  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., Hack-
ensack, NJ, argued for appellant. Also represented by
JOEL GEOFFREY MACMULL; JOHN C. CONNELL, Had-
donfield, NJ; DARTH M. NEWMAN, Martin Law Firm LLC,
Pittsburgh, PA.

    DANIEL TENNY, Appellate Staff, Civil Division, United
States Department of Justice, Washington, DC, argued
for appellee Michelle K. Lee. Also represented by
BENJAMIN C. MIZER, MARK R. FREEMAN, JOSHUA MARC
SALZMAN; NATHAN K. KELLEY, THOMAS W. KRAUSE, MOLLY
R. SILFEN, CHRISTINA HIEBER, THOMAS L. CASAGRANDE,
Office of the Solicitor, United States Patent and Trade-
mark Office, Alexandria, VA.

   LEE ROWLAND, Speech, Privacy & Technology, Ameri-
can Civil Liberties Union Foundation, New York, NY,
argued for amici curiae American Civil Liberties Union,
2                                               IN RE TAM




American Civil Liberties Union of Oregon, American Civil
Liberties Union of the National Capital Area. Also repre-
sented by ESHA BHANDARI, BRETT MAX KAUFMAN; ARTHUR
B. SPITZER, American Civil Liberties Union of the Nation-
al Capital Area, Washington, DC; MATHEW W. DOS
SANTOS, ACLU of Oregon, Portland, OR.

   JEFFREY JOSEPH LOPEZ, Drinker Biddle & Reath LLP,
Washington, DC, for amici curiae Amanda Blackhorse,
Marcus Briggs-Cloud, Phillip Gover, Jillian Pappan,
Courtney Tsotigh. Also represented by JESSE A. WITTEN.

    MEGAN LEEF BROWN, Wiley Rein, LLP, Washington,
DC, for amici curiae Cato Institute, The Rutherford
Institute. Also represented by CHRISTOPHER J. KELLY,
JOSHUA S. TURNER, JENNIFER L. ELGIN, DWAYNE D. SAM;
Cato Institute also represented by ILYA SHAPIRO, Cato
Institute, Washington DC; The Rutherford Institute also
represented by DOUGLAS R. MCKUSICK, JOHN W.
WHITEHEAD, Charlottesville, VA.

    MARC J. RANDAZZA, Randazza Legal Group, Las Ve-
gas, NV, for amicus curiae First Amendment Lawyers
Association. Also represented by RONALD D. GREEN, JR.

    CHARANJIT BRAHMA, Troutman Sanders LLP, San
Francisco, CA, for amici curiae Fred T. Korematsu Center
for Law and Equality, National Asian Pacific American
Bar Association, South Asian Bar Association of Washing-
ton, DC. National Asian Pacific American Bar Association
also represented by GEORGE C. CHEN, Bryan Cave LLP,
Phoenix, AZ.

   HUGH C. HANSEN, Fordham University School of Law,
New York, NY, as amicus curiae pro se.

    LAWRENCE KURT NODINE, Ballard Spahr LLP, Atlan-
ta, GA, for amicus curiae International Trademark Asso-
IN RE TAM                                                 3



ciation. Also represented by ROBERT D. CARROLL, Goodwin
Procter LLP, Boston, MA.

    ROBERT LLOYD RASKOPF, Quinn Emanuel Urquhart &
Sullivan, LLP, New York, NY, for amicus curiae Pro-
Football, Inc. Also represented by SANFORD IAN
WEISBURST, TODD ANTEN.

    PHILLIP R. MALONE, Juelsgaard Intellectual Property
and Innovation Clinic, Mills Legal Clinic, Stanford Law
School, Stanford, CA, for amicus curiae Public Knowledge.
Also represented by JEFFREY THEODORE PEARLMAN.

     RICHARD L. STANLEY, Law Office of Richard L. Stan-
ley, Houston TX, for amicus curiae Richard L. Stanley.
                 ______________________
   Before PROST, Chief Judge, NEWMAN, LOURIE, DYK,
 MOORE, O’MALLEY, REYNA, WALLACH, TARANTO, CHEN,
        HUGHES, and STOLL, Circuit Judges.
 Opinion for the court filed by Circuit Judge MOORE, in
 which Chief Judge PROST and Circuit Judges NEWMAN,
  O’MALLEY, WALLACH, TARANTO, CHEN, HUGHES, and
                       STOLL join.
 Concurring opinion filed by Circuit Judge O’MALLEY, in
          which Circuit Judge WALLACH joins.
Opinion concurring in part and dissenting in part filed by
 Circuit Judge DYK, in which Circuit Judges LOURIE and
    REYNA join with respect to parts I, II, III, and IV.
    Dissenting opinion filed by Circuit Judge LOURIE.
    Dissenting opinion filed by Circuit Judge REYNA.
MOORE, Circuit Judge.
   Section 2(a) of the Lanham Act bars the Patent and
Trademark Office (“PTO”) from registering scandalous,
immoral, or disparaging marks. 15 U.S.C. § 1052(a). The
4                                                IN RE TAM




government enacted this law—and defends it today—
because it disapproves of the messages conveyed by
disparaging marks. It is a bedrock principle underlying
the First Amendment that the government may not
penalize private speech merely because it disapproves of
the message it conveys. That principle governs even
when the government’s message-discriminatory penalty is
less than a prohibition.
    Courts have been slow to appreciate the expressive
power of trademarks. Words—even a single word—can be
powerful. Mr. Simon Shiao Tam named his band THE
SLANTS to make a statement about racial and cultural
issues in this country. With his band name, Mr. Tam
conveys more about our society than many volumes of
undisputedly protected speech. Another rejected mark,
STOP THE ISLAMISATION OF AMERICA, proclaims
that Islamisation is undesirable and should be stopped.
Many of the marks rejected as disparaging convey hurtful
speech that harms members of oft-stigmatized communi-
ties. But the First Amendment protects even hurtful
speech.
    The government cannot refuse to register disparaging
marks because it disapproves of the expressive messages
conveyed by the marks. It cannot refuse to register marks
because it concludes that such marks will be disparaging
to others. The government regulation at issue amounts to
viewpoint discrimination, and under the strict scrutiny
review appropriate for government regulation of message
or viewpoint, we conclude that the disparagement pro-
scription of § 2(a) is unconstitutional. Because the gov-
ernment has offered no legitimate interests justifying
§ 2(a), we conclude that it would also be unconstitutional
under the intermediate scrutiny traditionally applied to
regulation of the commercial aspects of speech. We there-
fore vacate the Trademark Trial and Appeal Board’s
(“Board”) holding that Mr. Tam’s mark is unregistrable,
IN RE TAM                                               5



and remand this case to the Board for further proceed-
ings.
                      BACKGROUND
                 I.   The Lanham Act
    Congress enacted the Lanham Act in 1946 to provide
a national system for registering and protecting trade-
marks used in interstate and foreign commerce. Con-
gress’s purpose in enacting the Lanham Act was to
advance the two related goals of trademark law. First,
the purpose of the Lanham Act is to “protect the public so
it may be confident that, in purchasing a product bearing
a particular trade-mark which it favorably knows, it will
get the product which it asks for and wants to get.” Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 782 n.15
(1992) (Stevens, J., concurring) (quoting S. Rep. No. 79-
1333, at 3 (1946)). Second, the Lanham Act ensures that
a markholder can protect “his investment from . . . misap-
propriation by pirates and cheats.” Id.; see also Inwood
Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 n.14
(1982) (“By applying a trademark to goods produced by
one other than the trademark’s owner, the infringer
deprives the owner of the goodwill which he spent energy,
time, and money to obtain. At the same time, the infring-
er deprives consumers of their ability to distinguish
among the goods of competing manufacturers.” (citations
omitted)).
    “Registration is significant. The Lanham Act confers
important legal rights and benefits on trademark owners
who register their marks.” B&B Hardware, Inc. v. Hargis
Ind., Inc., 135 S. Ct. 1293, 1300 (2015) (quotation marks
omitted). These benefits—unavailable in the absence of
federal registration—are numerous, and include both
substantive and procedural rights. The holder of a federal
trademark has a right to exclusive nationwide use of that
mark where there was no prior use by others. See 15
U.S.C. §§ 1072, 1115. Because the common law grants a
6                                                 IN RE TAM




markholder the right to exclusive use only in the geo-
graphic areas where he has actually used his mark, see 5
J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 26:32 (4th ed.) (hereinafter “McCar-
thy”), holders of a federally registered trademark have an
important substantive right they could not otherwise
obtain. Also, a registered mark is presumed to be valid,
15 U.S.C. § 1057(b), and the mark becomes incontestable
(with certain exceptions) after five years of consecutive
post-registration use, id. § 1065; see also B&B Hardware,
135 S. Ct. at 1310 (“Incontestability is a powerful protec-
tion.”). A markholder may sue in federal court to enforce
his trademark, 15 U.S.C. § 1121, and he may recover
treble damages if he can show infringement was willful,
id. § 1117. He may also obtain the assistance of U.S.
Customs and Border Protection in restricting importation
of infringing or counterfeit goods, id. § 1124, 19 U.S.C.
§ 1526, prevent “cybersquatters” from misappropriating
his domain name, 15 U.S.C. § 1125(d), and qualify for a
simplified process for obtaining recognition and protection
of his mark in countries that have signed the Paris Con-
vention, see id. § 1141b (Madrid Protocol); Paris Conven-
tion for the Protection of Industrial Property art.
6quinquies, July 14, 1967, 21 U.S.T. 1583, 828 U.N.T.S.
305. Lastly, registration operates as a complete defense
to state or common law claims of trademark dilution. 15
U.S.C. § 1125(c)(6).
    Under the Lanham Act, the PTO must register
source-identifying trademarks unless the mark falls into
one of several categories of marks precluded from regis-
tration. Id. § 1052 (“No trademark by which the goods of
the applicant may be distinguished from the goods of
others shall be refused registration on the principal regis-
ter on account of its nature unless . . . .” (emphasis add-
ed)). Many of these categories bar the registration of
deceptive or misleading speech, because such speech
actually undermines the interests served by trademark
IN RE TAM                                                   7



protection and, thus, the Lanham Act’s purposes in
providing for registration. For example, a mark may not
be registered if it resembles a registered mark such that
its use is likely to “cause confusion, or to cause mistake, or
to deceive,” § 2(d), or if it is “deceptively misdescriptive,”
§ 2(e). These restrictions on registration of deceptive
speech do not run afoul of the First Amendment. See
Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm’n,
447 U.S. 557, 563 (1980) (“The government may ban
forms of communication more likely to deceive the public
than to inform it.”); see also Friedman v. Rogers, 440 U.S.
1, 13, 15–16 (1979); Ohralik v. Ohio State Bar Ass’n, 436
U.S. 447, 462–63 (1978).
     Section 2(a), however, is a hodgepodge of restrictions.
Among them is the bar on registration of a mark that
“[c]onsists of or comprises immoral, deceptive, or scandal-
ous matter; or matter which may disparage or falsely
suggest a connection with persons, living or dead, institu-
tions, beliefs, or national symbols, or bring them into
contempt or disrepute.” Section 2(a) contains proscrip-
tions against deceptive speech, for example, the prohibi-
tion on deceptive matter or the prohibition on falsely
suggesting a connection with a person or institution. But
other restrictions in § 2(a) differ in that they are based on
the expressive nature of the content, such as the ban on
marks that may disparage persons or are scandalous or
immoral. These latter restrictions cannot be justified on
the basis that they further the Lanham Act’s purpose in
preventing consumers from being deceived. These exclu-
sions from registration do not rest on any judgment that
the mark is deceptive or likely to cause consumer confu-
sion, nor do they protect the markholder’s investment in
his mark. They deny the protections of registration for
reasons quite separate from any ability of the mark to
serve the consumer and investment interests underlying
trademark protection. In fact, § 2(a)’s exclusions can
undermine those interests because they can even be
8                                                  IN RE TAM




employed in cancellation proceedings challenging a mark
many years after its issuance and after the markholder
has invested millions of dollars protecting its brand
identity and consumers have come to rely on the mark as
a brand identifier.
    This case involves the disparagement provision of
§ 2(a). 1 Section 2(a)’s ban on the federal registration of
“immoral” or “scandalous” marks originated in the trade-
mark legislation of 1905. See Act of Feb. 20, 1905,
ch. 592, § 5(a), 33 Stat. 724, 725. The provision barring
registration based on disparagement first appeared in the
Lanham Act in 1946. Pub. L. 79-489, § 2(a), 60 Stat. 427,
428 (codified at 15 U.S.C. § 1052(a)). It had no roots in
the earlier trademark statute or the common law. There
were few marks rejected under the disparagement provi-
sion following enactment of the Lanham Act. Only in the
last several decades has the disparagement provision
become a more frequent ground of rejection or cancella-
tion of trademarks. Marks that the PTO has found to be
disparaging include: REDSKINS, Pro-Football, Inc. v.
Blackhorse, No. 1-14-CV-01043-GBL, 2015 WL 4096277
(E.D. Va. July 8, 2015) (2014 PTO cancellation determina-



    1    We limit our holding in this case to the constitu-
tionality of the § 2(a) disparagement provision. Recogniz-
ing, however, that other portions of § 2 may likewise
constitute government regulation of expression based on
message, such as the exclusions of immoral or scandalous
marks, we leave to future panels the consideration of the
§ 2 provisions other than the disparagement provision at
issue here. To be clear, we overrule In re McGinley, 660
F.2d 481 (C.C.P.A. 1981), and other precedent insofar as
they could be argued to prevent a future panel from
considering the constitutionality of other portions of § 2 in
light of the present decision.
IN RE TAM                                                9



tion currently on appeal in Fourth Circuit); STOP THE
ISLAMISATION OF AMERICA, In re Geller, 751 F.3d
1355 (Fed. Cir. 2014); THE CHRISTIAN PROSTITUTE
(2013); AMISHHOMO (2013); MORMON WHISKEY
(2012); KHORAN for wine, In re Lebanese Arak Corp., 94
U.S.P.Q.2d 1215 (T.T.A.B. Mar. 4, 2010); HAVE YOU
HEARD THAT SATAN IS A REPUBLICAN? (2010);
RIDE     HARD      RETARD       (2009);   ABORT      THE
REPUBLICANS (2009); HEEB, In re Heeb Media, LLC,
89 U.S.P.Q.2d 1071 (T.T.A.B. Nov. 26, 2008); SEX ROD,
Bos. Red Sox Baseball Club L.P. v. Sherman, 88
U.S.P.Q.2d 1581 (T.T.A.B. Sept. 9, 2008) (sustaining an
opposition on multiple grounds, including disparage-
ment); MARRIAGE IS FOR FAGS (2008); DEMOCRATS
SHOULDN’T         BREED       (2007);    REPUBLICANS
SHOULDN’T BREED (2007); 2 DYKE MINIMUM (2007);
WET BAC/WET B.A.C. (2007); URBAN INJUN (2007);
SQUAW VALLEY, In re Squaw Valley Dev. Co., 80
U.S.P.Q.2d 1264 (T.T.A.B. June 2, 2006); DON’T BE A
WET BACK (2006); FAGDOG (2003); N.I.G.G.A.
NATURALLY INTELLIGENT GOD GIFTED AFRICANS
(1996); a mark depicting a defecating dog, Greyhound
Corp. v. Both Worlds, Inc., 6 U.S.P.Q.2d 1635 (T.T.A.B.
Mar. 30, 1988) (found to disparage Greyhound’s trade-
marked running dog logo); an image consisting of the
national symbol of the Soviet Union with an “X” over it, In
re Anti-Communist World Freedom Cong., Inc., 161
U.S.P.Q. 304 (T.T.A.B. Feb. 24, 1969); DOUGH-BOY for
“a prophylactic preparation for the prevention of venereal
diseases,” Doughboy Indus., Inc. v. Reese Chem. Co., 88
U.S.P.Q. 227 (T.T.A.B. Jan. 25, 1951).
    A disparaging mark is a mark which “dishonors by
comparison with what is inferior, slights, deprecates,
degrades, or affects or injures by unjust comparison.”
Geller, 751 F.3d at 1358 (alterations omitted). To deter-
mine if a mark is disparaging under § 2(a), a trademark
examiner of the PTO considers:
10                                                  IN RE TAM




     (1) What is the likely meaning of the matter in
     question, taking into account not only dictionary
     definitions, but also the relationship of the matter
     to the other elements in the mark, the nature of
     the goods or services, and the manner in which
     the mark is used in the marketplace in connection
     with the goods or services; and
     (2) If that meaning is found to refer to identifiable
     persons, institutions, beliefs or national symbols,
     whether that meaning may be disparaging to a
     substantial composite of the referenced group.
Trademark       Manual    of   Exam.     Proc.    (“TMEP”)
§ 1203.03(b)(i) (Jan. 2015 ed.) (citing Geller, 751 F.3d at
1358). If the examiner “make[s] a prima facie showing
that a substantial composite, although not necessarily a
majority, of the referenced group would find the proposed
mark, as used on or in connection with the relevant goods
or services, to be disparaging in the context of contempo-
rary attitudes,” the burden shifts to the applicant for
rebuttal. Id. If the applicant fails to rebut the prima
facie case of disparagement, the examiner refuses to
register the mark. The Trademark Manual of Examining
Procedure does not require an examiner who finds a mark
disparaging to consult her supervisor or take any further
steps to ensure the provision is applied fairly and consist-
ently across the agency. Compare TMEP § 1203.03 (no
discussion of action to take if examiner finds mark dis-
paraging), with TMEP § 1203.01 (requiring examiner who
finds a mark scandalous or immoral to consult his super-
visor). A single examiner, with no input from her super-
visor, can reject a mark as disparaging by determining
that it would be disparaging to a substantial composite of
the referenced group.
                 II.   Facts of This Case
   Mr. Tam is the “front man” for the Asian-American
dance-rock band The Slants. Mr. Tam named his band
IN RE TAM                                               11



The Slants to “reclaim” and “take ownership” of Asian
stereotypes. J.A. 129–30. The band draws inspiration for
its lyrics from childhood slurs and mocking nursery
rhymes, J.A. 130, and its albums include “The Yellow
Album” and “Slanted Eyes, Slanted Hearts.” The band
“feel[s] strongly that Asians should be proud of their
cultural heri[ta]ge, and not be offended by stereotypical
descriptions.” J.A. 52. With their lyrics, performances,
and band name, Mr. Tam and his band weigh in on cul-
tural and political discussions about race and society that
are within the heartland of speech protected by the First
Amendment.
    On November 14, 2011, Mr. Tam filed the instant ap-
plication (App. No. 85/472,044) seeking to register the
mark THE SLANTS for “Entertainment in the nature of
live performances by a musical band,” based on his use of
the mark since 2006. 2 The examiner refused to register
Mr. Tam’s mark, finding it likely disparaging to “persons
of Asian descent” under § 2(a). The examiner found that
the mark likely referred to people of Asian descent in a
disparaging way, explaining that the term “slants” had “a
long history of being used to deride and mock a physical
feature” of people of Asian descent. J.A. 42. And even
though Mr. Tam may have chosen the mark to “reappro-
priate the disparaging term,” the examiner found that a




