What MLS, Miami Are Up Against in Trademark War vs. Inter Milan

Inter Milan received a favorable ruling in its quest to gain trademark protection for the word "Inter" but still faces strong opposition from MLS and one of its newest clubs.

On Sunday, March 1, Club Internacional de Fútbol Miami will play its first regular season match in club history. Inter Miami CF, as the club is also called (which is legally important for reasons discussed below), will take on the Los Angeles Football Club at Banc of California Stadium. Along with Nashville SC, Inter Miami CF is one of Major League Soccer’s newest expansion clubs. With many soccer fans residing in South Florida and with David Beckham as one of the club’s top executives and investors, Inter Miami CF should bolster MLS’s viewership and marketability.

To fully capitalize on that marketability, MLS must ensure that Inter Miami CF’s intellectual property rights are protected. If those rights prove uncertain, neither MLS nor Inter Miami CF might sufficiently “own” the club’s name and associated marks. The league could eventually find itself in court trying to defend the Inter Miami CF brand, including against counterfeiters and other fraudsters that exploit businesses which lack secure rights.

Therein lies a challenge for both the club and MLS: They must try to protect the name “Inter Miami CF” from legal challenge. The legal relationship between Inter Miami CF and MLS is also important. While Inter Miami CF is the named club, MLS is a business with a crucial stake in that name. MLS was conceived as a single-entity structure, meaning the league owns all of the teams and is therefore insulated from antitrust lawsuits premised on independently owned teams conspiring to limit competition. Although MLS, in practice, has appeared to move away from a pure single-entity model over the years, the league continues to carry that label and manages the intellectual property of its teams.

To that end, MLS filed a notice of opposition to the U.S. Trademark Trial and Appeal Board (TTAB) last year in hopes of blocking Italian soccer club FC Internazionale Milano—also known as Inter Milan—from gaining trademark protection for the word “Inter.”

Inter Milan seeks to register “Inter” for a variety of goods, including shirts, jackets, socks, soccer balls, cellphone covers, dog collars, place mats, oven mitts and yo-yos. Inter Milan also seeks protection for “Inter” in entertainment services, including the production of pro soccer games and associated radio and TV programming.

MLS’s notice of opposition was an important step in a legal process that began in 2014. That year, Inter Milan filed for trademark protection of “Inter” with the U.S. Patent and Trademark Office (USPTO). Six years later, the process remains unresolved.

Inter Milan’s attempt to register “Inter” has bewildered some observers. How can the Italian club claim any sort of ownership of “Inter”? After all, “Inter,” which is taken from “Internazionale” (International), appears in the names of more than a dozen pro soccer clubs located across the globe. They include: 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 and Inter Nashville FC.

Inter Milan nonetheless seeks to register “Inter” with the USPTO. Registration would accord Inter Milan the exclusive right to use “Inter” and bestow the club a presumption of ownership with respect to certain uses of the word. Registration would also assist Inter Milan should it go to court to contest the use of “Inter” by other soccer clubs. Further, it would empower Inter Milan to obtain treble damages (monetary damages automatically multiplied by three) in any successful infringement cases. Lastly, registration would enable Inter Milan to gain protection from the U.S. Customs and Border Protection in blocking counterfeit goods.

Here's a closer look at what Miami and MLS are up against in the trademark battle, including a recent ruling that went the way of their Serie A opposition.

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Inter Milan scores a preliminary ruling in its favor

A recent ruling by the TTAB supplies encouraging news to Inter Milan. Last month, TTAB interlocutory attorney (a position that is akin to a judge in this circumstance) Winston Folmar granted Inter Milan’s motion to dismiss one of MLS’s key claims. As MLS sees it, Inter Milan gaining registration would likely cause confusion among consumers. In a filing last June, MLS asserted, “because of the widespread use of the term ‘Inter’ in soccer, the relevant consumers do not associate the term “Inter” with one soccer team ... ‘Inter’ by itself is not a source indicator in connection with goods and services associated with soccer.”

In other words, MLS insists that “Inter” too frequently appears among the names of soccer clubs to be associated with any one club. To bolster that point, MLS draws attention to the fact that in the U.S. alone there are at least four soccer organizations—Inter Soccer Association, Chicago Inter Soccer Club, Inter Atlanta F.C. and InterCounty Youth Soccer League—that used “Inter” prior to Inter Milan's seeking to register the word in 2014.

Folmar wasn’t persuaded by MLS’s reasoning. He opined that MLS “failed to plead any relevant facts” to support its argument that confusion would arise. MLS constructed its argument by referencing “third parties”—meaning clubs that likewise have “Inter” in their names but that are not involved with the litigation and for whom MLS can’t speak.

MLS has since filed a second amended notice of opposition, while Inter Milan has filed another motion to dismiss. In the amended notice of opposition, MLS maintains that it has “substantial reasons for fearing damage to itself and member clubs if ‘Inter’ is registered.” To that end, MLS highlights links between the league and clubs with “Inter” names. For instance, MLS stresses that it draws both soccer fans and soccer players from relationships with youth clubs, including Chicago Inter Soccer Club. MLS also highlights that Inter Atlanta F.C. participated in a “watch party event” with MLS’s Atlanta United support group, the Faction. MLS also emphasizes a spirt of cooperation and sharing: “MLS’s use of Inter Miami CF does and will co-exist peacefully with other Inter-formative team names, as consumers readily distinguish between the various soccer clubs whose names use the term ‘Inter.'”

In response, Inter Milan insists links proposed by MLS are too weak for purposes of the law. “MLS,” Inter Milan contends, “has not alleged that it has used the third-party Inter marks.” In Inter Milan’s view, MLS has failed to plead the necessary facts for a showing of consumer confusion.

What comes next

The legal dispute between MLS and Inter Milan likely won’t be resolved for a while. The TTAB calendar for the case lists preliminary filing deadlines that extend into July 2021. Depending on upcoming case developments, there are a number of potential litigation steps ahead, including for filings of expert disclosures, rebuttals and briefs. In the meantime, Inter Miami CF can and will continue to use “Inter” in its name. However, if Inter Milan ultimately prevails, MLS might opt to change the Miami club’s name in order to avert further legal battles with Inter Milan.

It’s also possible that MLS and Inter Milan will simply negotiate a settlement to permit both clubs to use “Inter.” The soccer world has operated peacefully with many teams using this word. There’s no reason to believe that can’t continue to be the case. In addition, discovery—where both sides must answer questions under oath and share various documents—could begin as soon as March (so long as the case is not dismissed or other developments arise). If neither MLS nor Inter Milan wishes to participate in that process, they’d be inclined to work out a deal.

Michael McCann is SI’s Legal Analyst. He is also an attorney and the Director of the Sports and Entertainment Law Institute at the University of New Hampshire Franklin Pierce School of Law.