Julia Anne Matheson

Julia Anne Matheson is a Partner in our Trademark Group whose practice covers all areas of trademark, trade dress, product configuration, and unfair competition law including worldwide clearance, portfolio management, and enforcement, due diligence, false advertising, licensing, social media, and internet disputes.  She has been lead counsel in well over 100 inter partes proceedings before the Trademark Trial and Appeal Board (TTAB), and has significant experience litigating in federal district courts.  Ms. Matheson represents clients ranging from startups to Fortune 100 companies and multi-national organizations in numerous industries including communications/internet, consumer goods, personal care products, retail, food and beverage, fashion, entertainment, pharmaceutical, healthcare, technology, manufacturing, and financial services as well as numerous associations and charities.

In her 30^th year of practice, Ms. Matheson has been repeatedly recognized by major ranking publications, clients, and industry members alike as a dedicated and talented professional. 

“Julia is a big name in the DC trademark market and is someone clients rely on for practical advice informed by huge experience.”  WTR 2018

“…widely celebrated for her perspicacious counsel, [she is].a tireless advocate who truly takes the time to understand your business which informs her business savvy advice.”  WTR 1000, 2018

The “incredible” Julia Matheson’s “very capable and vigorous advocacy for her clients sees her represent household names, such as Starbucks.”  WTR 2015

Julia “has a deep understanding of trademark law and is an assertive advocate for her clients.  She is one of the most responsive lawyers anywhere in the world, answering questions quickly and deftly.”  WTR 2016

“She has profound knowledge of trademark law and relevant cases, and provides extremely business-savvy practical counsel….  It’s impossible to say sufficient positive things about Matheson.”  WTR 2016

“Her 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’ businesses to provide commercially savvy commentary.” – WTR 2017

Ms. Matheson has been the recipient of numerous awards over the course of her career. In the last few years she has been named among the Top 25 leading trademark lawyers in the U.S. by Legal Media Group’s Expert Guides and as a Lawyer of Distinction by the National Law Journal. She has been recognized by World Trademark Review as a Global Leader: Private Practice; as one of the WTR 1000 (The World's Leading Trademark Professionals) for 2020, 2021, and 2022; and been ranked in the gold tier for trademark prosecution and litigation for both DC and nationally by Managing Intellectual Property for 2020-2022. Ms. Matheson was one of only seven lawyers ranked nationally by The Legal 500 for Trademarks: Non-Contentious in 2020. She is routinely recognized as a WIPR Leader by World Intellectual Property Review and listed in the Who’s Who Legal Guide to Trademarks. She has also been repeatedly recognized by Women in Business Law as among the Best of the Best USA for Trademarks including for 2020-2022.

Representative Experience

• Led PLG’s cross-country team of litigators in successfully defending major consumer goods company with more than $1 billion in sales from claim of trademark and trade dress infringement by filing declaratory judgment action in client's  home state of Massachusetts, thus beating plaintiff to the Courthouse and depriving it of preferred California venue. Won several key procedural motions to defeat early discovery  for a threatened preliminary injunction motion in California, and protected choice of Massachusetts venue,  ultimately causing plaintiff to withdraw Complaint in total victory for client;
• Represented Starbucks Corporation in a recent trademark infringement litigation filed in the Middle District of North Carolina, which matter was favorably resolved;
• Successfully represented Starbucks Corporation and argued two recent appeals to the PTO’s Trademark Trial and Appeal Board seeking to register the company’s White Cup and Green Circle Logo.
• Represented Starbucks family of companies including Teavana, Tazo, Evolution Fresh, Torrefazione Italia, Bay Bread Company, Seattle’s Best Coffee, and Conifer Ventures in numerous trademark oppositions and cancellation matters for 20 years;
• Represented American National Red Cross in numerous enforcement matters seeking to protect against third party use of a Greek red cross design for a wide range of safety, medical, apparel, and other types of goods and services;
• Represented Merck in multiple oppositions before the TTAB involving pharmaceutical and medical device marks;
• Represented former accessories retailer Charming Charlie in numerous enforcement actions to protect its novel color-zoned retail trade dress;
• Defended global fashion brand ASOS before the TTAB and the Maryland district court in its global trademark disputes with cycling retailer ASSOS;
• Represented Juniper Networks successfully in a trademark infringement and cybersquatting action against Juniper Media in the Northern District of California;
• Represented pet food brand PETMATRIX in securing international registrations for its key marks in advance of its 2018 acquisition by Spectrum Brands;
• Represented Smiths Group subsidiary John Crane Production Solutions (an oil and gas recovery manufacturer) in a trademark infringement and unfair competition action against competitor Fiberod in the Northern District of Texas;
• Represented LVMH brands Louis Vuitton, Emilio Pucci, Celine, Marc Jacobs, Loewe, Berluti, Givenchy, Kenzo, and Fendi for over 15 years in prosecution and enforcement matters;
• Acted as Google’s first trademark attorney, helping it secure protection for its GOOGLE housemark and original logo around the world;
• Successfully represented a large multinational in numerous disputes with cannabis companies seeking to capitalize on its well-known brand names;
• Negotiated numerous global merchandising and trademark license agreements;
• Advised multiple biotech companies on global trademark registration strategies;
• Litigated trademark infringement dispute on behalf of entertainment content provider involving trademark and copyright claims;
• Advised multiple consumer products companies on genericide and assisted with policing efforts involving media and publishing companies, online dictionaries, and more;
• Frequently advise clients on First Amendment and parody issues related to third party commercial and non-commercial offerings;
• Reviewed availability of brand names, advertising slogans, package designs, product designs, and in-store displays for consumer products companies in various sectors;
• Experienced in pharmaceutical brand name clearance, including USAN considerations; and 
• Defended and settled numerous trademark infringement claims against third parties and asserted against clients' products, brand extensions, product packaging, and product designs.