IP Information & News

Kicked Inter touch — David Beckham’s Miami trade mark battle

Alan Fiddes

By Alan Fiddes

Managing Partner

David Beckham has spent years putting together his new Major League Soccer (MLS) franchise, Inter Miami. Now, just weeks before its first ever home fixture against LA Galaxy, the team could be forced to change its name.

Italian football giant Inter Milan has opposed Inter Miami’s trade mark applications at the United States Patent and Trademark Office (USPTO). Internazionale has claimed that the term “Inter” is synonymous with the Italian club — which is, of course, the local rival of Beckham’s former employer AC Milan.

In an initial decision, the USPTO found that Inter Milan — which registered the trade mark “Inter” in 2014 — had established that there was a likelihood of confusion between the two names. At the same time, the Office dismissed the argument put forward by Beckham’s MLS franchise — that a number of teams around the World that use “Inter” in their name. This list is long and includes the likes of SC Internacional of Porto Alegre (Brazil), Inter Nashville FC, Inter Atlanta FC, FC Inter Turku (Finland), NK Inter Zapresic (Croatia), Inter Leipzig (Germany) and Inter de Grand-Goave (Haiti).

The Office found that Inter Miami was unable to establish that it had a valid proprietary or ownership right in the name “Inter”. Following the decision, it has been reported that Inter Miami’s lawyers feel that the decision “will result in Miami having to change its name”.

While Inter Miami will have seen this trade mark battle coming, the timing of the decision is unfortunate. A major rebranding exercise could be around the corner — yet another setback for the franchise before it can really look to kick-on and become a force in MLS.

This case demonstrates the importance of clearing brand names for use and considering any global implications in your territories of interest.

For advice on clearance and choosing brand names, get in touch with me at amf@udl.co.uk.

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