   2    This is Mr. Tam’s second application for the mark
THE SLANTS.          In 2010, Mr. Tam filed App.
No. 77/952,263 seeking to register the mark for “Enter-
tainment, namely, live performances by a musical band.”
The examiner found the mark disparaging to people of
Asian descent under § 2(a) and therefore refused to regis-
ter it. Mr. Tam appealed that refusal to the Board, but
the case was dismissed for failure to file a brief.
12                                               IN RE TAM




substantial composite of persons of Asian descent would
find the term offensive. J.A. 43.
   The Board affirmed the examiner’s refusal to register
the mark. The Board wrote that “it is abundantly clear
from the record not only that THE SLANTS . . . would
have the ‘likely meaning’ of people of Asian descent but
also that such meaning has been so perceived and has
prompted significant responses by prospective attendees
or hosts of the band’s performances.”         In re Tam,
No. 85472044, 2013 WL 5498164, at *5 (T.T.A.B. Sept. 26,
2013) (“Board Opinion”). To support its finding that the
mark likely referred to people of Asian descent, the Board
pointed to dictionary definitions, the band’s website,
which displayed the mark next to “a depiction of an Asian
woman, utilizing rising sun imagery and using a stylized
dragon image,” and a statement by Mr. Tam that he
selected the mark in order to “own” the stereotype it
represents. Id. The Board also found that the mark is
disparaging to a substantial component of people of Asian
descent because “[t]he dictionary definitions, reference
works and all other evidence unanimously categorize the
word ‘slant,’ when meaning a person of Asian descent, as
disparaging,” and because there was record evidence of
individuals and groups in the Asian community objecting
to Mr. Tam’s use of the word. Id. at *7. The Board there-
fore disqualified the mark for registration under § 2(a).
   Mr. Tam appealed, arguing that the Board erred in
finding the mark disparaging and that § 2(a) is unconsti-
tutional. On appeal, a panel of this Court affirmed the
Board determination that the mark is disparaging. 3 In re
Tam, 785 F.3d 567, 570–71 (Fed. Cir. 2015) (“Panel Opin-


     3 We reinstate the panel’s holding that Mr. Tam’s
mark is disparaging.
IN RE TAM                                                13



ion”), reh’g en banc granted, opinion vacated, 600 F. App’x
775 (Fed. Cir. 2015) (“En Banc Order”). Although the
term “slants” has several meanings, the panel found that
substantial evidence supported the Board’s finding that
the mark likely refers to people of Asian descent. Panel
Op. at 570–71. This included an article in which Mr. Tam
described the genesis of the band’s name by explaining: “I
was trying to think of things that people associate with
Asians. Obviously, one of the first things people say is
that we have slanted eyes. . . .” Id. at 570 (quoting J.A.
130). Moreover, the band’s Wikipedia page stated that
the band’s name is “derived from an ethnic slur for
Asians.” Id. (quoting J.A. 57). The Wikipedia entry
quoted Mr. Tam: “We want to take on these stereotypes
that people have about us, like the slanted eyes, and own
them. We’re very proud of being Asian—we’re not going
to hide that fact. The reaction from the Asian community
has been positive.” J.A. 57. The record included an image
from the band’s website in which the mark THE SLANTS
is set against Asian imagery. Id. (citing J.A. 59). Finally,
the record included unrebutted evidence that both indi-
viduals and Asian groups have perceived the term as
referring to people of Asian descent. Id. at 570–71 (citing,
e.g., J.A. 95 (“[Mr. Tam] was initially slated to give the
keynote address at the 2009 Asian American Youth
Leadership Conference in Portland. But some conference
supporters and attendees felt the name of the band was
offensive and racist, and out of respect for these opinions
the conference organizers decided to choose someone less
controversial.”)).
    The panel also found that substantial evidence sup-
ported the Board’s finding that the mark is disparaging to
a substantial composite of people of Asian descent. Panel
Op. at 571. It noted that the definitions in evidence
universally characterize the word “slant” as disparaging,
offensive, or an ethnic slur when used to refer to a person
of Asian descent, including the dictionary definitions
14                                                   IN RE TAM




provided by Mr. Tam. Id. The record also included a
brochure published by the Japanese American Citizens
League describing the term “slant,” when used to refer to
people of Asian descent, as a “derogatory term” that is
“demeaning” and “cripple[s] the spirit.” Id. (quoting J.A.
48–49). Finally, the record included news articles and
blog posts discussing the offensive nature of the band’s
name. Id. (citing Board Op. at *2–3; J.A. 45, 51, 94–98,
100).
    Having found the mark disparaging under § 2(a), the
panel held that binding precedent foreclosed Mr. Tam’s
arguments that § 2(a) is unconstitutional, including Mr.
Tam’s argument that § 2(a) violates the First Amendment
on its face. Panel Op. at 572–73. As the panel explained,
in McGinley, our predecessor court held that the refusal to
register a mark under § 2(a) does not bar the applicant
from using the mark, and therefore does not implicate the
First Amendment. Id. at 572 (citing In re McGinley, 660
F.2d 481, 484 (C.C.P.A. 1981)). The entirety of the
McGinley analysis was:
     With respect to appellant’s First Amendment
     rights, it is clear that the PTO’s refusal to register
     appellant’s mark does not affect his right to use it.
     No conduct is proscribed, and no tangible form of
     expression is suppressed. Consequently, appel-
     lant’s First Amendment rights would not be
     abridged by the refusal to register his mark.
660 F.2d at 484 (citations omitted). In subsequent cases,
panels of this Court relied on the holding in McGinley.
See In re Fox, 702 F.3d 633, 635 (Fed. Cir. 2012); In re
Boulevard Entm’t, Inc., 334 F.3d 1336, 1343 (Fed. Cir.
2003); In re Mavety Media Grp., 33 F.3d 1367, 1374 (Fed.
Cir. 1994). Additional views by the panel’s authoring
judge questioned whether the en banc court should recon-
sider the constitutionality of § 2(a) en banc. Panel Op. at
573–85 (Moore, J., additional views).
IN RE TAM                                                15



    More than thirty years have passed since the decision
in McGinley, and in that time both the McGinley decision
and our reliance on it have been widely criticized. 4 Id. at


   4    See, e.g., Ritchie v. Simpson, 170 F.3d 1092, 1103
& n.1 (Fed. Cir. 1999) (Newman, J., dissenting); Pro-
Football Inc. v. Harjo, No. 99-1385 (CKK), 2000 WL
1923326, at *4 (D.D.C. Dec. 11, 2000); Stephen Baird,
Moral Intervention in the Trademark Arena: Banning the
Registration of Scandalous and Immoral Trademarks, 83
TRADEMARK REPORTER 661, 685–86 (1993); Justin G.
Blankenship, The Cancellation of Redskins as a Disparag-
ing Trademark: Is Federal Trademark Law an Appropri-
ate Solution for Words That Offend?, 72 U. COLO. L. REV.
415, 443–44 (2001); Terence Dougherty, Group Rights to
Cultural Survival: Intellectual Property Rights in Native
American Cultural Symbols, 29 COLUM. HUM. RTS. L. REV.
355, 383 (1998); Bruce C. Kelber, “Scalping the Redskins:”
Can Trademark Law Start Athletic Teams Bearing Native
American Nicknames and Images on the Road to Racial
Reform?, 17 HAMLINE L. REV. 533, 556 (1994); Paul Ku-
ruk, Goading a Reluctant Dinosaur: Mutual Recognition
Agreements as a Policy Response to the Misappropriation
of Foreign Traditional Knowledge in the United States, 34
PEPP. L. REV. 629, 662 n.209 (2007); Michelle B. Lee,
Section 2(a) of the Lanham Act as a Restriction on Sports
Team Names: Has Political Correctness Gone Too Far?, 4
SPORTS L.J. 65, 66–67 (1997); Jeffrey Lefstin, Does the
First Amendment Bar Cancellation of Redskins?, 52 STAN.
L. REV. 665, 676–77 (2000); Nell Jessup Newton, Memory
and Misrepresentation: Representing Crazy Horse, 27
CONN. L. REV. 1003, 1030 n.109 (1995); Ron Phillips, A
Case for Scandal and Immorality: Proposing Thin Protec-
tion of Controversial Trademarks, 17 U. BALT. INTELL.
PROP. L.J. 55, 67–68 (2008); Jendi Reiter, Redskins and
Scarlet Letters: Why “Immoral” and “Scandalous” Trade-
16                                                IN RE TAM




573–74. Furthermore, the McGinley analysis was curso-
ry, without citation to legal authority, and decided at a
time when the First Amendment had only recently been
applied to commercial speech. Id. at 574, 581 (citing Cent.
Hudson, 447 U.S. at 566). First Amendment jurispru-
dence on the unconstitutional conditions doctrine and the
protection accorded to commercial speech has evolved
significantly since the McGinley decision. Id. at 574; see
also id. at 574–580 (describing evolution of commercial
speech doctrine and unconstitutional conditions doctrine).
     Other courts’ reliance on the reasoning in McGinley
further reinforces the importance of taking this case en
banc. Without analysis, the Fifth Circuit wrote that “[w]e
join our sister circuit in rejecting [the applicant’s] argu-
ment that prohibiting him from registering a mark with
the PTO violates his [F]irst [A]mendment rights.” Test
Masters Educ. Servs., Inc. v. Singh, 428 F.3d 559, 578 n.9
(5th Cir. 2005). And a district court in the Eastern Dis-
trict of Virginia relied upon McGinley when it concluded
that the cancellation of trademark registrations under
§ 2(a) did not implicate the First Amendment. Pro-
Football, Inc., 2015 WL 4096277, at *8–10 (“[T]he Court
agrees with the Federal Circuit and Fifth Circuit and
holds that Section 2(a) of the Lanham Act does not impli-
cate the First Amendment.”).
    For these reasons, we sua sponte ordered rehearing
en banc. We asked the parties to file briefs on the follow-
ing issue:




marks Should Be Federally Registrable, 6 FED. CIR. BAR.
J. 191, 197 (1996); Lilit Voskanyan, The Trademark
Principal Register as a Nonpublic Forum, 75 U. CHI. L.
REV. 1295, 1302 (2008).
IN RE TAM                                                  17



      Does the bar on registration of disparaging marks
      in 15 U.S.C. § 1052(a) violate the First Amend-
      ment?
En Banc Order at 775. In addition to the parties’ briefs,
we received ten amicus briefs. We heard oral argument
on October 2, 2015.
                        DISCUSSION
 I.      Section 2(a)’s Denial of Important Legal Rights to
         Private Speech Based on Disapproval of the Mes-
         sage Conveyed Is Subject to, and Cannot Survive,
                           Strict Scrutiny
    Strict scrutiny is used to review any governmental
regulation that burdens private speech based on disap-
proval of the message conveyed. Section 2(a), which
denies important legal rights to private speech on that
basis, is such a regulation. It is therefore subject to strict
scrutiny. It is undisputed that it cannot survive strict
scrutiny.
 A. The Disparagement Provision, Which Discriminates
   Based on Disapproval of the Message, Is Not Content
                 or Viewpoint Neutral
     “Content-based regulations are presumptively inva-
lid.” R.A.V. v. City of St. Paul, 505 U.S. 377, 382 (1992);
see also Ashcroft v. ACLU, 542 U.S. 656, 660 (2004).
“Content-based laws—those that target speech based on
its communicative content—are presumptively unconsti-
tutional and may be justified only if the government
proves that they are narrowly tailored to serve compelling
state interests.” Reed v. Town of Gilbert, 135 S. Ct. 2218,
2226 (2015); see also Police Dep’t of Chi. v. Mosley, 408
U.S. 92, 95 (1972) (“[A]bove all else, the First Amendment
means that the government has no power to restrict
expression because of its message, its ideas, its subject
matter, or its content.”). A message is content based even
when its reach is defined simply by the topic (subject
18                                                IN RE TAM




matter) of the covered speech. See Reed, 135 S. Ct. at
2230.
    Viewpoint-based regulations, targeting the substance
of the viewpoint expressed, are even more suspect. They
are recognized as a particularly “egregious form of content
discrimination,” id., though they have sometimes been
discussed without being cleanly separated from topic
discrimination, see, e.g., Mosley, 408 U.S. at 95. Such
measures “raise[] the specter that the government may
effectively drive certain ideas or viewpoints from the
marketplace.” Simon & Schuster, Inc. v. Members of N.Y.
State Crime Victims Bd., 502 U.S. 105, 116 (1991); see
also Sorrell v. IMS Health Inc., 131 S. Ct. 2653, 2667
(2011); Rosenberger v. Rector & Visitors of Univ. of Va.,
515 U.S. 819, 828 (1995). “The First Amendment requires
heightened scrutiny whenever the government creates ‘a
regulation of speech because of disagreement with the
message it conveys.’” Sorrell, 131 S. Ct. at 2664 (quoting
Ward v. Rock Against Racism, 491 U.S. 781, 791 (1989)).
This is true whether the regulation bans or merely bur-
dens speech. “[H]eightened judicial scrutiny is warrant-
ed” when an act “is designed to impose a specific, content-
based burden on protected expression.” Id.; see also
Rosenberger, 515 U.S. at 828 (“[T]he government offends
the First Amendment when it imposes financial burdens
on certain speakers based on the content of their expres-
sion.”). “The distinction between laws burdening and
laws banning speech is but a matter of degree. The
Government’s content-based burdens must satisfy the
same rigorous scrutiny as its content-based bans.” United
States v. Playboy Entm’t Grp., Inc., 529 U.S. 803, 812
(2000). “Lawmakers may no more silence unwanted
speech by burdening its utterance than by censoring its
content.” Sorrell, 131 S. Ct. at 2664; see also infra at 27–
38.
    It is beyond dispute that § 2(a) discriminates on the
basis of content in the sense that it “applies to particular
IN RE TAM                                                19



speech because of the topic discussed.” Reed, 135 S. Ct. at
2227. Section 2(a) prevents the registration of disparag-
ing marks—it cannot reasonably be argued that this is
not a content-based restriction or that it is a content-
neutral regulation of speech. And the test for disparage-
ment—whether a substantial composite of the referenced
group would find the mark disparaging—makes clear that
it is the nature of the message conveyed by the speech
which is being regulated. If the mark is found disparag-
ing by the referenced group, it is denied registration.
“Listeners’ reaction to speech is not a content-neutral
basis for regulation.” Forsyth Cty. v. Nationalist Move-
ment, 505 U.S. 123, 134 (1992).
    And § 2(a) does more than discriminate on the basis of
topic. It also discriminates on the basis of message con-
veyed, “the idea or message expressed,” Reed, 135 S. Ct.
at 2227; it targets “viewpoints [in] the marketplace,”
Simon & Schuster, 502 U.S. at 116. It does so as a matter
of avowed and undeniable purpose, and it does so on its
face. 5



   5     Both parties agree that this appeal is appropriate-
ly viewed as involving a facial challenge. A law is facially
invalid if “a substantial number of its applications are
unconstitutional, judged in relation to the statute’s plain-
ly legitimate sweep.” Wash. State Grange v. Wash. State
Republican Party, 552 U.S. 442, 449 n.6 (2008) (internal
quotation marks omitted). In other words, to succeed in
his facial challenge, Mr. Tam must “demonstrate a sub-
stantial risk that application of the provision will lead to
the suppression of speech.” Nat’l Endowment for the Arts
v. Finley, 524 U.S. 569, 580 (1998). The marks refused
registration under the disparagement provision are
protected speech. And the government refused to register
all of these marks because it found they convey a dispar-
20                                                  IN RE TAM




    First, the government enacted and continues to de-
fend § 2(a) “because of disagreement with the message
[disparaging marks] convey[].” Sorrell, 131 S. Ct. at 2664.
When the government refuses to register a mark under
§ 2(a), it does so because it disapproves of “the message a
speaker conveys” by the mark. Reed, 135 S. Ct. at 2227.
Underscoring its hostility to these messages, the govern-
ment repeatedly asserts in its briefing before this court
that it ought to be able to prevent the registration of “the
most vile racial epithets and images,” Appellee’s En Banc
Br. 1, and “to dissociate itself from speech it finds odious,”
id. 41. The legislative history of § 2(a) reinforces this
conclusion. See Hearings on H.R. 4744 Before the Sub-
comm. on Trademarks of the House Comm. on Patents,
76th Cong., 1st Sess. 18–21 (1939) (statement of Rep.
Thomas E. Robertson) (Rep. Maroney) (“[W]e would not
want to have Abraham Lincoln gin.”); id. (Rep. Rogers)
(stating that a mark like “Abraham Lincoln gin ought not
to be used,” and that § 2(a) “would take care of [such]
abuses”). From its enactment in 1946 through its defense
of the statute today, the government has argued that the


aging message. More than a “substantial number” of
§ 2(a)’s applications of the disparagement provision rest
on disapproval of the expressive message conveyed—every
rejection under the disparagement provision is a message-
based denial of otherwise-available legal rights. Thus, we
conclude that § 2(a) is invalid on its face. That conclusion
follows from the standards for First Amendment facial
invalidation and also fits the rationale for those stand-
ards: it avoids maintaining on the books a rule that
called for case-by-case litigation over particular marks,
based on speakers’ intent and government interests or
other factors, which would threaten to produce the very
chilling effect that First Amendment facial-invalidity
standards condemn.
IN RE TAM                                              21



prohibited marks ought not to be registered because of the
messages the marks convey. When the government
discriminates against speech because it disapproves of the
message conveyed by the speech, it discriminates on the
basis of viewpoint. Sorrell, 131 S. Ct. at 2664.
    The legal significance of viewpoint discrimination is
the same whether the government disapproves of the
message or claims that some part of the populace will
disapprove of the message. This point is recognized in the
Supreme Court’s long-standing condemnation of govern-
ment impositions on speech based on adverse reactions
among the public. See, e.g., Snyder v. Phelps, 562 U.S.
443, 460–61 (2011); R.A.V., 505 U.S. 377; Texas v. John-
son, 491 U.S. 397, 414 (1989).
    Second, the disparagement provision at issue is view-
point discriminatory on its face. The PTO rejects marks
under § 2(a) when it finds the marks refer to a group in a
negative way, but it permits the registration of marks
that refer to a group in a positive, non-disparaging man-
ner. In this case the PTO refused to register Mr. Tam’s
mark because it found the mark “disparaging” and “objec-
tionable” to people of Asian descent. Tam, 2013 WL
5498164, at *6. But the PTO has registered marks that
refer positively to people of Asian descent. See, e.g.,
CELEBRASIANS, ASIAN EFFICIENCY. Similarly, the
PTO has prohibited the registration of marks that it
found disparaged other groups. See, e.g., Pro-Football,
2015 WL 4096277 (affirming cancellation of REDSKINS);
Geller, 751 F.3d 1355 (affirming rejection of STOP THE
ISLAMISATION OF AMERICA); Lebanese Arak Corp., 94
U.S.P.Q.2d 1215 (refusing to register KHORAN for wine);
Heeb Media, 89 U.S.P.Q.2d 1071 (refusing to register
HEEB); Squaw Valley Dev. Co., 80 U.S.P.Q.2d 1264
(refusing to register SQUAW VALLEY for one class of
goods, but registering it for another). Yet the government
registers marks that refer to particular ethnic groups or
religions in positive or neutral ways—for example,
22                                                  IN RE TAM




