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Julia Anne Matheson

Posts by Julia Anne Matheson

The A-CBDs of Registering Hemp-Related Trademarks: New Guidance from the USPTO

Brand owners seeking to register cannabis-related trademarks take note: the U.S. Patent and Trademark Office (USPTO) recently issued guidance regarding the effects of the 2018 Farm Bill on the registration of trademarks for goods and services involving hemp. As background, the previous definition of “marijuana” in the federal Controlled Substances Act had a limited exclusion

U.S. – Bankrupt brands can’t revoke trademark licenses, says SCOTUS

The U.S. Supreme Court has ruled that bankrupt trademark licensors cannot use federal bankruptcy law to rescind the rights of their trademark licensees to continue use of duly licensed trademarks. The decision settles a long-simmering circuit split on a question that the International Trademark Association has labelled “the most significant unresolved legal issue in trademark

Hogan Lovells a sponsor at the WPB at INTA 2019, Julia Anne Matheson and Anna Kurian Shaw recognized

We were delighted to be one of the sponsors of The Women’s Power Breakfast (WPB) at the INTA 2019 Annual Meeting. IPMT partners, Julia Anne Matheson  and Anna Kurian Shaw attended the invitation-only event on the firm’s behalf on Wednesday, May 22.  The Women’s Power Breakfast, the brainchild of former INTA Executive Director Robin Rolfe,

MIP: Top 250 Women in IP 2019/20

We are delighted to announce that Arlene Chow, Zhen (Katie) Feng, Imogen Fowler, Natalia Gulyaeva and Julia Anne Matheson have been included in Managing Intellectual Property’s Top 250 Women in IP list for 2019/20. This special recognition recognizes female practitioners in private practice who have performed exceptionally for their clients and firms in the past year. This follows the

USPTO reiterates commitment to detect and prevent fraudulent foreign trademark applications

The United States Patent and Trademark Office (“USPTO”) has recently reiterated its commitment to stemming the tide of inaccurate and fraudulent trademark applications originating primarily from China.  On May 9th, the Director of the USPTO, Andrei Iancu, testified before the U.S. House Subcommittee on Courts, Intellectual Property, and the Internet, and fraudulent foreign trademark applications

N.D. California Straightens Out Competitor’s Use of Infringing Hashtags: #newdevelopments in Using Trademarks as Hashtags

The Northern District of California recently released an order that sheds new light on how courts grapple with the constantly-increasing use of trademarks as hashtags. Align Technology, Inc., provider of the Invisalign teeth-straightening-system, also produces the iTero Element intraoral scanner that allows dentists to obtain three-dimensional scans of a patient’s mouth, teeth, and gums. To

Influencer promo guide: Best practices for drug and device firms

In our “Influencer promo guide: Best practices for drug and device firms”, we offered a list of best practices for medical device and pharmaceutical companies interested in taking advantage of the benefits of social media influencers for advertising their products, while adhering to FDA regulations. How can these companies be mindful of FDA rules while

The Curse of Shoeless Joe Continues: TTAB Finds White Sox Fan Lacked Bona Fide Intent-To-Use

For any baseball fans already preparing to capitalize when their favorite team wins their next World Series game, you may strike out before getting up to bat at the Trademark Trial and Appeal Board (“TTAB”) in the United States Patent and Trademark Office (“USPTO”). In a recent precedential decision, the TTAB found that “a mere

USPTO Proposes new rule requiring foreign trademark applicants to be represented by US licensed attorney

  The United States Patent and Trademark Office (“USPTO”) has recently issued a notice of proposed rulemaking that would require all foreign-domiciled trademark applicants, registrants, and parties to TTAB proceedings to be represented by a US licensed attorney.  The proposed rule is designed to protect the integrity of the US Trademark Register and address the uptick

To ‘Bland’ or Not To Bland? Trademark Implications

Companies are simplifying, or “blanding,” their brands dropping unique fonts, words, and design elements left and right in favor of a pared down, sans-serif font popular in Silicon Valley, but does this drop trademark protections in the process? You’ve seen it in the ads you encounter on your way to work, on television, and probably

Germany: Introduction of Certification Marks

On January 14, 2019 Germany’s Trademark Law Modernization Act (MaMoG) went into effect, amending the German Trademark Law (MarkenG) to implement European Union Trade Marks Directive 2015/2436 (MRL). This Act introduces specific regulations for the registration of certification marks, which are an entirely new type of trademark under the German Trademark Law. Certification marks have

Federal Circuit revives Converse’s Chuck Taylor trademark and infringement claims

In a recent decision that illustrates the relevance of timing in evaluating the question of secondary meaning, the Court of Appeals of the Federal Circuit breathed new life into Converse’s “Chuck Taylor” sneaker design trademark by vacating an earlier ruling by the International Trade Commission (ITC) invalidating protection for that same mark. Background Relying upon

Total Brand Care: How to legally obtain your desired brand

Brands can use trademarks to gain a competitive advantage in today’s crowded marketplace.  An iconic trademark can be one of your biggest assets; a core component of your identity; and a practical solution to prevent others profiting from your success.  But navigating the complexities of trademark law around the world is a challenge for many brands. 

U.S. – Reframing the Test for Genericness in the Soft Drink Wars

Royal Crown Co., Inc. v. The Coca-Cola Co., 2018 WL 3040163 (Fed. Cir. June 20, 2018) In late June, the Federal Circuit issued  an opinion in the year-long litigation between Royal Crown Co., Inc. (“RC”) and The Coca-Cola Co. (“TCCC”) over the registrability and, correspondingly, the inherent protectibility of the term ZERO as applied to

District Court in California recognizes plausible trademark rights over fictional Star Wars board game

(Case analysis: Lucasfilm Ltd. LLC v. Ren Ventures Ltd., N.D. Cal., No. 17-7249, 4/24/18) To assert a successful infringement claim relative to a mark that has arguably never been used as a source identifier for “real world” products, and which has not been actively promoted for nearly 40 years, is a challenge most trademark lawyers