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
`
`

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`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
`The Lanham Act
`I.
`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
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` 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
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` 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
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`
`
` 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.
`Facts of This Case
`II.
`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
`
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`
` 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.
`
`I.
`
`DISCUSSION
`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 bur