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Inter Milan Wins First Battle Against Inter Miami Over 'Inter' Trademark – Is Settlement Next?

A dispute over the use of the word “Inter” that has been ongoing between Major League Soccer (MLS) and Inter Milan is now the subject of settlement discussions, according to a March 2 filing MLS submitted to the US Patent and Trademark Office (USPTO).

The talks fall on the heels of a December 9, 2020, Trademark Trial and Appeal Board (TTAB) decision that handed the first major victory to Football Club Internazionale Milano (Inter Milan), the Italian soccer powerhouse, in its long-running trademark dispute against MLS and in particular, Club Internacional de Fútbol Miami (Inter Miami), the MLS club partially owned by David Beckham. In particular, Inter Milan applied for and has been fighting to trademark the term “Inter” to enhance its marketing and branding rights in the US since 2014. In early 2019, MLS, on behalf of Inter Miami, a club it owns under its single-entity model, filed an opposition with the TTAB, contesting that Inter Milan’s use of the “Inter” mark was (i) confusing, in regards to other U.S. soccer clubs going by the same name, and (ii) descriptive with respect to “Inter” and therefore, could not be trademarked under the Lanham Act.

The ruling by the TTAB merely dismisses MLS’s first claim against Inter Milan; the notion that Inter Milan’s use of the “Inter” mark was confusing under Section 2(d) of the Lanham Act as it related to other US soccer clubs, such as Inter Soccer Association, Inter Soccer Club, and Inter Atlanta F.C. MLS raised this claim in its original Notice of Opposition, filed with the TTAB on March 25, 2019, and retained this claim in its Second Amended Notice of Opposition, filed on January 24, 2020; it was dismissed by the TTAB under Fed. R. Civ. P. 12(b)(6) for failure to state a claim. In the TTAB order dismissing this claim, Judge Wellington noted that MLS’s opposition on behalf of these third parties was too attenuated since MLS itself did not have “a ‘legitimate interest’ in protecting the third parties’ alleged marks from a likelihood of confusion.” Going further, Judge Wellington noted that MLS’s “likelihood of confusion is legally insufficient because it has not sufficiently alleged priority;” it is important to note that while Inter Miami has trademarked various forms of the “Inter Miami” name, it has not attempted to trademark “Inter” itself.

MLS’s second argument against the “Inter” trademark, namely that the term “Inter” is descriptive under Section 2(e) of the Lanham Act and is, therefore, a generic term to describe an international soccer club in the US, has not yet been adjudicated. Per the TTAB’s briefing and trial schedule, a trial is not likely until at least January 2022. There is no read on how the TTAB will rule on this point, although the USPTO has rejected trademarks in the past involving descriptive terms that are not fully identifiable with one company or brand. The argument regarding this claim will hinge on whether “Inter” is a descriptive term in the US or is shorthand for and/or synonymous with Inter Milan. It is important to note that Inter Milan is changing its official name “Football Club Internazionale Milano” to “Inter Milano” (the Italian word for Milan), in advance of this trial.

A potential settlement between Inter Miami and Inter Milan could provide a level of certainty and clarity around rights and their business models moving forward. However, if no settlement is reached, it will be interesting to see how the TTAB differentiates this dispute from other instances in which US soccer teams have been able to successfully register common soccer team names without objection from similarly named European or South American clubs.

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