Major League Soccer’s Inter Miami CF insists it doesn’t need to change its name, despite a recent setback in the battle for the brand with Serie A club Inter Milan.
The problem lies in the use of the word ‘Inter’, for which the Italian club has filed a trademark application with the United States Patent and Trademark Office (USPTO). The club claimed it is synonymous with Inter Milan, whose full official name is FC Internazionale Milano.
Inter Miami, co-owned by David Beckham, finished 10th in his debut season in the MLS Eastern Conference in 2020.
In 2018, MLS filed a proprietary trademark for the Inter Miami CF name with the USPTO and then appealed to Inter Milan’s 2019 trademark efforts because MLS is structured as a “single entity” and not as a franchise association. It was the league that appealed on behalf of Inter Miami.
In the document presented, the MLS states that Inter Milan’s application should be rejected because the term ‘Inter’ is purely descriptive. He also argued that allowing Milan to use the term would create “likely confusion” in the marketplace.
Miami’s “likelihood of confusion” argument was twice dismissed by the USPTO on the grounds that MLS has no existing rights to the word “Inter” and the most recent ruling was made on December 9, 2020. That decision has given rise to concerns that Inter Miami will be forced to change their name.
In a statement to ESPNInter Miami said that “the trademark dispute between Major League Soccer and Inter Milan revolves around whether Inter Milan can claim exclusive ownership of the trademark and the right to use the commonly used term ‘Inter’ by itself in commercial activities”.
The statement continued, “The lawsuit does not involve the trademarks or trademarks of Inter Miami CF, whose formal franchise name is Club Internacional de Futbol Miami. The Club is in no danger of changing its name or approved trademarks.”
There is also the possibility that an agreement can be reached on the word ‘Inter’ in the dispute.
South Florida business attorney David Winker said that while Inter Miami’s statement is technically true, there could be other legal battles in the future if Inter Milan succeeds in making the ‘Inter’ trademark.
“If Inter Milan eventually wins, the next step is likely to be for the team to take action against Inter Miami to stop using the word ‘Inter’ in their name,” he said by email. And Inter Milan would likely be successful in such a move. Simply put, ‘apple’ is a fruit, but it is partnering with Apple, Inc., a technology company, and Apple could prevent it from opening a computer store called ‘Apple’ Miami ‘”.
Winker previously sued Inter Miami to withdraw a referendum on a stadium in Miami and the demolition of a stadium project in Ft. Lauderdale. The first lawsuit was dismissed, while the second was defeated in court.