NAACP, THINK ISLAM, NEW MUSLIM COOL,
MORMON SAVINGS, JEWISHSTAR, and PROUD 2 B
CATHOLIC.
    The government argues that § 2(a) is viewpoint neu-
tral because it does not eliminate any particular view-
point—only particular words. Appellee’s En Banc Br. 39–
40. It argues that under § 2(a), two marks with diametri-
cally opposed viewpoints will both be refused, so long as
those marks use the same disparaging term. Id. 39–40.
It points to Mr. Tam—who does not seek to express an
anti-Asian viewpoint—as proof. It cites a statement in
R.A.V. that a hypothetical statute that prohibited “odious
racial epithets . . . to proponents of all views” would not be
viewpoint discriminatory. Id. 40 (quoting 505 U.S. at
391); see also Ridley v. Mass. Bay Transp. Auth., 390 F.3d
65, 90–91 (1st Cir. 2004) (holding that “guidelines prohib-
iting demeaning or disparaging ads are themselves view-
point neutral”).
     The R.A.V. statement does not apply here. The gov-
ernment’s starting point—that it rejects marks conveying
diametrically opposed viewpoints, if they contain the
same offensive word—is incorrect. The PTO looks at what
message the referenced group takes from the applicant’s
mark in the context of the applicant’s use, and it denies
registration only if the message received is a negative one.
Thus, an applicant can register a mark if he shows it is
perceived by the referenced group in a positive way, even
if the mark contains language that would be offensive in
another context. For example, the PTO registered the
mark DYKES ON BIKES, U.S. Reg. No. 3,323,803, after
the applicant showed the term was often enough used
with pride among the relevant population. In Squaw
Valley, the Board allowed the registration of the mark
SQUAW VALLEY in connection with one of the applied-
for classes of goods (namely, skiing-related products), but
not in connection with a different class of goods. 80
U.S.P.Q.2d at *22. Section 2(a) does not treat identical
IN RE TAM                                                23



marks the same. A mark that is viewed by a substantial
composite of the referenced group as disparaging is reject-
ed. It is thus the viewpoint of the message conveyed
which causes the government to burden the speech. This
form of regulation cannot reasonably be argued to be
content neutral or viewpoint neutral.
    The government’s argument also fails because denial
of registration under § 2(a) turns on the referenced
group’s perception of a mark. Speech that is offensive or
hostile to a particular group conveys a distinct viewpoint
from speech that carries a positive message about the
group. STOP THE ISLAMISATION OF AMERICA and
THINK ISLAM express two different viewpoints. Under
§ 2(a), one of these viewpoints garners the benefits of
registration, and one does not. The government enacted
§ 2(a), and defends it today, because it is hostile to the
messages conveyed by the refused marks. Section 2(a) is
a viewpoint-discriminatory regulation of speech, created
and applied in order to stifle the use of certain disfavored
messages. Strict scrutiny therefore governs its First
Amendment assessment—and no argument has been
made that the measure survives such scrutiny.
    B. The Disparagement Provision Regulates the Ex-
     pressive Aspects of the Mark, Not Its Function As
                   Commercial Speech
    The government cannot escape strict scrutiny by ar-
guing that § 2(a) regulates commercial speech. True,
trademarks identify the source of a product or service,
and therefore play a role in the “dissemination of infor-
mation as to who is producing and selling what product,
for what reason, and at what price.” Va. State Bd. of
Pharmacy v. Va. Citizens Consumer Council, Inc., 425
U.S. 748, 765 (1976). But they very commonly do much
more than that. And, critically, it is always a mark’s
expressive character, not its ability to serve as a source
identifier, that is the basis for the disparagement exclu-
24                                               IN RE TAM




sion from registration. The disparagement provision
must be assessed under First Amendment standards
applicable to what it targets, which is not the commercial-
speech function of the mark.
     This case exemplifies how marks often have an ex-
pressive aspect over and above their commercial-speech
aspect. Mr. Tam explicitly selected his mark to create a
dialogue on controversial political and social issues. With
his band name, Mr. Tam makes a statement about racial
and ethnic identity. He seeks to shift the meaning of, and
thereby reclaim, an emotionally charged word. He advo-
cates for social change and challenges perceptions of
people of Asian descent. His band name pushes people.
It offends. Despite this—indeed, because of it—Mr. Tam’s
band name is expressive speech.
    Importantly, every time the PTO refuses to register a
mark under § 2(a), it does so because it believes the mark
conveys an expressive message—a message that is dis-
paraging to certain groups. STOP THE ISLAMISATION
OF AMERICA is expressive. In refusing to register the
mark, the Board explained that the “mark’s admonition to
‘STOP’ Islamisation in America ‘sets a negative tone and
signals that Islamization is undesirable and is something
that must be brought to an end in America.’” Geller, 751
F.3d at 1361. And by finding HEEB and SQUAW
VALLEY disparaging, the PTO necessarily did so based
on its finding that the marks convey an expressive mes-
sage over and above their function as source identifiers—
namely, an expressive message disparaging Jewish and
Native American people. It was these expressive messag-
es that the government found objectionable, and that led
the government to refuse to register or to cancel the
marks. In doing so, the government made moral judg-
ments based solely and indisputably on the marks’ ex-
pressive content. Every single time registration is refused
or cancelled pursuant to the disparagement provision, it
is based upon a determination by the government that the
IN RE TAM                                                 25



expressive content of the message is unsuitable because it
would be viewed by the referenced group as disparaging
them.
    “Commercial speech is no exception” to the need for
heightened scrutiny of content-based impositions seeking
to curtail the communication of particular information or
messages. Sorrell, 131 S. Ct. at 2664. Indeed, “[a] con-
sumer’s concern for the free flow of commercial speech
often may be far keener than his concern for urgent
political dialogue.” Id. (internal quotation marks omit-
ted). Strict scrutiny must apply to a government regula-
tion that is directed at the expressive component of
speech. That the speech is used in commerce or has a
commercial component should not change the inquiry
when the government regulation is entirely directed to
the expressive component of the speech. This is not a
government regulation aimed at the commercial compo-
nent of speech. See Va. State Bd. of Pharmacy, 425 U.S.
at 765 (commercial speech involves the “dissemination of
information as to who is producing and selling what
product, for what reason, and at what price”); see id. at
762 (defining “commercial speech” as speech that does “no
more than propose a commercial transaction”); Bd. of Trs.
of State Univ. of N.Y. v. Fox, 492 U.S. 469, 473–74 (1989);
City of Cincinnati v. Discovery Network, Inc., 507 U.S.
410, 423 (1993).
    In R.A.V., the Supreme Court explained the key point:
under First Amendment law, government measures often
affect speech that has a dual character, and when they do,
which First Amendment standard is applicable depends
on which aspect of the speech is targeted by the measure
being reviewed. See 505 U.S. at 385 (“The proposition
that a particular instance of speech can be proscribable on
the basis of one feature (e.g., obscenity) but not on the
basis of another (e.g., opposition to the city government) is
commonplace and has found application in many con-
texts.”). In particular, commercial speech that is “inextri-
26                                                IN RE TAM




cably intertwined” with expressive speech is treated as
expressive speech under the First Amendment when the
expressive aspect is being regulated. Riley v. Nat’l Fed’n
of the Blind, 487 U.S. 781, 796 (1988). Here, § 2(a) tar-
gets speech that is of “public concern,” because it “can be
fairly considered as relating to any matter of political,
social, or other concern to the community.” Snyder v.
Phelps, 562 U.S. 443, 453 (2011) (internal quotation
marks omitted). It therefore “occupies the highest rung of
the hierarchy of First Amendment values, and is entitled
to special protection.” Id. at 452 (internal quotation
marks omitted).
     Because § 2(a) discriminates on the basis of the con-
tent of the message conveyed by the speech, it follows that
it is presumptively invalid, and must satisfy strict scruti-
ny to be found constitutional. “In the ordinary case it is
all but dispositive to conclude that a law is content-based
and, in practice, viewpoint-discriminatory.” Sorrell, 131
S. Ct. at 2667. The government here does not even argue
that § 2(a) satisfies strict scrutiny.
     II.   Section 2(a) Is Not Saved From Strict Scrutiny
           Because It Bans No Speech or By Government-
             Speech or Government-Subsidy Doctrines
    Faced with the daunting prospect of defending a con-
tent- and viewpoint-discriminatory regulation of speech,
the government argues that § 2(a) does not implicate the
First Amendment at all. First, the government suggests
that § 2(a) is immune from First Amendment scrutiny
because it prohibits no speech, but leaves Mr. Tam free to
name his band as he wishes and use this name in com-
merce. Second, the government suggests that trademark
registration is government speech, and thus the govern-
ment can grant and reject trademark registrations with-
out implicating the First Amendment.          Finally, the
government argues that § 2(a) merely withholds a gov-
ernment subsidy for Mr. Tam’s speech and is valid as a
IN RE TAM                                                27



permissible definition of a government subsidy program.
We reject each of the government’s arguments.
   A. Strict Scrutiny Applies to § 2(a), Which Significant-
    ly Chills Private Speech on Discriminatory Grounds,
               Though It Does Not Ban Speech
    The government argues that § 2(a) does not implicate
the First Amendment because it does not prohibit any
speech. Appellee’s En Banc Br. 17. The government’s
argument is essentially the same as that of our predeces-
sor court in McGinley: “it is clear that the PTO’s refusal
to register appellant’s mark does not affect his right to
use it. No conduct is proscribed, and no tangible form of
expression is suppressed.” 660 F.2d at 484 (citations
omitted). But the First Amendment’s standards, includ-
ing those broadly invalidating message discrimination,
are not limited to such prohibitions. See Pitt News v.
Pappert, 379 F.3d 96, 111–12 (3d Cir. 2004) (Alito, J.)
(“The threat to the First Amendment arises from the
imposition of financial burdens that may have the effect of
influencing or suppressing speech, and whether those
burdens take the form of taxes or some other form is
unimportant.”).
    The point has been recognized in various doctrinal
settings. “For if the government could deny a benefit to a
person because of his constitutionally protected speech or
associations, his exercise of those freedoms would in effect
be penalized and inhibited. This would allow the gov-
ernment to produce a result which it could not command
directly.” Perry v. Sindermann, 408 U.S. 593, 597 (1972)
(internal quotation marks and alterations omitted). This
premise—that denial of a benefit would chill exercise of
the constitutional right—undergirds every unconstitu-
tional conditions doctrine case, discussed infra. See, e.g.,
Speiser v. Randall, 357 U.S. 513, 518 (1958) (“It is settled
that speech can be effectively limited by the exercise of
the taxing power. To deny an exemption to claimants who
28                                                 IN RE TAM




engage in certain forms of speech is in effect to penalize
them for such speech.” (citation omitted)); Bd. of Cty.
Comm’rs v. Umbehr, 518 U.S. 668, 674 (1996) (loss of a
valuable benefit “in retaliation for speech may chill
speech on matters of public concern”); Legal Servs. Corp.
v. Velazquez, 531 U.S. 533, 545 (2001); Rosenberger, 515
U.S. at 835 (explaining that “[v]ital First Amendment
speech principles are at stake here,” including danger
arising “from the chilling of individual thought and ex-
pression”).
    The general principle is clear: “Lawmakers may no
more silence unwanted speech by burdening its utterance
than by censoring its content.” Sorrell, 131 S. Ct. at 2664.
“[T]he government’s ability to impose content-based
burdens on speech raises the specter that the government
may effectively drive certain ideas or viewpoints from the
marketplace.” Simon & Schuster, 502 U.S. at 116. A law
may burden speech even when it does so indirectly. In
Sorrell, the challenged statute did not directly ban speech,
but rather forbade certain pharmaceutical marketing
executives from obtaining and using information that
could help them market their products more effectively.
131 S. Ct. at 2659–60. The Court found that the state
“ha[d] burdened a form of protected expression,” while
leaving “unburdened those speakers whose messages are
in accord with its own views.” Id. at 2672.
    Here, too, § 2(a) burdens some speakers and benefits
others. And while it is true that a trademark owner may
use its mark in commerce even without federal registra-
tion, it has been widely recognized that federal trademark
registration bestows truly significant and financially
valuable benefits upon markholders. B&B Hardware, 135
S. Ct. at 1300; Park ’N Fly, Inc. v. Dollar Park & Fly, Inc.,
469 U.S. 189, 199–200 (1985) (valuable new rights were
created by the Lanham Act); McCarthy at § 19:9, :11
(“Registration of a mark on the federal Principal Register
confers a number of procedural and substantive legal
IN RE TAM                                                29



advantages        over     reliance   on     common     law
rights. . . . Registration on the Principal Register should
be attempted if it is at all possible.”); McCarthy at § 2:14
(“Businesspeople regard trademarks as valuable assets
and are willing to pay large sums to buy or license a well-
known mark.”); Lee Ann W. Lockridge, Abolishing State
Trademark Registrations, 29 Cardozo Arts & Ent. L.J.
597, 605 (2011) (“[T]he incentives to pursue federal regis-
tration. . . are now so significant as to make federal
registration indispensable for any owner making an
informed decision about its trademark rights. A federal
registration is the only rational choice.”); Susan M. Rich-
ey, The Second Kind of Sin: Making the Case for a Duty to
Disclose Facts Related to Genericism and Functionality in
the Trademark Office, 67 Wash. & Lee L. Rev. 137, 174
(2010) (“Federal registration has evolved into a powerful
tool for trademark holders . . . .”); Patricia Kimball
Fletcher, Joint Registration of Trademarks and the Eco-
nomic Value of a Trademark System, 36 U. Miami L. Rev.
297, 298–99 (1982) (“Federal registration under the
Lanham Act is advantageous, however, because it in-
creases the owner’s legal rights in the mark, making the
mark itself more valuable. Thus, trademark owners have
significant legal and economic interests in obtaining
federal registration of trademarks.”).
    Denial of these benefits creates a serious disincentive
to adopt a mark which the government may deem offen-
sive or disparaging. Br. of Amici Curiae ACLU 12 (“If a
group fears that its chosen name will be denied federal
trademark protection by the government’s invocation of
Section 2(a), it will be less likely to adopt the name, at
least in part because the associative value of the trade-
mark itself is lessened when it is unlikely that a group
will be the exclusive holder of that mark.”); Br. of Amicus
Curiae Pro-Football, Inc. 15 (“Section 2(a) certainly works
to chill speech . . . . Through it, the Government uses
threatened denial of registration to encourage potential
30                                                 IN RE TAM




registrants not to use ‘disparaging’ names. Faced with
the possibility of being denied a registration—or worse,
cancellation after years of investment-backed brand
development—new brand owners are more likely to avoid
brand names that may be arguably controversial for fear
of later being deemed ‘disparaging.’”); Br. of Amicus
Curiae First Amendment Lawyers Ass’n 7 (“Individuals
and businesses refrain from using certain terms as
trademarks for fear the PTO might see the terms as
immoral, scandalous, or derogatory, in violation of section
2(a). Such self-censorship narrows the spectrum of speech
in the public marketplace.”); Br. of Amici Curiae Ruther-
ford Inst. 12 (“Denial of registration indisputably has the
effect of placing applicants at a legal and financial disad-
vantage.”); Jeffrey Lefstin, Does the First Amendment Bar
Cancellation of Redskins?, 52 Stan. L. Rev. 665, 678
(2000) (“[I]t is clear that section 2(a) of the Lanham Act,
by denying the valuable registration right to scandalous
or disparaging trademarks, imposes a financial disincen-
tive to the use of such marks in commercial communica-
tion.”); Michelle B. Lee, Section 2(a) of the Lanham Act as
a Restriction on Sports Team Names: Has Political Cor-
rectness Gone Too Far?, 4 Sports L.J. 65, 69 (1997) (“Use
[of disparaging marks] is discouraged by cancellation of
registration by a loss of the benefits that go along with it.
These benefits go well beyond those granted by the com-
mon law, and a loss of them will remove advantages
which make the property more valuable.”).
    For those reasons, the § 2(a) bar on registration cre-
ates a strong disincentive to choose a “disparaging” mark.
And that disincentive is not cabined to a clearly under-
standable range of expressions. The statute extends the
uncertainty to marks that “may disparage.” 15 U.S.C.
§ 1052(a). The uncertainty as to what might be deemed
IN RE TAM                                                31



disparaging is not only evident on its face, given the
subjective-reaction element and shifting usages in differ-
ent parts of society. 6 It is confirmed by the record of PTO
grants and denials over the years, from which the public
would have a hard time drawing much reliable guidance. 7



   6     In 1939, the Assistant Commissioner of Patents
testified during congressional hearings on the Lanham
Act that “it is always going to be just a matter of the
personal opinion of the individual parties as to whether
they think it is disparaging.” See Hearings on H.R. 4744
Before the Subcomm. on Trademarks of the House Comm.
on Patents, 76th Cong., 1st Sess. 18–21 (1939) (statement
of Leslie Frazer, Assistant Comm’r of Patents) (Mr. Fra-
zer). And further interpretation has helped little. The
definition of a disparaging mark—a mark that “dishonors
by comparison with what is inferior, slights, deprecates,
degrades, or affects or injures by unjust comparison”—
provides little clarity. Geller, 751 F.3d at 1358 (altera-
tions omitted). In In re In Over Our Heads, the PTO
admitted that “[t]he guidelines for determining whether a
mark is scandalous or disparaging are somewhat vague
and the determination of whether a mark is scandalous or
disparaging is necessarily a highly subjective one.”
No. 755,278, 1990 WL 354546, at *1 (T.T.A.B. 1990)
(alterations and quotation marks omitted).
    7    The PTO’s record of trademark registrations and
denials often appears arbitrary and is rife with incon-
sistency. The PTO denied the mark HAVE YOU HEARD
SATAN IS A REPUBLICAN because it disparaged the
Republican Party, App. Ser. No. 85/077647, but did not
find the mark THE DEVIL IS A DEMOCRAT disparag-
ing, App. Ser. No. 85/525,066 (abandoned after publica-
tion for other reasons). The PTO registered the mark
FAGDOG three times and refused it twice, at least once
32                                                 IN RE TAM




