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.

______________________ 

Decided: December 22, 2015

______________________ 

RONALD D. COLEMAN, Archer & Greiner, P.C., Hackensack, NJ, argued for appellant. Also represented by 

JOEL GEOFFREY MACMULL; JOHN C. CONNELL, Haddonfield, 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 Trademark Office, Alexandria, VA. 

LEE ROWLAND, Speech, Privacy & Technology, American 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 represented by ESHA BHANDARI, BRETT MAX KAUFMAN; ARTHUR 

B. SPITZER, American Civil Liberties Union of the National 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 Vegas, 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 Washington, 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, Atlanta, 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 ProFootball, 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. Stanley, 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 communities. 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 proscription of § 2(a) is unconstitutional. Because the government 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 therefore 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 proceedings. 

BACKGROUND

I. The Lanham Act

Congress enacted the Lanham Act in 1946 to provide 

a national system for registering and protecting trademarks used in interstate and foreign commerce. Congress’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 . . . misappropriation 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 infringer 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 geographic areas where he has actually used his mark, see 5 

J. Thomas McCarthy, McCarthy on Trademarks and 

Unfair Competition § 26:32 (4th ed.) (hereinafter “McCarthy”), 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 protection.”). 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 Convention, see id. § 1141b (Madrid Protocol); Paris Convention 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 registration. 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 register on account of its nature unless . . . .” (emphasis added)). 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 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.” Section 2(a) contains proscriptions against deceptive speech, for example, the prohibition 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 exclusions from registration do not rest on any judgment that 

the mark is deceptive or likely to cause consumer confusion, 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 trademark 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 provision following enactment of the Lanham Act. Only in the 

last several decades has the disparagement provision 

become a more frequent ground of rejection or cancellation 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 determina1 We limit our holding in this case to the constitutionality of the § 2(a) disparagement provision. Recognizing, 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 disparagement); 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 trademarked 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 determine 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 contemporary 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 consistently across the agency. Compare TMEP § 1203.03 (no 

discussion of action to take if examiner finds mark disparaging), with TMEP § 1203.01 (requiring examiner who 

finds a mark scandalous or immoral to consult his supervisor). A single examiner, with no input from her supervisor, 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 cultural 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 application (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 “reappropriate 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 “Entertainment, 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 register 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 therefore 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 unconstitutional. 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 Opin3 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 individuals 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 supported 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, appellant’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 reconsider 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); 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 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 Protection 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 cursory, 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 jurisprudence 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] argument 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 District of Virginia relied upon McGinley when it concluded

that the cancellation of trademark registrations under 

§ 2(a) did not implicate the First Amendment. ProFootball, 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 implicate the First Amendment.”). 

For these reasons, we sua sponte ordered rehearing

en banc. We asked the parties to file briefs on the following 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 Amendment?

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 Message Conveyed Is Subject to, and Cannot Survive, 

Strict Scrutiny

Strict scrutiny is used to review any governmental 

regulation that burdens private speech based on disapproval 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 invalid.” 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 unconstitutional 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 burdens speech. “[H]eightened judicial scrutiny is warranted” when an act “is designed to impose a specific, contentbased 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 expression.”). “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 disparaging marks—it cannot reasonably be argued that this is 

not a content-based restriction or that it is a contentneutral regulation of speech. And the 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. 

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

basis for regulation.” Forsyth Cty. v. Nationalist Movement, 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 conveyed, “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 appropriately 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 plainly 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 substantial 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 defend § 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 government 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 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.”); 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 messagebased 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 standards: 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 government 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. Johnson, 491 U.S. 397, 414 (1989). 

Second, the disparagement provision at issue is viewpoint 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 manner. In this case the PTO refused to register Mr. Tam’s 

mark because it found the mark “disparaging” and “objectionable” 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 neutral because it does not eliminate any particular viewpoint—only particular words. Appellee’s En Banc Br. 39–

40. It argues that under § 2(a), two marks with diametrically 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 prohibiting demeaning or disparaging ads are themselves viewpoint neutral”).

The R.A.V. statement does not apply here. The government’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 appliedfor 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 rejected. 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 Expressive Aspects of the Mark, Not Its Function As 

Commercial Speech 

The government cannot escape strict scrutiny by arguing 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 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). 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 commercialspeech function of the mark.

This case exemplifies how marks often have an expressive 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 advocates 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 disparaging 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 message over and above their function as source identifiers—

namely, an expressive message disparaging Jewish and 

Native American people. It was these expressive messages 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 judgments based solely and indisputably on the marks’ expressive 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] consumer’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 omitted). Strict scrutiny must apply to a government regulation 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 component 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 contexts.”). 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) targets 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 content of the message conveyed by the speech, it follows that 

it is presumptively invalid, and must satisfy strict scrutiny 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 GovernmentSpeech or Government-Subsidy Doctrines

Faced with the daunting prospect of defending a content- 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 commerce. Second, the government suggests that trademark 

registration is government speech, and thus the government can grant and reject trademark registrations without implicating the First Amendment. Finally, the 

government argues that § 2(a) merely withholds a government 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 Significantly 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 predecessor 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, including 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 government 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 unconstitutional 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 expression”). 

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

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

597, 605 (2011) (“[T]he incentives to pursue federal registration. . . 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. Richey, 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 Economic 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 increases 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 offensive 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 trademark 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 Rutherford Inst. 12 (“Denial of registration indisputably has the 

effect of placing applicants at a legal and financial disadvantage.”); 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 disincentive to the use of such marks in commercial communication.”); 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, 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 common law, and a loss of them will remove advantages 

which make the property more valuable.”). 

For those reasons, the § 2(a) bar on registration creates a strong disincentive to choose a “disparaging” mark. 

And that disincentive is not cabined to a clearly understandable 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 different 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. Frazer). 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 (alterations 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 inconsistency. 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 disparaging, App. Ser. No. 85/525,066 (abandoned after publication 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 standards as they have been specially applied in the First 

Amendment setting.8 All we need say about the unceras 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 because 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 connected 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 substantial resources in litigating to obtain registration in 

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

because the disparagement determination is not a onetime 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 effectively 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 establishing 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; second, 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 requirements 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 ‘disparaging’ 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 registration, 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 ownership or exclusive use of the mark. 15 U.S.C. § 1057(b). 

And a common law trademark can never become incontestable. Id. § 1065. Without federal registration, a 

trademark user cannot stop importation of goods bearing 

the mark, or recover treble damages for willful infringement. 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 Association prepared the Model State Trademark Act—a bill 

patterned on the Lanham Act in many respects. McCarthy 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 Trademark Act, § 2. Following the lead of the federal government, 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 unavailable 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 Disparaging Trademark: Is Federal Trademark Law an Appropriate 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 ultimately 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 presumably “unprotect[a]ble pursuant to state common law”). 

mon law rights on account of their marks not being registrable. 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 enforcement 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 competition 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 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)”); 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”); 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 message 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 registrafollows 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 markholder’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 registration—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 activity. 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 registration 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 government speech jurisprudence. 

In Walker v. Texas Division, Sons of Confederate Veterans, 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 identification 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 owners 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 trademark 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 government, owned or monopolized by the government, sized 
IN RE TAM 41

and formatted by the government, immediately understood as performing any government function (like 

unique, visible vehicle identification), aligned with the 

government, or (putting aside any specific governmentsecured 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 government has maintained that: 

[J]ust as the issuance of a trademark registration 

by this Office does not amount to 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.

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 pronouncement 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 registration 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, being 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 government speech. The government does not own the trademark 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 government speech then the government would be free to 

regulate the content, viewpoint, and messages of registered 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 Troublesome Word or Fifty Shades of Grey with the government, neither does the public associate individual 

trademarks such as THE SLANTS with the government. 

