Inter Miami CF is the name of a brand new Major League Soccer (MLS) team set to debut in South Florida in 2020. Inter Milan is an historical Italian soccer club with worldwide acclaim and notoriety. The two soccer clubs are in the middle of an intense battle, but it is not being waged on the field. Instead, it is a dispute that is in the process of being adjudicated by the U.S.-based Trademark Trial and Appeal Board (TTAB).
Why Is Inter Miami And MLS Fighting Inter Milan?
The two parties in dispute are both soccer clubs and both contain the word “INTER” at the forefront of their names. Inter Milan has been in existence for a much longer time than Inter Miami and, even though they participate in different leagues and are formed on different continents, they are involved in the exact same type of business — professional soccer.
Interestingly, the battle taking place in the TTAB was initiated by MLS and Inter Miami, which started using its own marks much later than Inter Milan. The reason for the dispute is that Inter Miami is concerned that Inter Milan seeks to register the word mark “INTER” in the United States, which could cause serious issues for Inter Miami as it continues to use its own name in commerce in the future.
Background On Inter Miami’s Trademark Protection Efforts.
Inter Miami initiated its dispute against Inter Milan after Inter Miami filed a trademark application to register the design mark “CLUB INTERNACIONAL DE FUTBOL MIAMI MMXX” with the U.S. Patent and Trademark Office (USPTO). That application was filed by Major League Soccer, L.L.C. (MLS has a single-entity structure) on September 24, 2018. It seeks to register the design mark that consists of a shield with two crane bird images back-to-back and the word “MIAMI” above the stylized sun.
The design mark was not yet being used in commerce when the application was filed back in September 2018. Thus, MLS filed the application for use in conjunction with various goods/services under an intent-to-use designation. The classes for which use was intended included IC 009 (skins for phones/laptops, computer and video game software, sunglasses, etc.); IC 016 (posters, trading cards, stickers, etc.); IC 025 (apparel); IC 028 (toys, soccer balls, etc.); and IC041 (live soccer matches, media, etc.).
On June 21, 2019, the examining attorney at the USPTO who was assigned to the MLS application decided to suspend action on the application. The application to register the design mark remains suspended, and not yet registered, as of this date.
Background On Inter Milan’s Trademark Protection Efforts.
Inter Milan began its efforts to register the word mark “INTER” many years prior to MLS filing its trademark application. In fact, Inter Milan first filed its application back on March 18, 2014. Many of the international classes highlighted by MLS in its application were also included in Inter Milan’s trademark application, which was actually more expansive in the types of goods and services it sought to cover with a registration of “INTER” in the United States.
The docket for the “INTER” application includes multiple Office Actions from the USPTO examining attorney assigned to the case. The final Office Action, dated February 7, 2018, indicates a concern that the “INTER” mark should not be registered because there is a likelihood that it will be confused with the registered mark “ENTER.” owned by Minus Inc.
Inter Milan refused to back down and ultimately convinced the examining attorney to allow the “INTER” application to proceed to the publication stage. On September 5, 2018, the “INTER” application received a notice of publication, identifying the mark as having the appearance that it is to be entitled to registration. It was published in the Official Gazette on September 25, 2018, allowing any third party to file an opposition before “INTER” became a registered mark.
MLS first filed a request for extension to oppose the registration of the mark on October 24, 2018. It was granted, along with future attempts to extend the deadline to oppose, until MLS finally filed an official opposition with the TTAB.
Inter Miami/MLS Seeks To Block Inter Milan With A Formal Opposition Notice.
On March 25, 2019, MLS filed a Notice of Opposition with the TTAB against the registration of “INTER” by Inter Milan. The grounds for the opposition were likelihood of confusion as well as a claim that the “INTER” mark is merely descriptive. Inter Miami, through MLS, used its pending design mark application and what it believes to be a common law protection surrounding the word mark “INTER MIAMI CF” as a basis for its opposition.
When MLS filed its Notice of Opposition, it mentioned that it intended to file a trademark application with the USPTO for the word mark “INTER MIAMI CF” in the future and that it expected the “INTER” application to be cited as grounds for blocking a registration of same. It was obviously concerned that, should Inter Milan receive the requested registration, it would bar all other soccer clubs that use “INTER” in their names from ever receiving registrations for their trademarks and add unnecessary exposure should Inter Miami seek to enforce its registration.
Perhaps the most compelling component of MLS’ argument was that it found difficulty in registering other marks containing the word “INTER” based on an examining attorney’s finding that the word “INTER” is merely descriptive of the applicant and its goods and services and that it is commonly used to describe soccer teams (i.e. Chicago Inter Soccer Club, Suola Calcio Inter USA and Inter Soccer Association). MLS argued that consumers do not associate “INTER” with one soccer team and that providing Inter Milan with the registration to that mark would basically give it a monopoly over use of the term.
Yet, Inter Milan somehow was able to push its application to the brink of receiving a registration. MLS believed that Inter Milan and Inter Miami could peacefully coexist and that a registration of “INTER” was inappropriate.
Thus, MLS filed the opposition. From the start, it appeared that MLS’ strongest argument was based on “INTER” being merely descriptive. It has been the likelihood of confusion argument that has really held this case from progressing forward.
