On March 2, MLS submitted a filing to the U.S. Patent and Trademark Office (USPTO) in which it indicated: “The parties are actively engaged in negotiations for the settlement of this matter. Major League Soccer, L.L.C. requests that this proceeding be suspended for 60 days to allow the parties to continue their settlement efforts.”
In 2014, Inter Milan filed a trademark application with the USPTO stating that the term “Inter” is synonymous with Inter Milan. In 2018, MLS applied for its own trademark for the name Inter Miami CF with the USPTO, and subsequently filed an opposition to Inter Milan’s trademark efforts in 2019. Because MLS is structured as a “single entity” and not a league with franchises, it was the league that filed the objection on behalf of Inter Miami.
In the MLS filing, it stated that Inter Milan’s application should be refused because the term “Inter” is merely descriptive. It also argued that allowing Milan’s use of the term would result in a “likelihood of confusion” in the marketplace.
Miami’s “likelihood of confusion” argument was twice rejected by the USPTO on the grounds that MLS has no existing rights to the word “Inter,” with the most recent ruling taking place on Dec. 9, 2020. That decision had led to concern that Inter Miami may have to change its name, though at the time, the team had insisted that “the Club is not in jeopardy of changing its trademark-approved name or marks.”
Writing in Law.com’s Daily Business Review, South Florida business attorney David Winker said the news of settlement talks isn’t a surprise. (Winker has previously sued Inter Miami to overturn a stadium referendum in Miami, as well as stop demolition on a stadium project in Ft. Lauderdale. The former lawsuit was dismissed while the latter was defeated in court.)
“Trademark disputes often settle because trademark litigation is expensive, and because the stakes are so high,” Winker wrote on Law.com’s Daily Business Review. “It is not surprising that a settlement is being reached in this case. Inter Miami having to rebrand after its flashy roll-out would be expensive and embarrassing. A settlement would also allow the parties to proceed with their respective trademark applications, and set parameters for the parties respective use of their trademarks.”