Trademark: I paid the initial fee of app $375 but was later informed that my name was DEAD. WHY?

Question

I paid approximately $375 online (at trademark website) to register several trademarks. About 5 months later I received some papers in the mail from the trademark office, and assumed they told me that my names were protected. (I was busy with some business issues). However, now I do a search of their website and find that it states that my names are DEAD.

What step did I miss in order to truly secure my trademarks??

Pt 2) Can I register a trademark and include both the image/graphic/logo and the name of the company, simultaneously?
Example: Using the image of a whale without a head with the words "Save The Planet, Inc".

Thus protecting both the company name "Save The Planet" and the image of the whale with no head. Thus protecting both my company image/logo and my company name simultaneously?

Answer 1

It is fine to use the Patent & Trademark Office's website for the intitial trademark registration. It really helps to know the general rules regarding trademark registrations to make the process go easier. Perhaps most importantly one should do a search on the website for the trademark you want to register including all the variants in spelling, etc.

However, trademark rules are arcane and if the Office comes back at you several months later with something you don't understand or can't comply with then it is time to get a trademark attorney involved. Furthermore, you must honor the time deadlines in the registration process.

You registration is DEAD because you didn't comply with the PTO's request in a proper and/or timely manner. ALWAYS open mail from the PTO during the registration process! This, too, is an important business issue.

As an aside it takes about 18 months to get a registration. You goofed but it may be possible for a trademark attorney to revive your application.

Answer 2

It's best to use an intellectual property attorney to secure patents and trademarks. Navigating the USPTO's rules and regulations can be difficult, and the slightest mistake will negate your efforts and cost you money.

Probably, you didn't show proof of use sufficient to allow the examiner to conclude that you should have those trademarks. Unlike copyrights, with trademarks, you have to show that such mark is already in use.

I recommend that if you're wanting to protect your marks (generally only when you're concerned about differentiating your product from other like products), you contact an intellectual property law firm. I'm listing the one that I used to work for here. Check em out...they do good work, and many of them frequently travel to the USPTO in Virginia and meet with the examiners personally.

EDIT PART 2: Again, I am not qualified to represent you. You should talk with a patent attorney. They can help you preserve your investment in trademark applications.