April 8, 2021
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Major League Soccer (“MLS”) and Italian professional soccer club, Inter Milan, have reportedly engaged in settlement talks over their trademark battle concerning the use of the word “Inter”.
In 2014, Inter Milan filed a trademark application with the U.S. Patent and Trademark Office (“USPTO”), which claimed that “Inter” had become synonymous with Inter Milan. Four years later, the MLS applied for a trademark with the USPTO for "Inter Miami FC".
MLS subsequently filed an opposition to Inter Milan’s trademark application, arguing that it should be refused, because “Inter” is a descriptive term. Additionally, MLS claimed that allowing Inter Milan’s use of “Inter” would harbour a “likelihood of confusion”. The USPTO rejected this argument twice, because it held that MLS has no existing right to the term.
However, MLS recently made a filing with the USPTO in which it indicated that it and Inter Milan were engaged in active settlement negotiations and requesting that its proceeding be suspended for 60 days to allow the parties to continue settlement efforts.
Authors: Aaron Barrett and Scott Kerr