conduct a marketing 

survey each time it evaluates whether a term is disparaging. See In re Loew’s Theatres, Inc., 769 F.2d 764, 768 

(Fed. Cir. 1985).

II. Constitutionality of § 2(a)

Having affirmed the Board’s holding that the mark is 

disparaging, we next turn to Mr. Tam’s constitutional 

challenges. 

A. First Amendment

Mr. Tam argues that the Lanham Act’s restrictions on 

disparaging trademarks are unconstitutional under the 

First Amendment both facially and as applied to his case

because § 2(a) conditions a benefit—trademark registration—on the relinquishment of speech. This argument is 

foreclosed by our precedent. In In re McGinley, our predecessor court wrote:

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, appellant’s First Amendment rights would not be 

abridged by the refusal to register his mark.

660 F.2d 481, 484 (C.C.P.A. 1981). In subsequent cases, 

we have accepted this reasoning. In re Boulevard Entm’t, 

Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003) (“[T]he refusal 
IN RE TAM 9

to register a mark does not proscribe any conduct or 

suppress any form of expression because it does not affect 

the applicant’s right to use the mark in question.”); In re 

Mavety Media Grp., 33 F.3d 1367, 1374 (Fed. Cir. 1994); 

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

(“Because a refusal to register a mark has no bearing on 

the applicant’s ability to use the mark, we have held that 

§ 1052(a) does not implicate the First Amendment rights 

of trademark applicants.”). We here follow our precedent. 

B. Vagueness

Mr. Tam also argues that the disparagement standard 

of § 2(a) is unconstitutionally vague. He claims that key 

terms of § 2(a), such as “scandalous” and “disparage,” are 

not “clearly defined” and are necessarily subjective. He 

argues that § 2(a) therefore does not give “the person of 

ordinary intelligence a reasonable opportunity to know 

what is prohibited.” Grayned v. City of Rockford, 408 U.S. 

104, 108 (1972).

We have noted with respect to § 2(a)’s bar on scandalous subject matter the “inherent difficulty in fashioning a 

single objective measure like a substantial composite of 

the general public from the myriad of subjective viewpoints.” Mavety, 33 F.3d at 1371. Nonetheless, we found 

the standard “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.” McGinley, 660 F.2d at 485. The 

same is true for the bar on disparaging marks. The Board 

follows a well-established two-part test to determine if a 

mark is disparaging. See Geller, 751 F.3d at 1358. This 

standard is not unconstitutionally vague.

C. Due Process

Mr. Tam argues that the PTO applies the disparagement provisions arbitrarily and without clear guidelines. 

He points to registered trademarks containing slurs 
10 IN RE TAM

against homosexuals such as DYKES ON BIKES, U.S. 

Registration No. 3323803, as evidence of the arbitrary 

nature of trademark adjudication. 

We have rejected similar due process challenges to 

§ 2(a). In both Boulevard Entertainment, 334 F.3d at 

1343, and In re Shinnecock Smoke Shop, 571 F.3d 1171, 

1174 (Fed. Cir. 2009), the applicant argued that by refusing to register his mark while granting similar marks, the 

PTO had violated the Due Process clause. In these cases, 

we found no due process violation because the applicant 

“was provided a full opportunity to prosecute his applications and to appeal the examining attorney’s final rejections to the Board.” 571 F.3d at 1174. The same is true 

here. We also noted that “allegations regarding similar 

marks are irrelevant because each application must be 

considered on its own merits.” Id. (citing Boulevard 

Entm’t, 334 F.3d at 1343). Furthermore, “[e]ven if all of 

the third-party registrations should have been refused 

registration under [§ 2(a)], such errors do not bind the 

USPTO to improperly register [the a]pplicant’s marks.” 

Id. (citing Boulevard Entm’t, 334 F.3d at 1343). This 

reasoning compels us to reject Mr. Tam’s due process 

argument.

D. Equal Protection

Lastly, Mr. Tam argues that because the examining 

attorney’s disparagement analysis hinged on his and his 

bandmates’ ethnic identities, the rejection of the mark

violated the equal protection clause. To support this 

argument, Mr. Tam points to the Final Office Action, 

which states: 

Here, the evidence is uncontested that applicant 

is a founding member of a band (The Slants) that 

is self described as being composed of members of 

Asian descent. . . . Thus, the association of the 

term SLANTS with those of Asian descent is evi-
IN RE TAM 11

denced by how the applicant uses the Mark – as 

the name of an all Asian-American band. 

J.A. 244. Mr. Tam argues the examining attorney’s racebased determination is neither justified by a compelling 

government interest nor narrowly tailored towards 

achieving that goal. 

