Erin Hennessy

Practices

Industries

Education and Clerkships

J.D., Widener University Law School, 1996

B.A., Miami University, 1992

Admissions

New York

Washington

District of Columbia

Court Admissions

U.S. District Court for the Southern District of New York

U.S. District Court for the Eastern District of New York

Profile

Erin Hennessy focuses her practice on trademark law, copyright law and internet and social media issues spanning many industries including media, publishing, technology, retail, fashion and financial services. Erin has been recognized for bringing “high-level in-house experience” to her work, which “gives her a massive competitive advantage in the form of refined business acumen” (WTR 1000, Globe Business Publishing, 2018).

Erin counsels clients on all aspects of intellectual property with an emphasis on supporting legal, business and marketing teams with branding issues facing their businesses. She handles worldwide trademark matters including trademark counseling, clearance, registration, protection and enforcement, domain name and internet issues, litigation, licensing and transactional matters. She has worked on various policy issues such as the launch of the new gTLDs, trademark dilution, and cybersquatting.

Erin currently serves as Counsel to the International Trademark Association (INTA) Board of Directors, as Vice Chair of the INTA Political Action Committee, is a member of the Miami University College of Arts and Sciences Advisory Board, and a member of the Corsearch Advisory Board. Erin previously served as chief trademark counsel for Time Warner, a Board member of INTA, and chair of her prior firm’s Trademark and Copyright Practice.

Selected Client Representations

  • Represented HTC Corporation in a complete summary judgement victory in a trademark infringement case in the Eastern District of Virginia and on appeal.
  • Managed vital re-branding of one of the largest manufacturers of building products, including trademark clearance, risk assessment and international filing strategy.
  • Provided critical counsel to an American shoe manufacturer in their acquisition of the assets of another shoe company out of bankruptcy including due diligence, significant chain of title issues and ultimate acquisition of trademark assets.
  • Lead intellectual property counsel for major corporate transactions such as the $9.6 billion spin-off of Time Warner Cable; $537.5 million divestiture of Time Warner Book Group to Lagardere SCA; $2.6 billion divestiture of Warner Music Group Inc. to Edgar Bronfman et al.

Professional Recognition

  • Chambers USA, Chambers and Partners, Intellectual Property, 2014-2016
  • The Legal 500 United States, Intellectual Property - Trademarks: Non-Contentious (full coverage), 2014-2018
  • Best Lawyers, Woodward/White, Inc., Trademark Law, 2013-2020
  • World Trademark Review 1000, Globe Business Publishing, Trademark (Washington), 2013, 2016-2019; Trademark: Prosecution and Strategy (New York), 2017-2019
  • Managing Intellectual Property, Euromoney Institutional Investor PLC, Trademark IP Star (Washington), 2016-2019; Trademark IP Star (New York), 2018-2019
  • Department of the Army, Commander’s Award for Public Service, 2016, 2011
  • Military Spouse J.D. Network (MSJDN), Professional Excellence Award , 2013
  • Department of the Army, Outstanding Civilian Service Medal, 2018, 2019
  • US Armor Association, Order of St. Joan D’Arc, 2010
  • Time Warner, Annual Andrew Heiskell Community Service Award, 2005

Professional and Community Activities

  • International Trademark Association, Member, 2000-present; currently Counsel to INTA Board; INTA PAC Board of Governors, 2016-present (currently serving as Vice Chair); currently serving on Public Information Committee; Leadership Development Committee 2016-2019; Board of Directors, 2008-2010 President’s Long-Range Planning Task Force (2006-2007); member of Program Committee for 2016 Annual Meeting (responsible for planning 12 US focused sessions) and various committee assignments
  • Intellectual Property Owners Association, Trademark Law Committee, 2012-present (past Vice Chair); member of 2014 Annual Meeting Planning Committee
  • Military Spouse JD Network, Past Board Member; Former Liaison to ABA Commission on Women in the Profession
  • Association of the Bar of the City of New York, Women in the Legal Profession Committee, 2015-2017
  • The Intellectual Property Strategist, Board of Editors, 2003-present

Selected Publications and Speeches

  • "IP for Film Students," guest lecturer, New York University, November 2019.
  • “Preparing for Unfathomable Social Media Events,” Corporate Counsel, April 16, 2018.
  • "Rights in China: Time is right for public figures to register in China," author, Intellectual Property Magazine, May 2017.
  • “The Joke is in the Bag! Parody at the Federal and TTAB Levels,” author, IP Strategist, March 2017.
  • “Keep Quiet and Carry On under the EU Trade Secrets Directive,” author, IP Magazine, September 2016.
  • “Brand Owners Can Make Trademark Tacking Stick,” author, Law360, January 2015.
  • “The Kirtsaeng Decision – Keep Calm and Copyright On,” author, Westlaw Journal, December 2014.
  • “.bank And Other Domain Names to Open For Financial Institutions...And Others,” author, IP Today, December 2014.
  • “Fantastic .Voyage: The Launch of First 9 New gTLDs,” author, IP Today, December, 2013.
  • “How To P.O.L.I.C.E. Your Brand During 2014 GTLDS Launch,” author, Law360, December 13, 2013.
  • “Checking in on the New gTLD Objection Processes,” author, Intellectual Property Strategist, December 1, 2013.
  • “Forward March! Trademarks in the Military,” speaker, INTA Leadership Meeting, Miami, November 2013.
  • “Managing Your In-House Portfolio: Top 10 Tips for the In-House Counsel,” speaker, Association of Corporate Counsel, Austin, October 2013.
  • “Appeals by the Numbers: Do the TTAB’s Standards of Proof for Reviewing ‘Close’ Cases Matter?” author, Law360, October 1, 2013.
  • “Q&A on USPTO’s draft guide for new top-level domain names,” author, Thomson Reuters, September 27, 2013.
  • “Inside Oprah Winfrey’s Battle for ‘Power,’” author, The Wrap, July 17, 2013.
  • “TMs & Cloud Issues,” author, World Trademark Review, March 1, 2013.

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