G. Mathew Lombard

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, and internet matters.

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.

At a second boutique firm, Mathew continued 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. Mathew 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) 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.

Mathew opened the Law Offices of G. Mathew Lombard, P.C. in 2006 which brought him back to his “boutique” firm roots. Having enjoyed significant growth of his practice, Mathew and Darren decided to join forces. 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.

Admissions

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

Memberships

  • International Trademark Association (INTA) – Law Firm Committee Member; 2011-2012 Saul Lefkowitz Moot Court Competition, Brief Reading Judge
  • Pharmaceutical Trade Mark Group (PTMG)
  • The New York City Bar Association
  • MARQUES
  • APRAM (Association des Praticiens du Droit des Marques et des Modèles)

Speaking Engagements

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.

Articles

Languages

Mathew speaks French fluently.

Decisions

Other Notables

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).

Education

Mathew Lombard
Direct: 646.308.1613