We reject Mr. Tam’s equal protection argument. The 

record shows that the Board denied Mr. Tam the registration because he used the mark THE SLANTS in a disparaging manner, not on account of his race. The Board 

wrote that “[a]n application by a band comprised of nonAsian-Americans called THE SLANTS that displayed the 

mark next to the imagery used by applicant . . . would 

also be subject to a refusal under Section 2(a).” Tam, 

2013 WL 5498164, at *6. Furthermore, we have held that 

a trademark refusal does not violate equal protection so 

long as there are nondiscriminatory reasons for denying 

registration. Shinnecock Smoke Shop, 571 F.3d at 1175.

Here there are nondiscriminatory reasons for denying Mr. 

Tam’s application. 

CONCLUSION

We affirm the Board’s decision affirming the examining attorney’s refusal to register the mark THE SLANTS 

because it is disparaging.

AFFIRMED
United States Court of Appeals 

for the Federal Circuit ______________________

IN RE: SIMON SHIAO TAM,

Appellant

______________________

2014-1203

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 85472044.

______________________

MOORE, Circuit Judge, additional views.

It is time for this Court to revisit McGinley’s holding

on the constitutionality of § 2(a) of the Lanham Act. 

Under § 2(a), the PTO may refuse to register immoral, 

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

In In re McGinley, our predecessor court held without 

citation to any legal authority in just a few sentences that 

§ 2(a) does not implicate the First Amendment: 

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, appellant’s First Amendment rights would not be 

abridged by the refusal to register his mark.
2 IN RE TAM

660 F.2d 481, 484 (C.C.P.A. 1981). More than thirty years 

have passed since McGinley, and in that time both the 

McGinley decision and our reliance on it have been widely 

criticized.1 Furthermore, First Amendment jurisprudence 

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

& n.1 (Fed. Cir. 1999) (Newman, J., dissenting); ProFootball 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 Disparaging Trademark: Is Federal Trademark Law an Appropriate 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 Kuruk, 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 LAW 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 Protection of Controversial Trademarks, 17 U. BALT. INTELL.

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

 
IN RE TAM 3

on the “unconstitutional conditions” doctrine and the 

protection accorded to commercial speech has evolved 

significantly since the McGinley decision. In 1991, the 

source of the PTO’s funding shifted from the taxpayers to 

application fees. The constitutionality of § 2(a) is an 

important and timely issue that raises a number of constitutional questions. The time has come to give this 

issue the consideration it is due. 

There are three requirements for finding a violation of

the First Amendment. The speech at issue must be 

protected speech. See, e.g., Roth v. United States, 354 

U.S. 476 (1957) (obscenity is not protected by the First 

Amendment); Gertz v. Robert Welch, Inc., 418 U.S. 323

(1974) (defamation under certain circumstances is not 

protected by the First Amendment); Chaplinsky v. New 

Hampshire, 315 U.S. 568 (1942) (“fighting words” are not 

protected by the First Amendment); see also R.A.V. v. City 

of St. Paul, 505 U.S. 377, 382–83 (1992) (“‘[T]he freedom 

of speech’ referred to by the First Amendment does not 

include a freedom to disregard these traditional limitations.”); United States v. Alvarez, 132 S. Ct. 2537, 2543–44 

(2012) (plurality opinion). There must be government 

action that abridges that speech in a manner that implicates the First Amendment, as, for example, when the 

government bans flag-burning, Texas v. Johnson, 491 U.S. 

397, 405 (1989), or imposes taxes on certain publications,

Ark. Writers’ Project, Inc. v. Ragland, 481 U.S. 221, 229–

30 (1987). And the abridgement must be unconstitutional 

when analyzed under the appropriate framework—for 

Scarlet Letters: Why “Immoral” and “Scandalous” Trademarks 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).

 
4 IN RE TAM

example, the Central Hudson four-part test for determining the constitutionality of restrictions on commercial 

speech. Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. 

Comm’n, 447 U.S. 557, 566 (1980). 

I. Are Trade Names Protected Speech?

For many years, commercial speech lay outside the 

ambit of the First Amendment. In 1975, the Supreme 

Court ruled that the First Amendment protects commercial speech, Bigelow v. Virginia, 421 U.S. 809, 818 (1975), 

and five years later the Supreme Court laid out the fourpart test for determining the constitutionality of restrictions on commercial speech, Central Hudson, 447 

U.S. at 566. 

Today, however, it is unquestionably true that trademarks are protected speech under Supreme Court commercial speech jurisprudence. Commercial speech is the 

“dissemination of information 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). Protecting the 

flow of this type of information is “indispensable.” Id. 

Four years after Bigelow, the Supreme Court held that 

the trade name of an optometrist is commercial speech. 

Friedman v. Rogers, 440 U.S. 1, 11 (1979) (“The use of 

trade names in connection with optometrical practice, 

then, is a form of commercial speech and nothing more.”). 

