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Trademark Showdown: Inter Milan and Inter Miami Battle over the Rights to “Inter”

America’s top-flight soccer league, Major League Soccer, is set to begin regular-season play on February 29, 2020.  Excitement among American soccer fans is palpable, due in no small part to the debut of two new clubs beginning their inaugural seasons: Nashville SC and Inter Miami CF.

While both clubs represent equally the continued growth of MLS and soccer in the United States, it is arguably Inter Miami that will have a greater international draw.  Located in the vibrant and global city of Miami, Florida, Inter Miami promises to be “multilingual and omnicultural,” and bring “world class futbol to [a] world class city.”  With a proposed 25,000-seat soccer stadium and mixed-use complex in development, and an ownership group spearheaded by soccer legend David Beckham, Inter Miami is ready to make a name for itself in the soccer world.

Only, that name may be fleeting.

In September 2018, MLS announced that its new Floridian franchise would be officially named Club Internacional de Fútbol Miami, or “Inter” Miami for short.  Inter Miami is not the first MLS club to adopt a prefix or suffix commonly used by European clubs.  MLS is littered with club names ending in “SC” and “FC,” and includes a “Real” Salt Lake and “Sporting” Kansas City.  Unlike these other club names, however, Inter Miami’s branding has caught the attention of a premiere European club.

F.C. Internazionale Milano S.p.A. – known colloquially as Inter Milan – plays in Italy’s Serie A and is one of the most recognized clubs in soccer.  In 2014, Inter Milan filed a trademark application with the United States Patent and Trademark Office seeking to obtain exclusive commercial rights in the United States to the term “Inter,” arguing that Inter Milan is synonymous with the term.  In September 2018, MLS applied for its own trademark for the name Inter Miami CF with the USPTO, and subsequently filed an opposition to Inter Milan’s trademark efforts.

Now, MLS and Inter Milan are engaged in a formal trademark dispute regarding whether Inter Milan is entitled to make “Inter” an exclusive brand in the United States.  Notably, MLS, and not Inter Miami, is the party opposing Inter Milan’s efforts.  This is because MLS, unlike other American professional sports leagues, is a single-entity organization.  MLS owns the rights to the individual clubs, and the club “owners” actually own a share of the league, rather than just the club, and are then granted the right to operate a particular club.  Accordingly, it is MLS that has rights to “Inter Miami,” and it is MLS that suffered a recent setback in its efforts to curtail Inter Milan’s trademark filing.

To mount a successful opposition, MLS must explain why it believes the league would be damaged if Inter Milan obtained its requested trademark, and demonstrate that it has its own rights to the term.  To that end, MLS filed a written notice of opposition to Inter Milan’s trademark application, raising two arguments: (1) “Inter” is merely a descriptive term widely used in soccer; and, (2) trademarking the term will cause a “likelihood of confusion” among the clubs across the globe that currently use “Inter” in their names.  In other words, MLS’ position is that the widespread use of “Inter” by other clubs means that customers do not associate the term with any one club, and permitting Inter Milan to obtain exclusive rights to the term would cause confusion.  Further, “Inter” is simply shorthand for the word “international,” which is why it is used so frequently in club names, and is therefore not meaningfully distinctive.

Inter Milan subsequently moved to dismiss MLS’ second argument regarding likelihood of confusion.  The U.S. Trademark Trial and Appeal Board, convinced by Inter Milan’s position, recently dismissed MLS’ second claim and found that MLS had failed to provide any relevant facts supporting its argument that consumer confusion would arise, and that MLS cannot argue on behalf of third-party clubs that have “Inter” in their names.  This decision is telling, as Inter Milan faced a heavy burden to make its argument and yet prevailed, and MLS has now lost one of its key claims due to a failure to plead sufficient supporting facts.

Nonetheless, MLS has elected to re-plead its likelihood of confusion claim, and Inter Milan has filed a new motion to dismiss this re-pleading, noting that MLS once again relies on the use of “Inter” by third-parties, without providing any sufficient link between MLS itself and any use of “Inter.”

This trademark dispute is in its relative infancy, and while MLS has suffered a setback, months of discovery, expert witnesses, and further briefing afford both parties the opportunity to make their arguments.  Alternatively, the parties could reach a settlement, perhaps allowing both clubs to use “Inter” with certain negotiated commercial rights.

Absent any settlement, however, the threat facing MLS and Inter Miami is real.  If Inter Milan ultimately prevails, it would acquire a legal presumption of ownership and validity in the mark, and could bar other clubs from marketing themselves with the same abbreviated name.  Meaning, Inter Miami would need to change its name, perhaps even before the conclusion of its inaugural season.  With a full roll-out of its branding, logo, jerseys, and merchandise already completed, a name change would be a costly inconvenience and a less than ideal beginning for an American soccer club with lofty ambitions.

© Copyright 2020 Squire Patton Boggs (US) LLP

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Andrew H. King Associate Columbus Litigation Commercial litigation
Associate

Andrew King advises and represents clients in civil litigation in state and federal courts across the country. Andrew is highly trained and experienced in the full range of litigation processes and dispute resolution, including trial, arbitration and mediation, and provides his clients with cost-effective and efficient representation. With a focus on complex business disputes, Andrew brings an analytical mind and competitive drive to cases involving products liability, construction disputes, trademark infringement, oil and natural gas, breach of contract, business torts and medical...

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