Imagine coming up with an original idea so brilliant it merits you spending the time and energy applying for a trademark. After the lengthy process of securing the trademark, you set out to build your business with the piece of mind that your concept is protected. Everything is going well and dandy until three years down the road you see someone else stealing your idea. Do you immediately send the owner a cease and desist letter, exerting your right over the trademark?
Many a trademark owner would answer yes, but this is the wrong approach as Tom Kelly, founder of Martini Lounge Radio discovered. Tom Kelly, a Philadelphia man that operates an internet radio channel is about to lose his trademark rights to AOL. Kelly received his trademark for “Martini Lounge Radio” back in 2009 by the USPTO. His station plays lounge music hits from the rat pack era which include the legendary greats of Frank Sinatra and Dean Martin. Earlier this year he discovered that AOL also operated their own “Martini Lounge Radio” which plays the same genre of music.
Tom Kelly hastily fired off a cease and desist letter to AOL exerting his right over what he perceived was his trademark. But instead of ceasing, AOL filed a petition with the USPTO to cancel Kelly’s trademark on grounds that they were using the name first. They also applied for the trademark at the same time.
What Kelly did not realize is that there is a grace period of five years for others to contest trademark ownership. Since Kelly is only in year four of his trademark ownership he unknowingly gave AOL the chance to contest the trademark. Had Kelly waited one more year and then submitted a §15 Declaration form for incontestable registration, AOL could not contest his trademark ownership.
Unfortunately, this lesson will cost him. AOL has the legal power and money to bully their way into ownership even if their claim is false. His chances of maintaining ownership over his trademark are slim at present.
If planning to send of a cease and desist letter to a perceived copy cat, make sure your trademark is incontestable before sending off. Also do your homework. It is wise to consult your attorney before taking any action. You don’t want to wake any giants like AOL.