Trade names identify the source of a product or service for 

users, and thus provide some of the information labeled 

indispensable by the Supreme Court in Virginia State 

Board. Indeed, the government has conceded that 

“[t]rademarks are a form of commercial speech.” Appellee’s Br. 34 n.5. Because a trademark identifies the 

source of a product or service for users, it is protected 

commercial speech. 
IN RE TAM 5

While it may be true that many marks are used solely 

as a source identifier, that is not the case here. Mr. Tam’s

mark THE SLANTS does more than merely identify the 

band in the commercial arena. In Friedman, the Court 

reasoned that the optician seeking the trade name “does 

not wish to editorialize on any subject, cultural, philosophical, or political. He does not wish to report any 

particularly newsworthy fact, or to make generalized 

observations even about commercial matters.” 440 U.S. 

at 11. Here, by contrast, Mr. Tam seeks to trademark the 

name of a musical group, selecting the name “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 heritage, 

and not be offended by stereotypical descriptions.” J.A. 

52. With their lyrics, performances, and band name, Mr. 

Tam and The Slants weigh in on cultural and political 

discussions about race and society that are within the 

heartland of speech protected by the First Amendment. 

II. Is § 2(a) an Abridgement of Speech?

A. Benefits of Trademark Registration

The McGinley 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. It is true that § 2(a) does not bar the applicant from using the mark. Here, for example, Mr. Tam’s 

band can continue to perform and advertise using the 

name “The Slants.” However, as the McGinley court 

wrote, § 2(a) denies the applicant access to “benefits 

provided by the Lanham Act which enhance the value of a 

mark.” 660 F.2d at 486 n.12. “Registration is significant. 

The Lanham Act confers important legal rights and 
6 IN RE TAM

benefits on trademark owners who register their marks.” 

B&B Hardware, Inc. v. Hargis Ind., Inc., 135 S. Ct. 1293, 

1300 (2015).

These benefits—unavailable in the absence of federal 

registration—are numerous, and include both substantive 

and procedural rights. First, the holder of a federal 

trademark has a right to exclusive nationwide use of that

mark where there was no prior use by a party other than 

the markholder. See 15 U.S.C. §§ 1072, 1115. Because 

under the common law, a markholder only has the right 

to exclusive use where he has used his mark before, see 5

J. Thomas McCarthy, McCarthy on Trademarks and 

Unfair Competition § 26:32 (4th ed.), holders of a federal 

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 protection”). A markholder may sue in 

federal courts 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, or prevent “cybersquatters” 

from misappropriating his domain name, 15 U.S.C. 

§ 1125(d). In effect, § 2(a) of the Lanham Act conditions

trademark registration and all of its attendant benefits on 

the applicant’s selection of a suitable mark. Section 2(a)’s 

registerability conditions are not tethered to the trademark’s functioning as a source identifier or to any concern 

over the mark creating confusion or being misleading. 

Instead, § 2(a) allows the PTO to determine whether the 

trademark is suitable for registration, in this case wheth-
IN RE TAM 7

er it is disparaging, which is a moral judgment based 

solely and indisputably on the mark’s expressive content. 

Not only is a disparaging trademark denied federal 

registration, but it cannot be protected by its owner by 

virtue of a § 43(a) unfair competition claim. Id. § 1125(a). 

Section 43(a) allows for a federal suit, much like state 

common law, to protect an unregistered trademark. As 

many courts have noted, it is the use of a trademark in 

commerce, not its registration, which gives rise to a 

protectable right. Miller v. Glenn Miller Prods., Inc., 454 

F.3d 975, 979 (9th Cir. 2006) (“Registration does not 

create a mark or confer ownership; only use in the marketplace can establish a mark.”); In re Int’l Flavors & 

Fragrances, Inc., 183 F.3d 1361, 1366 (Fed. Cir. 1999)

(“The federal registration of a trademark does not create 

an exclusive property right in the mark. The owner of the 

mark already has the property right established by prior 

use. . . . However, those trademark owners who register 

their marks with the PTO are afforded additional protection not provided by the common law.”). Equally clear, 

however, is that § 43(a) protection is only available for 

unregistered trademarks that could have qualified for 

federal registration. Two Pesos, Inc. v. Taco Cabana, Inc., 

505 U.S. 763, 768 (1992) (section 43(a) “protects qualifying unregistered trademarks and . . . the general principles qualifying a mark for registration under § 2 of the 

Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection 

under § 43(a)”); Donchez v. Coors Brewing Co., 392 F.3d 

1211, 1215 (10th Cir. 2004) (plaintiff must establish that 

its mark is protectable to prevail in a claim 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 protection under the 

Lanham Act”). Thus, no federal cause of action is availa-
8 IN RE TAM

ble to protect a trademark deemed disparaging, regardless of its use in commerce. 

