The USPTO dismisses key argument of Inter Miami in their trademark match versus Inter Milan

• English

Major League Soccer’s (MLS) newest expansion team Inter Miami CF (partly owned by former soccer star David Beckham) has not yet played their first competitive match but has already found its first rival -   Italy’s traditional club and powerhouse FC Internazionale Milano, better known as Inter Milan. On the pitch, Inter Milan would be the heavy favorite in a match against Inter Miami. However, in a current trademark dispute before the USPTO, the balance of power is not so clear-cut, and here is why.

The match was a slow-burner, starting when MLS announced on September 5, 2018, that its new expansion franchise would be called Inter Miami CF and filed a trademark application with the USPTO almost three weeks later, on September 25, 2018. Like in other U.S. leagues, for example, the NBA, the MLS acts as a franchisor that sells the right to a franchisee to run a team and to compete in MLS but retains the Intellectual Property, which is why the MLS itself filed this opposition. On the other hand, Inter Milan had submitted its application for trademark protection of the word "Inter" on March 18, 2014, on an intent-to-use basis. The application was finally published for opposition purposes by the USPTO on January 1, 2019. And this is the point where the match picked up the pace, with the MLS lodging an opposition against Inter Milan's trademark application on March 25, 2019.

In its opposition, MLS referred to Section 2(d) of the Lanham Act (the primary U.S. trademark statute) claiming a likelihood of confusion as well as Section 2(e)(1) of the Lanham (Trademark) Act claiming the mark is merely descriptive. Additionally, MLS stated that the registration of the designation INTER would damage its business.

To substantiate its claims, MLS presented the following arguments.

• The USPTO found in its office actions regarding the trademark applications Serial Nos. 88/078,179, 88/078,184, and 88/078,190 that the term INTER is commonly used to describe soccer teams, with some of which MLS has close business relationships.
• The term INTER by itself cannot distinguish the commercial origin of goods and services associated with soccer.
• The relevant consumers do not associate the term "INTER" with one soccer team due to widespread use in sports.
• The term INTER has not become distinctive in relation to the goods and services in the United States of America.
• No soccer team can claim exclusive rights to the term INTER.

As a counteroffensive, Inter Milan struck back in traditional (catenaccio) fashion by filing a request to dismiss the claim of likelihood of confusion. Inter Milan succeeded, as the responsible examiner ruled that MLS failed to substantiate its earlier rights by relying on other parties' marks, that are not implicated in the proceedings and for whom MLS is not entitled to plead. Therefore, the USPTO dismissed MLS Section 2(d) claim [likelihood of confusion] in its entirety.

What comes next? 

At this point, one could say that Inter Milan goes into the halftime with a clear lead as MLS, in what appears to be a somewhat desperate move to even the score, refiled its likelihood of confusion claim. Inter Milan reacted with the same strategy utilized before by filing a motion to dismiss the repleading.

Even though the USPTO has not decided anything regarding the renewed claim of likelihood of confusion, it seems like MLS will have to rely on its claim that the mark INTER is merely descriptive. This means MLS must demonstrate that the mark Inter by Inter Milan only describes the products or services to which they are applied. Consequently, MLS will have a hard time fighting back into this match and could consider an amicable settlement to be the best option.

On the other hand, Inter Milan will try to protect its lead by demonstrating that the term Inter is inherently distinctive or at least has acquired distinctiveness over time. Eventually, the match will be decided whether or not the relevant consumers in the market associate the mark INTER as used on the identified goods or in connection with the identified services, with Inter Milan or not.

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