Law & Practice

UNITED STATES: Major League Soccer Denied on Third-Party Use

Published: February 17, 2021

Mark Romance

Mark Romance Day Pitney LLP Miami, Florida, USA INTA Bulletins—North America Subcommittee

Verifier

Rui W. Geissler Muncy, Geissler, Olds & Lowe, P.C. Fairfax, Virginia, USA INTA Bulletins—North America Subcommittee

The U.S. Trademark Trial and Appeal Board (TTAB) issued a precedential ruling on December 9, 2020, granting the motion of applicant F.C. Internazionale Milano (Inter Milan) to dismiss part of the opposition of Major League Soccer LLC (MLS) to the mark INTER.

Inter Milan, a professional soccer club based in Italy, sought to register the mark INTER in seven international classes, including entertainment services relating to professional soccer games and exhibitions in International Class 41. MLS, a professional soccer league comprising teams located around the United States, challenged the registration on the grounds of being merely descriptive and likelihood of confusion. Major League Soccer, L.L.C. v. F.C. Internazionale Milano S.p.A., 2020 USPQ2d 11488 (TTAB 2020).

Regarding the likelihood of confusion challenge, MLS’s opposition cited no prior use of its own but relied on prior use by third-party amateur soccer clubs and organizations, and argued it had a legally sufficient relationship with the third parties. MLS claimed that it draws both fans and players from these relationships, and that it has standing and a legally binding partnership with all official U.S. soccer-sanctioned clubs and organizations, including those that had prior use of the mark.

The TTAB compared the facts of this case to those in precedential decisions concerning assertion of trademark rights via third parties. It found that MLS was not seeking to protect any proprietary rights of its member teams or organizations, whereas the opposer in Jewelers Vigilance, which successfully relied on prior use by third parties, was a trade association seeking to protect use of a mark used by its members. Here, the fact that MLS may draw the same fans and players from the amateur teams and organizations with prior use of the mark was considered “too attenuated” to give MLS a sufficient relationship to entitle it to claim prior use of third parties.

Accordingly, the TTAB held that because MLS claimed no prior proprietary interest in the pleaded marks and claimed no privity with the entities that own those marks, MLS had no “legitimate interest” in preventing a likelihood of confusion with the pleaded marks owned by the third parties. The TTAB dismissed MLS’s likelihood of confusion challenge. The proceedings will now resume solely on MLS’s descriptiveness claim, though the timing was not specified.

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