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. 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 International Trademark Association (INTA), American Bar Association (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

• 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 Trademark Trial and Appeal Board (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.
• Ameritrade Holding Corporation v. Anthony Lee D'Amato (National Arbitration Forum, Case No. FA0506000503053). 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, George Washington University School of Law, 1998-1999.

Professional Recognition

• 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, 2011.
• Ranked by World Trademark Review 1000 among top trademark lawyers for non-contentious work in the United States, 2012; and in D.C., 2011-2012.
• 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; and non-contentious trademark work, 2011.
• Ranked among top U.S. trademark lawyers in Legal Media Group’s Guide to the World's Leading Trademark Law Practitioners, 2006, 2008, 2010, 2012.
• Ranked among top U.S. business lawyers in Legal Media Group’s Guide to the World's Leading Women in Business Law, 2010.

Professional Activities

• INTA
• ABA
• Intellectual Property Law Association

Select Publications

• Coauthor. "IP Addresses for IP Attorneys: A Primer on Emerging Issues," BNA's Patent, Trademark & Copyright Journal, July 22, 2011.
• Coauthor. "Haute Couture v Casual Corner: The Epic Battle of Style," Intellectual Property Magazine, May 2011.
• Coauthor. "Trademark in the Age of Social Media," Executive Counsel, Feb./March 2011.
• Coauthor. "No One Owns 'The Cloud,'" InformationWeek, Jan. 24, 2011.
• Coauthor. "Trademarks and Viral Marketing: The Risks, the Rewards, the Rules," TDmonthly, Dec. 2010.
• Coauthor. "The 2010 Fashion Bill: Inching Towards Protection," LexisNexis, Dec. 10, 2010.
• Coauthor. "Stand by Your Brand," Intellectual Property Magazine, Sept. 2010.
• Coauthor. "If It Quacks Like a Duck...It Just Might Be a Trademark," ABA Landslide, July/Aug. 2010.
• Coauthor. "Losing Grip on the FRISBEE," IPFrontline.com, April 12, 2010.
• "Advertising Puffery," Natural Products Insider, Nov. 4, 2009.