Trademark Showdown: Inter Milan and Inter Miami Battle over the Rights to “Inter”

America’s top-flight soccer league, Major League Soccer, is set to begin regular-season play on February 29, 2020.  Excitement among American soccer fans is palpable, due in no small part to the debut of two new clubs beginning their inaugural seasons: Nashville SC and Inter Miami CF.

While both clubs represent equally the continued growth of MLS and soccer in the United States, it is arguably Inter Miami that will have a greater international draw.  Located in the vibrant and global city of Miami, Florida, Inter Miami promises to be “multilingual and omnicultural,” and bring “world class futbol to [a] world class city.”  With a proposed 25,000-seat soccer stadium and mixed-use complex in development, and an ownership group spearheaded by soccer legend David Beckham, Inter Miami is ready to make a name for itself in the soccer world.

Only, that name may be fleeting.

In September 2018, MLS announced that its new Floridian franchise would be officially named Club Internacional de Fútbol Miami, or “Inter” Miami for short.  Inter Miami is not the first MLS club to adopt a prefix or suffix commonly used by European clubs.  MLS is littered with club names ending in “SC” and “FC,” and includes a “Real” Salt Lake and “Sporting” Kansas City.  Unlike these other club names, however, Inter Miami’s branding has caught the attention of a premiere European club.

F.C. Internazionale Milano S.p.A. – known colloquially as Inter Milan – plays in Italy’s Serie A and is one of the most recognized clubs in soccer.  In 2014, Inter Milan filed a trademark application with the United States Patent and Trademark Office seeking to obtain exclusive commercial rights in the United States to the term “Inter,” arguing that Inter Milan is synonymous with the term.  In September 2018, MLS applied for its own trademark for the name Inter Miami CF with the USPTO, and subsequently filed an opposition to Inter Milan’s trademark efforts.

Now, MLS and Inter Milan are engaged in a formal trademark dispute regarding whether Inter Milan is entitled to make “Inter” an exclusive brand in the United States.  Notably, MLS, and not Inter Miami, is the party opposing Inter Milan’s efforts.  This is because MLS, unlike other American professional sports leagues, is a single-entity organization.  MLS owns the rights to the individual clubs, and the club “owners” actually own a share of the league, rather than just the club, and are then granted the right to operate a particular club.  Accordingly, it is MLS that has rights to “Inter Miami,” and it is MLS that suffered a recent setback in its efforts to curtail Inter Milan’s trademark filing.

To mount a successful opposition, MLS must explain why it believes the league would be damaged if Inter Milan obtained its requested trademark, and demonstrate that it has its own rights to the term.  To that end, MLS filed a written notice of opposition to Inter Milan’s trademark application, raising two arguments: (1) “Inter” is merely a descriptive term widely used in soccer; and, (2) trademarking the term will cause a “likelihood of confusion” among the clubs across the globe that currently use “Inter” in their names.  In other words, MLS’ position is that the widespread use of “Inter” by other clubs means that customers do not associate the term with any one club, and permitting Inter Milan to obtain exclusive rights to the term would cause confusion.  Further, “Inter” is simply shorthand for the word “international,” which is why it is used so frequently in club names, and is therefore not meaningfully distinctive.

Inter Milan subsequently moved to dismiss MLS’ second argument regarding likelihood of confusion.  The U.S. Trademark Trial and Appeal Board, convinced by Inter Milan’s position, recently dismissed MLS’ second claim and found that MLS had failed to provide any relevant facts supporting its argument that consumer confusion would arise, and that MLS cannot argue on behalf of third-party clubs that have “Inter” in their names.  This decision is telling, as Inter Milan faced a heavy burden to make its argument and yet prevailed, and MLS has now lost one of its key claims due to a failure to plead sufficient supporting facts.

Nonetheless, MLS has elected to re-plead its likelihood of confusion claim, and Inter Milan has filed a new motion to dismiss this re-pleading, noting that MLS once again relies on the use of “Inter” by third-parties, without providing any sufficient link between MLS itself and any use of “Inter.”