Section 2(a)’s bar on disparaging marks was a creation of the federal government, first developed when 

Congress enacted the Lanham Act. See infra at 21–22. 

Three years later, the United States Trademark Association prepared the Model State Trademark Bill—a bill 

patterned on the Lanham Act in many respects. McCarthy at § 22:5. The Model Bill contained 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 Trademark Act, § 2. Following the lead of the federal government, virtually all states have adopted the Model Bill and 

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

not only are the benefits of federal registration unavailable to Mr. Tam, so too are the benefits of trademark 

registration in nearly all states. And as commentators 

have noted, state statutory and common law schemes 

mirror Lanham Act protections, making it likely that an 

unregisterable trademark will have no state protection. 

McCarthy at § 22:1.50; see also 1964 Model State Trademark Act, § 1.C (“The term ‘mark’ as used herein includes 

any trademark or service mark entitled to registration

under this Act whether registered or not.”) (emphasis 

added). 

While denial of registerability and the attendant 

rights of protection both federal and state do not prevent 

a trademark owner from using its mark, such denial

severely burdens use of such marks. Section 2(a)’s content-based restrictions on registerability were adopted to 

reduce use of trademarks the government deemed unsuitable (such as those that disparage)—no doubt a chilling 

effect on speech. 
IN RE TAM 9

B. The “Unconstitutional Conditions” Doctrine

The Supreme Court has repeatedly held that the government cannot deny access to a benefit because of the 

recipient’s exercise of constitutionally protected speech. 

Under the “unconstitutional conditions” doctrine,

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

governmental benefit and even though the government may deny him the benefit for any number 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. 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. 

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

this doctrine, the Supreme Court 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 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). 

Since Perry, the Supreme Court has wrestled with the 

inherent tension between applying the “unconstitutional 

conditions” doctrine and protecting Congress’ ability to 

direct government spending. As the Supreme Court has 

noted, 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 
10 IN RE TAM

Congress broad discretion to tax and spend for the ‘general 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 are 

conditioned on the recipients’ constitutional rights. 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.

Thus, “when 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, Inc., 539 U.S. 194, 211 (2003) (quoting Rust, 500 

U.S. at 194). Under this reasoning, the Supreme Court 

upheld regulations prohibiting the use of federal family 

planning funds for abortion counseling and referral services. Rust, 500 U.S. at 192. Similarly, the Court held 

that conditioning public libraries’ receipt of federal subsidies on their use of Internet filtering software was a valid 

exercise of Congress’ spending power, because Congress 

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

purposes for which they were authorized.” Am. Library 

Ass’n, 539 U.S. at 211–12 (quotation marks omitted). 

This spending limitation applies to indirect forms of 

public funding such as tax exemptions as well as direct 

subsidies. 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.”).

The government’s discretion under the Spending 

Clause, while broad, is not unbounded. If a program 

arises from the Spending Clause, Congress is free to 

attach “conditions that define the limits of the govern-
IN RE TAM 11

ment spending program—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. For example, the Court held that Congress 

could not restrict appropriations aimed at combating the 

spread of AIDS to only organizations having policies 

explicitly opposing prostitution and sex trafficking. Id. at 

2230–31.

Thus, the analysis of whether Congress has imposed 

an unconstitutional condition on a federal benefit is 

affected by the nature of the Congressional benefit—

namely, was the benefit authorized pursuant to Congress’ 

Spending power. Courts have examined whether the 

conditioned benefit was pursuant to the Spending Clause. 

For example, the Ninth Circuit considered whether the 

“unconstitutional conditions” doctrine prevented the 

government from implementing a treaty under which 

certain “educational, scientific, and cultural” audio-visual 

materials were subject to benefits, including exemption 

from import duties. Bullfrog Films, Inc. v. Wick, 847 F.2d 

502, 503 (9th Cir. 1988). Film makers, producers, and 

distributors argued that the treaty violated the First 

Amendment. Id. at 504. The government responded by 

arguing, as it does here, that the regulations stemming 

from the treaty did not “punish or directly obstruct plaintiffs’ ability to produce or disseminate their films,” and 

that any benefits flowing from the regulations were “a 

case of the government simply declining to pay a subsidy.” 

Id. at 509. The Ninth Circuit disagreed with the government’s “benign characterization” of the effect of the regulations and reasoned that the trade benefits were not a 

subsidy because “no Treasury Department funds [were]

involved,” and therefore the spending exception did not 

apply. Id. at 509. The Ninth Circuit held that “by condi-
12 IN RE TAM

tioning a valuable governmental benefit on the basis of 

speech content, the [government] forces film makers to 

choose between exercising their right to free speech and 

foregoing benefits under the [treaty], or curtailing their 

speech and obtaining the benefits.” Id. at 511. It reasoned that “this sort of dilemma patently transgresses the 

well-established principle that government may not 

condition the conferral of a benefit on the relinquishment 

of a constitutional right.” Id.

