Inter Miami FC and Major League Soccer have suffered a setback in their trademark dispute with Serie A giants Inter Milan.
The Italian club filed a US Patent and Trademark application in 2014 to make “Inter” its exclusive brand in the United States, a move which would prevent Inter Miami from marketing itself as “Inter.”
MLS, however, early last year filed a notice of opposition to the Inter Milan claim. In the filing, the league alleged that “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.”
The notice also claimed that “MLS will be damaged by the registration sought by Applicant because such a registration would prevent registration of the term ‘Inter’ with other wording upon a showing of acquired distinctiveness in connection with a soccer team.”
As reported by Law.com, Inter Milan successfully filed a motion with the the US Patent and Trademark Office (USPTO) to dismiss MLS’s “likelihood of confusion” claim.
The USPTO ruled that MLS’s claim that there are a number of clubs around the world that use Inter in their name – SC 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 (Haiti) – did not meet its burden to show that MLS has valid proprietary, or ownership, of the name “Inter.”
The ruling undercuts one of Inter Miami’s key legal arguments.
Inter Miami, though, has exercised its right to replead the likelihood of confusion claim, against which Inter Milan has filed a motion to dismiss. The legal fight is expected to continue later this year.
Inter Miami, which is part owned by former England and Manchester United midfielder David Beckham, will join MLS this year. The team will initially play in the revamped Lockhart Stadium in Fort Lauderdale while plans to build a soccer-specific stadium in Miami continue.