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

[Pamela Chestek]

I don't know about your first question, but I think the answer to the 
second is "no":

/An applicant must file a claim of priority within six months after the 
filing date of the foreign application.  15 U.S.C. §1126(d)(1); 37 
C.F.R. §§2.34(a)(4)(i), 2.35(b)(5); Paris Convention Article 4(C)(3).  
The applicant can submit the priority claim after the filing date of the 
U.S. application, as long as the claim of priority is submitted within 
six months of the foreign filing and the claimed priority date is 
earlier than the filing date of the U.S. application.... If the 
applicant submits a claim of priority more than six months after the 
date of the foreign filing, the examining attorney must advise the 
applicant that it is not entitled to priority./

TMEP 1003.02 
<https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1000d1e194.html>. 
Which would make the answer to the third question "yes."

Pam

Pamela S. Chestek
Chestek Legal
300 Fayetteville Street
Unit 2492
Raleigh, NC 27602
pamela at chesteklegal.com
(919) 800-8033
www.chesteklegal.com

On 6/13/2024 2:05 PM, Katherine Koenig via E-trademarks wrote:
>
> 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>
>
> /Targeted Intellectual Property Strategy/
>
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