The Fifth Circuit recently considered, en banc, 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 law’s restrictions were not unconstitutional 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. 

However, the Fifth Circuit found the Texas bingo program 

“wholly distinguishable . . . because no public monies or 

‘spending’ by the state are involved.” Id. at 436. The 

Fifth Circuit reasoned that the bingo program’s primary 

function is regulatory, further “underscor[ing] the incongruity of [applying] the ‘subsidy’ paradigm to the bingo 

program.” Id. at 437. The Fifth Circuit therefore applied 

the “unconstitutional conditions” doctrine to the bingo 

program, and found its lobbying provision unconstitutional. Id. at 437–41.

The D.C. Circuit similarly held that a presidential directive barring lobbyists from serving on international 
IN RE TAM 13

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] appropriates public funds to establish a program, its decision not 

to use program funds to subsidize the exercise of a fundamental right does not infringe.” Id. at 182 (quotations 

and alterations omitted). The D.C. Circuit rejected the 

government’s argument because membership in the 

advisory committees was a non-financial—albeit valuable—benefit. Id. at 182–83. It noted that advisory committee members are not paid for their service, “absorbing 

even their out of pocket expenses.” Id. at 183. Because

“[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 unconstitutional condition, and remanded so the district court 

could consider the lobbyists’ claims further. Id. at 183–

84.

In another case, satellite carriers objected to the 

“must carry” provision in a federal law that granted 

satellite carriers a copyright license to retransmit local 

television stations in a given market so long as they also 

retransmitted all local television stations in that market 

upon request. Satellite Broad. & Commc’ns Ass’n v. FCC, 

146 F. Supp. 2d 803, 808–09 (E.D. Va. 2001), aff’d, 275 

F.3d 337 (4th Cir. 2001). The district court reasoned that 

Congress’ grant of a copyright license to satellite carriers 

did not arise from the Spending Clause (and therefore 

qualify as a “subsidy”) because “it [did] not entail the 

grant of government funds, or other benefits obtained 

through the use of government funds (i.e., property, 

government-created jobs, etc.), to confer a benefit.” Id. at 

829. The court then considered the constitutionality of 

the “must carry” condition attached to the copyright 

license, and held the law constitutional both because it 

satisfied intermediate scrutiny and because, if a carrier 
14 IN RE TAM

opted not to accept the copyright license granted by the 

statute, it could still negotiate for the right to transmit 

the local stations. Id. at 830–31.

C. Applying the “Unconstitutional Conditions” 

Doctrine to Trademark Registration

McGinley is the only case of ours to consider, if only 

briefly, the First Amendment implications of § 2(a). Since 

McGinley, a number of cases raised a First Amendment 

challenge to § 2(a), but in each case, the panel held itself

bound by McGinley. See 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); In re Fox, 702 

F.3d 633, 635 (Fed. Cir. 2012). Neither the court in

McGinley nor any other court has analyzed § 2(a) under

the “unconstitutional conditions” doctrine. This is error. 

Federal trademark registration confers valuable benefits, 

and under § 2(a), the government conditions those benefits on the applicants’ choice of a mark. Because the 

government denies benefits to applicants on the basis of 

their constitutionally protected speech, the “unconstitutional conditions” doctrine applies.

However, we are faced with a fundamental predicate 

question: does the “unconstitutional conditions” doctrine 

apply with full force in the context of trademark registration, or is it tempered by virtue of Congress’ spending 

power? The benefits of trademark registration, while 

valuable, are not monetary. Unlike tangible property, a 

subsidy, or a tax exemption, bestowal of a trademark 

registration does not result in a direct loss of any property 

or money from the public fisc. Rather, a trademark 

redefines the nature of the markholder’s rights as against 

the rights of other citizens, depriving others of their rights

to use the mark. Like the programs in Bullfrog and Texas 

Lottery Commission, the system of trademark registration 

is a regulatory regime, not a government subsidy program. 
IN RE TAM 15

Furthermore, the act of registering a trademark does 

not involve the federal treasury. In 1981, as noted by the

McGinley court, trademark registration was “underwritten by public funds.” 660 F.2d at 486. That is no longer 

true today. Since 1991, PTO operations have been funded 

entirely by registration fees, not the taxpayer. 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. 

