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 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
James L. Bikoff
Partner
Smith Gambrell & Russell
Mr. Bikoff focuses on formulating and implementing worldwide trademark and copyright protection and enforcement... | Read More
Mr. Bikoff focuses on formulating and implementing worldwide trademark and copyright protection and enforcement programs for clients in the consumer and industrial product sectors, as well as non-profits, and service providers such as banks and insurance companies. He also engages in Internet and domain name counseling and enforcement actions. He has been active for over 30 years directing worldwide trademark and copyright protection, litigation and anti-counterfeiting enforcement.
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Victoria Burke, Esq.
Scott+Scott
Ms. Burke specializes in intellectual property law, such as trademarks, copyright, and fashion law. She is Vice-Chair... | Read More
Ms. Burke specializes in intellectual property law, such as trademarks, copyright, and fashion law. She is Vice-Chair of the ABA’s Trademark Transactions Committee, Chair of the Fashion Law Subcommittee, and former Vice-Chair of the Trademark Litigation Committee. Ms. Burke frequently authors articles for various legal publications, such as the ABA’s Landslide Magazine Best Practices for Filing an Intent-to-Use Trademark Application (summer 2017), and for the Daily Journal: Trade Dress Lawsuits Are in Fashion These Days (August 2017).
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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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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
Ms. Klinksieck has over 30 years’ experience in trademark clearance, prosecution, maintenance, management and enforcement. She conducts online availability/registrability searches, reviews formal search reports and prepares preliminary opinions; prepares, files and prosecutes applications, declarations and renewals before the U.S. Patent and Trademark Office; drafts and records Assignment Agreements as well as Consents to Registration/Co-Existence Agreements; assists in Opposition and Cancellation actions before the Trademark Trial and Appeal Board.
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