Mathew’s practice concentrates on advising and litigation in the areas of domestic and global trademark, trade dress, copyright, false advertising, unfair competition, rights of privacy and publicity, and 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.

Professional Background

Mathew began his career in trademarks in 1997 at the boutique trademark firm of Colucci & Umans where his practice focused 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 endorses the theory of dilution relied upon by Victoria’s Secret in that case and, in the words of the bill’s sponsor, “clarifies a muddied legal landscape and enables the Federal Trademark Dilution Act to operate as Congress intended.” President Bush signed this bill into law on October 6, 2006.

After Colucci & Umans, Mathew joined the boutique firm of Trademark & Patent Counselors of America. There, he continued his work of doing trademark clearance and prosecution. He also began developing his practice in internet law, and successfully brought several UDRP domain name proceedings on behalf his clients. Moreover, Mathew continued to represent clients in litigation and opposition proceedings. At Trademark & Patent Counselors, Mathew 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. About 60% of Mathew’s work at Trademark & Patent Counselors involved the representation of pharmaceutical companies such as Sanofi~Synthélabo (now, Sanofi-Aventis), AstraZeneca, Forest Laboratories, Novo Nordisk and Byk Gulden (now, Altana). Additionally, Mathew provided services to other pharmaceutical companies through global branding agencies.

Based on his work with pharmaceutical companies, in 2001 Mathew joined the Trademark & Copyright Department at Bristol-Myers Squibb Company. At BMS, Mathew continued his work in both trademarks and copyrights, and managed the 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.

With the opening of the Law Offices of G. Mathew Lombard, P.C., Mathew brings a decade of legal experience to the office. His experience at law firms and corporations equips him to handle a wide array of trademark and copyright matters for any size client. Further, his experience with “outside” clients and “in-house” clients enables him to tailor his services and advice to the needs of any client.

<Admissions
Mathew is admitted to the bars of the State of New York and the State of Connecticut.

Admissions

• International Trademark Association (INTA), Law Firm Committee
• Pharmaceutical Trade Mark Group (PTMG)
• The New York City Bar Association
• MARQUES

Speaking Engagements

Mathew has spoken to numerous audiences, including:

• a 2003 INTA meeting in Alicante, Spain about the United States’ perspective of the CTM system; and
• a 2004 presentation to the U.S. Patent & Trademark Office about pharmaceutical trademarks.

Mathew speaks French fluently.

Published Decisions

BioTreasures, Inc. v. Szczepanski, WIPO Case No. D2000-1591 (2001) (counsel for complainant)

J.D., Quinnipiac University School of Law (1996)

B.A., Dickinson College (1992)

Also studied in Grenoble and Paris, France through Boston University (1992-1993)

In his free time, Mathew enjoys traveling, hiking, films, SCUBA diving, computers and technology and numerous other outdoor activities.

For more information, please contact us.