Julia Anne Matheson

Partner

Julia Anne Matheson’s practice includes a full range of trademark services, including trademark prosecution, client counseling, and trademark clearance. Ms. Matheson also has significant expertise in trademark infringement, dilution, false advertising, domain name disputes, and opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. Her range of experience in trademark litigation, counseling, and prosecution ensures her ability to offer her clients astute advice throughout the life of a trademark—from selection to use, from registration to licensing, from maintenance to ultimate enforcement in court.

Ms. Matheson serves an international clientele, including clients in the entertainment, financial, real estate, hospitality, consumer products, manufacturing, and telecom/internet industries, on a wide variety of trademark and unfair competition issues. In her prosecution and counseling practice, Ms. Matheson advises clients on selection and adoption of marks, renders opinions on the availability and proper use of trademarks, handles numerous technology and intellectual property licensing matters, and negotiates and drafts settlement, product development, and manufacturing agreements. She prepares, files, and prosecutes U.S. trademark applications through the opposition and appeal process, and assists U.S. companies in planning international filing strategies.

Ms. Matheson has litigated cases involving conventional trademarks and service marks, trade names, trade dress, and product configurations. In addition, she has handled a wide range of Internet trademark and domain name disputes for domestic and international clients and has filed numerous arbitration complaints under ICANN’s Uniform Dispute Resolution Policy.

Highlights

• Successfully opposed an application for the mark LESSBUCKS COFFEE for coffee, tea, and coffee and tea-based beverages and related retail store services based on a likelihood of confusion with the famous STARBUCKS and STARBUCKS COFFEE trademarks; the TTAB determined that STARBUCKS is truly a famous trademark, and that the evidence presented in this case of extensive public recognition and renown exceeded that in other cases involving famous trademarks.
• Obtained a decision from the Federal Circuit vacating and remanding the TTAB’s decision that the mark FIDO LAY for dog biscuits was not confusingly similar to the mark FRITO-LAY for snack foods, and then a decision from the TTAB finding that the marks were confusingly similar.
• The Baby Einstein Company, LLC v. Robert Anderson, Jr. - Settlement of a dispute resulting in the transfer of <littleeinstein.com> to Complainant.
• Disney Enterprises, Inc. v. Kristen DeCamp - Ordered the transfer of that was being used to advertise goods and services related to Complainant’s business.
• Ameritrade Holding Corporation v. Anthony Lee D'Amato - Ordered the transfer of <tdameritrade.com> that respondent registered opportunistically in expectation of Complainant's merger years prior to Complainant's announcement of the merger.
• Adjunct professor of trademark law at the George Washington University School of Law (1998-1999).

Professional Recognition

• Identified among the top 25 trademark experts in the USA, by in-house counsel and peers, in Legal Media Group's Expert Guides to the Leading U.S. Lawyers - Best of the Best USA 2007.
• Recognized in the 2007 U.S. edition of The Legal 500 as one of the leading lawyers in trademark litigation and dispute resolution, particularly with respect to domain name issues.
• In 2006 and 2008, Legal Media Group, in association with Managing Intellectual Property, ranked among top U.S. trademark lawyers in the Guide to the World’s Leading Trademark Law Practitioners.

Professional Activities

• International Trademark Association
• American Bar Association
• Intellectual Property Law Association

Select Publications

• "Missing the Mark: The Top 10 Trademark Mistakes in Advertising Campaigns," Trademark World, Oct. 2008.
• Coauthor. "Cease and Desist (Please)," Managing Intellectual Property, Sept. 1, 2007.
• Coauthor. "All IP is not Created Equal," Trademark World, June 5, 2007.
• Coauthor. "Common Short Codes: The Next Venue for Trademark Disputes?," Trademark World, April 2007.
• Coauthor. "Take Three: Why Cyberspace Law Still Matters in the Post Dot Com World," Trademark World, Sept. 2003.
• Coauthor. "When Inaction is Bad Faith: The New Implications of a Failure to Search," Intellectual Property Counselor, May 2003.
• "The Sweet Smell of a Successful Registration: An Update on Olfactory Marks," Corporate Counselor’s Quarterly, April 2003, and Intellectual Property Counselor, May 2003.
• "The Sweet Smell of a Successful Registration," San Francisco Daily Journal, Intellectual Property Supplement, Oct. 9, 2002.