Guest Column / MLS / Opinion

The Inter Miami trademark case, explained

Tyler Marandola is a intellectual property lawyer at Duane Morris LLP in Philadelphia, where he litigates trademark, copyright, and patent cases, along with whatever else he can get his hands on. The views expressed in this post are his own, and not the views of his law firm (or anyone else, for that matter).

A lot of stories have been circulating in the past couple of weeks about a trademark “battle” between Inter Milan—technically F.C. Internazionale Milano S.p.A—and Inter Miami CF. Some claim that Inter Milan is suing Major League Soccer for trademark infringement over the Inter Miami name. Others are more vague, claiming that Inter Miami has recently “suffered a setback” in a trademark dispute and might be required to change its name. Most of the reports rely on a Law.com article by a Miami attorney named David Winker, who wrote that Inter Milan recently won a “key victory” against Inter Miami.

These stories are a little inaccurate, and more than a little overblown. Winker is not a trademark lawyer, which may have caused him to read too much into the ruling in this case. He has filed multiple lawsuits and an ethics complaint over Inter Miami’s stadium plans, including a lawsuit against the city of Miami to try to nullify the referendum in which voters approved the decision to allow Inter Miami to build its new stadium on city owned land. So he may have been too quick to take pleasure in Inter Miami’s misfortune.

For folks interested in what is really going on, I put together this article as a bit of an explainer.

Talking TTAB

The first thing to know is that this case is in front of the Trademark Trial and Appeal Board (often called the TTAB). That’s a special court that is part of the United States Patent and Trademark Office, and decides cases in which one party challenges another party’s right to receive a trademark registration. The TTAB is an administrative court with limited authority. One important limitation here is that, unlike a federal or state court, the TTAB only makes decisions about trademark registrations, and does not issue orders telling someone whether they can or cannot use a trademark in the real world. Here, it is technically MLS that has brought this case against Inter Milan, not the other way around. MLS is arguing that Inter Milan should not receive a trademark registration for the word “Inter.”

Inter Milan filed its trademark application in 2014, and listed a bunch of goods and services that the team expected to use the “Inter” trademark on in the U.S. Many of the things in its list are ones you’d expect—like “organizing, conducting, and staging professional soccer games and exhibitions.”  Others are ones you might not expect—like “dog leashes,” “place mats, not of paper,” “oven mitts,” and “yo-yos.”

Inter Milan’s application took an unusually long time to get through the Trademark Office, but in September 2018 the club convinced the office that there were no barriers (for example, conflicting trademark registrations) to the registration of the “Inter” trademark. At that point, the rules required the Trademark Office to list Inter Milan’s application in an official government publication. From the date the “Inter” trademark was listed, anyone who wanted to challenge the registration had 30 days to file a formal complaint with the TTAB giving reasons that the registration should be denied.

That’s where Major League Soccer came in. MLS owns all the team trademarks, and it was rightly concerned that Inter Milan’s claim to exclusive rights in “Inter” could harm its ability to use and register trademarks for Inter Miami. Also, according to an allegation MLS made in one of its pleadings, Inter Milan sent MLS a cease and desist letter telling MLS to stop using Inter and to change its current name from Club Internacionale de Futbol Miami. So MLS went on the offensive and opposed the “Inter” application.

MLS’s opposition and setback

MLS is making two arguments: first, MLS claims that “Inter” is just a term that describes a feature of soccer teams that either play internationally or consist of international players. As a general matter, no one can claim exclusive rights in a term that just describes the thing that you sell. Otherwise, businesses would race to file trademark applications to lock up words that describe their products so that competitors couldn’t use them. Imagine Tylenol trying to claim the exclusive right to use “Maximum Strength” as a trademark for headache medicine. MLS’s argument is similar: “Inter” is so widespread among soccer clubs, and describes a common feature of soccer clubs, so Inter Milan cannot claim a right to exclude others from using it. This is called MLS’s “descriptiveness” argument.

MLS’s second argument is that there is a “likelihood of confusion.” This is a fundamental trademark law concept. The most important purpose of a trademark is to signify to consumers the source of goods or services. For example, even when you’re in a new city or country, you know when you see the Starbucks logo that ultimately your coffee is coming from the same company behind all the other Starbucks stores you’ve been to in the past. The Starbucks logo identifies the Starbucks Corporation as the source of the store’s products. If someone enters the market selling similar products under a similar logo, Starbucks will rightly complain that the new competitor is likely to confuse consumers by making them think that the new competitor is selling Starbucks products. Likelihood of confusion is the test for trademark infringement, and likelihood of confusion with a pre-existing trademark is one of the grounds for getting a trademark application denied.

MLS’s argument is similar, but a bit more creative. MLS is arguing that the TTAB should reject Inter Milan’s application because there are other soccer teams around the country who have used “Inter” in their names prior to Inter Milan, and that Inter Milan’s use of “Inter” is likely to cause confuse people into thinking that Inter Milan is somehow associated with those teams. What makes MLS’s argument creative (and, ultimately, problematic) is that MLS does not actually own any of the teams that used “Inter” in the past. As a general rule, you can’t win your case by relying on someone else’s rights in a trademark. Instead, you have to show that you have some ownership right in the trademark you’re asserting, or at least have such a close connection to the owner that you have some legitimate interest in protecting the other person’s trademark.

