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Background

Elizabeth King is Of Counsel in the Houston and Dallas offices of Fish & Richardson P.C. Ms. King’s practice focuses on protecting and enforcing trademarks. She has nearly 25 years of experience practicing law, the last 20 of which have been focused on domestic and international trademark law. She is also a well-known expert on non-traditional trademark protection strategies, and has published articles, spoken to various groups. and conducted legal seminars on the subject matter.

Ms. King is also a skilled litigator with experience handling trademark infringement cases in federal court, before the Federal Circuit, and before the USPTO. She has worked with clients of various sizes from Fortune 500 companies to small or mid-size businesses, including universities, non-profit organizations, foundations, museums, energy and green energy companies, and multinational grocery stores.

Before joining Fish, Ms. King was a principal at Sutton McAughan Deaver, and before that a shareholder and director at Conley Rose. She has also served as an examining attorney at the USPTO.

Education

J.D., South Texas College of Law 1993


B.A., University of Texas at Austin 1990
Government

Admissions

  • Texas
  • United States District Court for the Southern District of Texas

Memberships & Affiliations

USPTO Subcommittee of Trademark Office Practices International Trademark Association (2016-2018).

Member, Houston Intellectual Property Law Association (2007-Present).

Member, International Trademark Association (INTA) (2005-Present).

Member, Intellectual Property Section State Bar of Texas, Trademark Committee (1999-Present).

President, Houston Intellectual Property Law Association (April, 2017). Ms. King was the first Non-STEM President elected in the association’s more than 55 year history.

Treasurer, Houston Intellectual Property Law Association (2013-2014).

Member, INTA Trademark Reporter Committee (Appointed, 2013).

Board of Directors, Houston Intellectual Property Law Association (2009-2011).

Member, INTA Non-Traditional Marks Committee (Appointed, 2007-2009).

Other Distinctions

Awards

Best Lawyers in America: Intellectual Property (2016-2018).

The Honorable Nancy F. Atlas Intellectual Property American Inn of Court Master of the Bench (2016-2018).

Super Lawyers, Recognized for Intellectual Property (2016-2018).

IP Star named by Managing IP for six consecutive years (2013-2018).

Top 1000 Trademark Practitioner Worldwide named by World Trademark Review (2011-2018).

The Honorable Nancy F. Atlas Intellectual Property American Inn of Court Barrister of the Bench (2012-2016).

Aspen Institute Justice and Society Program: One of just 25 persons selected to participate in the Aspen Institute’s Justice and Society Program founded by late US Supreme Court Justice Harry Blackmun, held annually in Aspen, Colorado (July 2015).

Top 250 Female IP Practitioner in the United States named by Managing IP (2013-2014).

Selected Speeches 

Speaker and Panelist, 33rd Annual Institute on Intellectual Property Law on the subject of Section 2(a) of the Trademark Act (October 2017).

Speaker and Panelist, American Bar Association (ABA) Spring Meeting “Advanced Trademark Prosecution, Effective Office Action Responses, and Emerging Genericness Issues” (March 2015).

Speaker and Panelist, American Bar Association (ABA) Annual Meeting “Recent Hot Topics at the TTAB” (August 2014).

Speaker, 29th Annual Institute on Intellectual Property Law “Trademark Case Law Update” (September 2013).

Speaker, “Non-traditional Trademark Protection, Registration, and Enforcement Strategies,” presented to Disney Enterprises, Inc. (June 2013).

Speaker, “The Trademark Doctrine of Functionality,” The 28th Annual Institute on Intellectual Property Law (October 2012).

Speaker, 28th Annual Institute on Intellectual Property Law “The Doctrine of Functionality” (October 2012).

Speaker, “Prosecuting Non-Traditional Trademarks With a Focus on Functionality,” The State Bar of Texas 25th Annual Advanced Intellectual Property Law Course Houston, Texas (March 25, 2012)

Speaker, State Bar of Texas Advanced Intellectual Property Law Course “The Nuts and Bolts of Non-Traditional Trademarks with a Focus on Functionality” (March 2012).

Speaker, Houston Intellectual Property Law Association (HIPLA) “The Nuts and Bolts of Non-Traditional Trademarks with a Focus on Functionality” (January 2012).

Speaker, State Bar of Texas Advanced Intellectual Property Law Course“Trademark Office Prosecutions in light of Bose and Winkelmann” (March 2011).

Speaker, 26th Annual Institute on Intellectual Property Law “Trademark Office Prosecutions in light of Bose and Winkelmann” (October 2010).

Speaker, ABA Annual Meeting, Intellectual Property Law “The Madrid System of TrademarkRegistrations: Best Practices from both sides of the Atlantic” (August 2010).

Speaker, 24th Annual Institute on Intellectual Property Law “Trademark Office Prosecution Strategies” (October 2008).

Speaker, State Bar of Texas IP CLE “Successful Trademark Prosecution” (March 2008).

Speaker, Houston Intellectual Property Law Association (HIPLA) “Trademark Prosecution Strategies” (September 2007).

Publications

“Protecting Trade Dress (non-traditional marks) with the USPTO” Brands in the Boardroom; Issue 59 of Intellectual Asset Management (IAM) Magazine (April 2013).

“The Trademark Functionality Doctrine: Recast for Comprehension Landslide” American Bar Association’s Landslide Magazine, Volume 5, Number 1 (Sept/Oct 2012).

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