    Such uncertainty of speech-affecting standards has
long been recognized as a First Amendment problem, e.g.,
in the overbreadth doctrine. See Broadrick v. Oklahoma,
413 U.S. 601, 613, 615 (1973). It has also been recognized
as a problem under Fifth Amendment vagueness stand-
ards as they have been specially applied in the First
Amendment setting. 8 All we need say about the uncer-



as disparaging. Compare Reg. Nos. 2,926,775; 2,828,396;
and 3,174,475, with App. Ser. Nos. 76/454,927 and
75/950,535. The PTO refused to register the marks FAG
FOREVER A GENIUS!, App. Ser. No. 86/089,512, and
MARRIAGE IS FOR FAGS, App. Ser. No. 77/477,549, but
allowed the mark F*A*G FABULOUS AND GAY, Reg.
No. 2,997,761 (abandoned after publication for other
reasons).      And PTO examiners have registered
DANGEROUS NEGRO, CELEBRETARDS, STINKY
GRINGO, MIDGET-MAN, and OFF-WHITE TRASH—all
marks that could be offensive to a substantial composite
of the referenced group. We see no rationale for the PTO’s
seemingly arbitrary registration decisions, let alone one
that would give applicants much guidance.
    8    A vague law that regulates speech on the basis of
message “raises special First Amendment concerns be-
cause of its obvious chilling effect on free speech.” Reno v.
ACLU, 521 U.S. 844, 871–72 (1997). Thus, if a “law
interferes with the right of free speech or of association, a
more stringent vagueness test should apply.” Vill. of
Hoffman Estates v. Flipside, Hoffman Estates, Inc., 455
U.S. 489, 499 (1982). The Supreme Court reiterated these
principles just three years ago:
     Even when speech is not at issue, the void for
     vagueness doctrine addresses at least two con-
     nected but discrete due process concerns: first,
     that regulated parties should know what is re-
IN RE TAM                                                 33



tainty here, however, is that it contributes significantly to
the chilling effect on speech.
     The disincentive to choose a particular mark extends
to any mark that could require the expenditure of sub-
stantial resources in litigating to obtain registration in
the first place. And the disincentive does not stop there,
because the disparagement determination is not a one-
time matter. Even if an applicant obtains a registration
initially, the mark may be challenged in a cancellation
proceeding years later. Thus, after years of investment in
promoting a registered mark and coming to be known by
it, a mark’s owner may have to (re)litigate its character
under § 2(a) and might lose the registration. This effec-
tively forces the mark’s owner to find a new mark and
make substantial new investments in educating the
public that the products known by the old mark are now
known by the new mark and, more generally, in establish-
ing recognition of the new mark. The “disparagement”
standard steers applicants away from choosing a mark
that might result in these problems any time in the
future.
   Not surprisingly, “those who are denied registration
under Section 2(a) often abandon the denied application


    quired of them so they may act accordingly; sec-
    ond, precision and guidance are necessary so that
    those enforcing the law do not act in an arbitrary
    or discriminatory way. See Grayned v. City of
    Rockford, 408 U.S. 104, 108–109 (1972). When
    speech is involved, rigorous adherence to those re-
    quirements is necessary to ensure that ambiguity
    does not chill protected speech.
F.C.C. v. Fox Television Stations, Inc., 132 S. Ct. 2307,
2317–18 (2012).
34                                                IN RE TAM




and file a new one, indicating that they have changed
their name rather than bear the costs of using a ‘dispar-
aging’ mark or challenge the PTO’s determination.” Br. of
Amicus Curiae Pro-Football, Inc. 15. In many cases, as
soon as a trademark examiner issues a rejection based
upon disparagement, the applicant immediately abandons
the trademark application.     See, e.g., AMISHHOMO
(abandoned 2013); MORMON WHISKEY (abandoned
2012); HAVE YOU HEARD THAT SATAN IS A
REPUBLICAN?        (abandoned    2010);   DEMOCRATS
SHOULDN’T BREED (abandoned 2008); REPUBLICANS
SHOULDN’T BREED (abandoned 2008); 2 DYKE
MINIMUM (abandoned 2007); WET BAC/WET B.A.C.
(abandoned 2007); DON’T BE A WET BACK (abandoned
2006); FAGDOG (abandoned 2003).
    The importance of the benefits of federal trademark
registration explains the strength of the incentive to avoid
marks that are vulnerable under § 2(a). For example, the
holder of a federally registered trademark has a right to
exclusive nationwide use of that mark anywhere there is
not already a prior use that proceeds registration. See 15
U.S.C. §§ 1072, 1115. In the absence of federal registra-
tion, if a trademark owner has any common law rights,
they are “limited to the territory in which the mark is
known and recognized by those in the defined group of
potential customers.” McCarthy at § 26:2. Without the
recognition of nationwide constructive use conferred by
federal registration, a competitor can swoop in and adopt
the same mark for the same goods in a different location.
Without federal registration, the applicant does not have
prima facie evidence of the mark’s validity or its owner-
ship or exclusive use of the mark. 15 U.S.C. § 1057(b).
And a common law trademark can never become incon-
testable. Id. § 1065. Without federal registration, a
trademark user cannot stop importation of goods bearing
the mark, or recover treble damages for willful infringe-
ment. Id. §§ 1117, 1124. It cannot prevent “cybersquat-
IN RE TAM                                                35



ters” from misappropriating the mark in a domain name.
Id. § 1125(d). The common law provides no rights like
these.
    Contrary to the suggestion by the government,
Mr. Tam is likely also barred from registering his mark in
nearly every state. Three years after the enactment of
the Lanham Act, the United States Trademark Associa-
tion prepared the Model State Trademark Act—a bill
patterned on the Lanham Act in many respects. McCar-
thy at § 22:5. The Model Act contains language barring a
mark from registration if it “consists of or comprises
matter which may disparage . . . persons, living or dead,
institutions, beliefs, or national symbols, or bring them
into contempt, or disrepute.” 1964 Model State Trade-
mark Act, § 2. Following the lead of the federal govern-
ment, virtually all states have adopted the Model Act and
its disparagement provision. McCarthy at § 22:5. Thus,
not only are the benefits of federal registration unavaila-
ble to Mr. Tam, so too are the benefits of trademark
registration in nearly all states. 9
    The government argues that the denial of Mr. Tam’s
registration “does not eliminate any common-law rights
that might exist in [his] mark.” Appellee’s En Banc Br.
20. But as the government’s use of “might” indicates, it is
unclear whether Mr. Tam could actually enforce any
common law rights to a disparaging mark. 10 The 1964


   9    And even if Mr. Tam could register his mark in a
state, the benefits of state registration are limited by the
boundaries of the individual state or the geographic scope
of the actual use of the mark within the state. They are
by no means the nationwide benefits afforded to federally
registered trademarks.
    10  Not surprisingly, holders of disparaging marks
like Mr. Tam have not argued that they lack these com-
36                                               IN RE TAM




Model State Trademark Act, which most states have
adopted, provides that “[n]othing herein shall adversely
affect the rights or the enforcement of rights in marks
acquired in good faith at any time at common law.” § 14.
However, the term “mark” is defined as “any trademark
or service mark entitled to registration under this Act
whether registered or not.” § 1.C (emphasis added).
Common law rights to a mark may thus be limited to
marks “entitled to registration.” Whether a user of an
unregistrable, disparaging mark has any enforceable
common law rights is at best unclear. See Justin G.
Blankenship, The Cancellation of Redskins as a Disparag-
ing Trademark: Is Federal Trademark Law an Appropri-
ate Solution for Words That Offend?, 72 U. Colo. L. Rev.
415, 451 (2001) (“[A]ny mark that is canceled under
section 2(a) of the Lanham Act for being scandalous or
disparaging is unlikely to find much protection under
common law principles either, although this will ultimate-
ly be determined by state courts applying their own
common law principles.”); Llewellyn Joseph Gibbons,
Semiotics of the Scandalous and the Immoral and the
Disparaging: Section 2(A) Trademark Law After Lawrence
v. Texas, 9 Marq. Intell. Prop. L. Rev. 187, 232 (2005)
(“[A]s immoral, scandalous, and/or disparaging marks
may not be registered under either state or federal law,
nor do they enjoy common law protection, there appears
to be no way of establishing a legally recognized property
right in these marks.”); Stephen Baird, Moral Intervention
in the Trademark Arena: Banning the Registration of
Scandalous and Immoral Trademarks, 83 TRADEMARK
REPORTER 661, 795 (1993) (disparaging marks are pre-
sumably “unprotect[a]ble pursuant to state common law”).


mon law rights on account of their marks not being regis-
trable. They have little incentive to give this argument
away.
IN RE TAM                                               37



The Restatement (Third) of Unfair Competition notes that
the Lanham Act and the Model State Trademark Bill both
prohibit registration of disparaging marks and that
adoption and use of such marks may preclude enforce-
ment under the common law doctrine of unclean hands.
Restatement (Third) of Unfair Competition § 32 cmt. c
(1995). The government has not pointed to a single case
where the common-law holder of a disparaging mark was
able to enforce that mark, nor could we find one. The
government’s suggestion that Mr. Tam has common-law
rights to his mark appears illusionary. 11



   11    The government also argues that Mr. Tam “may”
have rights under 15 U.S.C. § 1125(a) (“Section 43(a)”).
First, those rights would not include the benefits afforded
to federally registered marks. Furthermore, it is not at
all clear that Mr. Tam could bring a § 43(a) unfair compe-
tition claim. Section 43(a) allows for a federal suit to
protect an unregistered trademark, much like state
common law. But there is no authority extending § 43(a)
to marks denied under § 2(a)’s disparagement provision.
To the contrary, courts have suggested that § 43(a) is only
available for marks that are registrable under § 2. See
Two Pesos, 505 U.S. at 768 (section 43(a) “protects quali-
fying unregistered trademarks and . . . the general princi-
ples qualifying a mark for registration under § 2 of the
Lanham Act are for the most part applicable in determin-
ing whether an unregistered mark is entitled to protection
under § 43(a)”); Yarmuth-Dion, Inc. v. D’ion Furs, Inc.,
835 F.2d 990, 992 (2d Cir. 1987) (requiring a plaintiff to
“demonstrate that his [unregistered] mark merits protec-
tion under the Lanham Act”); see also Renna v. Cty. of
Union, 88 F. Supp. 3d 310, 320 (D.N.J. 2014) (“Section 2
declares certain marks to be unregistrable because they
are inappropriate subjects for trademark protection. It
38                                               IN RE TAM




    Whether Mr. Tam has enforceable common-law rights
to his mark or could bring suit under § 43(a) does not
change our conclusion. Federal trademark registration
brings with it valuable substantive and procedural rights
unavailable in the absence of registration. These benefits
are denied to anyone whose trademark expresses a mes-
sage that the government finds disparages any group,
Mr. Tam included. The loss of these rights, standing
alone, is enough for us to conclude that § 2(a) has a
chilling effect on speech. Denial of federal trademark
registration on the basis of the government’s disapproval
of the message conveyed by certain trademarks violates
the guarantees of the First Amendment.
       B. Trademark Registration Is Not Government
                        Speech
     The government suggests, and several amici argue,
that trademark registration is government speech, and as
such outside the coverage of the First Amendment. See
Appellee’s En Banc Br. 41–42; Br. of Amici Curiae Nat’l
Asian Pacific Am. Bar Ass’n 19–22; Br. of Amici Curiae
Blackhorse 13–23. “The Free Speech Clause restricts
government regulation of private speech; it does not
regulate government speech.” Pleasant Grove City v.
Summum, 555 U.S. 460, 467 (2009). Although we find it
difficult to understand the government’s precise position
as to how trademark registration constitutes government
speech, we conclude that there is no government speech at
issue in the rejection of disparaging trademark registra-




follows that such unregistrable marks, not actionable as
registered marks under Section 32, are not actionable
under Section 43, either.”). And we have found no case
allowing a § 43(a) action on a mark rejected or cancelled
under § 2(a).
IN RE TAM                                               39



tions that would insulate § 2(a) from First Amendment
review.
    Wisely, the government does not argue that a mark-
holder’s use or enforcement of its federally registered
trademark is government speech. Use of a mark by its
owner is clearly private speech. Trademarks identify the
source of a product, and are often closely associated with
the actual product. A mark’s purpose—to identify the
source of goods—is antithetical to the notion that a
trademark is tied to the government. The fact that COCA
COLA and PEPSI may be registered trademarks does not
mean the government has endorsed these brands of cola,
or prefers them over other brands. We see no reason that
a markholder’s use of its mark constitutes government
speech.
    Instead, the government appears to argue that
trademark registration and the accoutrements of registra-
tion—such as the registrant’s right to attach the ® symbol
to the registered mark, the mark’s placement on the
Principal Register, and the issuance of a certificate of
registration—amount to government speech. See Oral
Argument at 52:40–53:07; 54:20–54:32. This argument is
meritless. Trademark registration is a regulatory activi-
ty. These manifestations of government registration do
not convert the underlying speech to government speech.
And if they do, then copyright registration would likewise
amount to government speech. Copyright registration has
identical accoutrements—the registrant can attach the ©
symbol to its work, registered copyrights are listed in a
government database, and the copyright owner receives a
certificate of registration. The logical extension of the
government’s argument is that these indicia of registra-
tion convert the underlying speech into government
speech unprotected by the First Amendment. Thus, the
government would be free, under this logic, to prohibit the
copyright registration of any work deemed immoral,
scandalous, or disparaging to others. This sort of censor-
40                                                IN RE TAM




ship is not consistent with the First Amendment or gov-
ernment speech jurisprudence.
     In Walker v. Texas Division, Sons of Confederate Vet-
erans, Inc., the Supreme Court detailed the indicia of
government speech. 135 S. Ct. 2239 (2015). The Court
concluded that specialty license plates were government
speech, even though a state law allowed individuals,
organizations, and nonprofit groups to request certain
designs. The Court found several considerations weighing
in favor of this holding. It emphasized that “the history of
license plates shows that, insofar as license plates have
conveyed more than state names and vehicle identifica-
tion numbers, they long have communicated messages
from the States.” Id. at 2248. It stressed that “[t]he State
places the name ‘TEXAS’ in large letters at the top of
every plate,” that “the State requires Texas vehicle own-
ers to display license plates, and every Texas license plate
is issued by the State,” that “Texas also owns the designs
on its license plates,” and that “Texas dictates the manner
in which drivers may dispose of unused plates.” Id. As a
consequence, the Court reasoned, “Texas license plate
designs ‘are often closely identified in the public mind
with the State.’” Id. (quoting Summum, 555 U.S. at 472
(alteration omitted)). Amidst all of its other aspects of
control, moreover, “Texas maintains direct control over
the messages conveyed on its specialty plates.” Id. at
2249. “Indeed, a person who displays a message on a
Texas license plate likely intends to convey to the public
that the State has endorsed that message.” Id.
    The government’s argument in this case that trade-
mark registration amounts to government speech is at
odds with the Supreme Court’s analysis in Walker and
unmoored from the very concept of government speech.
When the government registers a trademark, the only
message it conveys is that a mark is registered. The vast
array of private trademarks are not created by the gov-
ernment, owned or monopolized by the government, sized
IN RE TAM                                               41



and formatted by the government, immediately under-
stood as performing any government function (like
unique, visible vehicle identification), aligned with the
government, or (putting aside any specific government-
secured trademarks) used as a platform for government
speech. There is simply no meaningful basis for finding
that consumers associate registered private trademarks
with the government.
    Indeed, the PTO routinely registers marks that no one
can say the government endorses. See, e.g., RADICALLY
FOLLOWING CHRIST IN MISSION TOGETHER, U.S.
Reg. No. 4,759,522; THINK ISLAM, U.S. Reg. No.
4,719,002 (religious marks); GANJA UNIVERSITY, U.S.
Reg. No. 4,070,160 (drug-related); CAPITALISM SUCKS
DONKEY BALLS, U.S. Reg. No. 4,744,351; TAKE YO
PANTIES OFF, U.S. Reg. No. 4,824,028; and MURDER 4
HIRE, U.S. Reg. No. 3,605,862. As the government itself
explains, “the USPTO does not endorse any particular
product, service, mark, or registrant” when it registers a
mark. Appellee’s En Banc Br. 44. For decades, the gov-
ernment has maintained that:
   [J]ust as the issuance of a trademark registration
   by this Office does not amount to government en-
   dorsement of the quality of the goods to which the
   mark is applied, the act of registration is not a
   government imprimatur or pronouncement that
   the mark is a “good” one in an aesthetic, or any
   analogous, sense.
In re Old Glory Condom Corp., 26 U.S.P.Q.2d 1216, 1219–
20 n.3 (T.T.A.B. Mar. 3, 1993); see also McCarthy at
§ 19:3.50 (“[G]overnment registration of a mark is neither
a government endorsement of the quality of the goods to
which the mark is applied nor a government pronounce-
ment that the mark is a good or reliable one in any moral
or commercial sense.”); Jeffrey Lefstin, Does the First
Amendment Bar Cancellation of Redskins?, 52 Stan. L.
42                                                IN RE TAM




