11 February 2020TrademarksRory O'Neill

Inter Milan defend lead in Beckham trademark dispute

Italian football club Inter Milan are looking to hold on to the opening victory they won last month in their trademark dispute with the US’ Major League Soccer (MLS) over the name of David Beckham’s new team.

MLS wants the US Patent and Trademark Office (USPTO) to block Inter Milan from registering ‘Inter’ as a trademark, arguing that this is a generic term.

The US league hopes to clear the way for Beckham’s team Inter Miami CF to freely market itself under that name.

Inter Miami are about to begin their inaugural season in MLS, and will play their home matches in Fort Lauderdale, Florida as they continue looking for a permanent home in Miami.

But if the Milan club are able to register their trademark, they could interfere with Beckham’s team being able to use the Inter Miami name.

The proposed ‘Inter’ mark would grant the Italian club exclusive rights to the term for numerous goods and services, including the staging of professional football matches.

Inter Milan won an early victory in the dispute last month, when the USPTO’s Trademark Trial and Appeal Board (TTAB) threw out MLS’ claim on the grounds of likelihood of confusion.

According to the TTAB decision issued on January 3, MLS failed to prove that it had any prior rights to the ‘Inter’ term.

The league currently has a pending trademark application for ‘Inter Miami CF’, which has yet to be approved by the USPTO.

MLS argued that it should be allowed to bring the claim because it had a “special interest” in the soccer industry, and cited uses of the term by third-parties.

But according to the TTAB, MLS did not “articulate any claims to suggest that its responsibilities as a professional soccer league encompass the interests of the third-party users”.

MLS subsequently filed to re-plead its likelihood of confusion claim, which has been met with a motion to dismiss from Inter Milan.

In that motion, filed last week, Inter Milan said that MLS’ claims fall down again because it relies on third-party marks.

“[MLS] has not alleged its own prior use of or connection with any of the third-party ‘Inter’ marks, or any substantive, direct connection with any of the third parties who are identified by the marks,” the Inter Milan filing said.

Beckham founded Inter Miami in 2018 after he exercised a clause in his MLS contract, stemming from his time as a player for LA Galaxy from 2007 to 2012.

Beckham’s deal with the league allowed him to establish a new franchise team to compete in MLS.

The team will play their first match away to Los Angeles FC on March 1.

Inter Milan are currently top of the Serie A table in Italy. They are level on points with reigning league champions Juventus but ahead on goal difference.

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4 April 2019   Inter Milan are embroiled in a trademark dispute with Major League Soccer over the name of David Beckham’s new football club Inter Miami.