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