Football clubs battle over the trademark ‘Inter’. MLS v. INER MILAN

Football clubs battle over the trademark ‘Inter’. MLS v. INER MILAN

A trademark is something that consumers associate with the manufacturer of a product.  Traditionally a trademark is thought of as a symbol, word or phrase, but anything that signals to consumers the identity of the manufacturer of a product can be eligible for trademark protection.  In the United States trademark rights are derived from the use of the trademark in commerce.  A trademark can be registered with the United States Patent and Trademark Office to strengthen the rights associated with the trademark but registration is not necessary for the trademark user to be granted a claim to the trademark.

The first person to use a trademark in commerce is considered the senior user of a trademark.  People who subsequently use a trademark are considered junior users.  A senior user has priority over junior users of a trademark.  If a junior user uses a trademark in a way that leads to consumer confusion about the identity of the producer of a product that can be considered trademark infringement.  The senior user of a trademark can file a lawsuit to stop trademark infringement with a lawsuit and to get monetary damages for trademark infringement which has occurred.

With respect to trademark registration in the United States, filing a trademark application gives the applicant a solid claim to a trademark, but registration does not negate priority.  A senior trademark user can challenge a trademark application by a junior user on the grounds of likelihood of confusion and introduce evidence of earlier use in commerce.  The question then becomes, can you oppose a trademark application on the grounds that someone other than you has priority to the trademark?

MAJOR LEAGUE SOCCER, L.L.C., v. F.C. INTERNAZIONALE MILANO S.P.A.,  OPPOSITION 91247160 (TTAB 2019) is a case which deals with this question.  The applicant in this case operates a football team in Italy.  In 2014 the applicant filed a trademark application for the word INTER in the United States for various classifications of products.  MLS operates a football team, or soccer as it is know in the United States, called Inter Miami.  MLS filed trademark application Serial No. 884107952 (Application ’795”) for the trademark INTER MIAMI CF May of 2019 but it was .  In March of 2019 MLS filed an opposition to the trademark application.  MLS claims the application should be refused for two reasons, Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e) on the grounds that Applicant’s mark is merely descriptive and Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) pursuant to a claim of priority and likelihood of confusion.

Essentially MLS argues that other teams have been using INTER in their name as a shortened version of international makes the trademark merely descriptive and that consumers are likely to be confused about which team “INTER” refers to.  To bolster its arguement MLS cited several other teams that use INTER in their names which predate INTER MILAN’s trade application.  The Trademark Trial and Appeal Board (TTAB) within the United States Patent and Trademark Office has jurisdiction over the notice of opposition.

In July 2019 the applicant moved to to dismiss, the notice of opposition for failure to state a claim upon which relief may be granted under Fed. R. Civ. P. 12(b)(6) as to Opposer’s 2(d) – likelihood of confusion – claim.  January of 2020 the TTAB found that MLS failed to plead any facts relevant to the Section 2(d) statutory ground negating Applicant’s
entitlement to registration, which requires, at minimum, a claim of valid proprietary rights that are prior to those of Applicant and that Applicant’s mark so resembles Opposer’s mark as to be likely to cause confusion.

Essentially the TTAB said that MLS could not use priority of a third party to win the opposition.  MLS must demonstrate it had priority and there was a likelihood of confusion.  The TTAB dismissed the Section 2(d) aspect of MLS’s opposition but gave MLS 20 days to file amended pleadings.

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