Inter Milan Fights Back Against MLS Attack On Its INTER Trademark App

On March 25, Major League Soccer filed a trademark opposition against F.C. Internazionale Milano S.p.A., more commonly known as international soccer powerhouse Inter Milan. MLS intended to block the registration of Inter Milan’s trademark application for “INTER.” It mainly claimed that “INTER” is short for “international” and commonly used to describe soccer teams. It said that “INTER” has not become distinctive as used on or in connection with Inter Milan’s goods and services in the United States.

Inter Milan will not simply fold.

On May 6, it filed a partial motion to dismiss the notice of opposition for failure to state a claim. It seeks to remove MLS’ argument that the registration of “INTER” should be denied based on the ground of a likelihood of confusion. Inter Milan says that MLS cannot allege that it owns prior trademark rights in any mark incorporating “INTER.”

While MLS filed an intent-to-use trademark application with the U.S. Patent and Trademark Office (USPTO) on September 25, 2018, that should play no role, says Inter Milan. It filed its own intent-to-use application for “INTER” on March 18, 2014. As such, Inter Milan says it is clear that it has priority. Additionally, Inter Milan claims that MLS’ attempt to establish common law rights attached to INTER MIAMI FC is futile.

“Nowhere in the Notice of Opposition, however, does Opposer allege or set forth facts even suggesting that either mark confers upon Opposer prior trademark rights that it can assert against Applicant,” stated Inter Milan in its filing. “In particular, nowhere does Opposer allege that it used or sought to register any mark prior to March 18, 2014 when Applicant filed its INTER application. Opposer has thus not sufficiently alleged prior trademark rights.”

Inter Milan separately filed an answer to the opposition submitted by MLS. In it, Inter Milan says that the “INTER” mark is inherently distinctive of the goods and services in the application. In the alternative, it claims the mark has acquired distinctiveness in connection with its goods and services.

The fight will go on, and it will take place on U.S. soil.