Julie Nichols Matthews

Julie Nichols Matthews is a partner in the Intellectual Property Department at Wildman Harrold. She represents clients in trademark registration, licensing and enforcement matters, including trademark clearance and ex-parte appeals, oppositions and cancellations before the Trademark Trial and Appeal Board. She advises clients on related intellectual property, Internet and marketing law issues, including domain name disputes, advertising and cause marketing compliance, sweepstakes and promotions, and copyright. She represents clients in various industries, including: consumer products, media and entertainment, publishing, travel, food and beverage, agribusiness, manufacturing, and information technology.

Representative Experience:

Conducted comprehensive audit of all advertising and marketing materials, product labels, websites, vendor contracts and other commercial communications of major agribusiness company to evaluate compliance with federal and state regulations, Federal Trade Commission guidelines and contract obligations. Prepared business-oriented compliance guidelines relating to trademark usage, advertising, product labeling, warranty law, use of copyrighted material, e-mail marketing, website linking and cause marketing.
Represented national dairy company in trade dress infringement suit against competitor with a similarly shaped bottle design.
Represented online travel services company in civil action against a newly created domain name registry seeking to auction a domain name encompassing the client’s trademark, resulting in an agreement to withdraw the domain name from a proposed auction. Represented affiliate in dispute before the National Arbitration Forum seeking recovery of several domain names pursuant to the Uniform Domain Name Dispute Resolution Policy.
Counseled major global computer manufacturer on advertising disclosure obligations under the Truth In Lending Act and the Consumer Leasing Act, in consumer offers for credit cards and consumer leases.
Responsible for global trademark portfolio management, trademark clearance and registration, advertising compliance review, international licensing, trademark and domain name enforcement efforts on behalf of major convenience store retailer with licensed or franchised locations in 17 countries. Secured consent judgments and negotiated settlements of cease and desist demands and civil actions on client’s behalf.
Drafted and negotiated trademark licenses and franchise agreements on behalf of nationally recognized bakery products manufacturer expanding operations into Asia.

Publications And Presentations:

Author, “Contemplating a Charitable Sales Promotion? Think Before You Solicit,” FindLaw Corporate Counsel Center, Consumer Products Industry Center, November 2003.

Professional Associations:

International Trademark Association (Elected Programs Committee 2004–2006)

American Intellectual Property Law Association

American and Chicago Bar Associations

Lawyers for the Creative Arts

Rush University Medical Center Associates Board (Elected 2007)

American Cancer Society Associate Board of Ambassadors

Duke Club of Chicago

Bar Admissions:

Supreme Court of Illinois, 1994

U.S. District Court for the Northern District of Illinois, 1999

U.S. Supreme Court, 2001

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