By Sheila Raftery Wiggins
When applying for a registration for a trademark, the applicant must affirmatively state that it knew of nobody else who had the right to use the same or confusingly similar trademark. Failure to do so is a violation of 15 U.S.C. 1120 (Civil Liability for False or Fraudulent Registration) and leaves the applicant open to an attack by another entity for trademark registration cancellation. The Eighth Circuit Court of Appeals (federal appellate court for Iowa) recently ruled that even if an applicant violated 15 U.S.C. 1120 by stating that it knew of nobody else who had the right to use the same or a confusingly similar trademark, the challenger must also show injury – monetary or non-monetary injury (i.e., loss of goodwill) – in order to seek cancellation of the trademark under 15 U.S.C. 1119. LESSON: No injury, then no standing to seek trademark registration cancellation.