Offc Action Outgoing

TO AVOID THE DENIAL OF YOUR REQUEST TO DIVIDE THE APPLICATION, WE MUST RECEIVE A PROPER RESPONSE TO THIS NOTICE WITHIN THIRTY (30) DAYS OF THE ISSUE/MAILING DATE.

ISSUE/MAILING DATE: 11/2/2010

Serial Number 77428699

The statement of use filed on October 28, 2010, for goods and/or services “software adapted for machine control, positioning and guidance for precision navigation data processing, management and display using data integrated from multiple satellite, dead reckoning and inertial navigation sensors, and automatic steering,” and the request for extension of time to file a statement of use (extension request) filed on October 28, 2010, for goods and/or services “software adapted for machine control, positioning and guidance for precision navigation data processing, management and display using data integrated from multiple satellite, dead reckoning and inertial navigation sensors, autonomous machine control, automatic steering, spatial data management, perception awareness, situational awareness, and remote fleet management including job scheduling, monitoring, asset tracking and remote diagnostics,” cannot be processed because they were not accompanied by a request to divide the application. Applicant must submit a request to divide the application, accompanied by the required $425 fee(s), within thirty (30) days from the issuance date of this letter. If no response is received, then the goods and/or services not covered by the statement of use will be deleted from the application, the extension request fee(s) refunded, and the statement of use processed.

In order for applicant to retain all of the goods and/or services specified in the notice of allowance, applicant must submit a request to divide the application into two applications – one application for the goods and/or services identified in the statement of use, and the other application for the goods and/or services identified in the extension request.

REQUIREMENTS FOR A REQUEST TO DIVIDE AN APPLICATION

SEPARATE SIGNED DOCUMENT REQUIRED: A request to divide an application must be submitted in a document separate from any other document, be identified as a “request to divide the application,” and be properly signed. 37 C.F.R. §2.87(d), (f); TMEP §1110.04.

GUIDELINES FOR SIGNING REQUESTS TO DIVIDE

Where an applicant is not represented by an attorney, the request to divide must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g. a corporate officer or general partner). See TMEP §§611.03(b), 611.06 et seq. In the case of joint applicants, all must sign. 37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).

Where an applicant is represented by an attorney, the attorney must sign the request to divide. 37 C.F.R. §2.193(e)(2)(i); TMEP §611.03(b). The only attorneys who may sign requests to divide and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and (2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO. See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §602. Foreign attorneys, other than authorized Canadian attorneys, do not have authority to sign requests to divide or otherwise represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.5(b)(2), 11.14(c), (e); TMEP §602.03(b)-(c).

In addition, the proper signatory must personally sign or personally enter his/her electronic signature. See 37 C.F.R. §2.193(a), (e)(2); TMEP §§611.01(b), 611.02.

FEES: For a request to divide out an entire class or several classes from an application, applicant is required to submit the request to divide fee of $100 for each new application created. 37 C.F.R.§§2.6(a)(19), 2.87(b); TMEP §1110.02. No separate application filing fee is needed for any new application created.

However, for a request to divide out some, but not all, of the goods and/or services within a single class, applicant must submit both the request to divide fee of $100 for each new application created and an application filing fee for each new application created. 37 C.F.R. §2.87(b). In such cases, the new application filing fee is calculated as follows:

If a request to divide was filed on paper, an application fee of $375 per class is required for each new application created;

If a request to divide and the original application were both filed online using TEAS, an application fee of $325 per class is required for each new application created; or

If a request to divide was filed online using TEAS and the original application was filed using TEAS Plus, an application fee of $275 per class is required for each new application created.

37 C.F.R. §2.6(a)(1)(i)-(iii); TMEP §1110.02.

Additionally, if a request to divide is filed with a statement of use or extension request, then the fees for the statement of use ($100 per class) and/or extension request ($150 per class) must also accompany the request to divide. 37 C.F.R. §§2.6, 2.87(b), 2.88(b)(3), 2.89(a)(2); TMEP §§1108.02(c), 1109.15, 1110.02.

Should a request to divide be filed, please note that extension requests must continue to be filed for the goods and/or services identified in the extension request to avoid abandonment of those goods and/or services.

Please call the undersigned with any questions.

/Antoinette Torregano/

Antoinette Torregano

Paralegal Specialist

ITU Divisional Unit

Phone # (571) 272-9514

Fax # (571) 273-9514

TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) Response to Intent-to-Use (ITU) Office action form at http://www.gov.uspto.report/teas/eTEASpageD.htm. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.

WHO MUST SIGN THE RESPONSE: It must be personally signed by (1) an individual applicant; (2) someone with legal authority to bind applicant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent applicant. If an applicant is represented by an attorney, the attorney must sign the response.

TEAS PLUS APPLICATION: To maintain the reduced fee status, TEAS Plus applicant must respond online via TEAS. Otherwise, applicant is subject to an additional $50 fee for each class. 37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(1)(i).

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED ITU STAFF MEMBER IDENTIFIED ABOVE.