Similarly, a registered mark’s placement on the Principal 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 trademark 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/trademarksapplication-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. Governmental 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 records a trademark in a database of all registered trademarks 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 government does not require companies to display their trademark 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 attached. 35 U.S.C. § 153; see also U.S. Patent and Trademark Office, Patent Process Overview, available at 

http://www.uspto.gov/patents-getting-started/patentprocess-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 endorsement of the ideas, inventions, or trademarks of the private 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 certificates, or, for that matter, grants medical, hunting, fishing, 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 conditions doctrine. The Supreme Court has repeatedly invalidated denials of “benefits” based on message-based 

disapproval of private speech that is not part of a government-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 valuable financial benefit] in retaliation for speech may chill 

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

that constitutional violations may arise from the deterrent, 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 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. 

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 ‘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 exclude 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. Therefore, “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 expenditure 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, although there was no majority opinion in American Library 

Ass’n, the Court upheld a specific congressional determination 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 conditioning 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. (explaining 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 account 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 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. 

“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 relatively 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 conveys. It contends: “Congress has at least as much discretion 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 described, 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 example, 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 distribute the legal rights it creates without respecting First 

Amendment limits on content and viewpoint discrimination. 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 prohibiting 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 government’s aid in acquiring the money of government employees 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.” Ysursa, 555 U.S. at 359 (alterations omitted); see also Davenport, 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 suppression of dangerous ideas, unlike the provisions in Ysursa 

and Davenport. Moreover Ysursa and Davenport both 

took place in “the unique context of public-sector agencyshop 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 government 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 constitutionality 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. Bullfrog Films, Inc. v. Wick, 847 F.2d 502, 503 (9th Cir. 1988). 

The government argued, as it does here, that the regulations stemming from the treaty did not “punish or directly 

obstruct [filmmakers’] ability to produce or disseminate 

their films,” but amount to “the government simply declining 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 unconstitutional 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 incongruity 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 presidential directive barring lobbyists from serving on international 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” the First Amendment. Id. at 182 (quotations and alterations omitted). 

The D.C. Circuit rejected this argument because membership 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 unconstitutional condition, and remanded for further consideration. 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 Bullfrog and Texas Lottery Commission, the system of trademark 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 available “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 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. The fact that 

registration fees cover all of the operating expenses associated with registering marks is further evidence that, 

despite conveying valuable benefits, trademark registration is not a government subsidy. 

While PTO operations are fully underwritten by registration 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 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 registration. Trademark registration does not implicate the 

Spending Clause merely because of this attenuated 

spending, else every benefit or regulatory program provided 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 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 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 Commerce Clause, not the Spending Clause, is further evidence 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 disparagement 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 resembles copyright registration. Under the logic of the government’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,” “religious 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 conference 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 registration to disfavored speech—is anathema to the First 
56 IN RE TAM

Amendment. With this, the government agrees, arguing

that copyright registration, unlike trademark registration, is protected by the First Amendment. Oral Arg. at 

36:45–38:50. But the government has advanced no principled 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 registration 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 constitutional rights within the confines of its trademark registration 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 scrutiny 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 commercial 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 reviewed under the Central Hudson intermediate scrutiny 

standard. Section 2(a) bars registration of disparaging 

marks. This regulation is squarely based on the expressive 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. Section 2(a) should be subject to strict scrutiny, and be invalidated 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 intermediatescrutiny 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 substantial,” id., and whether the regulation “directly and materially 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). “Under 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 regulation. 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 interest to pass the test of intermediate scrutiny, as the Supreme 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 disparaging 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, misogynistic 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 plausible 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 regulation of these marks. As discussed, trademark registration 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 registration: articles of incorporation, copyrights, patents, property 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 permits to racist, sexist, or homophobic protests. The government 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 Minnesota Supreme Court that “[i]t is the responsibility, 

even the obligation, of diverse communities to confront [virulent notions of racial supremacy] in 

whatever form they appear,” but the manner of 

that confrontation cannot consist of selective limitations 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 measure can communicate to minority groups that the 

“group hatred” aspect of such speech “is not condoned 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 freedoms 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 regulating private speech to try to reduce racial intolerance. 

Moreover, at the level of generality at which the government invokes “racial tolerance,” it is hard to see how 

one could find that § 2(a) “directly and materially advanc[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 adoption and use of particular marks in the marketplace. 

Finally, the government argues that it has a legitimate 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 necessary so that states can partake in the same unconstitutional 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 government 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 disparagement 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 because 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 constitutional 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 uncertain 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 undoubted chilling effect on speech. I find § 2(a)’s disparagement provision to be so vague that I would find it to be 

unconstitutional, whether or not it could survive Appellant’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, institutions, beliefs, or national symbols, or bring them into 

contempt, or disrepute.” (emphasis added). As the majority 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 disparage 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 clarity, “[t]he area of proscribed conduct will be adequately 

defined and the deterrent effect of the statute contained 

within constitutional limits only by authoritative constructions sufficiently illuminating the contours of an 

otherwise vague prohibition.” Dombrowski v. Pfister, 380 

U.S. 479, 490–91 (1965). The Board has developed a twostep 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. ProFootball 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. ProFootball, 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 uncertainty. 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 confusion 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 Rockford, 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 examples 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 Application Serial No. 85,077,647) (rejected because it disparaged 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 Supreme 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 Liberties 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 tolerates . . . 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 stringent 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 touchstone 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 accordingly; second, precision and guidance are necessary so that those enforcing the law do not act in 

an arbitrary or discriminatory way. When speech 

is involved, rigorous adherence to those requirements 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 requires 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 speechaffecting 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 application 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 conclusion. 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 definite 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 disparaging, 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 enforcement is to be prevented, laws must provide explicit 

standards for those who apply them. A vague law impermissibly delegates basic policy matters to policemen, 

judges, and juries for resolution on an ad hoc and subjective 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 legislature establish minimal guidelines to govern law enforcement.’ 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.’” (quoting Smith v. Goguen, 415 U.S. 566, 574, 575 (1974))). 

Other circuits to have considered the use of the subjective 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 considered 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) demeaning or slurring individuals 

through . . . written literature because of their racial or ethnic affiliation; or (d) using symbols, [epithets] 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 subsection 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 Authority, 390 F.3d 65 (1st Cir. 2004), the First Circuit 

upheld the validity of the Massachusetts Bay Transportation Authority’s (“MBTA”) “guideline prohibiting demeaning 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 governmental 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 subject 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 application 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 disparaging 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 enactment 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) demonstrates 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 predicate to the conclusion that § 2(a) is unconstitutional.

CONCLUSION

For the above reasons, I concur in the majority’s conclusions 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 enacted § 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 substantial 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 connection 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 disapproval of the message.” Id. at 57. “All of the government’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 inconsistent 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 underrepresented groups in our society from being bombarded 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 commercial 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 scandalous 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 inevitable 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 constitutes 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. Colorado, 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. Johnson, 491 U.S. 397, 408–09 (1989). Thus to maintain a 

“meaningful dialogue of ideas,” “we must tolerate insulting, 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 commercial 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 accommodations 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 Amendment. 

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 area 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 “commonsense 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. IrishAmerican Gay, Lesbian & Bisexual Group of Boston, 515 

U.S. 557, 573 (1995) (internal quotation marks and citations 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 advertising cannot be restricted just because the product or 

service may be offensive to some members of the audience. 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 advertising 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 government’s interest here all the greater—the effect on the 

disparaged group is amplified, not lessened, by disseminating the disparaging material to the public at large. 

