Mathew has over 23 years of experience practicing in the areas of domestic and global trademark prosecution, clearance and litigation. His practice also encompasses related areas such as trade dress, copyright, false advertising, unfair competition, rights of privacy and publicity, and domain name disputes and other internet matters. He represents clients before the U.S. Patent & Trademark Office and the Trademark Trial and Appeal Board, and advises on the negotiation and drafting of assignments, licenses, and related agreements, trademark clearance and prosecution, brand adoption and protection strategies, and due diligence regarding intellectual property rights in corporate transactions, and internet matters.
Mathew began his career in trademarks in 1997 focusing on trademark clearance and prosecution for several large companies, including A.T. Cross Company, Victoria’s Secret, Quick & Reilly, Express, Bath & Body Works and others. In addition to clearance and prosecution, Mathew drafted the original complaint in Moseley v. V Secret Catalogue, Inc. (a division of Victoria’s Secret). Although Victoria’s Secret won at the trial court, the Supreme Court ultimately upheld the appeals court’s reversal on the grounds that Victoria’s Secret failed to prove actual damages. Nonetheless, it is worth noting that, on September 25, 2006, the U.S. Congress passed the Trademark Dilution Revision Act (H.R. 683) that basically endorsed the theory of dilution relied upon by Victoria’s Secret in that case and, in the words of the bill’s sponsor, clarified a muddied legal landscape and enabled the Federal Trademark Dilution Act to operate as Congress intended. President Bush signed this bill into law on October 6, 2006.
Mathew’s career continued to focus on trademark clearance and prosecution, growing to include many successfully litigated UDRP domain name proceedings on behalf of his clients. He has represented large and small companies in a variety of fields including luxury goods, vitamins and nutritional supplements, financial services, video games and computer technology, food products and pharmaceuticals. He also handled a major copyright matter for the estate of Salvador Dali. Since 1998, Mathew has represented several pharmaceutical companies such as Sanofi-Aventis (now Sanofi), AstraZeneca, Forest Laboratories, Novo Nordisk, Merck KGaA, Byk Gulden (now, Altana), Spirig Pharma, Nestlé Skin Health, and Galderma.
In 2001 Mathew joined the Trademark Department at Bristol-Myers Squibb Company. At BMS, Mathew continued his work in both trademarks and copyrights and managed the domestic and international portfolios for BMS’s Mead Johnson, ConvaTec and consumer medicines divisions while continuing to work closely with the prescription pharmaceutical business. While at BMS, Mathew continued to work heavily with internet matters on behalf of his in-house clients. Mathew has worked closely with the PhRMA trademark subcommittee on matters important to the pharmaceutical industry.
On January 2009, Mathew returned to his “boutique” firm roots, joining forces with Darren Geliebter to form Lombard & Geliebter LLP, a firm dedicated to providing the best of intellectual property legal representation. Together, they bring a formidable team with over 20 years of trademark experience to the partnership of Lombard & Geliebter, LLP – for clients of all sizes.
Mathew has spoken to numerous audiences, including:
- several in-house sessions concerning trademarks and trademark protection;
- a 2003 INTA meeting in Alicante, Spain about the United States’ perspective of the CTM system;
- a 2004 presentation to the U.S. Patent & Trademark Office about pharmaceutical trademarks; and
- a 2011 presentation at the NY Biotech Association’s annual meeting in New York City.
- “Don’t Forget Your Trademarks!,” Biotech Start, November 6, 2012, http://www.biotechstart.org/2012/11/don’t-forget-trademarks/;
- “International Trademark Filing Programs,” Biotech Start, March 18, 2013, http://www.biotechstart.org/2013/03/international-trademark-filing-programs/.
- BioTreasures, Inc. v. Szczepanski, WIPO Case No. D2000-1591 (2001) (counsel for complainant)
- sanofi-aventis v. Sefcik/The Hubcap Store, Case No. FA1104001385488 (2011) (counsel for complainant)
- Galderma v. HSP Marketing/Domains by Proxy, WIPO Case No. D2011-0265 (2011) (counsel for complainant)
- Galderma Laboratories, Inc./Galderma S.A. v. Noble, WIPO Case No. D2010-1317 (2010)
- In re Galderma S.A., Ser. No. 7770418 (TTAB 2011)
- Galderma S.A. and Galderma Laboratories, L.P. v. Laderma Health USA, Inc., Case No. 11 Civ. 0222 (SDNY) (2011) (counsel for plaintiffs)
- Aventis Pharmaceuticals, Inc. v. Heal the World, Inc., Case No. 11 Civ. 09489 (SDNY) (2012) (counsel for plaintiff)
- Galderma S.A. v. Ordona, WIPO Case No. D2013-0363 (2013) (counsel for complainant)
- Galerma S.A. v. Terra Serve, WIPO Case No. Proceeding No. D2013-0445 (2013) (counsel for complainant)
Filed lawsuit on behalf of Galderma S.A. against Laderma Health when Eulactol USA, Inc. sought to change its name to Laderma Health USA, Inc. claiming trademark infringement and dilution. Settled case to client’s satisfaction. Galderma S.A, et al. v. Laderma Health USA, Inc., 11 Civ. 0222 (SDNY).