Rev. 665, 684 (2000) (“The overwhelming majority of the
public encounters trademarks in their roles as product
identifiers, not as the beneficiaries of a federal registra-
tion scheme. The public is unlikely to believe that a
registered trademark designation accompanying a word
or logo on a product reflects government endorsement.”).
Trademarks are understood in society to identify the
source of the goods sold, and to the extent that they
convey an expressive message, that message is associated
with the private party that supplies the goods or services.
Trademarks are not understood to convey a government
message or carry a government endorsement.
    The government argues that use of the ® symbol, be-
ing listed in a database of registered marks, and having
been issued a registration certificate makes trademark
registration government speech.       These incidents of
registration do not convert private speech into govern-
ment speech. The government does not own the trade-
mark designs or the underlying goods to which the
trademark is affixed as the state owned the license plates
in Walker. Markholders are not even required to use the
® symbol on their goods. 15 U.S.C. § 1111. And if simply
affixing the ® symbol converted private speech into gov-
ernment speech then the government would be free to
regulate the content, viewpoint, and messages of regis-
tered copyrights. A copyright registration likewise allows
the copyright owner to affix a © symbol, 17 U.S.C. § 401,
but this symbol does not convert the copyrighted work
into government speech or permit the government to
grant some copyrights and deny others on account of the
work’s message. Just as the public does not associate the
copyrighted works Nigger: The Strange Career of a Trou-
blesome Word or Fifty Shades of Grey with the govern-
ment, neither does the public associate individual
trademarks such as THE SLANTS with the government.
    Similarly, a registered mark’s placement on the Prin-
cipal Register or publication in the PTO’s Official Gazette
IN RE TAM                                               43



does not morph the private expression being registered
into government expression. As a preliminary matter, it
is not entirely clear what the Principal Register is. There
is apparently no government-published book of all trade-
mark registrations; instead, the Principal Register is at
most an internet database hosted on the PTO’s website.
See U.S. Patent and Trademark Office, Search Trademark
Database, available at http://www.uspto.gov/trademarks-
application-process/search-trademark-database. If being
listed in a government database or published in a list of
registrations were enough to convert private speech to
government speech, nearly every action the government
takes—every parade permit granted, every property title
recorded, every hunting or fishing license issued—would
amount to government speech. The government could
record recipients of parade permits in an official database
or publish them weekly, thus insulating content-based
grants of these permits from judicial review. Governmen-
tal agencies could assign TV and radio licenses and states
could refuse to license medical doctors with no First
Amendment oversight by “registering” these licenses in
an online database, or by allowing licensees to display a
mark by their name. The fact that the government rec-
ords a trademark in a database of all registered trade-
marks cannot possibly be the basis for concluding that
government speech is involved.
    Finally, the issuance of a registration certificate
signed by the Director with the seal of the United States
Patent and Trademark Office does not convert private
expression or registration into government speech. This
is a certificate, a piece of paper, which the trademark
owner is free to do with as it wishes. The government
maintains no control over the certificates. The govern-
ment does not require companies to display their trade-
mark registration certificate, or dictate the manner in
which markholders may dispose of unused registration
certificates. It is not public like license plates or monu-
44                                                 IN RE TAM




ments. When copyrights are granted, the copyright owner
receives a similar registration certificate with the seal
and signed by the Registrar of Copyrights. 17 U.S.C.
§ 410(a). And patents issue “in the name of the United
States of America, under the seal of the Patent and
Trademark Office,” with a gold seal and red ribbon at-
tached. 35 U.S.C. § 153; see also U.S. Patent and Trade-
mark Office, Patent Process Overview, available at
http://www.uspto.gov/patents-getting-started/patent-
process-overview#step7 (explaining that patent grants are
issued with “a gold seal and red ribbon on the cover”).
These certificates do not convert the registered subject
matter into government speech such that the government
is free to regulate its content. The public simply does not
view these registration certificates as the government’s
expression of its ideas or as the government’s endorse-
ment of the ideas, inventions, or trademarks of the pri-
vate speakers to whom they are issued.
    In short, the act of registration, which includes the
right (but not the obligation) to put an ® symbol on one’s
goods, receiving a registration certificate, and being listed
in a government database, simply cannot amount to
government speech. The PTO’s processing of trademark
registrations no more transforms private speech into
government speech than when the government issues
permits for street parades, copyright registration certifi-
cates, or, for that matter, grants medical, hunting, fish-
ing, or drivers licenses, or records property titles, birth
certificates, or articles of incorporation. To conclude
otherwise would transform every act of government
registration into one of government speech and thus allow
rampant viewpoint discrimination. When the government
registers a trademark, it regulates private speech. It does
not speak for itself.
IN RE TAM                                                 45



  C. Section 2(a) Is Not a Government Subsidy Exempt
                     from Strict Scrutiny
     We reject the government’s argument that § 2(a)’s
message-based discrimination is merely the government’s
shaping of a subsidy program. The government’s defense
is contrary to the long-established unconstitutional condi-
tions doctrine. The Supreme Court has repeatedly invali-
dated denials of “benefits” based on message-based
disapproval of private speech that is not part of a gov-
ernment-speech program. In such circumstances, denial
of an otherwise-available benefit is unconstitutional at
least where, as here, it has a significant chilling effect on
private speech. Bd. of Cty. Comm’rs, 518 U.S. at 674
(1996) (explaining that “the threat of the loss of [a valua-
ble financial benefit] in retaliation for speech may chill
speech on matters of public concern”); id. (“[r]ecognizing
that constitutional violations may arise from the deter-
rent, or ‘chilling,’ effect of governmental efforts that fall
short of a direct prohibition against the exercise of First
Amendment rights”) (citations and alterations omitted)).
    Under the unconstitutional conditions doctrine:
    [E]ven though a person has no ‘right’ to a valuable
    governmental benefit and even though the gov-
    ernment may deny him the benefit for any num-
    ber of reasons, there are some reasons upon which
    the government may not rely. It may not deny a
    benefit to a person on a basis that infringes his
    constitutionally protected interests—especially,
    his interest in freedom of speech.
Perry, 408 U.S. at 597. The Supreme Court, applying this
doctrine, held that a state college could not refuse to
retain a professor because of his public criticism of that
college’s policy, even though the professor had no right to
reemployment, and even though the government had not
directly prohibited the professor from speaking. Id. at
597–98. This is because “[t]o deny [a benefit] to claimants
46                                                 IN RE TAM




who engage in certain forms of speech is in effect to
penalize them for such speech.” Speiser v. Randall, 357
U.S. 513, 518 (1958); Perry, 408 U.S. at 597 (“For if the
government could deny a benefit to a person because of
his constitutionally protected speech or associations, his
exercise of those freedoms would in effect be penalized
and inhibited.”).
    Since Perry, the Supreme Court has wrestled with
how to apply the unconstitutional conditions doctrine
while protecting Congress’s ability to direct government
spending. The Spending Clause of the U.S. Constitution,
which grants Congress the power “[t]o lay and collect
Taxes, Duties, Imposts and Excises, to pay the Debts and
provide for the common Defence and general Welfare of
the United States,” U.S. Const. Art. I, § 8, cl. 1, “provides
Congress broad discretion to tax and spend for the ‘gen-
eral Welfare,’ including by funding particular state or
private programs or activities.” Agency for Int’l Dev. v.
Alliance for Open Soc’y Int’l, Inc., 133 S. Ct. 2321, 2327–
28 (2013). This includes “the authority to impose limits
on the use of such funds to ensure they are used in the
manner Congress intends,” even when these limits ex-
clude protected speech or other constitutionally protected
conduct. Id. at 2328 (citing Rust v. Sullivan, 500 U.S.
173, 195 n.4 (1991)). The Court reasoned that “if a party
objects to a condition on the receipt of federal funding,” it
can always decline the funds. Id.
     “[W]hen the Government appropriates public funds to
establish a program it is entitled to define the limits of
that program.” United States v. Am. Library Ass’n, 539
U.S. 194, 211 (2003) (quoting Rust, 500 U.S. at 194). For
purposes of a message-discriminatory condition on the
grant of government funds, the Supreme Court has said
that the government can “disburse[] public funds to
private entities to convey a governmental message.”
Legal Servs. Corp. v. Velazquez, 531 U.S. 533, 541 (2001)
(citation omitted). When it does so, “it may take legiti-
IN RE TAM                                               47



mate and appropriate steps to ensure that its message is
neither garbled nor distorted by the grantee.” Id. There-
fore, “viewpoint-based funding decisions can be sustained
in instances . . . in which the government used private
speakers to transmit specific information pertaining to its
own program.” Id. (citations omitted).
    Thus, in Rust, the government could prohibit the ex-
penditure of public federal family planning funds on
abortion-related counseling because the government
distributed those funds to promote the conveying of a
particular message. Rosenberger, 515 U.S. at 833 (citing
Rust, 500 U.S. at 194); Velazquez, 531 U.S. at 541 (noting
that Rust must be understood as resting on the conclusion
that it involved “government speech”). Relatedly, alt-
hough there was no majority opinion in American Library
Ass’n, the Court upheld a specific congressional determi-
nation not to give money for technology to be used for
supporting particular speech (pornography) in particular
circumstances (in public libraries where non-user patrons
likely would inadvertently see it), even then only upon
confirming the minor nature of the burden on the user
patrons involved. 539 U.S. at 211–12 (upholding condi-
tioning public libraries’ receipt of federal subsidies on
their use of Internet filtering software, because Congress
was entitled to insist that “public funds be spent for the
purposes for which they were authorized” (quotation
marks omitted)). Earlier, the Court had recognized that
tax exemptions or deductions were a form of subsidy for
First Amendment analysis. Regan v. Taxation with
Representation of Wash., 461 U.S. 540, 544 (1983) (“Both
tax exemptions and tax-deductibility are a form of subsidy
that is administered through the tax system.”); id. (ex-
plaining that tax-exempt status “has much the same
effect as a cash grant to an organization”).
   The government’s discretion to direct its spending,
while broad, is not unbounded, and the limits take ac-
count of the real-world effect on the speech of those sub-
48                                                IN RE TAM




ject to the conditions. If a program arises under the
Spending Clause, Congress is free to attach “conditions
that define the limits of the government spending pro-
gram—those that specify the activities Congress wants to
subsidize.” Agency for Int’l Dev., 133 S. Ct. at 2328.
However, Congress does not have the authority to attach
“conditions that seek to leverage funding to regulate
speech outside the contours of the program itself.” Id.
“Congress cannot recast a condition on funding as a mere
definition of its program in every case, lest the First
Amendment be reduced to a simple semantic exercise.”
Velazquez, 531 U.S. at 547. The Court held that Congress
could not restrict appropriations aimed at combating the
spread of HIV/AIDS to only organizations having policies
affirmatively opposing prostitution and sex trafficking,
which would make such organizations unable to convey a
contrary message. Agency for Int’l Dev., 133 S. Ct. at
2230–31. The Court struck down Congress’s conditioning
of funding to public broadcasters on their refraining from
editorializing, even with their non-federal money. FCC v.
League of Women Voters, 468 U.S. 364 (1984). And in
Regan, the Court, in upholding the subsidy of certain
organizations for lobbying, took pains to note the relative-
ly easy work-around for other unsubsidized organizations
to achieve a comparable position for lobbying and the
absence of any attempt to suppress ideas. 461 U.S. at
548; see Leathers v. Medlock, 499 U.S. 439, 452 (1991)
(discussing Regan).
     The government argues that trademark registration
is a form of government subsidy that the government may
refuse where it disapproves of the message a mark con-
veys. It contends: “Congress has at least as much discre-
tion to determine which terms and symbols should be
registered and published by a federal agency as it would
to determine which private entities should receive federal
funds.” Appellee’s En Banc Br. 29. But as already de-
scribed, trademark registration is not a program through
IN RE TAM                                                 49



which the government is seeking to get its message out
through recipients of funding (direct or indirect). And for
the reasons described above, the denial of registration has
a major chilling effect on private speech, because the
benefits of registration are so substantial. Nor is there a
ready work-around to maintain private speech without
significant disadvantage. Markholders cannot, for exam-
ple, realistically have two brand names, one inoffensive,
non-disparaging one (which would be able to secure
registration) and a second, expressive, disparaging one
(which would be unregistrable and unprotectable).
    In any event, the scope of the subsidy cases has never
been extended to a “benefit” like recognition of legal rights
in speakers against private interference. The cases
cannot be extended to any “program” conferring legal
rights on the theory that the government is free to dis-
tribute the legal rights it creates without respecting First
Amendment limits on content and viewpoint discrimina-
tion. Not surprisingly, the subsidy cases have all involved
government funding or government property.
    The government cites Ysursa v. Pocatello Education
Ass’n, 555 U.S. 353 (2009), and Davenport v. Washington
Education Ass’n, 551 U.S. 177 (2007), in support of its
subsidy defense of § 2(a). Appellee’s En Banc Br. 28–29.
But they are inapposite. Both Davenport and Ysursa
center on challenges to the constitutionality of state laws
limiting the ability of public-sector unions to spend on
political speech non-members’ money the unions obtain
through the government’s affirmative use of its own
payroll systems. Davenport, 551 U.S. at 180 (considering
constitutionality of law prohibiting payroll deductions for
political spending unless the union had the affirmative
consent of the non-member); Ysursa, 555 U.S. at 355
(considering constitutionality of law completely prohibit-
ing payroll deductions for political spending). Even in the
context of use of government property, the Court focused
on the absence of viewpoint discrimination, holding that
50                                               IN RE TAM




the programs placed a “reasonable, viewpoint-neutral
limitation” on the unions’ abilities to enlist the govern-
ment’s aid in acquiring the money of government employ-
ees for spending on political speech to which particular
employees might object. Davenport, 551 U.S. at 189; see
also Ysursa, 555 U.S. at 361 n.3. The prohibitions were
not “aimed at the suppression of dangerous ideas.” Ys-
ursa, 555 U.S. at 359 (alterations omitted); see also Dav-
enport, 551 U.S. at 190 (“Quite obviously, no suppression
of ideas is afoot.”).
    These cases do not speak to Congress’s power to enact
viewpoint-discriminatory regulations like § 2(a).      The
government does not shy away from the fact that the
purpose of § 2(a) is to discourage, and thereby eliminate,
disparaging marks, particularly marks that include “the
most vile racial epithets,” “religious insults,” “ethnic
caricatures,” and “misogynistic images.” Appellee’s En
Banc Br. 1–3. On its face, § 2(a) is aimed at the suppres-
sion of dangerous ideas, unlike the provisions in Ysursa
and Davenport. Moreover Ysursa and Davenport both
took place in “the unique context of public-sector agency-
shop arrangements,” where the government was “act[ing]
in a capacity other than as regulator.” Davenport, 551
U.S. at 188, 190. Thus, the risk that the government
“may effectively drive certain ideas or viewpoints from the
marketplace [was] attenuated.” Id. at 188. Section 2(a) is
regulation of speech that targets expressive content and
thereby threatens to drive ideas or viewpoints from the
marketplace.
    In determining if a condition on a favorable govern-
ment action is unconstitutional, courts—both before and
after Davenport and Ysursa—have distinguished between
government actions that implicate the government’s
power to spend and government actions that do not. For
example, the Ninth Circuit considered the constitutionali-
ty of a treaty under which certain “educational, scientific
and cultural audio-visual materials” were granted various
IN RE TAM                                                51



benefits, including exemption from import duties. Bull-
frog Films, Inc. v. Wick, 847 F.2d 502, 503 (9th Cir. 1988).
The government argued, as it does here, that the regula-
tions stemming from the treaty did not “punish or directly
obstruct [filmmakers’] ability to produce or disseminate
their films,” but amount to “the government simply de-
clining to pay a subsidy.” Id. at 509. The Ninth Circuit
rejected the government’s “benign characterization” of the
regulations and held that the trade benefits were not a
subsidy because “no Treasury Department funds [were]
involved.” Id. at 509. Because the trade benefits were not
a subsidy, the Ninth Circuit held that the unconstitution-
al conditions doctrine applied, and found the treaty and
implementing regulations unconstitutional. Id. at 511.
    The Fifth Circuit, sitting en banc, recently considered
the constitutionality of a Texas law allowing charitable
organizations to hold bingo games so long as the resulting
funds were not used for lobbying. Dep’t of Tex., Veterans
of Foreign Wars v. Tex. Lottery Comm’n, 760 F.3d 427, 430
(5th Cir. 2014) (en banc). The Texas Lottery Commission
argued that the restrictions were constitutional because
they fell within the state government’s spending power,
which is analogous to the federal government’s spending
power. Id. at 434. The Fifth Circuit agreed that “the
government may attach certain speech restrictions to
funds linked to the public treasury—when either granting
cash subsidies directly from the public coffers . . . or
approving the withholding of funds that otherwise would
go to the public treasury.” Id. at 435. But it found the
Texas bingo program “wholly distinguishable . . . because
no public monies or ‘spending’ by the state are involved.”
Id. at 436. Reasoning that the bingo program’s primary
function is regulatory, further “underscor[ing] the incon-
gruity of [applying] the ‘subsidy’ paradigm to the bingo
program,” the Fifth Circuit applied the unconstitutional
conditions doctrine and found the lobbying provision
unconstitutional. Id. at 437–41.
52                                                IN RE TAM




     Similarly, the D.C. Circuit recently held that a presi-
dential directive barring lobbyists from serving on inter-
national trade advisory committees implicated the First
Amendment. Autor v. Pritzker, 740 F.3d 176, 177 (D.C.
Cir. 2014). The government argued that “when [it] ap-
propriates public funds to establish a program, its deci-
sion not to use program funds to subsidize the exercise of
a fundamental right does not infringe” the First Amend-
ment. Id. at 182 (quotations and alterations omitted).
The D.C. Circuit rejected this argument because member-
ship in the advisory committees was a non-financial—
albeit valuable—benefit. Id. at 182–83. Explaining that
“[t]he Supreme Court has never extended the [spending
exception] to situations not involving financial benefits,”
the D.C. Circuit found the directive could be an unconsti-
tutional condition, and remanded for further considera-
tion. Id. at 183–84.
    Trademark registration does not implicate Congress’s
power to spend or to control use of government property. 12
Trademark registration is not a subsidy. The benefits of
trademark registration, while valuable, are not monetary.
Unlike a subsidy consisting of, for example, HIV/AIDS
funding, or tax exemptions, a trademark registration does
not directly affect the public fisc. Instead, a registered
trademark redefines the nature of the markholder’s rights
as against the rights of other citizens, depriving others of
their ability to use the mark. Like the programs in Bull-
frog and Texas Lottery Commission, the system of trade-
mark registration is a regulatory regime, not a
government subsidy program.



