Serie A soccer club Inter Milan filed a trademark application for “Inter,” but Major League Soccer filed a notice of opposition since it would impact their newest expansion team, Inter Miami CF.
Another sports trademark battle is on the horizon, this time between two soccer teams over the word “Inter.” Back in 2014, Serie A club Inter Milan filed an application to the U.S. Patent and Trademark Office (PTO) for the term “Inter.” The PTO has not decided whether to grant Inter Milan this trademark. While the official name of the club is FC Internazionale Milano S.p.A, the club has chosen to brand itself as Inter, as evident by its official website and social media.
On March 25, 2019, Major League Soccer (MLS) filed a notice of opposition to Inter Milan’s application for “Inter.” MLS filed this notice of opposition because they have a new expansion team, Inter Miami CF, scheduled to begin playing in March 2020. The team, which has David Beckham as one of its principal owners, is formally known as Club Internacional de Fútbol Miami, but seeks to brand itself as Inter Miami. If Inter Milan were to be granted a trademark in “Inter,” they are more likely to succeed on a trademark infringement claim against Inter Miami, forcing MLS and the team to come up with a different name.
U.S. trademark law gives different levels of protection for different types of marks. Arbitrary and fanciful marks, like Apple for computers, receive the most protection. Suggestive marks, like Coppertone for sunscreen, receive a high level of protection as well. Descriptive terms, like “Tasty” for food, can only be protected if they have secondary meaning among consumers, which can be shown by survey evidence. Generic terms cannot be trademarked under any circumstances.
Inter Miami’s notice of opposition argues that “Inter” is only a descriptive term that lacks secondary meaning in the United States, and therefore deserves no trademark protection. The examining attorney for Inter Miami’s various trademark applications stated that “Inter” is “merely descriptive of applicant and its goods and services.” “Inter” is an abbreviation for “International” widely used in soccer, and the examining attorney cited the Chicago Inter Soccer Club, Suola Calcio Inter USA, and Inter Soccer Association as examples of soccer organizations that use the term.
In addition, MLS listed a number of domestic and foreign soccer clubs that use the term “Inter.” These include Inter Nashville F.C., Inter Atlanta DC, FC Inter Turku (Finland), NK Inter Zapresic (Croatia), Inter Leipzig (Germany), Inter de Grand-Goave (Haiti), and S.C. Internacional (Brazil), which like Inter Milan, goes by the nickname “Inter.” Since there are so many teams that incorporate “Inter” in their names, MLS argues that consumers do not associate “Inter” with one soccer team, making it a poor indicator of source.
Since “Inter” is used frequently by soccer teams worldwide, it is merely a descriptive term for soccer teams in general. If Inter Milan wants to get a trademark in “Inter,” it needs to show evidence of secondary meaning in the U.S., specifically that U.S. consumers associate the term “Inter” with Inter Milan. MLS argues that there is no such evidence, meaning that “Inter” is not a distinctive term. Further, they argue that no soccer team can claim exclusive rights to “Inter,” and they specifically point out that Inter Miami CF would co-exist peacefully with other soccer clubs that incorporate the term “Inter.”
Overall, MLS should prevail in this instance and Inter Milan should not be awarded a trademark in “Inter.” It is true that Inter Milan is pushing to give “Inter” a secondary meaning with fans through its branding and promotion. However, such efforts have not gained traction in the United States, a country where soccer is not as widely followed. With so many teams incorporating the term “Inter” in their names, it would simply be unfair to give one team a monopoly over such a common term. The U.S. PTO is expected to respond by May 4.
Photo Credit: Wikipedia, edited by Alex Betschen
Alex Betschen is a graduate of the University at Buffalo School of Law. He was a student attorney at UB’s Civil Liberties and Transparency Clinic, where he worked on cases involving government disclosure of private information and use of hacking tools. He also served as an Editor on the Buffalo Law Review and is an accomplished musician.