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

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Trademark and Copyright
- event Date
Thursday, June 6, 2024
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
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.
Faculty

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.

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.

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.
Description
Filing an 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.
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?
Unlimited access to premium CLE courses:
- Annual access
- Available live and on-demand
- Best for attorneys and legal professionals
Unlimited access to premium CPE courses.:
- Annual access
- Available live and on-demand
- Best for CPAs and tax professionals
Unlimited access to premium CLE, CPE, Professional Skills and Practice-Ready courses.:
- Annual access
- Available live and on-demand
- Best for legal, accounting, and tax professionals
Related Courses

When a Business Uses Music: When are Music Licenses Needed and What Legal Issues Should be Considered?
Tuesday, April 15, 2025
1:00 p.m. ET./10:00 a.m. PT

Demonstrating Use in Commerce for Trademark Registration and Enforcement
Friday, May 30, 2025
1:00 p.m. ET./10:00 a.m. PT

Comparative Advertising: Avoiding Trademark Infringement, Disparagement
Available On-Demand
Recommended Resources
Getting the Most Out of BARBRI Resources
- Learning & Development
- Business & Professional Skills
- Talent Development
Transforming CLE from a Requirement to a Career Advantage
- Learning & Development
- Career Advancement
- Talent Development