Inter Milan have recently filed a trademark infringement claim against the Major League Soccer (MLS). They are arguing that the term ‘inter’ is synonymous with their club. This could lead to the Inter Miami club having to change their name if they succeed. This is looking most likely as the Italian Club has won their first trademark battle against Inter Miami. This is a result of the MLS had one of its two arguments rejected by the United States Patent and Trademark’s Office (USPTO). The other argument is likely to continue into the next year.
This whole dispute revolves around the word ‘Inter’ and its distinctiveness and likelihood to cause confusion. The MLS were alleging that the Italian Club’s application to trademark ‘Inter’ is an attempt to bar other clubs such as Inter Miami from using the term ‘Inter’ even though it is non-distinctive as it is an abbreviation of international.
The UK trademark application can fail at the United Kingdom Intellectual Property Office if their proposed term is deemed descriptive of the goods and services or not distinctive enough. As well as this, it is difficult to register geographical names unless it falls within the proviso that the name has acquired distinctive character over the years that it has been trading. Which is why Inter Milan would be registerable. However, ‘Inter’ would pose some difficulty as it would depend if the majority of people would recognise that name in reference to the club.
The MLS claim failed even though they showed that there are other clubs which use that term in their name such as Inter Nashville, Inter Leipzig and NK Inter Zapresic. This is because MLS did not meet the burden of requirement that it has valid proprietary or ownership over the name ‘Inter’.
The MLS will likely appeal this and bring a case of likelihood of confusion against the Italian team. This is looking unlikely in regard to succeeding, which may result in the new Inter Miami changing their name.