David Beckham's Interesting Trade Mark Issue

David Beckham is in the news again. This time it's all about a new US football venture. A venture that has run into a trade mark problem.

Beckham is heavily involved in the formation of a new Major League Soccer (“MLS”) professional football team that will be based in Miami, Florida. The team's first home game is scheduled to take place very soon, 14 March 2020. The team will be called Inter Miami (full name Club Internacional de Fútbol Miami), but Inter Miami for short, or will it?

As any football lover knows, there's a rather famous football club that plays in the Italian Series A league called Inter Milan. This team is often referred to simply as Inter. In 2014, the Italian team applied to register the name Inter as a trade mark in the USA. That application is still pending.

In 2018, Inter Miami filed a US trade mark application for the mark INTER MIAMI (in reality, it's MLS that is doing all this on behalf of Inter Miami). The club also filed an opposition to Inter Milan's application - no doubt Inter Miami was concerned that a trade mark registration for Inter Milan might be used to stop its use of the name Inter Miami. Inter Miami's opposition was based on two grounds. The first ground was that registration of Inter Milan would lead to a likelihood of confusion. The other was the claim that the name Inter Milan is descriptive and therefore not registrable.

Inter Miami has raised a number of points:

the name Inter is common for football clubs (there are apparently football clubs called Inter in, among others, Brazil, Croatia, Finland and Germany); the wordinter is simply an abbreviation ofinternacional so it's not distinctive; the word is simply descriptive; the word is not an indicator of source; and the registration will unfairly prevent use or registration of further marks incorporating the wordinter. This sentence from the opposition document is important:Because of the widespread use of the term Inter in soccer, the relevant consumers do not associate the term Inter with one soccer team; Inter by itself is not a source indicator in connection with goods and services associated with soccer. For reasons that aren't entirely clear, the two grounds (likelihood of confusion and descriptiveness) were split, and the opposition based on likelihood of confusion has already been determined. The US Registry, in the likelihood of confusion matter, found for Inter Milan, holding that...