BRAND REGISTRATION SHOCK TO DAVID BECKHAM

BRAND REGISTRATION SHOCK TO DAVID BECKHAM

The rejection to the world-famous former football player David Beckham’s trademark registration application to the American Patent Office was the flash news for the World Intellectual Property Rights Day, which will be celebrated on April 26.

The football club, “Club Internacional de Futbol Miami” founded by David Beckham in the USA faced a bad surprise while preparing to play in the Major League, North America's biggest football league in the 2020 season.

The former football star was shocked with 3 rejection responses from the United States Patent and Trademark Office (USPTO), which he applied to register the brand name of his club as "Inter Miami FC". Now, a trademark lawsuit is expected for Beckham by the Italian football club Inter Milano.

According to the official documents obtained from the data of the American Patent and Trademark Office by the trademark and patent agents of Istanbul-based Markiz Patent company, MIPH LLC company, owned by ex-star player David Beckham and his partners, and which has hundreds of different items, ranging from sports ready-to-wear products to beverages, has submitted 6 trademark registration applications last year to the American Patent Office to use the "Inter Miami FC" trademark.

REASONS FOR REJECTION OF BECKHAM'S BRAND APPLICATION

After reviewing the applications, the American Patent Office presented David Beckham 3 rejections. First of all, it was decided that he cannot register the trademark of his club and his products as "Inter". The reason for this decision is that the name "Inter" was previously registered in the USA by the Italian football team Inter Milan (F.C. Internazionale Milano S.p.A.).

According to the information compiled by Markiz Patent, the American Patent Office has secondly decided that Beckham cannot register Miami as a trademark. The reason for that is Miami is considered within the scope of geographical indication since it is a city name known to everyone in America.

The American Patent Office finally underlined that Beckham cannot register the name "FC" as a trademark, because the letters "FC" are abbreviations of the words "football club", which is a general public term. The Patent Office granted the right to object and appeal to David Beckham and his partners within 6 months.

Support for Beckham's team came from the Major League (MLS), the common football league of the U.S. and Canada, just days before the 6-month objection period expired in September last year.

According to the document published by the American sports news organization prosoccerusa.com, in the objection and appeal filed by Major League to the American Patent and Trademark Office on March 24, 2019, it was claimed that the word "Inter" was registered by F.C. Internazionale Milano S.p.A. (Inter Milan) to the American Patent Office in 2014, which stands for the abbreviation of the word 'International', is still not possible to be registered specifically for the Italian team since it is used by many football clubs in America and the world, "No football club can claim a special right on the term" Inter " solely, so it is not possible for Milan to make a special right on the term Inter."

"If the trademark registration applications are made with marks, names and words that cannot be accepted with special, original, unique and a sign which cannot be perceived as coincidence, it may be possible to make rejection decisions from the patent authorities," said Orhan Eriman, the trademark patent attorney evaluating the problem experienced by David Beckham.

WARNING TO TRADEMARK OWNERS: TRADEMARKS WHICH YOU DO NOT USE MAY BE WITHDRAWN FROM YOU

Orhan Eriman, the founder of Markiz Patent and the trademark and patent attorney, stated that April 26 has been determined as the World Intellectual Property Rights Day by the World Intellectual Property Organization (WIPO), which is accepted as the highest decision-making body of the world in trademark and patent registration. He also added that the theme of 2019 has been determined specifically for trademarks and patents in the sports sector. He drew attention to a well-known misconception about trademark registration, and warned the companies: “Our companies which register trademarks thinking that they might be needed in future but actually do not actively use them for more than 5 years, may experience serious loss of rights on these trademarks. National and international trademark authorities may grant a right of priority registration to another trademark that is similar to an already registered but not actively used one if that registered trademark is considered as restrictive, deceptive and malicious to the real business market.”

A DOMAIN NAME IS NOT ENOUGH FOR TRADEMARK REGISTRATION

The trademark and patent attorney Orhan Eriman stated that lately among the most frequently asked questions by companies wishing to make a trademark registration, 'Is there a need to have a trademark registration after getting a domain name?’ His answer is: “The owner of the domain name should officially register the trademark in order to protect the right better. I would recommend the owner to register his/her trademark both nationally and internationally according to the value he/she places for his own brand.