This well-recognized disparity in the types of restrictions 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 government 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 identifiers. 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 “expressive character” that would merit First Amendment protection 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 contentbased distinctions when it subsidizes speech.” Davenport 

v. Wash. Educ. Ass’n, 551 U.S. 177, 188–89 (2007). The 

First Amendment “does not confer an affirmative right to 

use government [] mechanisms for the purpose of” expression, nor is the government “required to assist others in 

funding the expression of particular ideas, including 

political ones.” Ysursa v. Pocatello Educ. Ass’n, 555 U.S. 

353, 355, 358 (2009) (internal quotations and citations 

omitted). Significantly, every single Supreme Court 

decision upholding the protection of commercial speech 

has involved a prohibition or restriction of speech—not a 

subsidy.4 

4 See, e.g., Linmark Assocs., Inc. v. Twp. of Willingboro, 431 U.S. 85, 97 (1977) (striking down a ban on 

placing “For Sale” and “Sold” signs on residential property); Carey, 431 U.S. at 701–02 (invalidating a ban on all 

advertising and display of contraceptives); Bolger, 463 

U.S. at 71 (invalidating a ban on unsolicited mailing of 

contraceptive advertisements); Va. State Bd. of Pharmacy, 

425 U.S. at 773 (invalidating a ban on advertising prescription drug prices); Sorrell v. IMS Health Inc., 131 S. 

Ct. 2653, 2659 (2011) (invalidating a state law that prohibited the sale, disclosure, and use of pharmacy records 

without the prescriber’s consent and subject to limited 

exceptions). 

 
IN RE TAM 11

That trademark registration is a subsidy is not open 

to doubt. Contrary to the majority’s characterization, 

federal trademark registration is not a “regulatory regime.” Maj. Op. at 52. Section 2(a) does not regulate any 

speech, much less impose a blanket ban. It merely deprives a benefit. The majority claims that federal trademark registration is not a subsidy because “the subsidy 

cases have all involved government funding or government property.” Maj. Op. at 49. But this assertion is 

belied by the Court’s recent decisions in Davenport and 

Ysursa—neither involving government funding or property. Each made clear that the government can make 

content-based distinctions when it provides a benefit. 

In Davenport, the Court considered a government 

benefit that gave unions “the power, in essence, to tax 

government employees,” by having the state collect fees 

from its employees on behalf of the unions. Davenport, 

551 U.S. at 184. The state limited this collection mechanism by refusing to collect nonmember fees for electionrelated purposes unless the nonmember affirmatively 

consented. Id. at 180. The unions argued that this restriction was an unconstitutional content-based discrimination. Id. at 188. The Court disagreed. The First 

Amendment’s usual aversion to content-based speech 

regulation is inapposite when “the government is acting 

in a capacity other than as regulator,” such as “when it 

subsidizes speech.” Id. at 188. Because the collection of

nonmember fees was a “state-bestowed entitlement,” “a 

matter of grace [that] [it] can, of course, disallow . . . as it 

chooses,” Regan v. Taxation With Representation of Wash., 

461 U.S. 540, 549 (1983) (internal quotations and citations omitted), the content-based condition on that benefit 

did not raise a “realistic possibility that official suppression of ideas is afoot.” Davenport, 551 U.S. at 189–90

(citations and quotation marks omitted). The unions 

remained “as free as any other entity to participate in the 
12 IN RE TAM

electoral process with all available funds other than the 

state-coerced agency fees.” Id. at 190. Thus the Court 

declined to apply heightened scrutiny and upheld the 

restriction in light of the state’s “narrow” and legitimate

interest in “protect[ing] the integrity of the election process.” See id. at 189–90. 

In Ysursa, the Court considered a similar benefit 

where the state collected dues on behalf of unions by 

providing payroll deductions. Ysursa, 555 U.S. at 355. 

The state restricted that collection mechanism by preventing unions from using payroll deductions for any

political purposes. Id. Again the unions argued that this 

restriction was an impermissible content-based speech 

restriction, and again the Court disagreed. The First 

Amendment “protects the right to be free from government abridgement of speech,” not the right to be “assist[ed] [] in funding the expression of particular ideas.” 

Id. at 358. “While publicly administered payroll deductions for political purposes can enhance the unions’ exercise of First Amendment rights, Idaho is under no 

obligation to aid the unions in their political activities.” 

Id. at 359. Because collecting payroll deductions was a 

government benefit, the State’s decision not to extend 

that benefit was “not an abridgement of the unions’

speech.” Id. As in Davenport, the unions remained “free 

to engage in such speech as they see fit. They simply are 

barred from enlisting the State in support of that endeavor.” Id. Thus the Court again declined to apply heightened scrutiny and upheld the regulation in light of the 

“government’s interest” in “avoiding the reality or appearance of government favoritism.” Id. 

The same is true here. Federal trademark registration, like the state-bestowed collection mechanisms for 

unions in Davenport and Ysursa, is a governmentbestowed collection mechanism for enforcing trademarks. 

It opens the federal courts to enforce trademark rights by 
IN RE TAM 13

providing, inter alia, original jurisdiction in federal courts 

for infringement claims, eligibility for treble damages for 

willful infringement, the ability to petition Customs to 

prevent the importation of infringing articles, and various 

enhanced protections for marks. See 15 U.S.C. §§ 1057(c), 

1141, 1117, 1124. These benefits all “enlist” the government in support of the mark holder’s commercial identification, much like the collection of nonmember fees in 

Davenport and the payroll deductions in Ysursa enlisted 

the states in support of the unions’ political speech. See 

Ysursa, 555 U.S. at 359. Just as the states were not 

obligated to enable labor unions to collect nonmember fees 

or take payroll deductions in the first place, the federal 

government is not obligated to provide these benefits of a 

trademark enforcement mechanism. And just as the 

unions remained free to speak for election-related purposes using all other funds, trademark holders remain free to 

use their marks—however disparaging—as far as the 

federal government is concerned.5 That states may deny 

state-law protection to these marks cannot make the 

denial of the federal subsidy any less constitutional. 

Finally, the majority argues that § 2(a) should be 

treated as a regulatory provision because the denial of 

registration benefits will have a chilling effect on the use 

of disparaging marks and cause mark holders to abandon 

such marks. See Maj. Op. at 32–33. But that is commonly the effect of the denial of subsidies, as the Supreme 

Court has recognized. See Regan, 461 U.S. at 550 (“Although TWR does not have as much money as it wants, 

and thus cannot exercise its freedom of speech as much as 

it would like,” the decision not to subsidize its speech does 

5 That alternative federal enforcement under 15 

U.S.C. § 1125(a) is potentially available to denied applicants only bolsters this point. See Maj. Op. at 37 n.11. 

 
14 IN RE TAM

not violate the First Amendment). A chilling effect does 

not turn a subsidy provision into a regulatory provision, 

so long as the subsidy is not designed to limit speech 

outside of the subsidized program. That is not the case 

here. 

“[T]he relevant distinction that has emerged from our 

cases is between conditions that define the limits of the 

government spending program—those that specify the 

activities Congress wants to subsidize—and conditions 

that seek to leverage funding to regulate speech outside 

the contours of the program itself.” Agency for Int’l Dev. 

v. Alliance for Open Soc’y Int’l, Inc., 133 S. Ct. 2321, 2328 

(2013) (“AID”). An example of such impermissible leverage was found in FCC v. League of Women Voters, where 

federal funds were denied to public broadcasters if they 

engaged in editorializing. 468 U.S. 364, 399–401 (1984). 

The restriction was invalidated because it affected editorializing engaged in without federal funds. Id. Section 

2(a) is not designed to limit speech outside of the federal 

trademark program. Accordingly, it does not run afoul of 

the unconstitutional conditions doctrine. 6 See id. 

