Erin M. Hickey is a Principal with Fish & Richardson. A member of the firm’s Trademark and Copyright Group, Erin is devoted to helping companies create, develop, and protect strong brands. With clients ranging from start-up businesses to Fortune 500 companies, she understands and appreciates all types of business objectives and always strives to deliver client-focused services. In particular, Erin provides strategic counsel to clients in the areas of trademark, advertising (including false advertising and comparative advertising), right-of-publicity, unfair-competition, and copyright.
Erin has significant experience building and managing domestic and international trademark portfolios and developing and managing small and large trademark enforcement campaigns. She enjoys assisting clients with identifying and building trademark protection in a “family” of trademarks, non-traditional trademarks (including color and motion trademarks), and trade dress. She also regularly assists clients with IP-related transactions, including trademark licenses and co-existence agreements.
Erin represents clients in administrative trademark and advertising proceedings and litigates trademark claims in federal district courts. Her experience spans a variety of industries and she routinely works with clients who market and sell e-commerce and social-networking platforms as well as consumer products. In addition to her trademark, advertising, and copyright practice, Erin also has an active pro bono practice with the firm and is Pro Bono Coordinator for the Southern California office. She has developed an expertise in litigating capital matters and currently, she serves as lead counsel for the firm in representing a death-row inmate in his state post-conviction relief proceeding pending in the Superior Court of Maricopa County, Arizona. In 2009, she won a re-sentencing hearing for her client, a death-row inmate in Virginia. The decision by the Supreme Court of Virginia is precedential.
Outside of Fish, Erin has taught persuasive legal writing as an Adjunct Professor of Law at Thomas Jefferson School of Law in San Diego, California.
United States District Court for the Southern District of New York
United States District Court for the Central District of California
United States District Court for the Eastern District of California
United States District Court for the Northern District of California
United States District Court for the Southern District of California
The Honorable Norman H. Stahl
Memberships & Affiliations
Member: American Bar Association; International Trademark Association (INTA); the Copyright Society of the U.S.A.
INTA Committee Member, The Trademark Reporter (2014-2016; 2010-2011)
Women in Technology International (WITI), San Diego Regional Network, Leadership Council (2011-Present)
Promises2Kids, Mentor; Committee Member, Annual Charity Gala (2011-Present)
The New York Intellectual Property Law Association, Trademark Committee (2010)
Honors and Awards
Selected to San Diego Rising Stars list, Super Lawyers, 2015.
Evolution Fast Foods, LLC et al. v. Evolution Fresh, Inc. and Starbucks Corporation: Represent defendants Evolution Fresh, Inc. and Starbucks in a trademark infringement action involving their use of EVOLUTION FRESH for juice bars brought by Evolution Fast Foods, a San Diego vegan fast food restaurant.
ShareTV, Inc. v. ShareTV.com: Represented plaintiff ShareTV, Inc. in a trademark infringement case in the Eastern District of Virginia. Court awarded the <sharetv.com> domain name to client after an extensive battle with a Korean infringer. Case received national media coverage, including IP Today.
ING DIRECT Bancorp and ING Bank, fsb v. Discover Financial Services and Discover Bank: Represent plaintiff ING DIRECT in a trademark dispute in the District of Delaware over its orange ball trademark.
Nfinity Products and Services, Inc. v. No Limit Tumbling, Inc.: Represent defendant No Limit Tumbling, Inc. in a trade dress infringement litigation involving athletic shoes in the Northern District of Georgia.
D.J. Miller Music Distributors, Inc. v. Strauser et al.: Represent plaintiff D.J. Miller Music Distributors, Inc. in a litigation in the Middle District of Florida under the Anticybersquatting Consumer Protection Act. Obtained ex parte temporary restraining order within a week of being retained by client, followed by an injunction upon consent.
Lexington Hotel, LLC v. Lexington Licensing, Inc. and Vantage Hospitality Group, Inc.: Represented plaintiff Lexington Hotel, LLC in a trademark infringement litigation in the Southern District of New York involving hotel services. Case settled favorably for Lexington Hotel, LLC.
Honda Motor Co. Ltd. v. Winkelmann (CIVIC vs. V.I.C, both for vehicles): Represented registrant Honda in an opposition proceeding before the Trademark Trial and Appeal Board. Case resolved on summary judgment in favor of Honda.