A bedrock tenant in intellectual property law is being first to the post when it comes to filing for trademarks; otherwise, you and your business or project are simply out of luck, regardless of the primacy of your creation. That said, there is something to having a history and building brand recognition separate and apart from any IP considerations, and when it comes to the world of sport, few deal in history more than soccer and its composite clubs and federations.
In the latest development in an ongoing legal drama, Major League Soccer (MLS) has been dealt a blow in its bid to contest a trademark filing by FC Internazionale Milano, known the world over to soccer fans as Inter Milan or, more frequently, Inter. It’s the “Inter” name that has been the point of contention, as MLS opposed the club filing for a U.S. trademark on the word on the grounds that there would exist confusion for American consumers, particularly with regards to MLS’ Inter Miami.
Unfortunately for MLS, the U.S. Trademark Trial and Appeal Board (TTAB) did not agree with such an assessment, and dismissed the organization’s claim against Inter’s filing, per Michael McCann of Yahoo Sports. While MLS asserted that “Inter” is in use by any number of soccer clubs across all levels of the sport, none of those other clubs are associated with MLS save for its Miami franchise; thus, MLs lacks what would be considered legitimate interest in avoiding any such confusion.
As McCann notes, MLS does have another arrow in its proverbial quiver, as it can assert that the “Inter” moniker is descriptive, in this case of a club that employs a collection of international players. Setting aside whether this particular argument holds water, I would instead suggest that the confusion, or something akin to it, is rather the point for MLS. The league adopted names with “Inter” and “Real” and “Sporting” in them precisely for the evocation of older, more prestigious clubs from Europe and elsewhere, in order to lend a relatively young (by international standards) organization the patina of history where none exists. How can Salt Lake’s team be “Real” in a country that has never had royalty? How can Inter Miami, a club that has yet to play its second competitive season, argue ownership of a name with a club that dates back to 1908, regardless of legal merit?
Given that MLS’ case still has months and years to play out, perhaps the league will seek a different path that doesn’t involve battling a club with exactly the kind of fans and following it is hoping to court. MLS may eventually win the legal fight, but they surely have to know they’ll never have the same claim to the “Inter” name, no matter how any court rules, and that may ultimately be their loss.