The majority’s contrary arguments are the very arguments rejected in the Supreme Court’s recent decision 

6 Bullfrog Films, Inc. v. Wick, 847 F.2d 502, 503 

(9th Cir. 1988), Dep’t of Tex., Veterans of Foreign Wars v. 

Tex. Lottery Comm’n, 760 F.3d 427, 430 (5th Cir. 2014) 

(en banc), and Autor v. Pritzker, 740 F.3d 176, 177 (D.C. 

Cir. 2014), relied on by the majority, Maj. Op. at 50–52, 

are all inapposite. In all three cases, the government was 

attempting to leverage speech outside of the “contours” of 

its defined program, thus running afoul of the unconstitutional conditions doctrine. Here, on the other hand, no 

expression beyond the trademark is suppressed, and 

therefore no unconstitutional condition obtains. 

 
IN RE TAM 15

in AID. See 133 S. Ct. at 2328. AID explicitly disclaimed 

the majority’s assertion that the condition must be limited 

to “advancing the goals underlying the program the 

government seeks to fund.” Maj. Op. at 54. The question 

is not whether “the condition is [] relevant to the objectives of the program,” but rather whether the condition 

“seek[s] to leverage funding to regulate speech outside the

contours of the program itself,” which the restriction here 

does not. AID, 133 S. Ct. at 2328. Similarly, in Regan the 

Court upheld a requirement that nonprofit organizations 

seeking tax-exempt status under 26 U.S.C. § 501(c)(3) not 

engage in lobbying. 461 U.S. at 544. The Court upheld 

that condition not because it was related in some way to 

the “goals” of 501(c)(3) tax exemption, but rather because 

“the condition did not prohibit that organization from 

lobbying Congress” with separate funds, i.e., it did not 

leverage funds outside of the nonprofit structure. Id. at 

2329. The majority’s arguments fail to show a colorable

violation of the unconstitutional conditions doctrine here. 

III

The majority urges, however, that subsidies require 

viewpoint neutrality, and argues that the subsidy provided by § 2(a) discriminates based on viewpoint because 

favorable racial and other marks are allowed while disparaging ones are not. See Maj. Op. at 21–23. Contrary 

to the majority, the Supreme Court has never held that

this kind of subsidy must be viewpoint neutral. The 

question was raised, but not answered, in Davenport and 

Ysursa. See Davenport, 551 U.S. at 189 (“Even if it be 

thought necessary that the content limitation be reasonable and viewpoint neutral . . .”); Ysursa, 555 U.S. at 361, 

n.3. And the Court has upheld subsidies that were facially viewpoint discriminatory. See, e.g., Rust v. Sullivan, 

500 U.S. 173 (1991) (upholding a condition limiting Title 

X funding to clinics that do not advocate abortion as a 

method of family planning). The Court made an exception 
16 IN RE TAM

in a subsidy case involving the unique context of legal 

services, where “the traditional role of the [subsidized]

attorneys” is to “speak[] on the behalf of his or her private, indigent client” and viewpoint discrimination undermined the very purpose of the subsidy. Legal Servs. 

Corp. v. Velazquez, 531 U.S. 533, 542, 544 (2001). There 

is no tradition of unfettered advocacy in commercial 

advertising. Thus even if the regulation here could be 

deemed viewpoint discriminatory, it would not fail under 

the First Amendment. See Davenport, 551 U.S. at 189. 

But § 2(a) is in any event viewpoint neutral. In Boos 

v. Barry, 485 U.S. 312 (1988), the Court addressed a

nearly identical standard as applied to core political 

speech. The law there prohibited the display of any sign

within 500 feet of a foreign embassy if the sign would tend

to bring that foreign government into “public odium” or 

“disrepute.” Id. at 315. Justice O’Connor’s plurality 

opinion confirmed that the restriction is “content-based,” 

but it specifically found that “the provision is not viewpoint based.” Id. at 319 (emphasis added). “The display 

clause determines which viewpoint is acceptable in a 

neutral fashion by looking to the policies of foreign governments.” Id. (emphasis added). This “prevents the 

display clause from being directly viewpoint based, a label 

with potential First Amendment ramifications of its own.” 

Id. This aspect of the plurality opinion has since been

cited with approval by a majority of the Court in Turner 

Broadcasting System, Inc. v. FCC, 512 U.S. 622, 645 

(1994). The same reasoning applies here. Just as the 

restriction in Boos operated in a “neutral fashion” by 

looking only to foreign governments, the bar on registration of disparaging marks operates in a “neutral fashion” 

by looking only to the views of the referenced group. 

Accordingly, just as the restriction in Boos was viewpoint 

neutral, so too is § 2(a). In Ridley v. Massachusetts Bay 

Transportation Authority, 390 F.3d 65 (1st Cir. 2004), the 
IN RE TAM 17

First Circuit arrived at the same conclusion, holding that 

a regulation “prohibit[ing] demeaning or disparaging ads”

was viewpoint neutral because “the state is not attempting to give one group an advantage over another in the 

marketplace of ideas.” Id. at 90–91. 

Finding § 2(a) to be viewpoint neutral is consistent

with the Court’s treatment of viewpoint discrimination in 

other areas. The Court has defined viewpoint discrimination as the government’s disagreement with the underlying “ideology,” “opinion” or “perspective of the speaker.” 

Rosenberger v. Rector & Visitors of Univ. of Va., 515 U.S. 

819, 829 (1995). Here, as in Boos, the standard is not

based on the government’s disagreement with anything. 

Rather, it is based on an objective, “neutral” assessment 

of a non-government perspective—in this case, a “substantial composite of the referenced group.” As in Davenport and Ysursa, there is no “realistic possibility that 

official suppression of ideas is afoot,” Ysursa, 555 U.S. at 

190, and the content-based regulation here is not subject 

to heightened First Amendment scrutiny. 

IV

Even in subsidy cases, however, the government 

needs some interest sufficient to justify its regulation

defined in terms of “reasonableness.” See Ysursa, 555 

U.S. at 359; Regan, 461 U.S. at 550. In my view, the 

protection of disparaged groups is sufficient. As demonstrated on college campuses across the nation, members of 

some groups, whether or not justified, are particularly 

sensitive to disparaging material.7 There is significant 

7 See, e.g., Chuck Culpepper, How Missouri football’s boycott helped bridge a familiar campus divide, 

Wash. Post (Nov. 13, 2015), 

https://www.washingtonpost.com/sports/colleges/how-

 
18 IN RE TAM

social science evidence demonstrating the harmful psychological effects of holding a minority group up for ridicule on a national stage, particularly on children and 

young adults.8 In the case of core protected speech, as 

discussed above, the government has no legitimate interest in protecting disparaged groups. The groups must 

tolerate the disparagement in pursuit of the greater goal 

of a free marketplace of ideas. But, as discussed above,

commercial speech is different. 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(c). 

The government has an interest in “proscribing intrusive and unpleasant formats” for commercial expression. 

Taxpayers for Vincent, 466 U.S. at 806; see also Lehman, 

418 U.S. at 304; Metromedia, 453 U.S. at 514. The Supreme Court’s “precedents [] leave no room for doubt that 

the protection of potential clients’ privacy is a substantial 

state interest.” Florida Bar, 515 U.S. at 625 (internal 

quotations marks omitted). We need not decide whether

this interest is sufficiently compelling to justify a ban of 

disparaging commercial speech. It is more than sufficient 

to justify the government’s “decision not to assist” disparaging commercial expression. Ysursa, 555 U.S. at 360

missouri-footballs-boycott-helped-unite-a-troubledcampus/2015/11/13/64fe68ea-8a0f-11e5-be8b1ae2e4f50f76_story.html. 8 See, e.g., American Psychological Ass’n, APA Resolution Recommending the Immediate Retirement of American Indian Mascots, Symbols, Images, and Personalities 

by Schools, Colleges, Universities, Athletic Teams, and 

Organizations (2011), available at http://www.apa.org/

about/policy/mascots.pdf (citing many studies finding 

psychological harm of exposure to negative stereotypes). 

