Milano, MLS, And Miami: The “Inter” Trademark Dispute Explained

Since Monday, details in the ongoing dispute between Inter Milan and Major League Soccer over David Beckham’s long-awaited Miami-based MLS franchise have emerged. The Milanese club is a step closer to winning their trademark lawsuit against Inter Miami. The dispute is over Inter Miami’s use of the term “Inter” and their objection to Inter Milan’s trademark of the term.

As first reported by Law.com, one of the two claims made by MLS, on the grounds of “likelihood of confusion,” has been dismissed by the US Patent and Trademark Office (USPTO). Many of the reports that have come out since repeat the same details of the ruling. To fans of Inter Milan and Inter Miami, this ruling can be confusing. The legal language involved in such disputes is dense. For those of us who have not set foot in a law school or passed a bar exam, it can be difficult to navigate.

The Backstory

Football Club Internazionale Milano split from Milan Cricket and Football Club (AC Milan) on March 9, 1908. The subsequent 110 years before Inter Miami’s establishment brought the Milanese club worldwide success. They boast six major European trophies, including the 2010 UEFA Champions League under Jose Mourinho. Other major accomplishments include two Intercontinental Cups, a Club World Cup, and 30 domestic trophies. Needless to say, they have quite the resume.

In September of 2018, MLS and Beckham, a former AC Milan player, unveiled Club Internacional de Fútbol Miami to the public. Along with the announcement came a slick pink and black crest and glowing plans for a new stadium in the city. Now, Inter Miami is a fully-fledged organization, with a staff, players, a rebuilt Lockhart Stadium in Fort Lauderdale, and plans for a permanent residence in Miami.

However, in 2014, Inter Milan filed a US patent and trademark application for the term “Inter,” giving them exclusive rights to the term in the United States. Beckham’s franchise existed merely as an ongoing project in 2014. Far from any official branding at best. Inter Milan’s trademark effectively blocks Inter Miami from marketing itself as “Inter,” thus bringing about MLS’ objection to Inter Milan’s claim.

The Dismissal of Likelihood of Confusion

This brings us to March 25, 2019, six months after Inter Miami’s announcement. Major League Soccer centrally owns the rights to every team and player contract in their league. Because of this, they filed a notice of opposition on to Inter Milan’s 2014 claim rather than Inter Miami. MLS has based their case on two claims. One is the aforementioned likelihood of confusion, the other claim argues that the term “Inter” is descriptive of the club rather than indicative.

Now, 11 months after the claim, Inter Miami’s case has taken a blow in the dismissal of the likelihood of confusion claim. Law.com’s report explains the decision to dismiss as “the USPTO found that MLS’ claim that there are a number of clubs around the world that use Inter in their name — HaSC Internacional of Porto Alegre, Brazil, Inter Nashville FC, Inter Atlanta FC, FC Inter Turku (Finland), NK Inter Zapresic (Croatia), Inter Leipzig (Germany) and Inter de Grand-Goave (iti)— did not meet its burden to show that MLS has valid proprietary, or ownership, right in the name, Inter.” The report does explain some of the case presented by MLS, but it does leave questions about what exactly MLS is trying to achieve and how exactly they are trying to prove their case.

Likelihood of Confusion Explained

To get a bit of legalese out of the way, we need a sound definition of likelihood of confusion. The US Trademark Manual of Examining Procedure explains that “likelihood of confusion is normally based on the examining attorney’s conclusion that the applicant’s mark, as used or in connection with the specified goods or services, so resembles a registered mark as to be likely to cause confusion.”

If that means nothing to you on the first read, that’s okay. Essentially, MLS and its lawyers attempted to use the examples of other clubs that include the term Inter in their name to prove that Inter Milan’s trademark on the term creates confusion between the Milan-based club and the other clubs with the Inter moniker. For MLS to be cleared to use the term Inter for Inter Miami, they have to prove that the term Inter invokes thoughts of the other clubs and become confusing. Thus, a likelihood of confusion decision would mean Inter Milan could not be solely hold the trademark.

Why it Fell Short

While the reports have not explained, MLS brought seven examples of clubs with the Inter name to the lawsuit. The largest of the clubs, Sport Club Internacional in Brazil, was founded in 1909, a year after Inter Milan. Both clubs had well over a century to establish distinct brands. Though the club can claim some success, including two Copa Libertadores titles, SC Internacional has not broken into the North American market. Other clubs referenced in the case are rather unknown, including Finnish top division side FC Inter Turku, German fifth division club Inter Leipzig, Croatian top-flight side NK Inter Zapresic, and amateur US teams Inter Nashville and Inter Atlanta. The list amassed is not exactly a historic who’s who of world football.

Because of the lack of recognizable examples to the general public, the USPTO did not see any grounds for MLS to claim that Inter Milan’s trademark of the term Inter causes confusion between itself and the other existing clubs with Inter in their name. Some may ask why Inter Milan is not in disputes with the other clubs. The simple answer to that is none of those clubs have tried to market themselves as Inter in the United States or further challenge their trademark. Thus, Inter Milan currently retain their trademark and Inter Miami are not allowed to brand themselves with the sole word “Inter.”

Try, Try Again

Despite the heavy blow to their case, Inter Miami has the right to appeal the likelihood of confusion decision. Though with an appeal the decision will likely be hard to overturn. Unless the list of clubs with the term Inter is longer, MLS will likely not be able to find a club that could overtake the others and cause confusion.

MLS also holds their other challenge to the trademarked term being descriptive rather than indicative of a sole club. To win this, MLS would have to prove that the term Inter is not an important facet of identifying Inter Milan. They have to argue that the term Inter is a description or adjective rather than a proper identification. While I am no lawyer, it would seem very difficult to win this claim. Primarily because Inter Milan without the “Inter” would simply be Milan. Being simply “Milan” would take the term into the territory of just the Italian city or the city’s other major club, AC Milan.

The Waiting Game

While it took nearly a year to get the first decision in the case, there is much more to be handled in the boardrooms of the respective parties. With MLS’ appeal for their likelihood of confusion claim and Inter Milan’s subsequent request to dismiss the appeal on top of MLS’ descriptive claim, the dispute could drag through 2020.

With Inter Miami well into preseason preparations and further trying to endear themselves to South Florida, it is a tough time for the league and team to be dealing with naming disputes. Inter Milan, of course, find themselves firmly in the heat of a title race. The MLS season begins for Inter Miami on March 1, who will go into the season with their naming dispute still up in the air. In the meantime, in the offhanded chance that MLS decide Inter Miami is not a feasible name, maybe grab a piece of Inter Miami merch. It could be a collector’s item down the road.