Inter Milan Fights Back With A Partial Motion To Dismiss.
On May 6, 2019, Inter Milan filed an answer to the opposition and also a partial motion to dismiss the notice of opposition based on an alleged failure to state a claim under the applicable federal rule. It noted that one of the grounds that MLS sought to oppose the registration of “INTER” was based on likelihood of confusion (the other claim is that “INTER” is merely descriptive) and that priority must be properly plead and proven by a party opposing the registration of a trademark on such grounds.
Inter Milan highlighted MLS’ failure to allege that it owned prior trademark rights in any mark that consists of or incorporates “INTER.” It also explained that Inter Milan filed its “INTER” application over two years prior to MLS filing its intent-to-use application.
MLS Responds With An Amended Notice Of Opposition.
On June 11, 2019, MLS responded to the Inter Milan partial motion to dismiss by filing an Amended Notice of Opposition that added a new paragraph specifying four soccer clubs in the United States that MLS believed were continuously using the word “INTER” prior to the date that Inter Milan filed its intent-to-use application. The four cited clubs were INTER Soccer Association a/k/a International Soccer Association, Chicago International Soccer Club, d/b/a Chicago INTER Soccer Club, INTER Atlanta F.C. and INTERCounty Youth Soccer League.
Inter Milan Renews Its Partial Motion To Dismiss.
On July 18, 2019, Inter Milan again filed a motion seeking to dismiss the likelihood of confusion component of the opposition. This time, Inter Milan stated that MLS failed to allege that any third parties own property rights in the term “INTER” and, even if it was alleged, MLS did not claim that it had a legitimate interest in preventing confusion between those third parties.
Inter Milan focused its argument on the fact that MLS showed use of “INTER” by third parties, yet failed to allege that those third parties have trademark rights to “INTER.” Instead, MLS retained its argument that “INTER” is merely descriptive, which would run counter to any claim that a third party possessed true trademark ownership rights.
Additionally, Inter Milan cited to precedent that indicated MLS needed to have at least a legitimate interest in preventing confusion between the third party marks it referenced in its Amended Notice of Opposition and the “INTER” registration it opposed. It said that MLS failed to plead same.
Inter Milan Scores A Preliminary Victory Against Inter Miami/MLS.
MLS responded to Inter Milan’s July 18, 2019 partial motion to dismiss and Inter Milan filed a reply before the TTAB issued its order on the subject matter on January 3, 2020. As an initial matter, the TTAB found that MLS sufficiently established standing for its claim that the use of “INTER” is merely descriptive.
The TTAB then shifted to the pending partial motion to dismiss, which centered on whether the likelihood of confusion argument was sufficiently plead and should survive challenge. It found that MLS failed to adequately plead the likelihood of confusion claim, despite the inclusion of four examples of third party usage of “INTER” in its Amended Notice of Opposition.
“Opposer did not reveal any particular relationship between itself and
the third party users nor did Opposer articulate any claims to suggest that its
responsibilities as a professional soccer league encompass the interests of the third party users,” stated the TTAB in coming to its conclusion to grant Inter Milan’s partial motion to dismiss.
Yet, the order did not dismiss that component of the opposition with prejudice. Instead, the TTAB provided MLS twenty days from the date of the order to file an amended pleading that satisfies the requirements of claiming likelihood of confusion.
The Battle Between Inter Miami/MLS And Inter Milan Drags On.
Ten months after initiating the opposition against “INTER,” MLS filed its Second Amended Notice of Opposition. On January 24, 2020, MLS added information intended to explain its relationship between MLS and the third parties using “INTER” as well as claims of responsibility to act on their behalf.
MLS alleged that it draws soccer fans and players from its relationships with the youth and amateur soccer teams and leagues, as well as the lower tier professional soccer teams and leagues that have been using the term “INTER.” It added that partnerships with U.S. Soccer-sanctioned Youth and Adult recreational membership organizations cover general coordination, collaboration and cooperation, in addition to specific rights and benefits that include partnership designation and, importantly, intellectual property.
Of course, on February 3, 2020, Inter Milan filed another partial motion to dismiss, again seeking to eradicate the likelihood of confusion claim from the newest opposition. It still relied upon an argument, which worked before, that MLS failed to assert a legitimate interest in preventing confusion between the marks used by the cited third parties and the registration of “INTER” by Inter Milan. The case of Holmes v. Duracraft, 30 USPQ2d 1549 (TTAB 1994), referenced by the TTAB in previously granting Inter Milan’s motion to dismiss, is a main highlight of the renewed motion.
Inter Milan stated that MLS failed to allege privity with any of the third parties and instead alleged partnerships with member organizations that have some vague connection or association with a couple of the cited third parties. It wants the TTAB to dismiss the likelihood of confusion element of the opposition with prejudice and refuse to provide leave to amend the Notice of Opposition for a third time.
Almost one year since the filing of the original Notice of Opposition, MLS and Inter Milan have spent a lot of money and time on motion practice and still have a long road ahead of them on what is probably the more fundamental issue — whether “INTER” is merely descriptive and should thus be denied registration on said grounds alone.