 
IN RE TAM 19

n.2; Taxpayers for Vincent, 466 U.S. at 806. At the same 

time, there is no countervailing First Amendment interest. It is certainly difficult to imagine, for example, how 

the disparaging elements of an advertisement such as 

“CHLORINOL SODA BLEACHING—we are going to use 

Chlorinol and be like de white nigger,”9 or “The Plucky 

Little Jap Shredded Wheat Biscuit,”10 or “Dr. Scott’s 

Electric Hair Brush—will not save an Indian’s scalp from 

his enemies but it will preserve yours from dandruff,”11

further any legitimate “informational function” associated 

with the relevant product.

V 

Finally, contrary to the majority’s implication, it is 

quite feasible to distinguish between core and commercial 

speech. Congress has already determined that trademark

law should distinguish between pure commercial speech

and fully protected speech. Section 1125(c)(3) of title 15

excludes from liability for dilution parody, criticism, and 

any noncommercial use of a mark. And the noncommercial use of a mark, for parody, as an example, weighs 

against likelihood of confusion. See, e.g., Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989); Davis v. Walt Disney 

Co., 430 F.3d 901 (8th Cir. 2005); see also Cliffs Notes, Inc. 

v. Bantam Doubleday Dell Publ’g, Inc., 886 F.2d 490, 494-

9 Julian Casablancas, 15 Shockingly Racist Vintage 

Ads, Business Pundit (Dec. 17, 2012), 

http://www.businesspundit.com/15-shockingly-racistvintage-ads/?img=42884.

10 Dan Beard, 24 Recreation 1 (1905) available at 

https://books.google.com/books?id=LPQXAAAAYAAJ&pg=

PA474-IA18#v=onepage&g&f=false.

11 Brian D. Behnken & Gregory D. Smithers, Racism 

in American Popular Media: From Aunt Jemima to the 

Frito Bandito 39 (2015). 

 
20 IN RE TAM

95 (2d Cir. 1989) (“the expressive elements of titles require[] more protection than the labeling of ordinary 

commercial products . . . so here the expressive element of 

parodies requires more protection than the labeling of 

ordinary products.”). Congress has made a similar judgment in the copyright context. See 17 U.S.C. § 107 (one of 

four fair use factors includes assessing whether the use is 

commercial). I see no reason why the Board would be 

unable to make such distinctions here. 

VI 

Turning from the application of § 2(a) to commercial 

speech to the facts of this case, I agree with the majority 

that the bar on registration of disparaging marks is 

unconstitutional as applied to Mr. Tam. Here there can 

be no doubt that Mr. Tam’s speech is both political and 

commercial. Unlike Friedman, where the trade name 

proponent did “not wish to editorialize on any subject, 

cultural, philosophical, or political,” 440 U.S. at 11, Mr. 

Tam’s choice of mark reflects a clear desire to editorialize 

on cultural and political subjects. Mr. Tam chose THE 

SLANTS at least in part to reclaim the negative racial 

stereotype it embodies: “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.” In re Simon Shiao Tam, 108 

U.S.P.Q. 2d 1305 at *2 (T.T.A.B. 2013). See Maj. Op. at

12 (Mr. Tam “selected the mark in order to ‘own’ the 

stereotype it represents.”). 

Given the indisputably expressive character of Mr. 

Tam’s trademark in this case, the government’s recognized interests in protecting citizens from targeted, demeaning advertising and proscribing intrusive formats of 

commercial expression—interests that are sufficient to 

justify the provision as applied to commercial speech—are

insufficient to justify application of the provision to Mr. 
IN RE TAM 21

Tam. As discussed, because of the fundamental values 

underlying the First Amendment’s robust protection of 

offensive speech that are unique to core political expression, the government cannot justify restricting disparaging trademarks when those marks, like Mr. Tam’s, 

actually consist of core expression. See, e.g., Snyder, 562 

U.S. at 459–61. Accordingly, because no government 

interest can justify restricting Mr. Tam’s core speech on 

the basis of its capacity to injure others, § 2(a) is invalid 

as applied. This also explains why the majority’s concern 

regarding copyright is misplaced. See, e.g., Maj. Op. at

55–56. Copyrights, unlike trademarks, principally cover 

core protected expression. Thus, as for Mr. Tam, any 

government interest related to suppressing offensive 

speech would be insufficient to justify a comparable 

restriction as applied to copyright registration except for 

commercial advertising. 

No case before the majority’s opinion today has imposed an obligation on the government to subsidize offensive, commercial speech. As Judge Lourie points out, the 

bar on registration of disparaging marks is longstanding, 

and we have previously upheld it in a number of decisions. I see no basis for invalidating it now as applied to 

commercial speech. I would adhere to those decisions in 

this respect, and I respectfully dissent. 
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.

______________________ 

LOURIE, Circuit Judge, dissenting. 

I join Parts I–IV of Judge Dyk’s concurrence-in-part, 

dissent-in-part, but I respectfully dissent with respect to 

the result reached by the majority holding the disparagement provision of § 2(a) unconstitutional as violating the 

First Amendment. For the following additional reasons, I 

would affirm the USPTO’s decision refusing to register 

Mr. Tam’s trademark.

First, one wonders why a statute that dates back 

nearly seventy years—one that has been continuously 

applied—is suddenly unconstitutional as violating the 

First Amendment. Is there no such thing as settled law, 

normally referred to as stare decisis? Since the inception 

of the federal trademark registration program in 1905, 

the federal government has declined to issue registrations 

of disparaging marks. The Trademark Act of 1905 provided specific authority to refuse to register immoral or 

scandalous marks, see Act of Feb. 20, 1905, ch. 592, 33 

Stat. 724; the USPTO refused to register disparaging 
2 IN RE TAM

marks on those grounds before the Lanham Act of 1946 

was enacted, which explicitly incorporated a disparagement proscription, see Appellee’s En Banc Br. 6. The 

USPTO’s authority to refuse to issue trademark registrations with certain offensive content has thus existed in 

U.S. law for over one hundred years. As the majority 

notes, these are not prohibitions that have lain unused 

and latent for all of those years. The USPTO has been 

rejecting applications for trademark registrations on this 

basis throughout this period of time. By finding § 2(a) 

unconstitutional, we interfere with the long-standing

Congressional policy of delegating authority to the 

USPTO to filter out certain undesirable marks from the 

federal trademark registration system. We should not 

further the degradation of civil discourse by overturning 

our precedent that holds that the First Amendment is not 

implicated by § 2(a)’s prohibition against disparaging 

trademarks. 

In addition, the refusal of the USPTO to register a 

trademark is not a denial of an applicant’s right of free 

speech. The markholder may still generally use the mark 

as it wishes; without federal registration, it simply lacks 

access to certain federal statutory enforcement mechanisms for excluding others from confusingly similar uses 

of the mark. Mr. Tam may use his trademark as he likes, 

whether it be encouraging discussion on or taking ownership of racial slurs, or identifying goods and services with 

his band. In fact, it seems quite likely that Mr. Tam will 

continue to use his band name to make a statement 

regardless of federal registration—the expressive purpose 

of his mark undoubtedly overshadows the commercial 

considerations. The argument, therefore, that a trademark applicant’s right of free speech has been impaired 

by the failure of the USPTO to grant a federal registration is unconvincing. 