     12 Counsel for the United States at oral argument
disclaimed the notion that a government forum approach
was appropriate in the context of trademark registration.
See Oral Argument at 1:14:25–1:14:58; 1:16:20–1:17:15.
IN RE TAM                                               53



     The government also argues that because the PTO is
funded by appropriations, any government spending
requirement is met here. Appellee’s En Banc Br. 29–30
(citing 35 U.S.C. § 42(c)(1)–(2)). Trademark registration
fees are collected and, “[t]o the extent and in the amounts
provided in advance in appropriations Acts,” made avail-
able “to carry out the activities of the [PTO].” 35 U.S.C.
§ 42(c)(1). However, since 1991 these appropriations have
been funded entirely by registration fees, not the taxpay-
er. Figueroa v. United States, 466 F.3d 1023, 1028 (Fed.
Cir. 2006); see also 56 Fed. Reg. 65147 (1991); Omnibus
Budget Reconciliation Act of 1990, Pub. L. No. 101-508, S.
10101, 1990 U.S.C.C.A.N. (104 Stat.) 1388. The fact that
registration fees cover all of the operating expenses asso-
ciated with registering marks is further evidence that,
despite conveying valuable benefits, trademark registra-
tion is not a government subsidy.
     While PTO operations are fully underwritten by regis-
tration fees, some federal funds are nonetheless spent on
the registration and enforcement of trademarks. For
example, PTO employee benefits, including pensions,
health insurance, and life insurance, are administered by
the Office of Personnel Management and funded from the
general treasury. Figueroa, 466 F.3d at 1028. And regis-
tering a trademark may lead to additional government
spending, such as when the trademark owner seeks to
enforce the trademark through the federal courts and
U.S. Customs and Border Patrol. This spending, howev-
er, is attenuated from the benefits bestowed by registra-
tion. Trademark registration does not implicate the
Spending Clause merely because of this attenuated
spending, else every benefit or regulatory program pro-
vided by the government would implicate the Spending
Clause. The Copyright Office is only partially funded by
user fees, but copyright registration is nonetheless not a
subsidy. Copyright Office Fees: Registration, Recordation
and Related Services; Special Services; Licensing Division
54                                                IN RE TAM




Services; FOIA Services, 79 Fed. Reg. 15910-01 (Mar. 24,
2014) (setting fees to recover “a significant part of the
costs to the Office of registering copyright claims”). It
would be unreasonable to argue that the government
subsidizes an author when it grants him a copyright.
Similarly, the programs in Bullfrog and Texas Lottery
Commission were likely funded in some part by the gov-
ernment—perhaps also by government benefits paid to
employees administering the programs—but the Ninth
Circuit and the Fifth Circuit considered only whether the
conditioned benefits were paid for by government spend-
ing, and not whether the programs were subsidized in
more indirect ways. And while the government argued in
Autor that the government had appropriated public funds
to establish the international trade advisory committees,
740 F.3d at 182, the D.C. Circuit nonetheless found that
membership on these advisory committees was not a
financial benefit, id. at 183.
    The fact that the Lanham Act derives from the Com-
merce Clause, not the Spending Clause, is further evi-
dence that trademark registration is not a subsidy. The
purpose of the Lanham Act is to regulate marks used in
interstate commerce, prevent customer confusion, and
protect the goodwill of markholders, 15 U.S.C. § 1127, not
to subsidize markholders. Moreover, the government
funding cases have thus far been limited to situations
where the government has chosen to limit funding to
individuals that are advancing the goals underlying the
program the government seeks to fund. See generally
Agency for Int’l Dev., 133 S. Ct. at 2324–25; Rust, 500 U.S.
at 191; cf. American Library Ass’n, 539 U.S. at 211 (it is
not unconstitutional for the government to insist that
“public funds be spent for the purposes for which they
were authorized”). The restriction on the registration of
disparaging marks bears no relation to the objectives,
goals, or purpose of the federal trademark registration
program. Preventing disparaging marks does not protect
IN RE TAM                                                55



trademark owners’ investments; in fact, because § 2(a)
can be brought in cancellation proceedings decades after a
mark is granted, this provision actually undermines this
important purpose of the Lanham Act. And the dispar-
agement proscription has never been alleged to prevent
consumer confusion or deception.        The government’s
viewpoint- and content-based discrimination in this case
is completely untethered to the purposes of the federal
trademark registration program. It would be a radical
extension of existing precedent to permit the government
to rely upon its power to subsidize to justify its viewpoint
discrimination, when that discrimination has nothing to
do with the goals of the program in which it is occurring.
    Were we to accept the government’s argument that
trademark registration is a government subsidy and that
therefore the government is free to restrict speech within
the confines of the trademark program, it would expand
the “subsidy” exception to swallow nearly all government
regulation. In many ways, trademark registration resem-
bles copyright registration. Under the logic of the gov-
ernment’s approach, it follows that the government could
refuse to register copyrights without the oversight of the
First Amendment. Congress could pass a law prohibiting
the copyrighting of works containing “racial slurs,” “reli-
gious insults,” “ethnic caricatures,” and “misogynistic
images.” Appellee’s En Banc Br. 2–3. It is difficult to
imagine how trademark registration with its attendant
benefits could be deemed a government subsidy but
copyright registration with its attendant benefits would
not amount to a government subsidy. And if both must be
treated as government subsidies by virtue of their confer-
ence of benefits or advantages, though not public money,
then the government has the right to make content- or
viewpoint-based determinations over which works to
grant registration. This idea—that the government can
control speech by denying the benefits of copyright regis-
tration to disfavored speech—is anathema to the First
56                                                IN RE TAM




Amendment. With this, the government agrees, arguing
that copyright registration, unlike trademark registra-
tion, is protected by the First Amendment. Oral Arg. at
36:45–38:50. But the government has advanced no prin-
cipled reason to treat trademark registration differently
than copyright registration for present purposes. The
government admits that any message-based regulation of
copyrights would be subject to the First Amendment. We
agree, and extend the government’s reasoning to § 2(a)’s
message-based regulation of trademarks. These registra-
tion programs are prototypical examples of regulatory
regimes. The government may not place unconstitutional
conditions on trademark registration. We reject the
government’s argument that it is free to restrict constitu-
tional rights within the confines of its trademark registra-
tion program.
III.   Section 2(a) Is Unconstitutional Even Under the
       Central Hudson Test for Commercial Speech
     As discussed above, § 2(a) regulates expressive
speech, not commercial speech, and therefore strict scru-
tiny is appropriate. Trademarks have at times been
referred to as commercial speech. See, e.g., Friedman v.
Rogers, 440 U.S. 1, 11 (1979) (holding that the trade name
of an optometrist was commercial speech). They are, after
all, commercial identifiers, the symbols and words by
which companies distinguish and identify their brands.
Va. State Bd. of Pharmacy v. Va. Citizens Consumer
Council, Inc., 425 U.S. 748, 765 (1976) (defining commer-
cial speech as the “dissemination of information as to who
is producing and selling what product, for what reason,
and at what price”). It does not follow, however, that all
government regulation of trademarks is properly re-
viewed under the Central Hudson intermediate scrutiny
standard. Section 2(a) bars registration of disparaging
marks. This regulation is squarely based on the expres-
sive aspect of the speech, not its commercial-speech
aspects. It should therefore be evaluated under the First
IN RE TAM                                                 57



Amendment standards applicable to the regulation of
expressive speech. Discrimination against a mark by
virtue of its offensive, disparaging nature discriminates
against the mark’s political or social message. Sec-
tion 2(a) should be subject to strict scrutiny, and be inval-
idated for its undisputed inability to survive such
scrutiny.
     Even if we were to treat § 2(a) as a regulation of
commercial speech, it would fail to survive. In Central
Hudson, the Supreme Court laid out the intermediate-
scrutiny framework for determining the constitutionality
of restrictions on commercial speech. 447 U.S. at 566.
First, commercial speech “must concern lawful activity
and not be misleading.” Id. If this is the case, we ask
whether “the asserted governmental interest is substan-
tial,” id., and whether the regulation “directly and mate-
rially advanc[es]” the government’s asserted interest and
is narrowly tailored to achieve that objective. Lorillard
Tobacco Co. v. Reilly, 533 U.S. 525, 555–56 (2001). “Un-
der a commercial speech inquiry, it is the State’s burden
to justify its content-based law as consistent with the
First Amendment.” Sorrell, 131 S. Ct. at 2667.
    First, we ask whether the regulated activity is lawful
and not misleading. Cent. Hudson, 447 U.S. at 563–64.
Unlike many other provisions of § 2, the disparagement
provision does not address misleading, deceptive, or
unlawful marks. There is nothing illegal or misleading
about a disparaging trademark like Mr. Tam’s mark.
    Next, for speech that is lawful and not misleading, a
substantial government interest must justify the regula-
tion. Id. at 566. But § 2(a) immediately fails at this step.
The entire interest of the government in § 2(a) depends on
disapproval of the message. That is an insufficient inter-
est to pass the test of intermediate scrutiny, as the Su-
preme Court made clear in Sorrell. 131 S. Ct. at 2668
(law must not “seek to suppress a disfavored message”);
58                                                   IN RE TAM




id. at 2670 (rejecting message-based interest as “contrary
to basic First Amendment principles”); see id. at 2667–68
(finding it unnecessary to rely on strict scrutiny; rejecting
justification under Central Hudson); Bolger v. Youngs
Drug Prods. Corp., 463 U.S. 60, 69–72 (1983); Carey v.
Population Servs., Int’l, 431 U.S. 678, 701 & n.28 (1977).
     The government proffers several interests to justify
its bar on disparaging trademarks. It argues principally
that the United States is “entitled to dissociate itself from
speech it finds odious.” Appellee’s En Banc Br. 41. This
core argument rests on intense disapproval of the dispar-
aging marks. See, e.g., Appellee’s En Banc Br. 1 (“the
most vile racial epithets and images”); id. at 2–3 (“racial
slurs . . . or religious insults, ethnic caricatures, misogyn-
istic images, or any other disparaging terms or logos”); id.
at 14 (“racial epithets”); id. at 21 (“racial slurs and similar
disparagements”); id. at 22 (“including the most vile racial
epithets”); id. at 41 (“speech [the government] finds
odious”); id. at 44 (“racial slurs”). And that disapproval is
not a legitimate government interest where, as here, for
the reasons we have already discussed, there is no plausi-
ble basis for treating the speech as government speech or
as reasonably attributed to the government by the public.
    The government also argues that it has a legitimate
interest in “declining to expend its resources to facilitate
the use of racial slurs as source identifiers in interstate
commerce.” Appellee’s En Banc Br. 43. The government’s
interest in directing its resources does not warrant regu-
lation of these marks. As discussed, trademark registra-
tion is user-funded, not taxpayer-funded.               The
government expends few resources registering these
marks. See supra at 53–55. Its costs are the same costs
that would be incidental to any governmental registra-
tion: articles of incorporation, copyrights, patents, prop-
erty deeds, etc. In fact, the government spends far more
significant funds defending its refusal decisions under the
statute. See McGinley, 660 F.2d at 487 (Rich, J., dissent-
IN RE TAM                                                 59



ing) (“More ‘public funds’ are being expended in the
prosecution of this appeal than would ever result from the
registration of the mark.”). Finally, labeling this sort of
interest as substantial creates an end-run around the
unconstitutional conditions doctrine, as virtually all
government benefits involve the resources of the federal
government in a similar sense. Nearly every government
act could be justified under this ground, no matter how
minimal. For example, the government could also claim
an interest in declining to spend resources to issue per-
mits to racist, sexist, or homophobic protests. The gov-
ernment cannot target speech on this basis, even if it
must expend resources to grant parade permits or close
down streets to facilitate such speech.
    This holds true even though the government claims to
have a “compelling interest in fostering racial tolerance.”
Appellee’s En Banc Br. 43 (citing Bob Jones Univ. v.
United States, 461 U.S. 574, 604 (1983)). Bob Jones
University does not stand for the broad proposition the
government claims. Bob Jones University is a case about
racially discriminatory conduct, not speech. The Court
held that the government has an interest in combating
“racial discrimination in education,” not a more general
interest in fostering racial tolerance that would justify
preventing disparaging speech. Id. at 595.
    The invocation of the general racial-tolerance interest
to support speech regulation is a sharply different matter,
as the Supreme Court explained in R.A.V.:
   One must wholeheartedly agree with the Minne-
   sota Supreme Court that “[i]t is the responsibility,
   even the obligation, of diverse communities to con-
   front [virulent notions of racial supremacy] in
   whatever form they appear,” but the manner of
   that confrontation cannot consist of selective limi-
   tations upon speech. St. Paul’s brief asserts that
   a general “fighting words” law would not meet the
60                                                IN RE TAM




     city’s needs because only a content-specific meas-
     ure can communicate to minority groups that the
     “group hatred” aspect of such speech “is not con-
     doned by the majority.” The point of the First
     Amendment is that majority preferences must be
     expressed in some fashion other than silencing
     speech on the basis of its content.
505 U.S. at 392 (first alteration in original; citations
omitted). What is true of direct “silencing” is also true of
the denial of important legal rights. “[I]n public debate
we must tolerate insulting, and even outrageous, speech
in order to provide adequate breathing space to the free-
doms protected by the First Amendment.” Snyder, 562
U.S. at 458 (quoting Boos v. Barry, 485 U.S. 312, 322
(1988)) (alterations omitted). The case law does not
recognize a substantial interest in discriminatorily regu-
lating private speech to try to reduce racial intolerance.
    Moreover, at the level of generality at which the gov-
ernment invokes “racial tolerance,” it is hard to see how
one could find that § 2(a) “directly and materially ad-
vanc[es]” this interest and is narrowly tailored to achieve
that objective. Lorillard Tobacco Co., 533 U.S. at 555–56.
Disparaging speech abounds on the Internet and in books
and songs bearing government registered copyrights. And
the PTO has granted trademark registrations of many
marks with a racially charged character. Further, the
connection to a broad goal of racial tolerance would be
even weaker to the extent that the government suggests,
contrary to our conclusion in II.A supra, that denial of
registration has no meaningful effect on the actual adop-
tion and use of particular marks in the marketplace.
    Finally, the government argues that it has a legiti-
mate interest in “allowing States to make their own
determinations about whether trademarks should be
unenforceable on grounds of public policy.” Appellee’s En
Banc Br. 44. However, this interest cannot stand alone.
IN RE TAM                                                61



If § 2(a) is otherwise unconstitutional, the government
cannot render it constitutional by arguing that it is neces-
sary so that states can partake in the same unconstitu-
tional message-based regulation of trademarks. The
government, in essence, argues that it has a legitimate
interest in leaving the door open for states to violate the
Constitution. This interest is certainly not legitimate, let
alone substantial.
    We conclude that the government has not presented
us with a substantial government interest justifying the
§ 2(a) bar on disparaging marks. All of the government’s
proffered interests boil down to permitting the govern-
ment to burden speech it finds offensive. This is not a
legitimate interest. With no substantial government
interests, the disparagement provision of § 2(a) cannot
satisfy the Central Hudson test. We hold the disparage-
ment provision of § 2(a) unconstitutional under the First
Amendment.
                       CONCLUSION
    Although we find the disparagement provision of
§ 2(a) unconstitutional, nothing we say should be viewed
as an endorsement of the mark at issue. We recognize
that invalidating this provision may lead to the wider
registration of marks that offend vulnerable communities.
Even Mr. Tam, who seeks to reappropriate the term
“slants,” may offend members of his community with his
use of the mark. See Br. of Amici Curiae Nat’l Asian
Pacific Am. Bar Ass’n 3, 5. But much the same can be
(and has been) said of many decisions upholding First
Amendment protection of speech that is hurtful or worse.
Whatever our personal feelings about the mark at issue
here, or other disparaging marks, the First Amendment
forbids government regulators to deny registration be-
cause they find the speech likely to offend others. Even
when speech “inflict[s] great pain,” our Constitution
protects it “to ensure that we do not stifle public debate.”
62                                              IN RE TAM




Snyder, 562 U.S. at 461. The First Amendment protects
Mr. Tam’s speech, and the speech of other trademark
applicants.
    We hold that the disparagement provision of § 2(a) is
unconstitutional because it violates the First Amendment.
We vacate the Board’s holding that Mr. Tam’s mark is
unregistrable, and remand this case to the Board for
further proceedings.
  United States Court of Appeals
      for the Federal Circuit
                  ______________________

               IN RE SIMON SHIAO TAM
                 ______________________

                        2014-1203
                  ______________________

    Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
85/472,044.
                 ______________________

O’MALLEY, Circuit Judge, with whom WALLACH, Circuit
Judge, joins, concurring.
    I agree that the disparagement provision of 15 U.S.C.
§ 1052(a) (“§ 2(a)”) is unconstitutional on its face. I agree,
moreover, that § 2(a) cannot survive the searching consti-
tutional scrutiny to which the majority subjects it under
the First Amendment to the United States Constitution.
On this point, the majority rightly dispenses with this
court’s precedent in In re McGinley, 660 F.2d 481 (CCPA
1981) and its progeny. I write separately, however,
because, I believe § 2(a) is also unconstitutionally vague,
rendering it unconstitutional under the Fifth Amendment
to the United States Constitution.
     While the majority acknowledges the vague and un-
certain application of § 2(a), Maj. Op. 30–33, it finds that
“[a]ll we need say about the uncertainty here, however, is
that it contributes significantly to the chilling effect on
speech,” id. at 32–33. I agree with the majority’s concern
about the uncertain nature of § 2(a), but believe those
2                                                 IN RE TAM




concerns should lead us to do more than note 2(a)’s un-
doubted chilling effect on speech. I find § 2(a)’s dispar-
agement provision to be so vague that I would find it to be
unconstitutional, whether or not it could survive Appel-
lant’s First Amendment challenge.
                       DISCUSSION
    Section 2(a) provides that the Trademark Trial and
Appeal Board (“Board”) may refuse an application when
the trademark “[c]onsists of or comprises . . . matter
which may disparage . . . persons, living or dead, insti-
tutions, beliefs, or national symbols, or bring them into
contempt, or disrepute.” (emphasis added). As the majori-
ty correctly notes, the language of the statute creates
“uncertainty as to what might be deemed disparaging.”
Maj. Op. 30–31. Both would-be applicants and the Board
are left to guess at what may have the potential to dis-
parage a broad range of persons, institutions, symbols,
and even undefined “beliefs.” And, they are left to guess
at whether “may disparage” is the equivalent of bringing
into contempt or disrepute, or is a distinct category of
impropriety from these latter evils.
    Where, as here, the language of a statute evades clari-
ty, “[t]he area of proscribed conduct will be adequately
defined and the deterrent effect of the statute contained
within constitutional limits only by authoritative con-
structions sufficiently illuminating the contours of an
otherwise vague prohibition.” Dombrowski v. Pfister, 380
U.S. 479, 490–91 (1965). The Board has developed a two-
step test to determine whether a mark is disparaging:
    (1) What is the likely meaning of the matter in
    question, taking into account not only dictionary
    definitions, but also the relationship of the matter
    to the other elements in the mark, the nature of
    the goods or services, and the manner in which
    the mark is used in the marketplace in connection
    with the goods or services; and
IN RE TAM                                                   3



    (2) If that meaning is found to refer to identifiable
    persons, institutions, beliefs or national symbols,
    whether that meaning may be disparaging to a
    substantial composite of the referenced group.
Trademark       Manual     of    Exam.   Proc.   (“TMEP”)
§ 1203.03(b)(i) (Oct. 2015 ed.) (citing, inter alia, In re
Geller, 751 F.3d 1355, 1358 (Fed. Cir. 2014); Harjo v. Pro-
Football Inc., 50 U.S.P.Q.2d 1705, 1740–41 (T.T.A.B.
1999)). Thus, the Board has concluded that a mark may
disparage within the meaning of § 2(a) when a majority of
the Board believes it “dishonor[s] by comparison with
what is inferior, slight[s], deprecate[s], degrade[s], or
affect[s] or injure[s] by unjust comparison.” Pro-Football,
Inc. v. Harjo, 284 F. Supp. 2d 96, 124 (D.D.C. 2003)
(internal quotation marks omitted) (quoting Harjo v. Pro-
Football, Inc., 50 U.S.P.Q.2d 1705, 1737 n.98 (T.T.A.B.
1999)).
    The two-step test does little to alleviate § 2(a)’s uncer-
tainty. Indeed, by adding the caveat that a mark can be
rejected whenever a mark’s meaning may be disparaging
to “a substantial composite” of an “identifiable” group,
(TMEP § 1203.03(b)(i)), the TMEP compounds the confu-
sion the statute engenders. Thus a mark need only
potentially disparage a subset of any group as long as that
group can be “identifi[ed].”
    One need only examine the disparate ways in which
§ 2(a) has been applied to see the confusion. While it is
true that a “fertile legal ‘imagination can conjure up
hypothetical cases in which the meaning of [disputed]
terms will be in nice question,’” Grayned v. City of Rock-
ford, 408 U.S. 104, 112 n.15 (1972) (alteration in original)
(quoting Am. Commc’ns Ass’n v. Douds, 339 U.S. 382, 412
(1950)), the arbitrary application of § 2(a) is easily
demonstrated. The majority discusses numerous exam-
ples of inconsistent registration decisions. Maj. Op. 31
n.7. These include examples where there is no conceiva-
4                                                  IN RE TAM




ble difference between the applied-for marks, yet one is
approved and the other rejected. Compare HAVE YOU
HEARD SATAN IS A REPUBLICAN (Trademark Appli-
cation Serial No. 85,077,647) (rejected because it dispar-
aged the Republican Party), with THE DEVIL IS A
DEMOCRAT, Registration No. 85,525,066 (accepted and
later abandoned for other reasons). I agree with the
majority that there appears to be “no rationale for the
PTO’s seemingly arbitrary registration decisions, let alone
one that would give applicants much guidance.” Maj. Op.
31 n.7. 1
   For § 2(a) to survive a vagueness challenge, the Su-
preme Court requires it “give the person of ordinary