This trademark dispute is in its relative infancy, and while MLS has suffered a setback, months of discovery, expert witnesses, and further briefing afford both parties the opportunity to make their arguments.  Alternatively, the parties could reach a settlement, perhaps allowing both clubs to use “Inter” with certain negotiated commercial rights.

Absent any settlement, however, the threat facing MLS and Inter Miami is real.  If Inter Milan ultimately prevails, it would acquire a legal presumption of ownership and validity in the mark, and could bar other clubs from marketing themselves with the same abbreviated name.  Meaning, Inter Miami would need to change its name, perhaps even before the conclusion of its inaugural season.  With a full roll-out of its branding, logo, jerseys, and merchandise already completed, a name change would be a costly inconvenience and a less than ideal beginning for an American soccer club with lofty ambitions.

Shall we go Dutch? Belgian Pro League clubs mull over merger with Dutch Eredivisie

Last year, Sports Shorts reported on proposals for a combined Dutch and Belgian football league – a so-called ‘BeneLiga’. Talks of a merger appear to be gathering pace in the early part of this year, with Inside World Football reporting that a meeting recently took place between the Belgian and Dutch footballing authorities, alongside eleven clubs from across the Belgian Pro League and the Dutch Eredivisie. Perhaps unsurprisingly, the clubs in question are traditionally the most successful and best supported teams across the two leagues, with Ajax, Feyenoord, PSV Eindhoven, Club Brugge, RC Genk, AA Gent, Standard Liege, AZ Alkmaar, FC Utrecht, Anderlecht and Vitesse Arnhem all reported to be in attendance. Continue Reading

Saracens’ relegation and the knock-on effects

Saracens scraped through into the quarter-finals of European rugby’s Champions Cup after a win over Racing 92 this weekend.  However, even if the three-time European Champions were to retain their crown, the club will not be competing in the competition next season.  This is because, after reaching agreement with the governing body of Premiership Rugby, Premier Rugby Limited (“PRL”), to accept automatic relegation, Saracens will not be a Premiership club next season (a requirement for Champions Cup eligibility).  Instead, they will be playing the likes of Coventry, Jersey and Doncaster in the English Championship.  Continue Reading

New Year, New Deal in the WNBA

A new and historic agreement has been reached between the Women’s National Basketball Association (WNBA) and the Women’s National Basketball Players Association (WNBPA), which includes higher salaries, improved benefits and better work and travel conditions.

Following the 2018 season, the WNBPA exercised its option to opt out of the collective bargaining agreement (CBA) with the WNBA. As discussed previously on Sports Shorts, the CBA is an agreement between the league and the players association. It governs the rules of the league and competition format as well as the revenue splits and benefits conferred onto the players.

Continue Reading

Questions Raised Over Marketing Restrictions on Olympic Athletes

It has been reported that the European Commission met with officials from the International Olympic Committee (IOC) in November to discuss rules that restrict athletes’ marketing activities during a ‘blackout’ period around the Olympic Games.

The meeting follows a recent ruling in Germany, which found that certain IOC restrictions breached antitrust rules and unlawfully limited athletes’ ability to earn money from sponsors.  Following commitments given by the German Olympic Sports Confederation (DOSB) and the IOC to loosen the rules on German athletes, it is understood that the European Commission may consider extending this approach to the rest of the EU.

The European Commission meeting also comes shortly after a group of British athletes, including Mo Farah, Katarina Johnson-Thompson, Laura Muir and Adam Gemili, sent a Letter Before Claim to the British Olympic Association threatening legal action over its blackout rules.

On the eve of next year’s Olympic Games in Tokyo, the ability of athletes to engage in their own marketing – and the right of event sponsors to protect their investment – will come under significant scrutiny.  National Olympic Committees, athletes and the companies that support them will all be watching carefully.

