Print PDF

Julia Anne Matheson
+1 202 408 4020
julia.matheson@finnegan.com

901 New York Avenue, NW
Washington, DC 20001-4413

+1 202 408 4000
Fax +1 202 408 4400

Bar and Court Admissions

  • California
  • District of Columbia
  • New Jersey
  • Pennsylvania
  • U.S. District Court, C.D. California
  • U.S. District Court, E.D. California
  • U.S. District Court, N.D. California
  • U.S. District Court, S.D. California
  • U.S. District Court, District of Columbia
  • U.S. District Court, D. New Jersey
  • U.S. Court of Appeals, E.D. Pennnsylvania
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Ninth Circuit

Education

  • Columbia University School of Law
    J.D., 1990
  • Johns Hopkins University
    B.A., Humanities, 1988

Julia Anne Matheson

Partner

Julia Anne Matheson focuses her practice on trademark, unfair competition, and Internet-related issues including strategic international portfolio management, counseling and clearance, opposition and cancellation proceedings, licensing, due diligence, domain name disputes, and litigation and enforcement matters. Practicing in this area for more than 25 years, she has worked with numerous Fortune 500 companies and multi-national organizations globally. Her approach is hailed by clients, one of whom stated "[h]er grasp of case law, melded with her common-sense approach, results in crystal-clear advice every time. She goes the extra step of studying clients' business to provide commercially savvy commentary."

Ms. Matheson is consistently recognized by her peers and in-house counsel as a leading U.S. trademark lawyer in various ranking publications. One publication recently described Ms. Matheson as "incredible," providing "very capable and vigorous advocacy for her clients," a "gold standard," and a "hugely important market presence." One client stated, "She is a phenomenal counselor who handles all clearance and prosecution work with finesse, in addition to being a great writer and thorough thinker." Publishing regularly on trademark-related topics, Ms. Matheson is also a frequent speaker on trademark, Internet, and general intellectual property law issues at various international programs and conferences targeted to the U.S. and international business community, including the International Trademark Association (INTA), MARQUES, American Bar Association (ABA), European-American Chamber of Commerce, Practicing Law Institute (PLI), and Licensing Executive Society (LES).

Highlights

  • Roshen v. Ferrero S.p.A. (TTAB). Prevailed in two actions before the Trademark Trial and Appeal Board (TTAB) for Roshen, a major Ukrainian candy maker; successfully defended Roshen against claims by Ferrero of likelihood of confusion and dilution between the FERRERO ROCHER/ROCHER and ROSHEN marks.
  • Starbucks Coffee Company v. Ruben S. Marshall (TTAB). 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.
  • Recot, Inc v. MC Becton (Fed. Cir.). Obtained a decision 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. (TTAB). Settlement of a dispute resulting in the transfer of <littleeinstein.com> to Complainant.
  • Served as member of the firm's management committee, 2013-2016.

Professional Recognition

  • Recognized by The Legal 500 U.S. for trademark litigation and dispute resolution, particularly with respect to domain name issues, 2007; for trademark litigation, 2016, 2017; for trademark prosecution and non-contentious trademark work, 2011-2017; and as a leading lawyer 2016, 2017.
  • Ranked in World Trademark Review 1000 among top trademark lawyers for non-contentious work in the United States, 2012-2017; and in D.C., 2011-2017.
  • Recognized by World IP Review as a WIPR Leader for trademarks in the United States, 2016, 2017.
  • Ranked among 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 since 2007; among top U.S. trademark lawyers in Legal Media Group's Guide to the World's Leading Trademark Law Practitioners since 2006; and among top U.S. business lawyers in Legal Media Group's Guide to the World's Leading Women in Business Law since 2010.
  • Recognized as a Washington, D.C. "Super Lawyer" in Intellectual Property, Super Lawyers published by Thomson Reuters, 2013-2016.
  • Recognized as a leading lawyer by International Who's Who of Trademark Lawyers, 2012-2016.

Professional Activities

  • INTA (member, Programs Committee, 2014-2015)
  • ABA
  • MARQUES

Select Publications