    1    Amici also were easily able to uncover examples of
inconsistencies in the application of the § 2(a). See Br. for
American Civil Liberties Union, the American Civil
Liberties Union of Oregon, and the American Civil Liber-
ties Union of the Nation’s Capital as Amici Curiae 22–24
(discussing “a long line of arbitrary and contradictory
decisions” as evidenced by the “countless examples of such
irregularities,” including, but not limited to, examples
where the same mark is rejected in one instance and
accepted in another, even for the same use—for example
compare MADONNA, In re Riverbank Canning Co., 95
F.2d 327 (CCPA 1938) (affirming rejection of mark for use
on wines as scandalous), with MADONNA, Registration
No. 3,545,635 (accepted for use on wine) (Dec. 16, 2008);
and MESSIAS, In re Sociedade Agricola E. Comerical Dos
Vinhos Messias, S.A.R.L., 159 U.S.P.Q. 275 (T.T.A.B.
1968) (rejected for use on wine and brandy), with IL
MESSIA, Registration No. 4,093,035 (accepted for use on
wine) (Jan. 31, 2012)). These examples further highlight
the subjective nature of the registration standard under
§ 2(a): it is an unstable standard that apparently depends
on shifting sensibilities over time.
IN RE TAM                                                   5



intelligence a reasonable opportunity to know what is
prohibited, so that he may act accordingly.” Grayned, 408
U.S. at 108. Further, “if arbitrary and discriminatory
enforcement is to be prevented, laws must provide explicit
standards for those who apply them.” Id. Given the
subjective and hypothetical language of the statute and
its well-documented, inconsistent application by the
Board, § 2(a) is void for vagueness under even a lax test
for vagueness. But the standard we should apply to § 2(a)
is not lax.
    “The degree of vagueness that the Constitution toler-
ates . . . depends in part on the nature of the enactment.”
Hoffman Estates v. Flipside, Hoffman Estates, Inc., 455
U.S. 489, 498 (1982). “[P]erhaps the most important
factor affecting the clarity that the Constitution demands
of a law is whether it threatens to inhibit the exercise of
constitutionally protected rights. If, for example, the law
interferes with the right of free speech . . . , a more strin-
gent vagueness test should apply.” Id. at 499. The First
Amendment concerns articulated by the majority support
application of a “more stringent vagueness test”—one that
§ 2(a) simply cannot pass.
     a. First Amendment Concerns Require a Stringent
                     Vagueness Test
     As the majority points out, “[i]t is beyond dispute that
§ 2(a) discriminates on the basis of content.” Maj. Op. 18.
“[T]he test for disparagement—whether a substantial
composite of the referenced group would find the mark
disparaging—makes clear that it is the nature of the
message conveyed by the speech which is being regulated.
If the mark is found disparaging by the referenced group,
it is denied registration.” Id. at 19. Indeed, the problems
with § 2(a) are more substantial than the majority even
acknowledges—not only is a trademark’s registrability
adjudged by the message it conveys, but the message
6                                                IN RE TAM




conveyed is adjudged by the potential sensibilities of a
broad range of potential listeners.
     Under First Amendment principles, “content-based
regulation of speech . . . raises special First Amendment
concerns because of its obvious chilling effect on free
speech.” Reno v. ACLU, 521 U.S. 844, 872 (1997). Indeed,
“[b]road prophylactic rules in the area of free expression
are suspect. Precision of regulation must be the touch-
stone in an area so closely touching our most precious
freedoms.” Edenfield v. Fane, 507 U.S. 761, 777 (1993)
(internal quotation marks omitted) (quoting NAACP v.
Button, 371 U.S. 415, 438 (1963)). The Supreme Court’s
emphasis on precision for content-based regulations is
premised on its understanding of
    at least two connected but discrete due process
    concerns: first, that regulated parties should know
    what is required of them so they may act accord-
    ingly; second, precision and guidance are neces-
    sary so that those enforcing the law do not act in
    an arbitrary or discriminatory way. When speech
    is involved, rigorous adherence to those require-
    ments is necessary to ensure that ambiguity does
    not chill protected speech.
FCC v. Fox Television Stations, Inc., 132 S. Ct. 2307, 2317
(2012) (citing Grayned, 408 U.S. at 108–109).
            b. Section 2(a) is Void for Vagueness
    Section 2(a)’s undeniable chilling effect on speech re-
quires it to pass a “more stringent test” for vagueness in
order to pass constitutional muster. Hoffman, 455 U.S. at
498. Recognizing that due process vagueness challenges
are more difficult to sustain where civil regulation—as
distinct from criminal penalty provisions—are at issue, I
believe § 2(a)’s inherent ambiguity makes it difficult for
would-be applicants to discern its boundaries and leads to
IN RE TAM                                                7



inconsistent and unreliable actions on the part of the
government as it seeks to regulate on the basis of content.
    First, the imprecise, content-based regulation of
trademark registration affects the types of marks sought
by would-be registrants. “Vague laws force potential
speakers to ‘“steer far wider of the unlawful
zone” . . . than if the boundaries of the forbidden areas
were clearly marked.’” Brown v. Entm’t Merchants Ass’n,
131 S. Ct. 2729, 2743 (2011) (quoting Baggett v. Bullitt,
377 U.S. 360, 372 (1964)). The majority opinion rightly
concludes that, given the Board’s inconsistency, “the
public would have a hard time drawing much reliable
guidance.” Maj. Op. 31. The “uncertainty of speech-
affecting standards has long been recognized as a First
Amendment problem,” and the uncertainty inherent in
§ 2(a) “contributes significantly to the chilling effect on
speech.” Maj. Op. 32–33. 2
    Next, the absence of clear standards for the applica-
tion of § 2(a) provides the government with virtually
unlimited ability to pick and choose which marks to allow
and which to deny. And neither § 2(a) itself nor the
TMEP’s two-step test provides the PTO, the courts, or the


   2    Numerous amici have come to the same conclu-
sion. See, e.g., Br. for First Amendment Lawyers Ass’n as
Amicus Curiae 14 (“The multitude of Section 2(a) cases
show that Section 2(a) does not convey ‘sufficiently defi-
nite warning as to the proscribed conduct when measured
by common understanding and practices,’ as required by
the Constitution.” (quoting Roth v. United States, 354
U.S. 476, 491 (1957)); Br. for Pro-Football, Inc. as Amicus
Curiae 33 n.13 (“Even if Section 2(a) sought to advance a
legitimate state interest, its language is impermissibly
vague to advance that interest. The statute provides no
guidance as to which trademarks will be deemed dispar-
aging, scandalous, or immoral.”).
8                                                IN RE TAM




public with any certainty as to what may disparage a
given subset of any given population or group of believers.
That is simply inadequate under the Fifth Amendment.
See Nat’l Endowment for the Arts v. Finley, 524 U.S. 569,
588 (1998) (“Under the First and Fifth Amendments,
speakers are protected from arbitrary and discriminatory
enforcement of vague standards.”); Grayned, 408 U.S. at
108–09 (1972) (“[I]f arbitrary and discriminatory en-
forcement is to be prevented, laws must provide explicit
standards for those who apply them. A vague law imper-
missibly delegates basic policy matters to policemen,
judges, and juries for resolution on an ad hoc and subjec-
tive basis, with the attendant dangers of arbitrary and
discriminatory application.”) (footnotes omitted).      Cf.
Kolender v. Lawson, 461 U.S. 352, 357–58 (1983) (noting
in the context of a criminal penalty scheme that, although
the vagueness doctrine “focuses both on actual notice to
citizens and arbitrary enforcement, we have recognized
recently that the more important aspect of vagueness
doctrine ‘is not actual notice, but the other principal
element of the doctrine—the requirement that a legisla-
ture establish minimal guidelines to govern law enforce-
ment.’    Where the legislature fails to provide such
minimal guidelines, a criminal statute may permit ‘a
standardless sweep [that] allows policemen, prosecutors,
and juries to pursue their personal predilections.’” (quot-
ing Smith v. Goguen, 415 U.S. 566, 574, 575 (1974))).
     Other circuits to have considered the use of the sub-
jective terms connoting insult—like disparagement—
have expressed similar concerns about the absence of
objective standards governing their application.
    In Dambrot v. Central Michigan University, 55 F.3d
1177 (6th Cir. 1995), for example, the Sixth Circuit con-
sidered the discriminatory harassment policy of Central
Michigan University (“CMU”). That policy defined racial
and ethnic harassment as:
IN RE TAM                                                     9



    any intentional, unintentional, physical, verbal, or
    nonverbal behavior that subjects an individual to
    an intimidating, hostile or offensive educational,
    employment or living environment by . . . (c) de-
    meaning          or        slurring        individuals
    through . . . written literature because of their ra-
    cial or ethnic affiliation; or (d) using symbols, [epi-
    thets]    or    slogans      that    infer   negative
    connotations about the individual’s racial or
    ethnic affiliation.
Id. at 1182 (emphases added). The court found the policy
impermissibly vague because it required “one [to] make a
subjective reference” and because “different people find
different things offensive.” Id. at 1184. As such, the
policy’s enforcement was too tied to subjective reference
and, thus, both failed to “provide fair notice” and gave rise
to an “unrestricted delegation of power” to university
officials. Id. See also Wynn Oil Co. v. Purolator Chem.
Corp., 536 F.2d 84, 86 (5th Cir. 1976) (finding the subsec-
tion of an “injunction which restrains defendants from
‘slandering and disparaging the Wynn Oil Co. and its
products’ [to be] impermissively vague”).
    In Ridley v. Massachusetts Bay Transportation Au-
thority, 390 F.3d 65 (1st Cir. 2004), the First Circuit
upheld the validity of the Massachusetts Bay Transporta-
tion Authority’s (“MBTA”) “guideline prohibiting demean-
ing or disparaging material,” id. at 93, because, in that
case, “there [was] no serious concern about either notice
or chilling effects[] where there [were] no consequences
for submitting a non-conforming advertisement and
having it rejected” id. at 94. But that court specifically
distinguished the guidelines at issue—“given the nature
of the MBTA’s advertising program and its chief purpose
of raising revenue without losing ridership,” id. at 94—
from “the concern over subjective decision making[, which
has the] most effect in government licensing schemes” id.
at 95. While the trademark registration scheme is not a
10                                                    IN RE TAM




traditional public forum making use of a licensing scheme
to “maintain basic order,” it implicates the “[e]xcessive
discretion and vagueness inquiries under the First
Amendment” in much the same way. Id. at 94. As the
majority notes, trademark registrants receive substantial
benefits from the fact of registration, Maj. Op. 5–6; denial
of those benefits based on the subjective views of govern-
mental employees about the potential subjective views of
those who might be exposed to the proposed mark is an
essentially standardless measure.
     In McGinley, we found § 2(a)’s ban on scandalous sub-
ject matter, “sufficiently precise to enable the PTO and
the courts to apply the law fairly and to notify a would-be
registrant that the mark he adopts will not be granted a
federal registration.” 660 F.2d at 484. While I agree that
the PTO is capable of “notify[ing] a would-be registrant”
of its decision to deny registration under § 2(a), the law is
by no means precise enough to “enable the PTO and the
courts to apply [it] fairly.” Id. As the majority points out,
the Board has allowed use of a term by one trademark
holder while disallowing use of precisely the same term by
another based apparently on its view of how use of that
term might be received by the audience the Board has
chosen to “identify.” Maj. Op. 21–23. This fact alone
evidences the absence of explicit standards for the appli-
cation of § 2(a).
    As it turns out, the PTO’s Assistant Commissioner
was correct in 1939 in expressing concern that “the word
‘disparage’ . . . is going to cause a great deal of difficulty in
the Patent Office, because . . . it is always going to be just
a matter of the personal opinion of the individual parties
as to whether they think it is disparaging.” Hearing on
H.R. 4744 Before the Subcomm. on Trademarks of the H.
Comm. on Patents, 76th Cong. 21 (1939) (statement of
Leslie Frazer). The Board has likewise commented on the
vague and subjective nature of § 2(a). See, e.g., In re In
Over Our Heads, 1990 WL 354546, at *1 (T.T.A.B. 1990)
IN RE TAM                                               11



(“[T]he guidelines for determining whether a mark is
scandalous or disparaging are somewhat vague and the
determination of whether a mark is scandalous or dispar-
aging is necessarily a highly subjective one.”) (bracketing
and quotation marks omitted); Harjo v. Pro-Football, Inc.,
1999 WL 375907, at *35 (T.T.A.B. 1999) (noting that
whether a mark is disparaging “is highly subjective and,
thus, general rules are difficult to postulate”).
    “It is a basic principle of due process that an enact-
ment is void for vagueness if its prohibitions are not
clearly defined.” Grayned, 408 U.S. at 108. The need for
clarity is especially relevant when a law implicates First
Amendment rights, as § 2(a) indisputably does. Section
2(a) does not provide a “person of ordinary intelligence a
reasonable opportunity to know what is prohibited, so
that he may act accordingly.” Id. And inconsistent,
indeed seemingly rudderless, application of § 2(a) demon-
strates the “arbitrary and discriminatory enforcement”
that occurs when regulations do not “provide explicit
standards for those who apply them.” Id.
    While I agree with the majority’s thoughtful First
Amendment analysis, I do not believe it is the only predi-
cate to the conclusion that § 2(a) is unconstitutional.
                       CONCLUSION
    For the above reasons, I concur in the majority’s con-
clusions and separately concur in the result.
  United States Court of Appeals
      for the Federal Circuit
                  ______________________

              IN RE SIMON SHIAO TAM
                ______________________

                        2014-1203
                  ______________________

    Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
85/472,044.
                 ______________________

DYK, Circuit Judge, concurring in part and dissenting in
part, with whom Circuit Judges LOURIE and REYNA join
with respect to parts I, II, III, and IV.
    The majority is correct that the bar on registration of
disparaging marks is unconstitutional as applied to Mr.
Tam. But in my view the majority errs in going beyond
the facts of this case and holding the statute facially
unconstitutional as applied to purely commercial speech.
     It is noteworthy that the majority seeks to justify its
sweeping holding by describing § 2(a) as being something
it is not. The provision bars the registration of marks
that “disparage . . . or bring into contempt, or disrepute.”
15 U.S.C. § 1052(a) (otherwise identified as § 2(a)). The
majority repeatedly asserts that “[t]he government enact-
ed § 2(a), and defends it today, because it is hostile to the
2                                                  IN RE TAM




messages conveyed by the refused marks.” 1 Maj. Op. at
23. In my view, there is nothing in the statute itself or
the legislative history that supports this interpretation.
On its face, and as interpreted by the Trademark Trial
and Appeal Board (“the Board”), the statute is designed to
preclude the use of government resources not when the
government disagrees with a trademark’s message, but
rather when its meaning “may be disparaging to a sub-
stantial composite of the referenced group.” In re Lebanese
Arak Corp., 94 U.S.P.Q.2d 1215, 1217 (T.T.A.B. 2010)
(emphasis added). The PTO uses an objective test in
making this determination, looking to dictionaries, the
relationship of the matter to the other elements of the
mark, the nature of the goods or services, and the manner
in which the mark is used in the marketplace in connec-
tion with the goods or services. See id. 2




    1    The majority frequently characterizes the statute
as “discriminat[ing] on the basis of message conveyed”
and hence “viewpoint.” Maj. Op. at 19. “It does so as a
matter of avowed and undeniable purpose, and it does so
on its face.” Id. “Denial of these benefits creates a serious
disincentive to adopt a mark which the government may
deem offensive or disparaging.” Id. at 29. “The entire
interest of the government in § 2(a) depends on disap-
proval of the message.” Id. at 57. “All of the govern-
ment’s proffered interests boil down to permitting the
government to burden speech it finds offensive.” Id. at 61.
    2    To be sure, the Board may have rendered incon-
sistent results in some cases, but this has no bearing on
the facial validity of § 2(a). See, e.g., Nat’l Endowment for
the Arts v. Finley, 524 U.S. 569, 587 (1998); Red Lion
Broad. Co. v. F.C.C., 395 U.S. 367, 396 (1969). In any
event, when the government is not acting in its sovereign,
IN RE TAM                                                  3



