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By Keiko Ichiye
Scott Carlin has worked hard to build a musical collective that is inclusive, supportive, and fun. He wanted to protect that reputation, so in February 2024 he applied to trademark the band name: ÖLD PHÜKKERZ. In December 2024, the U.S. Patent and Trademark Office (PTO) registered the Öld Phükkerz trademark.
Registering the band name would not have been so easy in the past. Prior to 2017, the PTO had routinely rejected controversial names as being disparaging, immoral, scandalous, or otherwise not permissible for a trademark. However, in a landmark First Amendment decision, the U.S. Supreme Court held that denying the trademark for a band called “The Slants” violated the First Amendment, paving the way for the Öld Phükkerz trademark.
Trademarking Your Band Name
The band name is a crucial part of the band’s identity. The name represents the band and helps fans find the band’s music, performances, and merchandise. Trademarking the band name is an important step to protecting the identity, as that prevents others from using the name without permission. A trademark can prevent others from performing under the band’s name and from selling recordings or merchandise with the name.
THE SLANTS®
In 2010, Simon Tam attempted to trademark the name of his all Asian American dance rock band: The Slants. The term “slants” had been used by bigots against people with Asian ancestry, but Tam had hoped to reclaim the term for Asian Americans. In response, the PTO rejected Tam’s application, relying on the “disparagement clause” of federal trademark law that bars registration of trademarks that may disparage a group of people. In response, Tam provided evidence from prominent Asian Americans that the term is not disparaging when it is used in a self-referential, self-empowering manner. The PTO, however, was not convinced. (Tam (2018), p. 7.)
Tam filed a new application in 2011, which was rejected. On appeal, the PTO essentially argued that because the band had Asian American members, then “slants” is being used as a racial slur. In other words, if the band had been of any other race, the name would not have this problem. Tam noted, “In the name of protecting Asian Americans against racism, the USPTO was denying rights based on Asian American identity.” (Tam (2018), p. 10.)
The case went all the way to the Supreme Court, where Tam argued that rejecting the trademark was an abridgement of due process and First Amendment rights. The Court agreed with Tam. In 2017, the Court issued a significant free-speech decision, which held that the disparagement clause “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” (Matal v. Tam (2017), pp. 1-2.)
Supreme Court Justice Ruth Bader Ginsberg summarized the case, “Dance rock band front man Simon Tam sought to trademark The Slants. His aim was to reappropriate a term long used to disparage a minority group and to render the term a badge of pride. All of us agreed.” (Tam (2019), back cover.)
BUTTHOLE SURFERS®
King Coffey of the legendary psychedelic punk band, the Butthole Surfers, was no stranger to trademarks. He used to run a record label and had successfully registered trademarks for other bands’ names. At first, he didn’t worry about registering “Butthole Surfers” because it was unlikely they would be confused with any other band with the same name.
However, they soon realized they could not stop others from selling bootleg Butthole Surfers merchandise. Coffey stated that he “had trouble preventing bootleg t-shirts with our name on them since we couldn’t prove we owned the name. NYC cops once asked me to show our trademark paperwork when we tried to stop people selling bootleg shirts in front of our show there. Apparently, NY cops find time to study trademark law. Similarly, we couldn’t prevent bootleg recordings from being sold on eBay, etc.”
Coffey applied for a trademark in 1999, but the PTO rejected the name as being “obscene.” Coffee's reaction was understandable -- “We were floored, since we were an established band on a major label, had been on national TV, etc., but we had no legal protection over our own name, it seemed. We could have appealed the decision, but we didn’t have a lawyer at the time and were cash-shy, so we shrugged the whole thing off.”
Pursuing a trademark can indeed be expensive. Tam describes his costs. “Despite receiving most of the work on my case in-kind, I was still responsible for court fees, appellate printing, and other expenses. I have spent tens of thousands of dollars and almost a decade of my life in legal limbo. If the expert services were not donated, the costs would be unbearable.” (Tam (2018), p. 10.)
Fortunately, after the Slants 2017 decision, the Butthole Surfers tried again, and their trademark was registered in February 2019. “Thankfully the Slants came to save the day”, Coffey commented. “We applied again (this time with a lawyer) and it sailed through.”
FUCT®: Friends U Can’t Trust
The FUCT company sells streetwear and lifestyle apparel with the company’s name prominently displayed. The brand name is an acronym for “Friends U Can’t Trust”, pronounced as four letters: F-U-C-T. In the decades prior to The Slants’ case, the owner Erik Brunetti had attempted to register the FUCT name. The PTO had rejected the name, claiming the four-letter acronym violated law that bars trademark protection for “immoral” and “scandalous” words. (Cantor, (2019.))
