Intent to Use Trademark Applications: Pros and Cons, Demonstrating ITU, Converting to Actual Use
Recording of a 90-minute premium CLE video webinar with Q&A
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.
Outline
- Establishing bona fide ITU
- Demonstrating ITU
- TTAB guidance
- Necessary evidence
- Challenges with an ITU application
- Converting ITU application to actual use
Benefits
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?
Faculty
Paula I. Brueckner
Counsel
CSG Law
Ms. Brueckner’s practice focuses on representing companies, start-ups and individuals in intellectual property... | Read More
Ms. Brueckner’s practice focuses on representing companies, start-ups and individuals in intellectual property matters particularly in trademark prosecution, licensing, enforcement and trademark litigation. She has experience conducting trademark clearance searches, preparing trademark applications, responding to Office Actions and preparing filings with the United States Patent and Trademark Office. Ms. Brueckner also files and manages international trademark applications with the World Intellectual Property Organization under the Madrid Protocol.
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Matthew L. Frisbee
Partner
Leason Ellis
Mr. Frisbee helps clients to develop tailored strategies for protecting and enforcing their brands in the U.S. and... | Read More
Mr. Frisbee helps clients to develop tailored strategies for protecting and enforcing their brands in the U.S. and around the world. He routinely guides clients from trademark selection and clearance through registration and beyond, emphasizing a pragmatic and strategic approach. Mr. Frisbee also counsels brand owners regarding the intersection of trade dress, copyright, and design patent laws to protect product designs. He represents clients in trademark and copyright disputes and enforcement efforts, including handling proceedings before the Trademark Trial and Appeal Board, managing multi-jurisdictional disputes, and negotiating settlement agreements. Mr. Frisbee’s transactional experience covers IP licensing, assignments, and due diligence. He serves on the International Trademark Association’s U.S. Patent and Trademark Office Committee, which advocates to the USPTO on behalf of the trademark community. Mr. Frisbee also regularly appears as a panelist on IP topics for CLE presentations hosted by Strafford and has written articles published in the INTA Bulletin and IP Watchdog.
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Hillary Kane
External Chief Legal Officer
Kane Legal
Ms. Kane has 30 years of experience in brand building, licensing business planning/strategy and change management. She... | Read More
Ms. Kane has 30 years of experience in brand building, licensing business planning/strategy and change management. She was General Counsel and Business Development Vice President at Body Glove International for 15 years, where she managed international trademark prosecution/infringement litigation and oversaw the company's feature films and music clearance issues. Ms. Kane also served as Trademark Counsel at NBCUniversal and a legal/business consultant to several small and startup companies. She formerly taught an upper division IP course at Southwestern Law School.
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