While PTO operations are fully funded by registration

fees, some federal funds are nonetheless spent to facilitate 

the registration and enforcement of trademarks. For 

example, PTO employee benefits, which include 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 registering 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, however, is attenuated from the benefits bestowed by trademark 

registration. Trademark registration does not implicate 

the Spending Clause merely because of this attenuated 

spending, else every benefit or program provided by the 

government would implicate the Spending Clause. The 

programs in Bullfrog and Texas Lottery Commission were 

likely funded in some part by the government—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 spending, and not whether 

the government subsidized the program in more indirect 

manners. 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 member-
16 IN RE TAM

ship on these advisory committees was not a financial 

benefit, id. at 183.

The purpose and nature of trademark registration 

support the conclusion that trademark registration is not 

a government-funded benefit. The Lanham Act derives 

from the Commerce Clause, not the Spending Clause, and 

its purpose is to regulate marks used in interstate commerce—not to subsidize the markholders. 15 U.S.C.

§ 1127. Furthermore, it is the markholder, and not the 

government, that must spend money (on advertising 

using its mark) to obtain the benefits of trademark registration. Registration of a trademark is not a federally 

funded financial benefit to the applicant. 

McGinley was written only one year after Central 

Hudson and was decided against a background of law 

where the First Amendment had only recently begun to 

apply to commercial speech. Given the drastic changes 

since McGinley in constitutional jurisprudence and the 

PTO’s shift from a taxpayer-funded organization to a 

user-funded program, the McGinley court’s analysis of the 

constitutionality of § 2(a) of the Lanham Act no longer 

suffices. This analysis did not discuss the “unconstitutional conditions” doctrine, despite the doctrine’s clear 

relevance. And because trademark registration is no 

longer funded by the federal treasury, there is no longer 

any argument that trademark registration implicates 

Congress’ power to spend. To the contrary, the trademark 

registration scheme is a prototypical example of a regulatory regime. As a result, the “unconstitutional conditions” 

doctrine applies. The government cannot hinge the 

benefits of federal trademark registration on constitutionally protected speech—here, the applicant’s selection 

of a suitable mark—unless the government’s actions pass 

constitutional scrutiny. 
IN RE TAM 17

III. Is § 2(a) Unconstitutional?

A. Viewpoint Discriminatory Regulations

“Content-based regulations are presumptively invalid.” R.A.V., 505 U.S. at 382; Ashcroft v. ACLU, 542 U.S. 

656, 660 (2004). Viewpoint-based regulations are even 

more suspect, as they “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 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). As a result, these regulations receive the strictest of scrutiny. “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.

Section 2(a) of the Lanham Act bars the registration 

of disparaging speech. Under this law, it is possible to 

register trademarks that refer to a certain group in a 

positive, or non-disparaging manner, but not trademarks

that refer negatively to the same group. See R.A.V., 505 

U.S. at 391 (finding that an ordinance forbidding the use 

of “fighting words” that insulted “on the basis of race, 

color, creed, religion or gender” was viewpoint discriminatory because certain fighting words could be used only by 

those arguing in favor of tolerance, not their opponents). 

Section 2(a) discriminates against disparaging or offensive viewpoints.2 Under this analysis, § 2(a) is presump2 It is incorrect to imply that the Lanham Act treats 

“laudatory” and disparaging trademarks the same. The 

Lanham Act always prohibits registration of disparaging 

marks. In contrast, the Lanham Acts prohibits the registration of “merely descriptive” marks unless or until they 

 
18 IN RE TAM

tively invalid, and must satisfy strict scrutiny to be found 

constitutional. 

Although the Supreme Court has yet to decide whether strict scrutiny attaches to restrictions on commercial 

speech that are viewpoint discriminatory, there is reason 

to believe it is an issue worth considering. Sorrell, 131 S. 

Ct. at 2664. This uncertainty is likely of no consequence, 

however, because it seems likely that section 2(a) cannot 

survive even the intermediate scrutiny that any restriction on commercial speech receives under Central 

Hudson. 

B. Central Hudson Test for Commercial Speech

In Central Hudson, the Supreme Court laid out the 

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 

(1) “the asserted governmental interest is substantial,” 

(2) “the regulation directly advances the governmental 

interest asserted,” and (3) the regulation “is not more 

extensive than is necessary to serve that interest.” Id.

First, we ask whether the regulated activity is lawful 

and not misleading. Id. at 563–64. There is nothing 

illegal about a disparaging trademark such as THE 

SLANTS, and Mr. Tam does not challenge the Lanham 

Act’s proscription on the registration of misleading marks. 

Disparaging trademarks satisfy the first prong of the 

Central Hudson framework. 

acquire distinctiveness or secondary meaning. 15 U.S.C. 

§ 1052(f). Once a laudatory or descriptive mark attains 

secondary meaning as a source identifier, such marks are 

eligible for registration; disparaging trademarks are 

never eligible for registration.