Continue Reading

The United Colours of Benelux: Belgian and Dutch Authorities Consider Proposals for Combined Football League

Ajax’s run to the 2019 UEFA Champions’ League semi-final – European football’s premier club-cup competition – provided a welcome dose of nostalgia for those who remember the glory-days of Johan Cruyff in the 1970s and the Champions’ League winning team of 1995. However, in recent years, football clubs with rich histories such as Ajax, Feyenoord, Anderlecht and Club Brugge have generally struggled to reach the latter stages of the Champions’ League. Clubs from the Belgian Pro League and the Dutch Eredivisie find it difficult to compete financially with their counterparts in European football’s biggest leagues where revenues from broadcast deals and other commercial channels are much higher. As a result, it has become common for many of the Benelux clubs’ best players to move abroad in order to fulfil their footballing and financial ambitions. Continue Reading

A slam-dunk? Sweeping and dramatic changes may be coming to the NBA

Adrian Wojnarowski and Zach Lowe dropped, what is known as a Woj Bomb, last week as they announced that the NBA is in high level discussions with the NBPA (the National Basketball Players Association) and broadcasting partners concerning “sweeping and dramatic changes to the league calendar that include a reseeding of the four conference finalists, a 30 team in-season tournament, and a postseason play-in”.

Reasons for change

There are a number of reasons why the NBA may consider changing the league format.

A culture of ‘load management’ has emerged in the league, which involves players opting to rest for certain matches, especially where teams play back-to-back games. Players are resting in the regular season so that they are fresh and healthy for the playoffs. The intense regular season takes its toll on players with a commitment of 82 games between October and April coupled with the demands of travel across North America.

TV viewing figures have dropped this season – broadcast audiences have declined by 18% compared to this point last season.

The Western Conference is also “stacked” when compared to the Eastern Conference. Teams in the West are perceived to have a large number of title contenders whereas the East is considered to have very few title contenders. The current format splits the 30 NBA teams into two conferences of 15 teams: East and West. At the end of the regular season, the top eight teams in each Conference qualify for the playoffs, where they compete against other teams within their Conference. The winners of the respective Conference playoffs meet in the NBA Finals. There is growing pressure on the NBA to change this format so the 16 best teams across the NBA compete in the playoffs, potentially skewing the playoffs so that more Western Conference teams qualify.

Continue Reading

Brands and Football – The Perfect Match

The pulling power of the Premier League has attracted a portfolio of sponsors targeting global markets. With clubs battling for market share in the Far East and in a unique position to benefit from GDPR, there appears to be only one direction for the value of commercial partnerships. We share our perspectives in this video.

Football finance: Factoring in cash flow

Although it is trite to say that modern football clubs are very much run as businesses, there is often little consideration paid to the nuts and bolts of how these businesses work. As businesses, football clubs are not immune from the challenge of poor cash flow, which is prevalent across many industries. As such, clubs need to consider how best to leverage the financial tools at their disposal to improve their cash flow in order to maximise output both on the pitch and off it. One such tool is debt finance. While debt-finance comes in many forms, such as an overdraft, receivables finance has become increasingly prevalent in English football over recent years. Continue Reading

Three NBA players suspended for drug violations

The NBA commenced its new season on 22 October with the battle for Los Angeles, as Kawhi’s Clippers edged the Lakers this time. But, less than three weeks into the new season, attention has turned to off-the-court matters; three NBA players who were active on rosters last season have been suspended for testing positive for banned substances.

Wilson Chandler of the Brooklyn Nets tested positive for Ipamorelin, a growth hormone during the summer. The number 1 pick of last year’s draft, DeAndre Ayton tested positive for a diuretic whilst the Atlanta Hawks’ John Collins tested positive for Growth Hormone Releasing Peptide-2, a synthetic drug found to increase appetite and food intake.

The three players have been suspended without pay for 25 games for violations of the NBA/National Basketball’s Player Association (NBPA) Anti-Drug Program.

Continue Reading

LexBlog