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The John Marshall Law School, LL.M., Intellectual Property
with honors
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Chicago-Kent College of Law, J.D.
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Duke University, A.B., Political Science
- U.S. District Court, Northern District of Illinois
- U.S. District Court, District of Colorado
- U.S. Supreme Court
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International Trademark Association (Elected Programs Committee 2004–2006; Elected Internet Committee 2010-2011)
- American Intellectual Property Law Association
- American and Chicago Bar Associations
- Lawyers for the Creative Arts
- Rush University Medical Center Associates Board (Elected 2007)
- Duke Club of Chicago
- American Bar Association - Committee on Copyright & Social Media
- American Bar Association - PTO Trademark Affairs - Ex Parte Committee
- American Bar Association - Trademark Legislation Committee
- Coalition of Women's Initiatives in Law - Membership Committee
- Step-Up Women's Network
- Illinois Technology Association
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Julie
Nichols
Matthews
Edwards Wildman Palmer LLP
Partner
Chicago
Tel 312.201.2551
Fax 855.584.0179
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Julie is a partner with over fifteen years of experience in intellectual property law, with a focus on trademark, advertising and Internet law. Julie works with entrepreneurs, emerging media and technology companies and well-known brand owners on protecting and exploiting IP rights in a rapidly-changing, global marketplace. Julie counsels clients on selecting strong brands; registering IP and policing rights effectively; structuring independent contractor and work made for hire arrangements; developing international franchise and licensing programs; and drafting website Terms of Use and Privacy Policies. She helps clients navigate the complexities of global rights clearance, the use and misuse of trademarks and copyrightable material on the Internet, and issues arising from online data collection, mobile marketing and the use of social media. Julie has litigated and successfully resolved trademark, copyright, counterfeiting and unfair competition disputes, domain name disputes and civil actions in federal courts. She handles trademark opposition and cancellation proceedings before the United States Trademark Trial and Appeal Board and supervises global trademark enforcement and anti-counterfeiting programs.
Notable Experience
- Advises on trademark, copyright, privacy, advertising and domain name matters, including IP registration, disputes, and issues arising from e-commerce and the use of IP on the Internet
- Drafts and responds to cease and desist demands and negotiate settlement, co-existence and consent agreements
- Negotiates licenses and other IP-related agreements (assignments, confidentiality agreements, employee IP agreements, co-promotion agreements, right of publicity releases, work made for hire agreements, independent contractor agreements, cause marketing agreements, franchise and distribution agreements)
- Manages global trademark and IP portfolios to enhance protection and align with shifting business objectives; counsels on international registration strategies
- Advises clients engaged in mobile and online advertising on legal risks and compliance strategies for advertising to children; blogging and endorsements in social media; privacy, security and data collection; environmental “green” marketing claims; comparative advertising claims; health and “Made in USA” claims; negative-option marketing offers; and social media use
- Advises on claim substantiation and disclosures required by the Federal Trade Commission Act, the FTC’s Green Guides, the FTC’s Endorsement Guides, the “Made in USA” Standard, the Truth In Lending Act, the Mail or Telephone Order Merchandise Rule, the Magnuson-Moss Warranty Act, the CAN-Spam Act and the Children’s Online Privacy Protection Act (COPPA)
- Counsels clients on sweepstakes and contest compliance
- Represents clients in infringement, unfair competition, false advertising and cyber-squatting disputes and in trademark oppositions and cancellations before the United States Trademark Trial and Appeal Board
- Drafts guidelines on trademark usage, use of social media, comparative advertising, sweepstakes and promotions, product labeling and use of copyrighted materials
Recent Speaking Engagements and Publications
- Speaker, "Trademarks for Startups: Strategies for Success," Entrepreneurs Unpluggd Start Up Law Summit, March 16, 2013.
- Speaker, "Using Online and Mobile for Branding, Distribution, Selling and Promotion," Edwards Wildman Digital Salon, November 12, 2012.
- Author, "Revised 'Green Guides' for Environmentally Friendly Marketing Claims Released by FTC," Edwards Wildman Palmer LLP Client Advisory, October 2012.
- Author, “Federal Trade Commission ‘Rocks’ Social Gaming Site Operator for FTC Act and COPPA Violations,” Edwards Wildman Palmer LLP DigiLaw Blog, March 2012.
- Co-author, "Makers of Four Loko Malt Beverage Banned from Deceptively Advertising Alcohol Content," Edwards Wildman Palmer LLP DigiLaw Blog, October 5, 2011.
- Co-Author, “Protecting Your Brand from ‘.XXX’-ploitation,” Edwards Wildman Palmer LLP Client Advisory, September 2011.
- Co-Author, “What’s Next: ICANN’s New Generic Top-Level Domain Program,” Edwards Wildman Palmer LLP Client Advisory, June 2011.
- Co-Speaker, “10 Ways to Advertise and Sell in the Internet Age and Stay on the Right Side of the Law,” Edwards Wildman Palmer LLP, October 2010.
- Speaker, “Hot and Emerging Legal Issues,” Mattel, Inc., in-house clinical for Legal Department, El Segundo, California, August 21, 2008.
- Author, “Contemplating a Charitable Sales Promotion? Think Before You Solicit,” FindLaw Corporate Counsel Center, Consumer Products Industry Center, November 2000.
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