Erin M. Hickey is an Associate in the Southern California* office of Fish & Richardson and joined the firm in 2007. A member of the firm's Trademark and Copyright Group, Ms. Hickey specializes in all aspects of trademark law, including selecting, protecting, licensing, and enforcing trademarks. She has experience counseling clients on issues relating to non-traditional trademarks, including motion trademarks and color trademarks. Ms. Hickey also represents clients in trademark litigation matters before federal district courts and in proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.
In addition to her trademark practice, Ms. Hickey has handled a number of pro-bono matters for the firm. This year, she played a significant role in challenging the constitutionality of the verdict forms the Commonwealth of Virginia used in a capital case. Ms. Hickey was responsible for briefing a number of key issues, assisting in preparing lead counsel for oral argument before the Virginia Supreme Court, and second chairing the oral argument. The Virginia Supreme Court reversed her client’s sentence on September 18, 2009 on grounds the verdict forms used in the case were unconstitutional. The decision is precedential.
*Not admitted to practice in California – practice in California limited to federal courts and agencies listed below or otherwise authorized by law.
Member: American Bar Association, New York State Bar Association, New York Intellectual Property Law Association, International Trademark Association and the Copyright Society of the U.S.A.
The Trademark Reporter: INTA Committee Member, 2010-2011.
The New York Intellectual Property Law Association, Trademark Committee (2010).
Publications
"The King Is Dead - And Overruled," Law360, September 19, 2011.
"Are Colors for You? A Primer on Protecting Colors as Marks in the United States," INTA Bulletin, Vol.64, No.21, November 15, 2009.
"Purchasing Competitors' Trademarks as Keywords to Generate Sponsored Links: Trademark 'Use in Commerce'?," Fish Trademark Thoughts, Spring 2009.
"Using Trademarks in Search Words, Metadata," IP Law360 (January 27, 2009).
"Copyright Issues For Software Use Or Modification," IP Law360 (December 9, 2008).
"Registration of a Copyright as a Prerequisite to Bringing a Declaratory Judgment Action for Non-Infringement of that Copyright: Is There an Emerging Trend Favoring Jurisdiction Without Registration?," Bloomberg IP Law Reports (July 2008).