Furthermore, it is not entirely clear that a trademark, 

even an expressive trademark, is protected commercial 
IN RE TAM 3

speech. The lack of a federal registration does not alter 

the informational function of a trademark: disparaging 

marks may still be used to identify the source of goods or 

services. The government’s decision to support certain 

choices and not others will invariably have some discouraging effect, but the government does not necessarily 

violate an individual’s constitutional rights merely by 

refusing to grant registration and thereby provide additional assistance in the enforcement of trademark rights.

Moreover, trademark rights, as amicus International 

Trademark Association informs us, are not limited to 

those marks deemed registrable by the USPTO. “Section 

43(a) of the Lanham Act is available to protect all designations of origin, even—indeed, especially—those that 

cannot be registered under Section 2(a).” Br. of amicus 

curiae Int’l Trademark Ass’n 4. The fear that markholders would be left with absolutely no recourse for trademark protection, once an application for federal 

registration is denied, appears unfounded. Rather, all 

that is at issue here is the government’s decision not to 

facilitate enforcement with the additional mechanisms 

attendant to federal registration. The denial of federal

trademark registration thus does not deprive the markholder of trademark protection because of the content of 

its mark; the markholder still has trademark rights under 

the Act in addition to its common law rights.

Finally, it has been questioned whether federal registration imparts the “imprimatur” of the federal government on a mark, such that registration could be 

permissibly restricted as government speech. I believe 

that such action is justified. The USPTO does in fact 

“publish” trademarks, in the Trademark Official Gazette. 

Despite being in electronic form, it is still a form of government speech that is partially controlled or affected by 

government action. The USPTO may also require that a

disclaimer of unregistrable components be included for

publication. Moreover, a federally registered mark is 
4 IN RE TAM

usually “stamped” with some indication of government 

oversight, viz., the use of the ® symbol or a phrase that 

the mark is registered in the USPTO, giving proof to the 

public that the government has in some sense approved 

the mark. Without that designation, the markholder 

cannot take advantage of some of the benefits of federal 

registration, e.g., constructive notice for damages. 

Similarly to specialty license plate designs, federally 

registered trademarks can be identified with two message 

contexts: one from the provider of goods or services, who 

has chosen to use a certain mark to link its product or 

services to itself, and one from the government, which has 

deemed the mark qualified for the federal registration 

program. The evaluation of disparagement is not based 

on the government’s moral judgment, despite any distaste 

expressed in its briefing for cancelled or applied-for 

marks; a mark is disqualified based only on evidence of its 

perception by the affected persons. The government 

action does not include a judgment on the worthiness or 

the effectiveness of the mark; if it did, it might—but not 

necessarily—venture into viewpoint-discrimination territory. And while a trademark alone, as a word placed on 

private property, is not government speech, once it claims 

that federally registered status, it becomes more than the 

private owner’s speech. It is not simply private speech as 

is the holding of a placard in a parade.

In my view, holding the disparagement provision of 

§ 2(a) unconstitutional would be unsound, and the 

USPTO’s refusal to register Mr. Tam’s disparaging mark 

should therefore be affirmed. 

Accordingly, I respectfully dissent.
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.

______________________ 

REYNA, Circuit Judge, dissenting. 

The Majority holds today that Mr. Tam’s speech, 

which disparages those of Asian descent, is valuable 

political speech that the government may not regulate

except to ban its use in commerce by everyone but Mr. 

Tam. I believe the refusal to register disparaging marks 

under § 2(a) of the Lanham Act is an appropriate regulation that directly advances the government’s substantial 

interest in the orderly flow of commerce. Because I would 

uphold the constitutionality of § 2(a), I respectfully dissent.

Trademarks are commercial speech. And precisely 

because trademarks are commercial speech, the government’s decision to grant or deny registration must be 

reviewed under an intermediate standard of scrutiny. 

Intermediate scrutiny is satisfied whenever the decision is 

narrowly tailored to directly advance a substantial government interest. When the commercial or political 

content of a trademark threatens the government’s sub-
2 IN RE TAM

stantial interest in the orderly flow of commerce, appropriate regulation may be justified. 

DISCUSSION

A. Intermediate Scrutiny Applies Because Trademarks Are Commercial Speech

The Supreme Court has held that trademarks are “a 

form of commercial speech and nothing more.” Friedman 

v. Rogers, 440 U.S. 1, 11 (1979); accord San Francisco 

Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 

522, 563 (1987). The purpose of a trademark is merely to 

“propos[e] a commercial transaction” by identifying the 

source of goods or services. Cent. Hudson Gas & Elec. 

Corp. v. Pub. Serv. Comm’n of New York, 447 U.S. 557, 

562 (1980). 

Because “the Constitution accords less protection to 

commercial speech than to other constitutionally safeguarded forms of expression,” Bolger v. Youngs Drug 

Products Corp., 463 U.S. 60, 64-65 (1983), the government 

may regulate the use of trademarks to ensure the orderly 

flow of commerce. For example, the government may 

disallow trade names that create “[t]he possibilities for 

deception,” even if the names are not untruthful. Friedman, 440 U.S. at 13. The government may similarly 

implement a trademark registration program, as it did 

through the Lanham Act, which provides certain speakers 

exclusive rights to their chosen marks in commerce. Such 

regulation is permissible under the First Amendment 

only because the speech being regulated is commercial 

and because the government has a substantial interest in 

facilitating commerce by “insuring that the stream of 

commercial information flows cleanly as well as freely.” 

Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer Council, Inc., 425 U.S. 748, 771-72 (1976). 

The courts have long recognized that some trademarks can include expressive elements concerning mat-
IN RE TAM 3

ters of public interest, and that such trademarks nevertheless remain commercial speech. Historically, commercial speech received no First Amendment protection, see 

Valentine v. Chrestensen, 316 U.S. 52, 54 (1942), and the 

seminal cases bringing commercial speech within the 

First Amendment’s purview did so, at least in part, because commercial speech often communicates on matters 

of public interest. Virginia State Bd., 425 U.S. at 764-65. 

As the Supreme Court recognized in Virginia State Board, 

“not all commercial messages contain the same or even a 

very great public interest element,” but “[t]here are few to 

which such an element, however, could not be added.” Id. 

The protections of commercial speech are therefore 

based, at least in part, on the recognition that commercial 

speech is not always entirely commercial, but that it may 

contain political messages that make the speech “‘commercial’ in widely varying degrees.” Bigelow v. Virginia, 

421 U.S. 809, 826 (1975). For this reason, the Supreme 

Court has routinely held that various examples of speech 

“constitute commercial speech notwithstanding the fact 

that they contain discussions of important public issues.” 

Bolger, 463 U.S. at 67; see also Bd. of Trustees of State 

Univ. of New York v. Fox, 492 U.S. 469 (1989). Put simply, commercial speech does not transform into core political speech with full First Amendment protections simply 

because it “links a product to a current public debate.” 

Cent. Hudson, 447 U.S. at 563. 

To determine whether speech is commercial, we consider “the nature of the speech taken as a whole.” Riley v. 

Nat’l Fed’n of the Blind, 487 U.S. 781, 796 (1988). For 

example, in Bolger, the Supreme Court found that certain

pamphlets were commercial speech, despite containing 

“discussions of important public issues,” because (1) the 

speaker conceded that the pamphlets were advertisements, (2) the pamphlets referenced a specific product, 

and (3) the speaker had an economic motivation for mailing the pamphlets. Bolger, 463 U.S. at 66-68. The Court 
4 IN RE TAM

concluded that “[t]he combination of all these characteristics” supported the conclusion that “the informational 

pamphlets are properly characterized as commercial 

speech.” Id. 