    Thus the purpose of the statute is to protect un-
derrepresented groups in our society from being bombard-
ed with demeaning messages in commercial advertising.
The question is whether the statute so designed can
survive First Amendment scrutiny. My answer is that
the statute is constitutional as applied to purely commer-
cial trademarks, but not as to core political speech, of
which Mr. Tam’s mark is one example. Ultimately, unlike
the majority, I do not think that the government must
support, or society tolerate, disparaging trademarks in
the name of commercial speech. The majority’s opinion
not only invalidates the bar on disparaging marks in
§ 2(a) but may also effectively invalidate the bar on scan-
dalous marks and the analogous provisions of the Model
State Trademark Act. See 1964 Model State Trademark
Act, § 2(b). The government need not support the inevita-
ble consequence of this decision—“the wider registration
of marks that offend vulnerable communities.” Maj. Op.
at 61.
                              I
      As the majority notes, the Supreme Court has long
recognized the protection of offensive speech that consti-
tutes core political expression. “The right to free speech
. . . may not be curtailed simply because the speaker’s
message may be offensive to his audience.” Hill v. Colo-
rado, 530 U.S. 703, 716 (2000). Underpinning the First
Amendment’s protection of core speech that is disparaging
is the fundamental constitutional value of preserving an
“uninhibited marketplace of ideas in which truth will
ultimately prevail,” a marketplace that provides “suitable
access to social, political, esthetic, moral, and other ideas
and experiences.” Red Lion, 395 U.S. at 390. Integral to


regulatory capacity, “the consequences of imprecision are
not constitutionally severe.” Finley, 524 U.S. at 589.
4                                                 IN RE TAM




an “uninhibited marketplace of ideas” is the ability to
incite debate. “[A] principal function of free speech under
our system of government is to invite dispute. It may
indeed best serve its high purpose when it induces a
condition of unrest, creates dissatisfaction with conditions
as they are, or even stirs people to anger.” Texas v. John-
son, 491 U.S. 397, 408–09 (1989). Thus to maintain a
“meaningful dialogue of ideas,” “we must tolerate insult-
ing, and even outrageous, speech in order to provide
adequate breathing space to the freedoms protected by
the First Amendment.” Snyder v. Phelps, 562 U.S. 443,
452, 458 (2011) (internal quotation marks, citations, and
alterations omitted). 3 At bottom, as Justice Holmes
described, in the core speech area the First Amendment
enshrines the “principle of free thought—not free thought
for those who agree with us but freedom for the thought
that we hate.” U.S. v. Schwimmer, 279 U.S. 644, 654–55
(1929) (Holmes, J., dissenting).
    But this principle simply does not apply in the com-
mercial context. For example, it is well established that
racially or sexually disparaging speech in the workplace,
when severe, may constitute a violation of Title VII,
either as harassment or the creation of a hostile work
environment. See, e.g., Faragher v. City of Boca Raton,
524 U.S. 775, 787–88 (1998); Rogers v. Western-Southern
Life Ins. Co., 12 F.3d 668, 675 (7th Cir. 1993). The same
is necessarily true in the context of federal public accom-
modations law governing commercial establishments. No
case of which I am aware suggests that imposing liability
for disparaging speech in those commercial contexts, even



    3   See also, e.g., Cohen v. California, 403 U.S. 15, 25
(1971); Hess v. Indiana, 414 U.S. 105, 107 (1973); Denver
Area Educ. Telecomm. Consortium, Inc. v. F.C.C., 518
U.S. 727, 753–54 (1996).
IN RE TAM                                                5



when separated from conduct, violates the First Amend-
ment.
    So too in the area of commercial speech race or sex
disparagement can claim no First Amendment protection.
Unlike core political expression, the “extension of First
Amendment protection to commercial speech is justified
principally by the value to consumers of the information
such speech provides.” Zauderer v. Office of Disciplinary
Counsel of Supreme Court of Ohio, 471 U.S. 626, 651
(1985). Its constitutional protection derives not from any
dialogic function in the marketplace of ideas, but rather
from its “informational function” in the marketplace of
goods and services, Central Hudson Gas & Elec. Corp. v.
Pub. Serv. Comm’n of N.Y., 447 U.S. 557, 563 (1980), in
other words, “who is producing and selling what product,
for what reason, and at what price.” Va. State Bd. Of
Pharmacy v. Va. Citizens Consumer Council, Inc., 425
U.S. 748, 765 (1976); see also Sorrell v. IMS Health Inc.,
131 S. Ct. 2653, 2673–74 (Breyer, J., dissenting). We
protect the dissemination of this information to ensure
that “private economic decisions” are “intelligent and well
informed.” Va. State Bd. Of Pharmacy, 425 U.S. at 765.
    Speech proposing a commercial transaction is “an ar-
ea traditionally subject to government regulation.” 44
Liquormart, Inc. v. Rhode Island, 517 U.S. 484, 499
(1996) (citing and quoting Ohralik v. Ohio State Bar
Ass’n, 436 U.S. 447, 456 (1978)). The Court has “been
careful to distinguish commercial speech from speech at
the First Amendment’s core,” Florida Bar v. Went For It,
Inc., 515 U.S. 618, 623 (1995), recognizing the “com-
monsense distinctions that exist between commercial and
noncommercial speech.” 44 Liquormart, 517 U.S. at 502
(quoting Virginia Bd. of Pharmacy, 425 U.S. at 771
n.24). The “greater objectivity” and “greater hardiness” of
commercial speech and the different constitutional values
underlying its protection “likely diminish[] the chilling
6                                                   IN RE TAM




effect that may attend its regulation.” 44 Liquormart, 517
U.S. at 499 (internal quotation marks and citations
omitted). Accordingly, the Court has explained that “the
State may regulate some types of commercial advertising
more freely than other forms of protected speech,” id. at
498 (internal quotations marks and citations omitted),
and “the State may at times prescribe what shall be
orthodox in commercial advertising,” Hurley v. Irish-
American Gay, Lesbian & Bisexual Group of Boston, 515
U.S. 557, 573 (1995) (internal quotation marks and cita-
tions omitted)—something it could never do with core
political speech.
    Recognizing the more limited protection of commercial
speech, the Court has repeatedly upheld regulations
“protect[ing] consumers from misleading, deceptive, or
aggressive sales practices,” because such regulations are
“consistent with the reasons for according constitutional
protection to commercial speech” in the first place. 44
Liquormart, 517 U.S. at 501; see also, e.g., Florida Bar,
515 U.S. 618 (1995); Metromedia, Inc. v. City of San
Diego, 453 U.S. 490 (1981); Bates v. State Bar of Ariz., 433
U.S. 350 (1977). “There can be no constitutional objection
to the suppression of commercial messages that do not
accurately inform the public about lawful activity.”
Central Hudson, 447 U.S. at 563.
     This stands in stark contrast to core political speech,
for which “constitutional protection does not turn upon
‘the truth . . . of the ideas and beliefs which are offered.’”
N. Y. Times Co. v. Sullivan, 376 U.S. 254, 271 (1964)
(quoting NAACP v. Button, 371 U.S. 415, 445 (1963)).
“The erroneous statement is inevitable in free debate, and
[] it must be protected [absent a showing of actual malice]
if the freedoms of expression are to have the breathing
space that they need to survive.” Id. at 271–72 (internal
quotation marks, citations, and alterations omitted).
“Authoritative interpretations of the First Amendment
IN RE TAM                                                 7



guarantees have consistently refused to recognize an
exception for any test of truth.” N. Y. Times, 376 U.S. at
271. See also Hustler Magazine, Inc. v. Falwell, 485 U.S.
46, 52 (1988).
     To be sure, the Court has held that commercial adver-
tising cannot be restricted just because the product or
service may be offensive to some members of the audi-
ence. See Bolger v. Youngs Drug Prods. Corp., 463 U.S.
60, 71 (1983); Carey v. Population Servs. Int’l, 431 U.S.
678, 701 (1977). But, at the same time, the Court has
explained that the manner of advertising itself may be
restricted to protect the audience’s privacy interests. See
Florida Bar v. Went For It, Inc., 515 U.S. 618, 630 (1995).
“[T]he existence of [First Amendment] protection does not
deprive the State of all power to regulate such advertising
in order to minimize its offensiveness.” Bolger, 463 U.S.
at 84 (1983) (Stevens, J., concurring) (citing and quoting
from Carey, 431 U.S. at 716 (Stevens, J., concurring)).
     For example, in Florida Bar the Court upheld a ban
on lawyer advertising targeted to recent accident victims
and their families. 515 U.S. at 634–35. There the Court
distinguished Bolger, which rejected a total ban on adver-
tising related to contraceptives, because the government’s
interest in Bolger had been only to shield citizens from
generally “offensive” and “intrusive” products. See id. at
630–31. That interest, the Court explained, was entirely
different from the interest in “protecting the personal
privacy and tranquility of [Florida’s] citizens from crass
commercial intrusion by attorneys upon their personal
grief in times of trauma.” Id. at 630 (alterations omitted).
The Court thus had “little trouble crediting the Bar’s”
“privacy-based” interest as “substantial,” and held that it
was sufficient to justify the advertising ban. Id. at 625,
629, 635.
8                                                IN RE TAM




    Disparagement as defined by the Board “is essentially
a violation of one’s right of privacy—the right to be let
alone from contempt or ridicule.” TMEP § 1203.03(b).
While in the trademark context the dissemination of the
disparaging material is not limited to the disparaged
group, the disparaged group is nonetheless targeted in the
sense that it is singled out for ridicule. Furthermore, the
fact that the dissemination of the disparaging advertising
is not limited to the disparaged group makes the govern-
ment’s interest here all the greater—the effect on the
disparaged group is amplified, not lessened, by dissemi-
nating the disparaging material to the public at large.
     This well-recognized disparity in the types of re-
strictions that are permissible as applied to commercial as
opposed to political speech derives from the very different
constitutional values underlying their protection in the
first place. The Court has recognized that the govern-
ment has greater authority to “distinguish between the
relative value of different categories of commercial
speech” than of noncommercial speech. Metromedia, 453
U.S. at 514. Specifically, the government has a distinct
and substantial interest in “proscribing intrusive and
unpleasant formats” for commercial expression. Members
of City Council of L.A. v. Taxpayers for Vincent, 466 U.S.
789, 806 (1984); see also Lehman v. City of Shaker
Heights, 418 U.S. 298, 304 (1974); Metromedia, 453 U.S.
at 514. Indeed, “it may not be the content of the speech,
as much as the deliberate ‘verbal or visual assault,’ that
justifies proscription.” Hill, 530 U.S. at 716 (quoting
Erznoznik v. Jacksonville, 422 U.S. 205, 210–11, n.6
(1975)).
    Unlike core political speech, where offensiveness or
disparagement has recognized value in its tendency to
provoke debate, disparagement in commercial advertising
furthers no First Amendment value. Indeed, neither
counsel at oral argument nor the majority in its opinion
IN RE TAM                                                   9



has identified any First Amendment value served by
disparaging speech in the commercial context. Thus even
blanket bans on commercial speech may be the kind of
consumer protective regulations that are consistent with
the “informational function” of commercial advertising.
See Central Hudson, 447 U.S. at 563.
    The majority, apparently recognizing that purely
commercial speech is entitled to lesser protection, urges
that all disparaging trademarks deserve heightened First
Amendment protection because they have an expressive
component. See Maj. Op. at 23–24. While I agree that
some marks, including Mr. Tam’s, have an expressive
component, it would seem beyond debate that many do
not, as is the case with respect to routine product identifi-
ers. Indeed, the Supreme Court confirmed the lack of an
expressive component in most trade names in Friedman
v. Rogers, where it explicitly distinguished between
advertisements that “editorialize on any subject, cultural,
philosophical, or political,” which might be entitled to
greater First Amendment protection, and the “mere
solicitation of patronage implicit in a trade name,” which
“is a form of commercial speech and nothing more.” 440
U.S. 1, 11, n.10 (1979). The Court again recognized this
distinction in S.F. Arts & Athletics Inc. v. U.S. Olympic
Comm’n, 483 U.S. 522, 535 (1987). “To the extent that
[the statute] applies to uses for the purpose of trade [or] to
induce the sale of any goods or services, its application is
to commercial speech.” Id. (alterations omitted).
    In short, many trademarks lack the kind of “expres-
sive character” that would merit First Amendment pro-
tection for offensive content, and a regulation of the use of
those marks could satisfy the Central Hudson test for
commercial speech—a substantial government interest
reflected in a narrowly tailored regulation. The majority’s
contrary conclusion seems to me to be unsupported.
10                                                IN RE TAM




                             II
    Even if disparaging commercial speech were protected
from government ban or regulation, this case does not
turn on the legitimacy of a regulation or a “blanket ban”
on disparaging commercial speech. The refusal to register
disparaging marks is not a regulation or “blanket ban” on
anything. Rather, it involves the denial of a subsidy, and
because it is a subsidy, it may be content based. It is
“well established that the government can make content-
based distinctions when it subsidizes speech.” Davenport
v. Wash. Educ. Ass’n, 551 U.S. 177, 188–89 (2007). The
First Amendment “does not confer an affirmative right to
use government [] mechanisms for the purpose of” expres-
sion, 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 Willing-
boro, 431 U.S. 85, 97 (1977) (striking down a ban on
placing “For Sale” and “Sold” signs on residential proper-
ty); 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 pre-
scription drug prices); Sorrell v. IMS Health Inc., 131 S.
Ct. 2653, 2659 (2011) (invalidating a state law that pro-
hibited 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 re-
gime.” Maj. Op. at 52. Section 2(a) does not regulate any
speech, much less impose a blanket ban. It merely de-
prives a benefit. The majority claims that federal trade-
mark registration is not a subsidy because “the subsidy
cases have all involved government funding or govern-
ment 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 proper-
ty. 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 mecha-
nism by refusing to collect nonmember fees for election-
related purposes unless the nonmember affirmatively
consented. Id. at 180. The unions argued that this re-
striction was an unconstitutional content-based discrimi-
nation. 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 cita-
tions omitted), the content-based condition on that benefit
did not raise a “realistic possibility that official suppres-
sion 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 pro-
cess.” 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 pre-
venting 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 govern-
ment abridgement of speech,” not the right to be “as-
sist[ed] [] in funding the expression of particular ideas.”
Id. at 358. “While publicly administered payroll deduc-
tions for political purposes can enhance the unions’ exer-
cise 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 endeav-
or.” Id. Thus the Court again declined to apply height-
ened scrutiny and upheld the regulation in light of the
“government’s interest” in “avoiding the reality or ap-
pearance of government favoritism.” Id.
    The same is true here. Federal trademark registra-
tion, like the state-bestowed collection mechanisms for
unions in Davenport and Ysursa, is a government-
bestowed 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 govern-
ment in support of the mark holder’s commercial identifi-
cation, 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 purpos-
es 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 common-
ly the effect of the denial of subsidies, as the Supreme
Court has recognized. See Regan, 461 U.S. at 550 (“Al-
though 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 appli-
cants 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 lever-
age 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 edito-
rializing 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 ar-
guments 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 unconstitu-
tional 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 objec-
tives 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 provid-
ed by § 2(a) discriminates based on viewpoint because
favorable racial and other marks are allowed while dis-
paraging 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 reasona-
ble and viewpoint neutral . . .”); Ysursa, 555 U.S. at 361,
n.3. And the Court has upheld subsidies that were facial-
ly 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 pri-
vate, indigent client” and viewpoint discrimination un-
dermined 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 view-
point 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 gov-
ernments.” 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 registra-
tion 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 attempt-
ing 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 discrimina-
tion as the government’s disagreement with the underly-
ing “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 “sub-
stantial composite of the referenced group.” As in Daven-
port 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 demon-
strated 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 foot-
ball’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 psy-
chological effects of holding a minority group up for ridi-
cule 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 inter-
est 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 ridi-
cule.” TMEP § 1203.03(c).
    The government has an interest in “proscribing intru-
sive 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 Su-
preme 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” dispar-
aging commercial expression. Ysursa, 555 U.S. at 360



missouri-footballs-boycott-helped-unite-a-troubled-
campus/2015/11/13/64fe68ea-8a0f-11e5-be8b-
1ae2e4f50f76_story.html.
    8   See, e.g., American Psychological Ass’n, APA Reso-
lution Recommending the Immediate Retirement of Ameri-
can 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 inter-
est. 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 noncommer-
cial use of a mark, for parody, as an example, weighs
against likelihood of confusion. See, e.g., Rogers v. Gri-
maldi, 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-racist-
vintage-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 re-
quire[] 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 judg-
ment 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 stereo-
types 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 recog-
nized interests in protecting citizens from targeted, de-
meaning 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 expres-
sion, the government cannot justify restricting disparag-
ing 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 im-
posed an obligation on the government to subsidize offen-
sive, 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 deci-
sions. 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 disparage-
ment 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 pro-
vided 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 disparage-
ment proscription, see Appellee’s En Banc Br. 6. The
USPTO’s authority to refuse to issue trademark registra-
tions 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 mecha-
nisms 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 owner-
ship 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 trade-
mark applicant’s right of free speech has been impaired
by the failure of the USPTO to grant a federal registra-
tion 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 discour-
aging effect, but the government does not necessarily
violate an individual’s constitutional rights merely by
refusing to grant registration and thereby provide addi-
tional 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 desig-
nations 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 markhold-
ers would be left with absolutely no recourse for trade-
mark 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 mark-
holder 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 regis-
tration imparts the “imprimatur” of the federal govern-
ment 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 gov-
ernment 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 terri-
tory. 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 regula-
tion 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 dis-
sent.
    Trademarks are commercial speech. And precisely
because trademarks are commercial speech, the govern-
ment’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 gov-
ernment 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, appro-
priate regulation may be justified.
                      DISCUSSION
     A. Intermediate Scrutiny Applies Because Trade-
               marks 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 safe-
guarded 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. Fried-
man, 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 Con-
sumer Council, Inc., 425 U.S. 748, 771-72 (1976).
   The courts have long recognized that some trade-
marks can include expressive elements concerning mat-
IN RE TAM                                                 3



ters of public interest, and that such trademarks never-
theless remain commercial speech. Historically, commer-
cial 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, be-
cause 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 “‘com-
mercial’ 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 simp-
ly, commercial speech does not transform into core politi-
cal 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 con-
sider “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 advertise-
ments, (2) the pamphlets referenced a specific product,
and (3) the speaker had an economic motivation for mail-
ing the pamphlets. Bolger, 463 U.S. at 66-68. The Court
4                                                 IN RE TAM




concluded that “[t]he combination of all these characteris-
tics” supported the conclusion that “the informational
pamphlets are properly characterized as commercial
speech.” Id.
    All three factors from Bolger are necessarily also pre-
sent 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 reiter-
ates 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 com-
merce, when considered as a whole, is indisputably com-
mercial, not political.


    1    The registration of a trademark confers a competi-
tive 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 commer-
cial 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., concur-
ring at *20-21. But if the expressive content of the mark
precludes regulation, on what authority may the govern-
ment 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 regula-
tion, 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 sup-
pressing 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 in-
tent 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 content-
neutral 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 protect-
ing 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 content-
neutral, despite the provisions’ mandate that cable pro-
viders 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 broadcast-
ing 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, interme-
diate scrutiny is appropriate, even if the regulation impli-
cates 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 commer-
cial activity and to undermine the stability of the market-
place 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 com-
merce 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” commer-
cial speech, even if that speech is not wholly false, be-
cause 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 mislead-
ing.”) (emphasis added). Instead, any speech that sub-
stantially 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 mar-
ketplace 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 politi-
cal 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 inter-
state 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 busi-
ness 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 ac-
commodations, 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. Dis-
criminatory 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 restau-
rant 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 dis-
criminatory 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 vo-
luminous 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 com-
mercial 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 regula-
tion.” 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 mes-
sage 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 gov-
ernment-created benefit—the exclusive right to use that
speech in commerce in connection with the sale of particu-
lar 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 particu-
larly 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 disparag-
ing”). To borrow a phrase from Justice Stevens, few of us
would march our sons and daughters off to war to pre-
serve 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 rela-
tive 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 Constitution-
al problem.” Id. at 571-72. To whatever extent “disparag-
ing” 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 inter-
est 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 interme-
diate 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 constitu-
tional. I respectfully dissent.
