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.
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)
“Advertising on Social Media: How to Avoid Legal Problems,” with Nancy Ly, Law360, September 18, 2014.
"EU pushes to change the way Americans say cheese," The Daily Transcript, April 30, 2014.
"No Geographical Limitation to The First-Sale Doctrine," Fish Copyright Alert, March 21, 2013.
“Nontraditional Trademarks: Marketing to the Senses with Shape, Sound, Color, and More,” Fish Trademark Thoughts, Summer 2012.
"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).