MLS, Beckham’s Miami Lose ‘Inter’ Name Trademark Ruling to Milan

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Major League Soccer’s multiyear litigation with Italian soccer club FC Internazionale Milano (aka Inter Milan) over the word “Inter” took a new turn last month. Three judges on the U.S. Trademark Trial and Appeal Board (TTAB) dismissed a claim brought by MLS on behalf of Club Internacional de Fútbol Miami (aka Inter Miami CF). MLS insists that Inter Milan’s pending trademark registration of “Inter” would cause consumer confusion with David Beckham’s club, which played its first match last year, and MLS as a whole. Several other soccer clubs use that word—an abbreviation for “international”—in their names.

The legal controversy began in 2014 when Inter Milan, which has been around since 1908, filed for trademark protection of “Inter” with the U.S. Patent and Trademark Office (USPTO). The club’s application contemplates a broad range of services and goods tied to the club’s brand. Conducting pro soccer games and broadcasting soccer games are two key services. Soccer balls, jackets, dog collars and even yo-yos are among the contemplated goods.

If granted to Inter Milan, trademark registration would provide several areas of legal protection. Two key ones: presumption of ownership of the mark and the exclusive right to use “Inter” in certain commercial activities. Registration would also furnish anti-counterfeit protective services from the U.S. Customs and Border Protection as well the possibility of obtaining treble monetary damages in infringement litigation.

MLS has repeatedly objected to Inter Milan’s application. The league’s objections started in March 2019, when MLS (which largely controls its franchises in a single entity or quasi-single entity model) filed a notice of opposition with the TTAB. MLS is rightfully worried about the prospect of another club “owning” the mark. Such an outcome could lead to infringement claims brought by Inter Milan and make it more difficult for MLS to combat the sale of counterfeit goods.

MLS’s legal strategy hinges, in part, on the prior use of “Inter” by other U.S. soccer clubs and organizations. Inter Soccer Association, Chicago Inter Soccer Club, Inter Atlanta F.C., InterCounty Youth Soccer League and Inter-County Youth Soccer League all used “Inter” prior to 2014. Clubs in other countries have used it as well, including FC Inter Turku, Inter Leipzig, Inter Baku, Inter de Grand-Goave, NK Inter Zapresic, Inter Moengotapoe, Inter de Luanda, Inter Club d’Escaldes.

MLS maintains it has a financial stake in preventing confusion between the various applications of “Inter” in the soccer world. This is particularly true, MLS attorneys have stressed in court filings, in regard to youth soccer clubs. The league is “deeply involved in the development of youth soccer clubs, both as sources of MLS fans and future professional soccer players” and mindful that four of the pre-2014 uses of “Inter” were by youth soccer organizations.

Writing on behalf of the TTAB, Judge Thomas Wellington deemed MLS’s argument unpersuasive. He concluded that MLS lacks a “legitimate interest” in possible confusion between Inter Milan’s use of Inter and use by other clubs with whom MLS lacks a relationship. The judge therefore granted Inter Milan’s motion to dismiss with respect to MLS’s likelihood of confusion claim. The ruling follows a similar rejection of MLS’s claim issued last January by TTAB interlocutory attorney Winston Folmar.

The case is not over. MLS is armed with another, still unresolved claim—that Inter Milan’s registration should be rejected on the basis of Section 2(e)of the Lanham Act. MLS asserts that “Inter” is descriptive, meaning (in this context) that it describes a soccer club comprised of international players or is involved in international soccer competition rather than serving to uniquely distinguish Inter Milan and its identity. To illustrate this legal principle in another setting, consider a case involving an application for “Bed & Breakfast Registry”. The USPTO refused to register this mark on grounds that it merely described “making lodging reservations for others in private homes.”

The TTAB has listed a schedule for MLS’s case that runs into January of 2022. In the meantime, it’s possible that MLS and Inter Milan will negotiate a settlement that would permit both soccer organizations (and others) to use the disputed word. They could then market their separate brands without worry about overlap. If settlement talks and litigation fail, however, Inter Miami could explore renaming and rebranding.

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