Intent to Use Trademark Applications: Pros and Cons, Demonstrating ITU, Converting to Actual Use

Recording of a 90-minute premium CLE webinar with Q&A

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Conducted on Thursday, October 26, 2017

Recorded event now available

or call 1-800-926-7926
Course Materials

This CLE course will provide guidance to counsel on intent to use (ITU) trademark applications. The panel will examine what makes an ITU application different and the difficulties involved with an ITU application. The panel will also discuss how to properly establish a bona fide intention to use and to convert to actual use.


Filing an intent to use (ITU) trademark application can secure a priority filing date for the applicant while still developing the product or service under that mark. However, there are challenges with an ITU application. Filing an ITU application does not reserve a right in the mark.

To establish a bona fide ITU, the applicant must provide objective evidence reflecting the intent to use the mark in commerce. While the law is ambiguous, the TTAB has provided some guidance as to demonstrating bona fide ITU.

Companies acquiring trademarks must be aware of potential problems with ITU applications or applications that started as ITU applications, including improper assignment or lack of a bona fide ITU the mark.

Listen as our authoritative panel of IP attorneys and advisers examines the pros and cons of using ITU applications, what qualifies as ITU and demonstrating ITU. The panel will also discuss the challenges with an ITU application and offer best practices for converting the application to actual use.



  1. Establishing bona fide ITU
  2. Demonstrating ITU
    1. TTAB guidance
    2. Necessary evidence
  3. Challenges with an ITU application
  4. Converting ITU application to actual use


The panel will review these and other key issues:

  • What challenges do ITU trademark applications or applications that started as ITU applications present?
  • How can counsel properly establish a bona fide ITU?
  • What strategies should counsel employ to convert an ITU application to actual use as required for formal registration?


Bikoff, James
James L. Bikoff

Smith Gambrell & Russell

Mr. Bikoff focuses on formulating and implementing worldwide trademark and copyright protection and enforcement...  |  Read More

Burke, Victoria
Victoria Burke, Esq.


Ms. Burke specializes in intellectual property law, such as trademarks, copyright, and fashion law. She is Vice-Chair...  |  Read More

Kane, Hillary
Hillary Kane

Interim Director of Public Affairs
Southwestern Law School

Ms. Kane has over 20 years of experience in brand building, licensing business planning/strategy and change management....  |  Read More

Klinksieck, Darlene
Darlene S. Klinksieck

Trademark Portfolio Manager
Smith Gambrell & Russell

Ms. Klinksieck has over 30 years’ experience in trademark clearance, prosecution, maintenance, management and...  |  Read More

Access Anytime, Anywhere

Strafford will process CLE credit for one person on each recording. All formats include course handouts.

To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video