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

[Tim Ackermann]

Katherine,
 On this point: "AU1 registration has been accepted for priority only for
the US classes in the AU1 registration, not for the classes divided out
into AU2" -- my question is if this is correct under the rules. But the
timing would matter. You mention that "During examination of AU1, several
classes were divided out into a divisional application (AU2)" -- did that
happen before or after the claim for priority that was filed in the US
case? If after, then I don't see why the US case would not be entitled to
priority for the classes now in AU2. Those classes were present at the time
of the claim -- consider the language from Paris Convention, Art. 4
("whatever may be the subsequent fate of the application"). If before, then
the more-than-six months gap between filing date and a potential new
priority claim would say no.
 On the question of "add[ing] (back) a Section 1 basis for the classes that
were divided out of AU1" I presume this means the 1(b) basis was deleted
when you submitted the AU1 registration (under the belief that it covered
all the classes). Until AU2 is registered (which you don't say it is),
*and* assuming the 44(d) priority claim does not apply, I think you must
add a 1(b) basis, otherwise there's no filing basis present in the
application. And if you want to get to publication w/o the AU2
registration, you'll need that 1(b) basis regardless of the 44(d) priority
claim. (It's not a basis for publication, see 806.01(c)).  (Obviously, 1(a)
would also work here, but I assume there's no use or you would not be
having this issue.)
 Sincerely,
Tim Ackermann
The Ackermann Law Firm

E:  tim at ackermannlaw.com
P:  817.305.0690
F:  214.453.0810
W: ackermannlaw.com
O: 1701 W. Northwest Hwy. Ste. 100
     Grapevine TX 76051


On Thu, Jun 13, 2024 at 5:24 PM Pamela Chestek via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
>
>
>
> *Targeted Intellectual Property Strategy*
>
>
>
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