Intent to Use Trademark Applications: Understanding the benefits and drawbacks

Paula Brueckner
Paula Brueckner
Chiesa Shahinian & Giantomasi PC

Paula Brueckner is Counsel in the firm’s Intellectual Property Group. Her practice focuses on representing companies, start-ups and individuals in intellectual property matters particularly in trademark prosecution, licensing, enforcement and trademark litigation.

Hillary Kane
Hillary Kane
Kane Legal

With over 30 years of legal experience, Hillary Kane is a seasoned attorney specializing in intellectual property, civil litigation, and licensing. Her deep expertise spans contract drafting, regulatory compliance, and privacy/data security, with a proven ability to navigate complex legal landscapes.

On-Demand: October 10, 2024
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2 hour CLE
Tuition: $195.00
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Program Summary

This course provides a comprehensive guide to the Intent-to-Use (ITU) trademark application process, focusing on best practices and common pitfalls. Designed for legal professionals, the session aims to enhance your understanding and handling of ITU applications, ensuring you can effectively advise clients and manage their trademark portfolios. By the end of the course, participants will have a synopsis of the ITU application process and a clear roadmap for effectively prosecuting ITU applications and managing client expectations.

Key topics to be discussed:

  • History and Purpose of ITU Applications
  • Facilitating your Clients’ Short- and Long-Term IP Goals
  • A Walk-Through of the ITU Application
  • Post Application Timelines and Best Practices

Closed-captioning available

Speakers

Paula Brueckner_myLawCLEPaula Brueckner | Chiesa Shahinian & Giantomasi PC

Paula Brueckner is Counsel in the firm’s Intellectual Property Group. Her practice focuses on representing companies, start-ups and individuals in intellectual property matters particularly in trademark prosecution, licensing, enforcement and trademark litigation. Paula has experience conducting trademark clearance searches, preparing trademark applications, responding to Office Actions and preparing filings with the United States Patent and Trademark Office. Paula also files and manages international trademark applications with the World Intellectual Property Organization under the Madrid Protocol.

Paula received her J.D. from Benjamin N. Cardozo School of Law with a concentration in intellectual property law and served as an Editorin-Chief for the Cardozo Journal of Conflict Resolution. While in law school, Paula was awarded the Jacob Burns Medal for Outstanding Contribution to the Benjamin N. Cardozo School of Law, participated in the Fashion Law Practicum and interned at the Legal Aid Society, Kathryn O. Greenberg Immigration Justice Clinic and the New Jersey Office of the Attorney General. She received her B.A., cum laude, in International Affairs and Political Science from The George Washington University.

 

Hillary Kane_myLawCLEHillary Kane | Kane Legal Expertise & Skills

With over 30 years of legal experience, Hillary Kane is a seasoned attorney specializing in intellectual property, civil litigation, and licensing. Her deep expertise spans contract drafting, regulatory compliance, and privacy/data security, with a proven ability to navigate complex legal landscapes. Adept at project management and negotiation, Hillary’s problem-solving skills and ethical judgment make her a trusted advisor in the business world.

Professional Journey

As the founder of Raising Kane Consulting in Los Angeles, Hillary has been providing top-tier trademark, licensing, and marketing services since 2010. Her clients include notable organizations like the Celiac Disease Foundation and The Film Collaborative, where she has made significant contributions to their digital impact and brand protection.

At Southwestern Law School, where she served from 2013 to 2022, Hillary played a pivotal role as Chief Communications & Marketing Officer, transforming the school’s marketing strategies and leading groundbreaking projects like the WCAG 2.1-conforming website. Her leadership in grant writing also secured increased funding from prestigious entities like the Hollywood Foreign Press Association.

Hillary’s tenure as Trademark Counsel at NBCUniversal Media LLC was marked by her meticulous oversight of domestic and international trademark portfolios, advising high-profile business units like Telemundo and Universal Pictures Licensing. Her strategic input in risk assessment and legal clearance fortified the company’s media and entertainment ventures.

Earlier in her career, Hillary served as General Counsel & VP of Business Development at Body Glove International, where she managed a vast trademark catalog and played a crucial role in global brand development and operational growth.

Educational Background

Hillary holds a Juris Doctorate from Southwestern Law School, graduating cum laude, and a Certificate in General Business Administration from UCLA Anderson School of Management. She is also a certified mediator with a passion for continuous learning, as evidenced by her numerous certifications in marketing, digital accessibility, and influencer marketing.

Thought Leadership & Impact

Beyond her legal prowess, Hillary is a thought leader in marketing and digital accessibility, known for her strategic insights and ability to drive significant growth in organizations. Her work has not only enhanced brand recognition but also ensured compliance with the latest accessibility standards, setting new benchmarks in the industry.

Websites: https://kanelegal.co/ – https://cmo.raisingkanemedia.com/

Agenda

I. History and Purpose of ITU Applications | 12:00pm – 12:30pm

II. Facilitating your Clients’ Short- and Long-Term IP Goals | 12:30pm – 1:00pm

Break | 1:00pm – 1:10pm

III. A Walk-Through of the ITU Application | 1:10pm – 1:40pm

IV. Post Application Timelines and Best Practices | 1:40pm – 2:10pm

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