In 2018, David Beckham’s investment group announced the new name of its Miami-based Major League Soccer team. The group chose Club Internacional de Fútbol Miami, nicknamed Inter Miami CF. A catchy name, certainly, but perhaps that’s because it’s so similar to a historic soccer name. Football Club Internazionale Milano, commonly known as Inter Milan or simply Inter, began as a soccer team in 1908. Since then, Inter became a household name across Europe, winning 6 continental tournaments (including the Champions League in 2010; however, not including 1967, when Celtic Football Club beat Inter to win the European Cup). Now, Inter Miami is locked in a trademark battle with Inter Milan.
Before starting any venture, a business owner should review the trademark landscape prior to settling on a brand name. This remains true regardless of the business size, from small independent ventures to professional sports franchises. For example, the Vegas Golden Knights famously struggled to finalize its trademark in light of other sports franchise names. Choosing an entirely new name for your brand clears the path to obtaining strong trademark protection.
Inter Milan’s Trademark Application
Now, back to Inter Miami vs. Inter Milan. In 2014, Inter Milan filed a trademark application with the USPTO, four years prior to Inter Miami’s name selection. Interestingly, Inter Milan’s trademark application listed INTER as its trademark in an intent to use application. In 2018, Major League Soccer filed an opposition against the INTER trademark, arguing a likelihood of confusion with prior users. But wait – didn’t Inter Miami announce its name in 2018?
Since Inter Miami didn’t exist prior to 2014, Major League Soccer had to get interesting in its opposition arguments. Instead of relying on its own activities, the league had to argue that common law examples of Inter soccer teams predate the INTER application. Making such an argument represents an interesting tactic; wouldn’t it also mean that Inter Miami would not be entitled to a trademark? However, the league backed itself into a corner by choosing an already-popular team name for the Inter Miami franchise.
Inter Milan 1 Inter Miami 0
Regardless, the USPTO sided with Inter Milan because Major League Soccer failed to assert a legitimate interest in the opposition. Specifically, the league failed to assert an interest in the prior usage of the INTER mark. Instead, the league tried to prevent the INTER mark from registering to protect its later rights, but by using third-party prior rights as the basis. Such a basis fails to state a legitimate claim in an opposition. As such, the USPTO dismissed the opposition, clearing the path for Inter Milan’s trademark to register. As such, Inter Miami’s own trademark landscape becomes much more difficult, which could have been avoided with a smarter name selection.
Typically, filing before you set up the company that will own and use the trademark is too early. However, once you form the company, you should apply once you decide on a name.
Not at the moment, but it depends on whether Inter Milan alleges trademark infringement. At the moment, a name change for Inter Miami is unlikely, though.