 
IN RE TAM 19

Next, for speech that is lawful and not misleading, a

substantial government interest independent of disapproving the speech’s message must justify the regulation. 

Id. at 566; Sorrell, 131 S. Ct. at 2668 (2011) (law must not 

“seek to suppress a disfavored message”); Sorrell, 131 S. 

Ct. at 2670 (rejecting message-based interest as “contrary 

to basic First Amendment principles”). The government 

has not put forth any substantial interests that would 

justify § 2(a)’s bar against disparaging marks. One purpose of the disparagement provision of § 2(a) is evident on 

its face, and it is message-based: to discourage the use of 

trademarks that are disparaging to persons, institutions, 

beliefs, or national symbols. The legislative history 

reinforces the conclusion that Congress enacted § 2(a)

because it disapproved of the message conveyed by disparaging marks. 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 

Rep. Thomas E. Robertson) (Rep. Maroney) (“[W]e would 

not want to have Abraham Lincoln gin.”). This is plainly 

true of the reason for denying registration here, as in 

other disparagement cases. See, e.g., In re Geller, 751 

F.3d 1355 (Fed. Cir. 2014) (affirming rejection of STOP 

THE ISLAMISATION OF AMERICA); Blackhorse v. ProFootball, Inc., 111 U.S.P.Q.2d 1080 (TTAB June 18, 2014)

(cancelling registration of REDSKINS); In re Lebanese 

Arak Corp., 94 U.S.P.Q.2d 1215 (TTAB Mar. 4, 2010)

(refusing to register KHORAN for wine); In re Heeb 

Media, LLC, 89 U.S.P.Q.2d 1071 (TTAB Nov. 26, 2008) 

(refusing to register HEEB); In re Squaw Valley Dev. Co., 

80 U.S.P.Q.2d 1264 (TTAB May 23, 2006) (refusing to 

register SQUAW VALLEY for one class of goods, but 

registering it for another). And there is no doubt that 
20 IN RE TAM

these marks are protected speech, not categorically excluded from First Amendment protection.3 

While the government may argue that it has an interest in discouraging the use of disparaging marks that may 

be offensive to persons, institutions, beliefs, or national 

symbols, this is not a legitimate government interest. See 

Sorrell, 131 S. Ct. at 2670. The Supreme Court has 

“consistently held that the fact that protected speech may 

be offensive to some does not justify its suppression.” 

Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60, 71 

(1983). It is a “bedrock principle underlying the First 

Amendment . . . that the Government may not prohibit 

the expression of an idea simply because society finds the 

idea itself offensive or disagreeable.” United States v. 

Eichman, 496 U.S. 310, 319 (1990). 

3 Disapproval of the message is also the apparent 

basis for denying under § 2(a) the registration of many 

“scandalous” marks that are not obscene. See, e.g., In re 

Fox, 702 F.3d 633 (Fed. Cir. 2012) (affirming rejection of 

COCK SUCKER for chocolate rooster lollipops); In re 

Boulevard Entm’t, Inc., 334 F.3d 1336 (Fed. Cir. 2003) 

(affirming rejection of 1-800-JACK-OFF and JACK-OFF 

for adult entertainment services over telephone); In re 

Betty Bangs, LLC, 2013 WL 5407261 (TTAB July 9, 2013) 

(refusing to register I BANGED BETTY); In re Kirby, 

2008 WL 4674566 (TTAB Sept. 22, 2008) (refusing to 

register COCAINE for energy drinks); In re Love Bottling 

Co., 2005 WL 1787238 (TTAB June 22, 2005) (refusing to 

register W.B. WIFE BEATER); In re Zaharoni, 2005 WL 

363392 (TTAB Jan. 4, 2005) (refusing to register THE 

COMPLETE A**HOLE'S GUIDE TO . . .); In re Runsdorf, 

171 U.S.P.Q. 443 (TTAB 1971) (refusing to register 

BUBBY TRAP for brassieres).

 
IN RE TAM 21

Courts have attributed an additional government interest to § 2(a), reasoning that it acts as “a judgment by 

the Congress that such marks not occupy the time, services, and use of funds of the federal government.” See, 

e.g., McGinley, 660 F.2d at 486. This cannot warrant the 

government’s regulation of these marks. Trademark 

registration is entirely user-funded, not taxpayer-funded, 

so registering these marks costs the government little

money. Furthermore, the government must expend 

significant funds defending its refusal decisions under the 

statute as it currently stands, so it is not clear that the 

statute succeeds in saving the government money. See 

McGinley, 660 F.2d at 487 (Rich, J., dissenting) (“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 

would create an end-run around the “unconstitutional 

conditions” doctrine, as virtually all government benefits 

involve the time, services, or funds of the federal government. Nearly every benefit could be justified under this 

ground, no matter how minimal. 