All three factors from Bolger are necessarily also present in trademarks. Trademarks are used to identify 

specific products and to advertise the sources of those 

products. Trademarks, and in particular those federally 

registered for exclusive use in interstate commerce, are 

necessarily tools of commerce used with an “economic 

motive.”1 A trademark is therefore commercial speech, 

and as such, it lacks full First Amendment protections, 

regardless of whether it also includes a political element. 

The Majority reasons that because the commercial 

and political elements of trademarks are “inextricably 

intertwined,” the combined whole must be treated as 

expressive speech. Maj. Op. at *26 (citing Riley, 487 U.S. 

at 796). But as explained above, commercial speech is 

frequently intertwined with political elements, and this 

intertwining does not necessarily alter the essentially 

commercial character of the speech. Riley, on which the 

Majority relies, is not to the contrary. Riley only reiterates that “in deciding what level of scrutiny to apply” we 

must consider “the nature of the speech taken as a 

whole.” Riley, 487 U.S. at 796. The nature of trademarks

seeking federal registration for use in interstate commerce, when considered as a whole, is indisputably commercial, not political.

1 The registration of a trademark confers a competitive advantage in the marketplace to the owner of the 

mark. Typically, in trademark disputes, opposition to the 

registration or use of a certain mark involves the commercial activities of a competitor. In such cases, the interests 

of both the owner and competitor are fundamentally 

commercial in nature. 

 
IN RE TAM 5

Judge Dyk concurs in the result today only because he 

believes the content of Mr. Tam’s mark is so “indisputably 

expressive” that it cannot be regulated under the lesser 

standards applied to commercial speech. Dyk, J., concurring at *20-21. But if the expressive content of the mark 

precludes regulation, on what authority may the government grant Mr. Tam the exclusive right to use this mark

in commerce? Whatever standard of scrutiny protects the 

content of Mr. Tam’s trademark from government regulation, that same standard must necessarily be overcome by 

the government’s substantial interest in the orderly flow 

of commerce, or no trademark could issue. 

B. Intermediate Scrutiny Applies Because Section 2(a) 

is Content-Neutral

The Majority applies strict scrutiny not necessarily 

because of the expressive content of Mr. Tam’s mark, but 

because of the government’s supposed purpose of suppressing the political elements of the mark. Maj. Op. at 

*23-26. The Majority thus invokes the modern test for 

content-neutrality, under which the “principal inquiry” is 

“whether the government has adopted a regulation of 

speech because of disagreement with the message it 

conveys.” Ward v. Rock Against Racism, 491 U.S. 781, 

791 (1989). Under Ward, “[t]he government’s purpose is 

the controlling consideration.” Id. The Supreme Court 

has endorsed the applicability of this test to commercial 

speech. Sorrell v. IMS Health Inc., 131 S. Ct. 2653, 2664

(2011). 

If this appeal turns on a content-neutrality analysis, 

we should be clear that the government has never stated 

that the purpose of § 2(a) is to suppress speech. Only the 

Majority has advanced this rationale, and it has done so 

only by default after eliminating all other interests of 

which it could conceive. I do not think we need to search 

so hard and so far. The purpose of § 2(a) is the same as 
6 IN RE TAM

the purpose of the Lanham Act as a whole—to promote 

the orderly flow of commerce.

The Lanham Act declares unequivocally that “[t]he intent of this chapter is to regulate commerce.” 15 U.S.C.A. 

§ 1127. In analyzing content-neutrality, an apparently 

content-based law is nevertheless considered contentneutral if the government’s purpose is not to suppress 

speech, but to address the harmful secondary effects of 

that speech. See City of Renton v. Playtime Theatres, Inc., 

475 U.S. 41 (1986); Young v. Am. Mini Theatres, 427 U.S. 

50 (1976). The Supreme Court has repeatedly applied 

this “Secondary Effects” doctrine to uphold not only time, 

place, and manner restrictions on particular types of 

speech, id. (upholding regulations on the locations of 

adult businesses), but also regulations on the content of 

expression itself, see, e.g., City of Erie v. Pap’s A.M., 529 

U.S. 277 (2000) (upholding ban on fully nude dancing);

Barnes v. Glen Theatre, 501 U.S. 560 (1991) (same). For 

example, applying Ward, the Supreme Court upheld a 

city’s ban on fully nude dancing because the ban was only 

a minimal burden on speech and was narrowly tailored to 

advance the “substantial government interest in protecting order and morality.” Barnes, 501 U.S. at 569. In City 

of Erie, the Court upheld a nearly identical statute as 

content-neutral because it did “not attempt to regulate 

the primary effects of the expression” but rather, “the 

secondary effects, such as impacts on public health, 

safety, and welfare.” City of Erie, 529 U.S. at 291. 

The Supreme Court has also permitted regulation of 

speech based on the speech’s effect on commerce. For 

instance, it was under Ward that the Supreme Court 

upheld the FCC’s must-carry provisions as contentneutral, despite the provisions’ mandate that cable providers transmit particular types of content. Turner Broad. 

Sys., Inc. v. F.C.C., 512 U.S. 622, 647 (1994). The Court 

upheld the must-carry regulations because they furthered 

the substantial government interest in “protecting non-
IN RE TAM 7

cable households from loss of regular television broadcasting service.” Id. The Court has also upheld regulations 

on highly-protected private speech where the government

sought to eliminate the secondary effects of that speech on 

the market for illegal goods. See Osborne v. Ohio, 495 

U.S. 103 (1990). Thus, when a regulation’s purpose is to 

address the secondary effects of certain speech, intermediate scrutiny is appropriate, even if the regulation implicates content.

Section 2(a) serves the same substantial government 

interest as the Lanham Act as a whole—the orderly flow 

of commerce. Commercial speech that insults groups of 

people, particularly based on their race, gender, religion, 

or other demographic identity, tends to disrupt commercial activity and to undermine the stability of the marketplace in much the same manner as discriminatory 

conduct. The government’s refusal to promote such 

speech in commerce is not an effort to suppress free 

expression, but to mitigate the disruptive secondary 

effects that a particular type of low-value speech may 

have when used in a commercial context. Because the 

government’s purpose is to mitigate these secondary 

effects on commerce rather than to suppress speech, the 

regulation is content-neutral and intermediate scrutiny 

applies.

C. Section 2(a) Advances the Substantial Government 

Interest in the Orderly Flow of Commerce

The government’s interest in the orderly flow of commerce is substantial. If it were not, the government 

would be powerless to implement a trademark registry

because doing so necessarily requires a ban on infringing 

commercial speech. The government has a substantial 

interest in regulating “deceptive or misleading” commercial speech, even if that speech is not wholly false, because of the government’s substantial interest in 

“insuring that the stream of commercial information flow 
8 IN RE TAM

cleanly as well as freely.” Virginia State Bd. of Pharmacy, 

425 U.S. at 771. The Supreme Court has never held, 

however, that deceptive and misleading speech is the only

type of commercial speech subject to regulation for its 

disruptive effect. See Cent. Hudson, 447 U.S. at 566 (“For 

commercial speech to come within that provision, it at 

least must concern lawful activity and not be misleading.”) (emphasis added). Instead, any speech that substantially undermines the orderly flow of commerce may 

potentially be subject to at least some regulation.

The marketplace of ideas differs dramatically from 

the marketplace of goods and services. While the marketplace of ideas may tolerate or even benefit from the 

volatility that accompanies disparaging and insulting 

speech, the marketplace of goods and services is a wholly 

different animal. Commerce does not benefit from political volatility, nor from insults, discrimination, or bigotry. 

