Inter Miami, MLS Go on Attack in Trademark Opposition to Inter Milan
Inter Milan. Inter Miami CF. FC Inter Turku. Inter Leipzig. Inter Baku. Inter de Grand-Goave. NK Inter Zapresic. Inter Moengotapoe. Inter de Luanda. Inter Club d’Escaldes. Inter Atlanta FC. Inter Nashville FC.
It doesn’t take a wordsmith to detect what each of those soccer clubs has in common. They all use “Inter,” short for some translation of “international,” in their names.
This is a central point in Major League Soccer’s legal attempt to block Italian soccer club FC Internazionale Milano—better known as Inter Milan—from gaining trademark protection for the word “Inter,” which it applied for in 2014 with the U.S. Patent and Trademark Office (USPTO).
In a notice of opposition recently filed to the U.S. Trademark Trial and Appeal Board (TTAB), MLS contends that because of the “widespread” and worldwide use of “Inter” in soccer teams’ names, fans and consumers do not associate the word with any one team. Similarly, MLS charges that Inter is simply short for the conventional word “international” and is thus not meaningfully distinctive as an indicator of a team or of a team’s products and services. For those reasons, MLS argues that neither Inter Milan nor any other club can claim exclusive rights in the word.
MLS’s opposition reflects the league’s recent investment in “Inter” as it connects to the newest MLS club: Club Internacional de Fútbol Miami, with the nickname Inter Miami CF. Inter Miami is set to begin play in 2020 and is managed by a group of investors that includes David Beckham, who is also the club’s president.
Inter Milan and Inter Miami have engaged one another on social media over their similarity of their names. Last September, Inter Miami officially announced its name. In doing so, the team’s Twitter account tweeted: “This is our story. This is our crest. #InterMiamiCF #ThisIsMiami #MLS.” Less than a few hours later, Inter Milan retweeted Inter Miami’s tweet with a comment of its own:
However, Twitter users were quickto point out that numerous clubs use “Inter” and thus Inter Milan is hardly alone.
Miami isn't the only MLS team to draw on global soccer's influence for its name. Common terms like "Sporting," "Real" and "United" have all made their way into the league's lexicon without an issue.
Inter Milan is expected to respond to MLS’s notice of opposition by early May.
If it is able to register “Inter” with the U.S. Patent and Trademark Office, Inter Milan would gain several important benefits. For one, the club would acquire a legal presumption of ownership in the mark and a statutory presumption that the mark is valid. Inter Milan would then be accorded the exclusive right to use the registered mark—a right that would likely prove problematic for Inter Miami.
Further, the team would attain the ability to receive “treble damages” (monetary damages automatically multiplied by three) if Inter Milan proves that another business violated its trademark rights. Registration is also useful for purposes of securing support from the U.S. Customs and Border Protection (CBP). The federal law enforcement agency is charged with preventing counterfeit goods from being sold in the U.S. To that end, the CBP consults with holders of trademark registrations on anti-counterfeit strategies.
Alexandra Roberts, a trademarks law professor at the University of New Hampshire School of Law who has written extensively on sports trademark litigation, tells SI that MLS’s opposition is well-justified—up until to a point.
“MLS is correct that the USPTO should not grant registration for Inter as a trademark for a soccer team, entertainment services in the nature of organizing soccer games, or any similar goods or services,” Roberts observes. “That’s because Inter is short for ‘international’ or ‘internacional,’ either of which is merely descriptive for a team comprising players from all over the world.”
Roberts highlights that numerous teams use Inter, a point that will influence the TTAB. She also contends that the widespread use of Inter “could lead the TTAB to conclude that Inter is incapable of functioning as a mark for anything related to soccer, just as the TTAB recently ruled #MagicNumber108 incapable of functioning as a trademark for apparel due to its widespread use by (Chicago) Cubs fans.”
However, Roberts envisions MLS experiencing more difficulty with respect to other aspects of Inter Milan’s application. The application doesn’t exclusively cover soccer services. It also contemplates protection for such goods as cell phone covers, dog collars, teacups, toothbrushes, bed sheets, oven mitts, apparel, yo-yos and even stuffed animals.
“That’s a problem,” Roberts warns, “because on its face, Inter isn’t descriptive for any of those items—it doesn’t tell consumers about a feature, purpose, ingredient, etc. of the toothbrushes or the teacups.”
MLS would likely respond by stressing that each of those goods represents promotional items. Such items, in turn, seemingly bolster the fame and recognition of Inter Milan and are arguably inseparable from the club’s soccer services. Roberts isn’t convinced. She stresses that usage of promotional items “doesn’t necessarily bar the applicant from achieving trademark protection in all of those categories.”
The dispute between MLS and Inter Milan will not necessarily lead to a ruling by the TTAB. At any point, the two soccer organizations could negotiate an out-of-court settlement. In a settlement, one team could agree to change its name in exchange for a financial payment. Don’t expect Inter Milan to change its name: the team has been around since 1908 and enjoys an established brand in Italy and worldwide. It’s also hard to see MLS and Beckham backing down.
More plausible settlement terms: the two teams reach a coexistence agreement where both continue to use “Inter” but each takes steps to clearly distinguish itself in marketing and branding.
Michael McCann is SI’s legal analyst. He is also Associate Dean of the University of New Hampshire School of Law and editor and co-author of The Oxford Handbook of American Sports Law and Court Justice: The Inside Story of My Battle Against the NCAA.