Another interest that has been proposed to justify 

§ 2(a)’s ban on disparaging marks is the government’s 

interest in maintaining a well-functioning trademark 

system that harmonizes state and federal trademark law. 

In enacting the Lanham Act, Congress codified a number 

of long-standing common law trademark principles; the 

argument posits that striking down § 2(a)’s bar on disparaging marks would disrupt these principles. However, 

this argument relies on the notion that § 2(a)’s bar on 

disparaging marks is merely a codification of a common 

law bar on disparaging marks. That is not the case. 

While states have long refused to enforce vulgar or misleading trademarks, there is no similar history of a bar on 

disparaging marks. In drafting § 2(a)’s bar on disparaging marks, Congress was creating new law, not codifying 
22 IN RE TAM

clear and established principles. See Univ. of Notre Dame 

Du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 

1376 (Fed. Cir. 1983) (“Although not articulated as such, 

it appears that the drafters sought by § 2(a) to embrace 

concepts of the right to privacy, an area of the law then in 

an embryonic state.”); see also Act of Feb. 20, 1905, ch. 

592, § 5, 33 Stat. 724 (1905) (barring registration of 

scandalous and immoral marks, but not disparaging 

marks). Section 2(a)’s bar on disparaging marks was 

employed only rarely until recently, and its application 

was inconsistent. See, e.g., Doughboy Indus., Inc., 88

U.S.P.Q. (BNA) ¶ 227 (P.T.O. Jan. 25, 1951) (refusing to 

register mark “Dough-boy” in connection with “a prophylactic preparation for the prevention of venereal diseases); 

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

U.S.P.Q. (BNA) ¶ 304 (TTAB Feb. 24, 1969) (refusing to 

register mark consisting of hammer and sickle with an 

“X” over it); In re Condas S.A., 188 U.S.P.Q. (BNA) ¶ 544 

(P.T.O. July 31, 1975) (finding mark JAP not disparaging 

to Americans of Japanese ancestry); Greyhound Corp. v. 

Both Worlds, Inc., 6 U.S.P.Q.2d 1635 (TTAB Mar. 30, 

1988) (finding that mark depicting a defecating dog 

disparaged Greyhound’s trademarked running dog logo). 

And in the early disparagement cases, courts did not base 

the contours of what it means to be disparaging on the 

common law. See generally id. Striking down § 2(a)’s bar 

on disparaging marks would not disrupt long-standing, 

well-balanced common law traditions.

Trademarks—which are applied to private goods to 

identify the source of the goods for consumers—are private speech, not “government speech.” Cf. Pleasant Grove 

City v. Summum, 555 U.S. 460, 467 (2009) (“The Free 

Speech Clause restricts government regulation of private 

speech; it does not regulate government speech.”). Although the government publishes registered trademarks in 

the Trademark Principal Register, it does so not to communicate a particular message or select a particular 
IN RE TAM 23

viewpoint; rather, it publishes trademarks to provide 

notice that a mark has been registered. Despite this, 

supporters of § 2(a) have claimed that the government has 

an interest in not being seen to give a stamp of approval, 

imprimatur, to scandalous and disparaging terms. For 

this interest to be substantial, the public must believe 

that trademarks carry the stamp of government approval. 

The U.S. government recently explained that “‘issuance of 

a trademark registration’ does not ‘amount[] to the awarding of the U.S. Government’s ‘imprimatur.’” Brief of 

United States at 21, Pro-Football, Inc. v. Blackhorse, No. 

14-cv-1043 (GBL/IDD) (E.D. Va. Mar. 23, 2015), ECF No. 

109 (quoting In re Old Glory Condom Corp., 26 

U.S.P.Q.2d 1216, 1219–20 n.3 (TTAB Mar. 3, 1993) (alterations in original)). As the Trademark Trial and 

Appeal Board wrote:

The duty of this Office . . . in reviewing applications for registration is nothing more and nothing 

less than to register those marks that are functioning to identify and distinguish goods and services in the marketplace . . . . Just as the issuance 

of a trademark registration by this Office does not 

amount to a government endorsement 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.

Old Glory Condom Corp., 26 U.S.P.Q.2d at 1219–20 n.3

(emphasis added). The public is not likely to believe that 

a registered trademark conveys the imprimatur of the 

government. The trademark is printed on private property, in fact commercial goods, not on any government 

property. The purpose served by trademarks, to identify 

the source of the goods, is antithetical to the notion that 

the trademark is tied to the government. 
24 IN RE TAM

We have yet to be presented with any substantial 

government interests that would justify the PTO’s refusal 

to register disparaging marks. Without this, § 2(a) cannot 

satisfy the Central Hudson test. It is time to revisit the 

holding in McGinley in light of subsequent developments 

in the law and the trademark registration funding regime.