Bend it like Beckham - An Interesting trademark dispute


    Battles in football between rivals have taken place for over a century both on and off the pitch, but rarely in the court rooms. However, the case of the trademark INTER seems likely to play on for a while yet despite the most recent ruling by the USPTO.

    The case involves the famous Italian club, Internazionale, or Inter Milan as they are more commonly known and newly formed US club Internacional de Fútbol Miami, who is partly owned by David Beckham and has been rumbling on since 2014 when the Italian club filed a complaint over the trademark INTER with the USPTO.

    Inter Milan were founded in 1908 and are one of the most successful Italian football clubs of all time. They also have a strong record of success outside of Italy, including in the US where they have regularly been part of the International Champions Trophy competition that is played predominantly in the US every summer. They are known simply as Inter the world over and have owned the trademark in numerous jurisdictions, including with the US Patent and Trademark Office back in 2014.

    Inter Miami were formed in 2018 after being awarded the 25th Major League Soccer (MLS) franchise in the US from the 2020 season. Whilst they have not yet kicked a ball in anger, construction has started on a new stadium in Miami and the club have signed a sponsorship deal with Qatar worth £180m.

    In the US, most sports operate on a franchise basis, and the governing league owns the naming rights to the teams and have traditionally filed the relevant trademark applications to protect their brands. However, with the term INTER already protected in the US by the Italian club, MLS filed a notice or opposition against the application.

    “Because of the widespread use of the term INTER in soccer, the relevant consumers do not associate the term INTER with one soccer team” the claim from MLS stated, going on to add that “no one soccer team can claim exclusive rights to the term INTER, therefore Milan has no exclusive rights to the term INTER”.

    However, in mid-February, it was announced that the USPTO had ruled with Inter Milan in that there was a likelihood of confusion around the use of the INTER term. Their ruling stated that whilst there are other clubs around the world that use INTER in their name, the objection filed by the MLS did not meet its burden to show that MLS has valid proprietary, or ownership, right in the name.

    The case is likely to go to extra-time, playing out long after Inter Miami kick off their inaugural season in March but what the case does underline is the importance of understanding the digital asset landscape before any decisions are made on new brand names.