Inter Milan made this argument to the TTAB, and the TTAB agreed with Inter Milan, dismissing MLS’s likelihood of confusion argument because MLS couldn’t show that it had an ownership interest in the prior “Inter” marks. MLS could not rely on its own Inter Miami marks because it did not begin using those marks until after Inter Milan filed its application back in 2014.

This is the “setback” that everyone is writing about: the TTAB rejected one of MLS’s two arguments in their opposition proceeding.

The long road ahead

While MLS would surely have preferred that its argument not be dismissed, it is currently asking the TTAB for another chance. This time, MLS is looking to add additional facts about its relationship to youth soccer and lower leagues in the United States (most of the “Inter” names that MLS is relying on are youth soccer clubs). All of these facts are designed to convince the Board that MLS does in fact have an interest in protecting the other “Inter” trademarks, even though it doesn’t own them. Inter Milan, in turn, has asked the TTAB to reject MLS’s argument yet again. The TTAB will have to decide whether MLS’s additional facts warrant a chance to argue its likelihood of confusion case, or whether it will have to drop likelihood of confusion going forward.

But even if MLS loses this argument again, it does not mean Inter Miami is at risk of having to change its name. Remember, MLS still has its descriptiveness argument. And that is the far stronger case for them. In fact, when MLS filed an application to register the trademark “Inter Miami CF,” the Trademark Office responded by telling them that “Inter” simply described a soccer team that plays internationally or has international players—precisely the argument that MLS is using to try to take down Inter Milan’s application. So MLS has good reason to think that the TTAB will be receptive to declaring “Inter” descriptive. And they should. “Inter” is of course short for “International” (or “Internazionale” or “Internacional”), and arguably signifies what the Trademark Office claims—a team made up of international players or with an international footprint. In fact, that’s apparently why Inter Milan started using the “Internazionale” name in the first place following its split from the predecessor team to AC Milan: Inter Milan wanted to highlight its desire to attract international players.

If MLS shows that “Inter” is in fact a descriptive term when used by a soccer team, Inter Milan would then have to demonstrate that it has built up so much brand recognition in the United States that people who encounter the term “Inter” in connection with soccer think of Inter Milan and no one else. In trademark law, that is called “secondary meaning,” and is a high standard, typically requiring years of use of the trademark and many millions of dollars in investment in marketing. Inter Milan might have that sort of recognition in some other countries, but it would probably have a hard time showing that its brand is that strong in the United States.

But that’s not all. Even if Inter Milan somehow comes through this case with its claim to “Inter” intact, Inter Miami still may not have to change its name. In order to try to stop Inter Miami, Inter Milan would have to first start using its “Inter” trademark in the United States, and then would have to sue MLS in federal court and prove that MLS’s use of “Inter Miami” is likely to confuse people into thinking Inter Miami is associated with Inter Milan. That argument raises yet more tricky issues that Inter Milan would have to overcome (but those are for another day). In addition, MLS would likely get another chance to make some of the same arguments it is making now in front of a federal judge. It is not clear that Inter Milan has much to gain from such an expensive, prolonged, and messy fight. Sending a cease and desist letter, which it has already done, is a far cry from making a full-blown federal case out of this.

As it stands, the MLS season is set to open with a team in South Florida called Inter Miami. When that team visits the Philadelphia Union on August 1, the Union’s stadium will bear a new name, but I expect Inter Miami will not.

5 Comments

  1. Thanks, Tyler! Great summary – it’s nice to get actual facts.

  2. Thanks Tyler!
    This does make me sad that I can no longer use
    #Inter(MilanIsSuingYou)MiamiCF
    as being factually correct.

  3. Eugenio Valdez says:

    Is this attorney on the MLS payroll or just incompetent? His terrible “take” is dead wrong and contradicted by every reputable attorney that has written about this case. Check out this National Law Review article for just one example:

    https://www.natlawreview.com/article/trademark-showdown-inter-milan-and-inter-miami-battle-over-rights-to-inter

  4. Eugenio Valdez says:

    “the threat facing MLS and Inter Miami is real. If Inter Milan ultimately prevails, it would acquire a legal presumption of ownership and validity in the mark, and could bar other clubs from marketing themselves with the same abbreviated name. Meaning, Inter Miami would need to change its name, perhaps even before the conclusion of its inaugural season.”

    • Skyler Mandolin says:

      ^^^ “This trademark dispute is in its relative infancy, and while MLS has suffered a setback, months of discovery, expert witnesses, and further briefing afford both parties the opportunity to make their arguments. Alternatively, the parties could reach a settlement, perhaps allowing both clubs to use “Inter” with certain negotiated commercial rights.”

      Sentence right above the one you quoted from that reputable attorney.

      ~Not Tyler Marandola

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