David Winker

It will probably be a very long time before Italy's Serie A Inter Milan (founded in 1908) and Major League Soccer's Inter Miami (playing its first game next month) ever face off on the pitch.

However, Inter Milan took away a key victory in the first round of their trademark battle, as the U.S. Patent and Trademark Office dismissed one of the two arguments made by Inter Miami that it should not be forced to change its name.

What Is at Stake?

When it was announced on Sept. 5, 2018, that the new Major League Soccer franchise in Miami would be called Inter Miami CF — official name Club Internacional de Fútbol Miami — it raised some groans as the team continued a tradition of MLS teams copycatting European club titles such as Real, United, Sporting and City.

It also raised eyebrows at Inter Milan — official name F.C. Internazionale Milano S.p.A. — which filed its trademark application in 2014 with the USPTO to obtain exclusive commercial rights to use the term Inter. In its application, Inter Milan contended that the team has become synonymous with the term Inter.

Despite the announcement occurring on Sept. 5, 2018, MLS did not apply for a trademark for the name Inter Miami CF until Sept. 25, 2018, and it was not until March 2019 that MLS filed an opposition to Inter Milan's claim.

Inter Miami's launch has been extensively covered in the media in large part because of the involvement of David Beckham, who holds a 10% minority interest.

Why Is MLS Rather Than Inter Miami Fighting Inter Milan?

The case is being brought by MLS rather than Inter Miami because Major League Soccer is set up as a single-entity structure in which teams and player contracts are centrally owned by the league.

MLS owners own a share in the league and have the right to operate a team and each MLS team has an investor-operator that is a shareholder in the league.

As such, MLS is actually the owner of the trademark Inter Miami FC and is therefore defending its right to use the name.

In its opposition, MLS contends that Inter Milan's application should be refused on two independent grounds:

• Inter is "merely descriptive" (Section 2(e)(2) of the Trademark Act); and
• There is "likelihood of confusion" (Section 2(d) of the Trademark Act).

Likelihood of Confusion Claim Dismissed

In a strategic move, Inter Milan filed a motion to dismiss MLS' Section 2(d) priority and likelihood of confusion claim.

In order to prevail, Inter Milan had to overcome a heavy burden, because dismissal of a claim as insufficient is appropriate only if it appears certain that the plaintiff is entitled to no relief under the facts alleged by Inter Miami.

The USPTO found that MLS' 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, right in the name, Inter.

As such, the USPTO dismissed the claim, finding that MLS "has failed to adequately plead its Section 2(d) [likelihood of confusion] claim."

What's Next?

In a somewhat surprising move, Inter Miami exercised its right to replead the likelihood of confusion claim after the decision.

Inter Milan filed a motion to dismiss this re-pleading earlier this month, citing the fact that Inter Miami again relied on third-party marks without any assertion of opposer's use of the third-party marks, or any assertion of privity with the third parties, or otherwise any assertion of a direct and substantive connection with any of the third parties or their marks."

In the absence of facts establishing privity other than vague assertions of somewhat tortuous league affiliations between Inter Miami and teams using the Inter name in the United States, it appears likely that Inter Miami's likelihood of confusion claim will be dismissed yet again. If that happens, Inter Miami will be forced to move forward with its sole remaining claim—that Inter cannot be properly registered because it is merely descriptive.

In order to prevail on the merely descriptive claim, Inter Miami also appears to have an uphill battle, as it will have to show that Inter is not meaningfully distinctive as an indicator of Inter Milan.

Trademark law requires that a mark must be "distinctive" — capable of distinguishing your product from those of competitors — in order to be registered.

A mark that is merely descriptive is one whose definition is synonymous with a quality of the good or service. An example might be spicy hot sauce, creamy gravy or refreshing ice tea.

A merely descriptive mark can only receive trademark protection if it achieves "secondary meaning," which is only achieved when consumers have started to identify a trademark with a particular product.

Inter Milan is arguing that Inter is inherently distinctive, or in the alternative has acquired distinctiveness.

In effect, it will come down to Inter Milan convincing the USPTO that consumers think of Inter Milan when they hear the term Inter.

Look for this issue to heat up toward the end of the year, which will coincide with decisions about whether Inter Miami will be able to build its proposed Miami Freedom Park soccer stadium at Miami's Melreese golf course or will stay in Fort Lauderdale, where Inter Miami will start its home season on March 14 against the LA Galaxy.

And yes, for those long-time South Florida soccer fans, someone renewed the trademark for the Fort Lauderdale Strikers. The Strikers played off and on in different iterations from 1977 to 2016 at Fort Lauderdale's historic Lockhart Stadium, which was demolished to make way for the new home of Inter Miami.

David Winker is a Miami attorney with David J. Winker P.A. who is active in civic issues.