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."