Julia Anne Matheson
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).
- 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.
- INTA (member, Programs Committee, 2014-2015)
- Serves as an editor and contributor for Finnegan's trademark blog Incontestable®.
- Coauthor. "What Prince Can Teach All Companies About Rebranding," Entrepreneur, May 2, 2016.
- Coauthor. "Is a Trademark Infringement Claim Based on a Fictional Product Coming Soon to a Courtroom Near You?" Landslide, May/June 2014.
- Coauthor. "Protect Your Brand from Cybersquatting," Harvard Business Review, Feb. 10, 2014.
- Coauthor. "Designs: A Global Guide 2014," World Trademark Review, 2014.
- Coauthor. "Standing Ground: An Analysis of Territoriality in U.S. Trademark Law," World Trademark Review, Oct./Nov. 2013.
- Coauthor. "How the Crowd Is Taking on the Major Labels," Intellectual Property Magazine, Sept. 4, 2013.
- Coauthor. "Is Your Store Design Unique? Trademark It," Apparel, July 17, 2013.
- Coauthor. "Logo 2.0: The Power and Pitfalls of Rebranding," Intellectual Property Magazine, Sept. 2012.