[E-trademarks] 44(d) priority to Divisional TM application (Australia)

[Katherine Koenig]

Hi everyone,

I understand a US application may claim priority to more than one foreign application/registration and that any foreign application/registration to which priority is claimed must be the first filed.

I have a situation that I've not encountered before regarding a divisional trademark application in Australia:

  *   US application filed within 6 months of Australian priority application (AU1).
  *   AU1 registered, and we submitted a copy to the USPTO.
  *   During examination of AU1, several classes were divided out into a divisional application (AU2), which AU counsel has told me gets the filing date of the parent AU1.  AU2 was divided out more than 6 months ago, I was told about it this week.
  *   The AU1 registration has been accepted for priority only for the US classes in the AU1 registration, not for the classes divided out into AU2.  Now we'd like Section 44 priority to AU2 for the other classes.

Can we validly claim priority to AU2 in the US application, as well as AU1?  AU2 is a first-filed application (to my knowledge).  Can we claim priority if AU2 was divided out more than 6 months ago, but is tied to the parent AU1 to which the priority claim was timely?  Or must we add (back) a Section 1 basis for the classes that were divided out of AU1?

Best regards,

Katherine

Dr. Katherine Koenig
Registered Patent Attorney
Koenig IP Works, PLLC
2208 Mariner Dr.
Fort Lauderdale, FL 33316
(954) 903-1699
katherine at koenigipworks.com<mailto:katherine at koenigipworks.com>

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