Julia Anne Matheson

Partner

Julia Anne Matheson is a partner in the firm’s Washington, DC office. She 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. Ms. Matheson has practiced in this area for more than 20 years.

Ms. Matheson publishes regularly on trademark-related topics. She is also a frequent speaker on trademark, Internet, and general intellectual property law issues to a wide variety of audiences, including the INTA, ABA, European-American Chamber of Commerce, Practicing Law Institute, and Licensing Executive Society.

Ms. Matheson has been repeatedly recognized by her peers and in-house counsel as a leading U.S. trademark lawyer in publications such as Managing Intellectual Property’s Guide to the World’s Leading Trademark Law Practitioners; Expert Guides to the Leading U.S. Trademark Lawyers -- Best of the Best USA; Expert Guides to the World’s Leading Women in Business Law; and The Legal 500.

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 <mickeymouseclub.com> 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

• Ranked among top U.S. trademark lawyers in Legal Media Group’s Guide to the World’s Leading Trademark Law Practitioners, 2006, 2008, 2010.
• Ranked among top U.S. business lawyers in Legal Media Group’s Guide to the World’s Leading Women in Business Law, 2010.
• 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, 2007, 2009.
• Recognized by The Legal 500 U.S. as one of the leading lawyers in trademark litigation and dispute resolution, particularly with respect to domain name issues, 2007.

Professional Activities

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

Select Publications

• Coauthor. "Losing Grip on the FRISBEE," IPFrontline.com, April 12, 2010.
• "Advertising Puffery," Natural Products Insider, Nov. 4, 2009.
• "The US Trademark Reality: Use It or Lose It," Intellectual Property & Technology Law Journal, July 2009.
• Coauthor. "Combine and Conquer: How the Synthesis of Design Patent and Trade Dress Achieve Maximum Protection for Your Product Design," May 2009.
• Coauthor. "Trade Dress Protection: Eye Candy," Medical Marketing and Media, April 2009.
• "Understanding Trademark Law for Promotion Campaigns," Promo Magazine, March 2009.
• Coauthor. "The Greenwashing Effect: Americans are Becoming Eco-Cynical," E-Commerce Times, Jan. 29, 2009.
• Coauthor. "Goodbye Big Logos Hello Snazzy Packaging," Global Cosmetic Industry, Jan. 2009.
• "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.