(Club Internacional De Futbol, better known as Inter Miami, has started its journey in America’s top tier football league, the MLS, in Fort Lauderdale. However, before the advent of a battle in the football field, the club has already lost one in the court of law in its trademark dispute against the Italian giants Inter Milan over the use of the term “Inter.” It is thus uncertain as to what the club will be referred to in the long run.)
In September 2018, former MLS and AC Milan star David Beckham officially unveiled his brand-new South Floridian franchise, Inter Miami. The club is intended to make a name for itself in the world of soccer and eliminate the “curse of soccer” in South Florida as the previous clubs could not establish themselves in the region.
FC Internazionale Milano S.p.A – also known as Inter Milan, in the year 2014, applied to the United States Patent and Trademark Office, on an intent-to-use basis, for seeking exclusive rights to use the term “Inter” in the country, which included organising and conducting professional soccer games and exhibitions. The application was accepted. In September 2018, Major League Soccer, which centrally owns the rights of every club and player associated with the league, in which the actual owners are shareholders, filed for its trademark for Inter Miami before the USPTO.
This subsequently opposed the rights of the Italian Club which sued MLS, leading to a trademark dispute between the two. Now the case for the MLS rests upon the argument that the right of its club is violated because of the trademark.
IN THE BATTLEFIELD
The first claim raised by the League is the “likelihood of confusion” (Section 2(d) of the Lanham Act, the primary US Trademark statute), while the other claim states that “inter” is just a “description” (Section 2(e)(1) of the Lanham Act) of the club than an indication.
Section 2(d) of the Lanham Act states that:
“No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it —
Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: Provided, That if the Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent registrations may be issued to such persons when they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of February 20, 1905, and registered after July 5, 1947. Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant. Concurrent registrations may also be issued by the Director when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce. In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons.”
The American Club and its attorneys tried to use examples of other clubs that include Brazil’s SC Internacional of Porto Alegre, Finnish top division side FC Inter Turku, German fifth-tier club Inter Leipzig, US sides Inter Nashville and Inter Atalanta, and the Croatian Franchise NK Inter Zapresic to strengthen their claims. It argued that several other clubs across the globe use the term “inter.” People across the world do not associate “inter” only with Inter Milan. Allowing Inter’s usage exclusively by a single club would confuse the people of America.
WHY DID THE CONFUSION ARGUMENT FAIL?
The United States Trial and Appeal Board, a special court that is a part of the USPTO, which decides cases related to trademark registration, dismissed the “confusion” argument and stated that the American club “has failed to adequately plead Section 2(d) claim.”
It is pertinent to mention here that MLS did not own any of the teams that used “inter” in the past. The names of the clubs listed in the argument are amateur. Even the successful ones, that include Sport Club Internacional and Inter Milan, were established over a decade ago, and their presence could still not make the term “inter” recognizable among the common masses in America. The league, therefore, cannot argue on behalf of the third-party clubs that have “inter” in their names. In a trademark agreement, one needs to show some sort of ownership rights in the trademark one is asserting. Notably, none of these teams marketed themselves as Inter in the US or challenged the trademark. Thus, Inter Milan retains the trademark.
THE WAY AHEAD
MLS has re-pleaded its first claim, and is looking for additional facts highlighting its relationship with the clubs in the lower leagues in the US using the prefix “inter.” The Italian side has filed a new motion to dismiss the re-pleading. The court will now look upon the additional facts to decide if it wants the “confusion” argument to sustain.
But even if the Americans lose the argument again, there is still a ray of hope. They will now have to turn to their second claim to show that Inter is not meaningfully distinctive as an indicator of Inter Milan. The term “distinctive,” according to the Trademark Law means “a product, capable of being distinguished from the competitors.”
Section 2(e)(1) of the Lanham Act, as argued by the League, states that –
“No trademark would be granted if it consists of a mark which when used on or in connection with the goods of the applicant is merely descriptive or deceptively mis-descriptive of them.”
This means that the MLS must demonstrate that the mark Inter only describes the products or services to which they applied for. They will have to prove that “Inter” is just a mere description for the word “international,” and arguably signifies what the Trademark Office claims – a team made up of international players with an international footprint, which is not indicative.
It is to be noted that the terms “National” and “International” are merely descriptive of services that are nationwide or international in scope. In re chamber of the Commerce of the US, it was held that “National chamber” is “merely a nationwide online directory service featuring information regarding local and state chambers of commerce and business and regulatory data analysis services for nationality promoting the interests of businesspersons or industry.” Similarly, in Re Billfish Int’l Corp, it was held that “Billfish International Corporation is merely descriptive of the corporation involved with Billfish on an international scale.”
Inter Milan, on the other hand, will argue that the term “inter” is distinctive or has acquired distinctiveness over time. It needs to show that the people across the globe have started to associate “Inter” with the club. In Trademark Law, this is called “secondary meaning,” which typically requires years of use and millions of dollars in investment in marketing.
It needs to be seen whether the decision will go in favour of the American side or favour of the Italian side. One of the solutions can be a negotiation between parties wherein the name could be shared for exchange of money. However, if Inter Milan wins the case, it can bar other clubs from marketing themselves with the same abbreviated name and Inter Miami will have to change it. This would ultimately lead to a huge loss as a lot of money has been spent on the branding, logo, merchandise and marketing.
ABOUT THE AUTHOR
Aryan Garg is an undergraduate student at NALSAR University of Law, Hyderabad. He has a keen interest in International Human Rights Law and is exploring the fields of Sports Law and Intellectual Property Law.