Thanks to Trademark Battle, Inter Miami Might Be Forced to Rebrand

Ask soccer fans what comes to mind when they hear the word "Inter," and many might say Inter Milan.

That name recognition is at the center of a trademark dispute between the Italian soccer club and Inter Miami that could result in a complete rebranding for David Beckham's new Major League Soccer team. And Miami recently lost its first bout in the fight.

"I think the victory for Milan will result in Miami having to change its name," says Miami attorney David Winker, who first wrote about the most recent chapter of the trademark fight for Law.com.

Neither Inter Miami nor Inter Milan responded to a request for comment from New Times.

Inter Miami you say? ???? https://t.co/NcdUfKjPH6

— Inter (@Inter_en) September 5, 2018

In 2014, Inter Milan (full name: Football Club Internazionale Milano S.p.A.) submitted a trademark application to the U.S. Patent and Trademark Office to make "Inter" an exclusive brand in the United States, barring other teams from marketing themselves with the same abbreviated name. Beckham and Miami MLS then unveiled the name Inter Miami (full name: Club Internacional de Fútbol Miami) in 2018. Inter Miami CF applied for its own trademark last year; its application has since been suspended.

Last year, Major League Soccer (MLS) filed a notice of opposition making two arguments against Milan's trademark application. First, MLS argues "Inter" is a descriptive term widely used in soccer, and, second, the league says trademarking the term will cause a "likelihood of confusion" among the various teams that already use "Inter" in their names.

"The crowded field of use of the term 'Inter' in soccer follows international naming customs in the sport," the league's notice of opposition reads. "Because of the widespread use of the term 'Inter' in soccer, the relevant consumers do not associate the term 'Inter' with one soccer team."

MLS was required to explain why it believes the league would be damaged by the registration of the "Inter" trademark and state its grounds of opposition. MLS also needed to prove it has valid proprietary rights to the term. But last month, the patent office's Trademark Trial and Appeal Board dismissed MLS's "likelihood of confusion" claim and said the league didn't meet those requirements. The board also said MLS couldn't argue on behalf of other teams.

MLS is appealing the board's decision and has filed an amended notice of opposition.

Please check out this update I wrote on the battle for the use of INTER, which may eventually result in Inter Milan forcing Inter Miami to change its name. https://t.co/HPFOq1iX1Y

— Attorney David Winker (@davidjwinker) February 10, 2020

So is Inter Miami's name in jeopardy? It could be. The expansion team has already unveiled its uniform, logo, and branding and is only about three weeks away from its first game. If its opposition claims are dismissed, Winker says Inter Milan could take Inter Miami to court to force the Magic City team to change its name.

"You'd have to rebrand your company in the middle of the season," Winker says.

Miki Turner, a Washington-based attorney and sports analyst, says Inter Miami and MLS face an uphill battle in the trademark dispute. He's not sure MLS will have much luck arguing the same claim again.

So why fight Miami, and why fight now, when other teams in the United States and around the globe have "Inter" attached to their names?

"Inter Miami is clearly the biggest of the bunch," Turner says. "Another reason is Inter Milan needs to protect their potential trademarks. And by letting a bunch of teams use it, they're setting up an argument that they've waived any [trademark] protection. You gotta fight it or you lose the right to fight it."

When the name "Inter Miami" was announced, some soccer circles groaned and grumbled at the copycat game between American and European teams. But some fans saw the writing on the wall all along:

This is truly terrible. Awful. Logo fine but the name - how can you seriously propose this? Club Internacional de Futbol Miami...Inter Miami CF...?!...so so bad. Surely you’ll need to rebrand in the coming months ahead of the season - can’t seriously launch a team this laughable!

— Oscar Hills (@Oscar8192) September 5, 2018

For now, Inter Miami's long and bumpy road only grows longer and bumpier.