The Slants’ case changed the landscape, so Brunetti brought his case back. Like with The Slants’ case, Brunetti claimed the rejection of the FUCT trademark infringed on a fundamental principle of free speech law: the government can’t penalize, disfavor, or discriminate against expressions based on the ideas or viewpoints it conveys. (Cantor, (2019.))
The Supreme Court agreed and in 2019 struck down the longstanding ban on trademarking “immoral” or “scandalous” words. Justice Elena Kagan wrote, “But in any event, the ‘immoral or scandalous’ bar is substantially overbroad. There are a great many immoral and scandalous ideas in the world (even more than there are swearwords), and the Lanham Act covers them all. It therefore violates the First Amendment.” (Iancu v. Brunetti (2019).)
THUNDERPUSSY®
Thunderpussy is a Seattle-based rock band that seeks to change the world. “Our mission is to gather, uplift and empower those around us by creating a space where people can connect and express themselves freely.” (Thunderpussy.com/home.)
The band applied for a trademark in 2015, but the PTO rejected the application. And, even when the Tam case was decided in 2017 and the Brunetti case in 2019, the PTO did not issue a registration for Thunderpussy until April 2020. (Kiley (2020).)
Ben Kerr, who represented Thunderpussy, wasn’t particularly surprised by the protracted legal process. “And for women – and, in the case of The Slants, people of color – everything is at least twice as hard,” he said. “I would just note how difficult and what an uphill climb it is for creatives to sustain themselves financially, especially in these times. So Thunderpussy securing their trademark is a small but important win.” (Kiley (2020).)
ÖLD PHÜKKERZ®
In 2021, Scott Carlin started the Öld Phükkerz band in Austin, Texas. The band plays 70s, 80s, and 90s punk, new wave, and alternative cover songs. Their shows raise money for music-related non-profits and local musicians facing difficult times.
Playing a musical instrument in public can be daunting, and the rock music community can seem unfriendly to women and minorities. To counter this, the Öld Phükkerz band encourages all to participate, and their rehearsals and performances provide supportive environments that allow everyone to improve and grow.
Carlin explains the motivation behind the Öld Phükkerz band. “It’s important to me to bring people together, no matter their race, gender, orientation, social status, etc. Music that people have common ground with can do just that, and I believe part of the appeal is that the music we choose to showcase is pretty different from most cover bands. Also, the fact that we have many different musicians and singers joining us sets us apart and helps to build even more bonds between people.”
Carlin has worked hard to keep the Öld Phükkerz band inclusive, supportive, and fun, so it was critical to protect this reputation. A trademark registration would prevent others from using the Öld Phükkerz name to start another group that might not support these ideals. Wei Wei Jeang of Fulton Jeang PLLC assisted Carlin with applying for the trademark. In December 2024, the PTO registered the trademark, which would not have been possible without the previous battles fought by The Slants.
As for the future, Carlin remarked, “Having our name trademarked is most definitely a step in the right direction of protecting the reputation of the group and the vision that we have. I have toyed with the idea of expansion or maybe even franchising the name/idea but that requires a lot of thought, soul-searching, and planning – so we’ll see what the future holds!”
RAWK ON!
Simon Tam shared his thoughts, “I’m honored that our band played a role in helping protect the creative expression of artists, nonprofits, and businesses who show how our words and symbols can be used for good. Irony, satire, and humor are important tools for advancing social change – something that punk rock understood decades ago. Whether you’re a part of the ÖLD PHÜKKERZ, a Butthole Surfer, or The Slants, we’re showing how these rights really belong to the communities (and free markets) we’re a part of.”
Many thanks to Simon Tam, King Coffey, and Scott Carlin for their insightful contributions to this article. I appreciate all that these activist-musicians do for music and for the world.
REFERENCES
Matthew Cantor, “Supreme Court Allows FUCT Fashion to Keep ‘Vulgar’ Name”, The Guardian (24 June 2019).
Iancu v. Brunetti, 139 S. Ct. 2294 (2019).
Brendan Kiley, “After a Long Legal Struggle, Seattle Band Thunderpussy is Granted a U.S. Trademark”, Seattle Times (5 April 2020).
Matal v. Tam, 582 U.S. 218, 137 S. Ct. 1744 (2017).
Simon Tam, “First Amendment, Trademarks, and the Slants: Our Journey to the Supreme Court”, 12 Buff. Intell. Prop. L.J. 1 (2018).
Simon Tam, Slanted: How an Asian American Troublemaker Took on the Supreme Court (2019).
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