Commerce is a communal institution regulated for the 

mutual economic benefit of all. Commercial speech that 

discredits or brings reproach upon groups of Americans, 

particularly based on their race, has a discriminatory 

impact that undermines commercial activity and the 

stability of the marketplace in much the same manner as 

discriminatory conduct. 

That discriminatory conduct disrupts commerce is 

long established. In upholding Title II of the Civil Rights 

Act, for example, the Supreme Court noted a record 

“replete with testimony of the burdens placed on interstate commerce by racial discrimination.” Katzenbach v. 

McClung, 379 U.S. 294, 299 (1964). The Court cited an

“impressive array of testimony that discrimination in 

restaurants had a direct and highly restrictive effect upon 

interstate travel,” and that such discrimination therefore 

“obstructs interstate commerce.” Id. at 300. It cited 

“many references” to discrimination causing “a depressant 

effect on general business conditions in the respective 

communities” and it noted evidence that discrimination 
IN RE TAM 9

“deterred professional, as well as skilled, people from 

moving into areas where such practices occurred and 

thereby caused industry to be reluctant to establish 

there.” Id. The Court thus found “ample basis for the 

conclusion that established restaurants in such areas sold 

less interstate goods because of the discrimination, that 

interstate travel was obstructed directly by it, that business in general suffered and that many new businesses 

refrained from establishing there as a result of it.” Id. 

Although these findings were specific to public accommodations, they are applicable to commerce generally. 

Commercial goods and services pervade all economic 

channels, including all public accommodations, such as 

stores, restaurants, hotels, theaters, and the like. Discriminatory messages within such commercial channels 

threaten the same disruptive effects as the discrimination 

itself. Although the Majority distinguishes between 

conduct and speech, Maj. Op. at *59, the distinction is 

without a difference in this context. Whether a restaurant named “SPICS NOT WELCOME” would actually 

serve a Hispanic patron is hardly the point. The mere use 

of the demeaning mark in commerce communicates a 

discriminatory intent as harmful as the fruit produced by 

the discriminatory conduct. 

Because even speech without accompanying conduct 

can have a discriminatory impact, other parts of the Civil 

Rights Act expressly regulate pure speech in commerce. 

For instance, Title VIII specifically bans advertising that 

indicates a discriminatory preference, even where discriminatory conduct is legal. See 42 U.S.C. § 3604(c); see 

also § 3603(b) (listing exemptions). Title VII places 

similar restrictions on job advertisements. See 42 U.S.C. 

§ 2000e-3(b). Title VII also bans pure speech in the 

workplace when the speech is harassing, even when 

unaccompanied by any adverse employment action, 

because such speech creates a discriminatory impact. See 
10 IN RE TAM

Harris v. Forklift Sys., Inc., 510 U.S. 17 (1993); see also 

Burlington Indus., Inc. v. Ellerth, 524 U.S. 742 (1998). 

Nearly every disparaging mark identified in the voluminous briefing and opinions in this case has involved 

disparagement of race, gender, ethnicity, national origin, 

religion, sexual orientation, and similar demographic 

classification. The impact of advancing these bigoted 

messages through the ubiquitous channels of commerce 

may be discriminatory, and even if not discriminatory, at 

least disruptive to commerce. The only question is 

whether the government’s interest in avoiding this commercial disruption outweighs the modest “burden” that its 

refusal to register the offending marks places on the 

freedom of speech. I believe it does.

D. Section 2(a) Survives Intermediate Scrutiny

To be clear, I do not believe that the government may 

ban any speech it finds commercially undesirable, but 

only that when we are presented with a regulation, we 

must engage meaningfully in “the task of assessing the 

First Amendment interest at stake and weighing it 

against the public interest allegedly served by the regulation.” Bigelow, 421 U.S. at 826. Here, the government’s 

substantial interest in the orderly flow of commerce is 

counterbalanced only by a minimal “burden” on a small 

subset of low-value commercial speech. Section 2(a) 

should survive intermediate scrutiny because it is only an 

“incidental restriction on First Amendment freedom [that] 

is no greater than is essential to the furtherance of the 

governmental interest” in the orderly flow of commerce. 

See Barnes, 501 U.S. at 561. 

Section 2(a) imposes only a modest “burden” on 

speech. First, the statute applies only in the commercial 

context, meaning that it does nothing to impact private 

speech. Mr. Tam remains free to spread his chosen message to all who would listen without fear of government 

intervention or reprisal. Second, § 2(a) does not strictly 
IN RE TAM 11

“burden” Mr. Tam’s speech, but only denies him a government-created benefit—the exclusive right to use that 

speech in commerce in connection with the sale of particular goods or services. At bottom, the only burden the 

application of § 2(a) imposes in this case is that Mr. Tam 

is free to communicate his chosen message within or 

without commerce, so long as he is willing to permit 

others to do the same. 

Section 2(a) also implicates only a modest sliver of 

particularly low-value speech. Speech that disparages is 

a narrow subset of speech that offends, and it is a particularly low-value subset at that. See Am. Freedom Def. 

Initiative v. Mass. Bay Transp. Auth., 989 F. Supp. 2d 

182, 192 (D. Mass. 2013) aff’d, 781 F.3d 571 (1st Cir. 

2015) (distinguishing speech that “crosses the line from 

being offensive or hurtful to being demeaning or disparaging”). To borrow a phrase from Justice Stevens, few of us 

would march our sons and daughters off to war to preserve the citizen’s right to be the exclusive purveyor of 

“OLD COON SMOKING TOBACCO.” See Young, 427 

U.S. at 70; McCann v. Anthony, 21 Mo. App. 83, 91-92 

(1886). 

The Supreme Court has routinely considered the relative value of burdened speech in its First Amendment 

analysis. See, e.g., Bethel Sch. Dist. No. 403 v. Fraser, 478 

U.S. 675, 683 (1986); Young, 427 U.S. at 70-71; Tinker v. 

Des Moines Indep. Cmty. Sch. Dist., 393 U.S. 503, 510-11

(1969). For instance, the Court has held that a student’s 

interest in high-value political speech outweighed his 

school’s interest in avoiding a “substantial disruption,” 

Tinker, 393 U.S. at 510-11, but that a student’s interest in 

low-value “insulting” speech did not, Fraser, 478 U.S. at 

683. When low-value materials are concerned, “the State 

may legitimately use the content of these materials as the 

basis for placing them in a different classification” of First 

Amendment protection. Young, 427 U.S. at 71. 
12 IN RE TAM

At the extremes, disparaging speech enjoys no First 

Amendment protection. Chaplinsky v New Hampshire, 

315 U.S. 568 (1942). “Insulting” words, which “by their 

very utterance inflict injury” are part of the “limited 

classes of speech, the prevention and punishment of 

which have never been thought to raise any Constitutional problem.” Id. at 571-72. To whatever extent “disparaging” speech differs from “insulting” speech, its value is not 

much greater. 

Additionally, any minimal value disparaging speech 

might offer in the marketplace of ideas is far diminished 

in the marketplace of goods and services, which is the 

only context at issue in this appeal. One can hardly 

imagine what legitimate interest a vendor of goods or 

services may have in insulting potential customers. 

Whatever value disparaging speech might possess when 

used in private life, it loses when used in commerce.

When we balance the government’s substantial interest in the orderly flow of commerce against the modest 

imposition of § 2(a) on a narrowly tailored portion of 

particularly low-value speech, the standards of intermediate scrutiny are satisfied. Whatever modest imposition 

the statute makes on the free flow of public discourse, it is 

nothing more than an “incidental restriction on First 

Amendment freedom [that] is no greater than is essential 

to the furtherance of the governmental interest” in the 

orderly flow of commerce. See Barnes, 501 U.S. at 561. 

For the foregoing reasons, I believe that § 2(a) is constitutional. I respectfully dissent.