Intent-to-Use (ITU) Trademark Applications and Cancellation
An Intent-To-Use (ITU) trademark application cannot be assigned to a new owner prior to the original applicant filing evidence of use․ In other words, the original applicant of an ITU must first use the trademark in connection with the goods or services identified in the trademark application․ A Practice Note discussing the principal grounds for inter partes proceedings to oppose a trademark application or petition to cancel a trademark registration and key defenses in opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office (USPTO)․ Additional topics covered include the statutory entitlement (formerly standing ․․․ The absence of such an intent can render an application or registration invalid in an opposition or cancellation proceeding before the USPTOs Trademark Trial and Appeal Board (TTAB)․ The TTAB recently issued a precedential opinion sustaining an opposition against an ITU application given the applicants failure to submit documentary evidence ․․․ The S․S; Taris decision is a warning to brand owners that they should develop a system for memorializing their good faith intent to use a trademark․ The failure to do so can be fatal to the validity of an ITU application or a registered mark in opposition and cancellation proceedings before the TTAB․ As implied in its name, an Intent-To-Use trademark application (ITU application) allows you to apply to register a mark before use in commerce․ You will eventually need to show use in commerce by submitting examples of your relevant goods or services being sold in connection with your mark․ In case you wish to cancel your membership, your cancellation will take effect at the end of six months from the date that you notify the ITU Secretary-General by filling in the Membership cancellation form or sending an official letter to membershipitu․int․ Upon approval of the application and receipt of payment, ITU will activate your membership․ Renewal and cancellation․ Your ITU membership is automatically renewed each year unless you cancel it․ ․․․ Amount determined by Council on the basis of one contributory unit of a Sector Member and fixed at 1/6 unit CHF 10600 in ITU-T and ITU-R, and ․․․
Basis of ITU Applications
An applicant can file for a trademark on the basis of actual existing use or on a bona fide intention to use a mark in the future․ The latter would require an intent-to-use (ITU) application․ Because proof of use of a trademark in commerce is a requirement for formal registration, an ITU applicant would later have to file a statement ․․․ Savvy trademark owners know there is a major exception to the first-user rule⁚ its called the Intent-To-Use (ITU) application․ Anyone with a real intent (bona fide intent) to use a particular mark in connection with certain goods or services may file an ITU application before any use has commenced․ A critical constraint on ITU applications is that they generally cannot be assigned before valid proof that the trademark is being used in connection with the sale of the goods and services listed in the application is filed with the USPTO․ The primary purpose behind this limitation is to prohibit the mass filing of ITU applications by persons without any actual intent to use the trademarks ․․․ An application filed under the basis provided for in Trademark Act Section 1(b), 15 U․S․C․ 1051(b)․ You can file an application with this basis if you have not yet used the mark you want to register with the goods and/or services in your application․ Echo suppression and echo cancellation are methods used in telephony to improve voice quality by preventing echo from being created or removing it after it is already present․ In addition to improving subjective audio quality, echo suppression increases the capacity achieved through silence suppression by preventing echo from traveling across a telecommunications network․ The language in the Trademark Act is very clear on the issue of assignment of intent-to-use applications․ In a recently issued precedential opinion, the Trademark Trial and Appeal Board has held, once again, that Section 10(a)(1) of the Act really means what it simply states, namely, that prior to filing proof of use at the Trademark Office, an intent-to-use application cannot be assigned ․․․
Assignment of ITU Applications
An Intent-To-Use (ITU) trademark application cannot be assigned to a new owner prior to the original applicant filing evidence of use․ In other words, the original applicant of an ITU must first use the trademark in connection with the goods or services identified in the trademark application․ The language in the Trademark Act is very clear on the issue of assignment of intent-to-use applications․ In a recently issued precedential opinion, the Trademark Trial and Appeal Board has held, once again, that Section 10(a)(1) of the Act really means what it simply states, namely, that prior to filing proof of use at the Trademark Office, an intent-to-use application cannot be assigned ․․․ Corporate restructurings are often designed and implemented without consideration of the special status of ITU applications, thereby putting the registrations resulting from those applications at risk․ Some attorneys may simply assume that any assignee of an ITU application is automatically the successor to the business of the assignor․ Merger and Acquisitions often involve the acquisition and/or assignment of trademarks․ Companies acquiring trademarks must beware of potential problems lurking with intent-to-use (ITU) trademark applications (or applications which started as ITU applications), such as improper assignment or lack of a bona fide intent to use the mark․
Cancellation of ITU Applications
A Practice Note discussing the principal grounds for inter partes proceedings to oppose a trademark application or petition to cancel a trademark registration and key defenses in opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office (USPTO)․ Additional topics covered include the statutory entitlement (formerly standing ․․․ The absence of such an intent can render an application or registration invalid in an opposition or cancellation proceeding before the USPTOs Trademark Trial and Appeal Board (TTAB)․ The TTAB recently issued a precedential opinion sustaining an opposition against an ITU application given the applicants failure to submit documentary evidence ․․․ The S․S․ Taris decision is a warning to brand owners that they should develop a system for memorializing their good faith intent to use a trademark․ The failure to do so can be fatal to the validity of an ITU application or a registered mark in opposition and cancellation proceedings before the TTAB․ As implied in its name, an Intent-To-Use trademark application (ITU application) allows you to apply to register a mark before use in commerce․ You will eventually need to show use in commerce by submitting examples of your relevant goods or services being sold in connection with your mark․ In case you wish to cancel your membership, your cancellation will take effect at the end of six months from the date that you notify the ITU Secretary-General by filling in the Membership cancellation form or sending an official letter to membershipitu․int․ Upon approval of the application and receipt of payment, ITU will activate your membership․ Renewal and cancellation․ Your ITU membership is automatically renewed each year unless you cancel it․ ․․․ Amount determined by Council on the basis of one contributory unit of a Sector Member and fixed at 1/6 unit CHF 10600 in ITU-T and ITU-R, and ․․․
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