AOL Fights Philadelphia Man Over Martini Lounge Radio Trademark

The online giant is trying to cancel Tom Kelly’s trademark.

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Havertown’s Tom Kelly thought he had all of his bases covered. The former General Manager of WHAT 1340-AM in Philadelphia had taken his Rat Pack-laced “Martini Lounge Radio” show from the airwaves to internet radio in 2008 and applied for a trademark for the name. In 2009, the United States Patent & Trademark Office granted it, giving him ownership of the mark throughout the United States. But now four years later, it looks like AOL might take it all away.

It turns out that AOL has its own Martini Lounge internet radio channel, which, just like Kelly’s, plays a heck of a lot of Sinatra, Dean Martin and Sammy Davis, Jr. Kelly, whose station streams via iRadioPhilly.com, found out about the AOL station when a friend told him, “Hey, I heard you guys on AOL.” He looked up AOL’s station and then fired off a demand letter to the internet conglomerate to protect his trademark, telling them to back off.


But instead of backing off, AOL filed a petition for cancellation with the USPTO, claiming that Kelly's trademark should be invalidated because AOL's commercial use of name "Martini Lounge" predated Kelly's. The same day that AOL filed that petition, it also filed its own trademark application for the name, claiming that it had been using the term since way back in 2005, two years before Kelly's show went on the air on WHAT.

In trademark cases, there is a five year period during which a mark can be challenged once it is granted, explains Philadelphia trademark attorney Jordan LaVine, and since Kelly received his in 2009, AOL is well within that window. And yes, before you point out that Kelly probably would have been fine had he not alerted AOL of the existence of his station via his letter, he is well aware. "But that's not what you're supposed to do," says Kelly. "As a trademark owner, I am supposed to do everything I can to protect my trademark. That is the ethical thing to do."

According to LaVine, head of the trademark and copyright practice group at Center City's Flaster/Greenberg, the case is a pretty cut-and-dry one if AOL can demonstrate first use. "This really is one of those David vs. Goliath situations," says LaVine. "But the lesson here is: whenever you send a demand letter, you want to be very, very sure you have prior rights."

So far, AOL hasn't provided any evidence to Kelly or his attorney that it was first to the party with "Martini Lounge," but it doesn't sound like Kelly has the financial backing to fight a trademark war with a company that posted second-quarter revenues of $541 million this year. And that's what he'll have to do if he wants to see what's behind the curtain. (AOL's attorney did not immediately respond to a request for comment.) "AOL obviously has a helluva lot more money than I do," says Kelly. "This just just how these big companies work."

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  • Howard Pitkow

    The fact that AOL has to prove no ownership of the mark until many thousands of dollars are spent to battle it out in court is unfair. There should be some kind of mediation process to determine the validity of AOL’s claim against iRadiophilly first. Tom Kelly should not have to go into debt to protect what is rightfully his. Here we go once again…”money talks”.

    • AdrianHickman

      Agreed, Howard. This need to “negative option” ownership of your established mark is nothing more than a corporate version of eminent domain, Basically, AOL is grabbing it under the threat that they can outspend Tom,
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  • Catherine Cavella

    I feel your frustration, Howard, and I sympathize with Tom. But he doesn’t necessarily need to go into debt or give up.
    If I were in his shoes, I’d compare the cost of investigating AOL’s “prior use” claims with the cost of changing the name (the whole cost, including the opportunity cost and he “feeling bad about it” cost). If he can dig up evidence that AOL did not have prior use in commerce before his, then he may be able to find an enterprising trademark litigator to fight for him on contingency (meaning he doesn’t pay legal fees unless and until he wins). It will cost him something to hire an investigator and get a legal opinion about prior use, but it will cost much less than the cost of defending the lawsuit. And at that point he’ll be in a better position to get a settlement with AOL.
    Also, why didn’t AOL file an application to register MARTINI LOUNGE back when they were planning to use it? That’s what big companies typically do. It’s enough to at least raise the possibility that they are overstating their rights.