Related Practices

Intellectual Property

Education

J.D., University of San Francisco School of Law, 1982, Honors Graduate, Advocate of the Year, 1982
M.A., English, University of California, Santa Barbara, 1977
B.A., English, University of California, Santa Barbara, 1974

Bar Admissions

California, 1982

Frank Hiscox

Partner

vCard

Silicon Valley

2440 W. El Camino Real
6th Floor
Mountain View, California 94040

Phone 650.391.1376

Fax 650.391.1377

About Frank Hiscox

Mr. Hiscox is a partner in the firm's Intellectual Property practice group, and his practice focuses primarily on global brand management matters for some of the world’s best-known companies.

During his nearly 30 years of practice, Mr. Hiscox has helped technology leaders such as AMD, NEC, Novellus, SanDisk and WebEx, entertainment and hospitality companies such as Heavenly Valley, LucasFilm, the San Francisco Giants, and the St. Francis Hotel, and other household names such as L.A. Gear, Shea Homes, and Visa with brand selection, adoption, registration, and protection, and with advertising, marketing, promotion, licensing and enforcement matters of all kinds. His practice encompasses the protection of corporate names, Internet domains, advertising slogans and other key identity assets, as he helps his clients define who they are in the marketplace and protect their corporate reputations.

Mr. Hiscox has helped his clients register and protect trademarks in more than 200 countries, and manage trademark portfolios ranging in size from a few dozen to nearly 30,000 active applications and registrations. Having served as in-house counsel to a major pharmaceutical company and a leading athletic footwear company, he also has direct and substantial experience with the advertising, marketing, and promotional issues major corporations face, including:

Copyright clearance and use issues
Development of promotional games
Negotiation of celebrity and athlete endorsement arrangements
Advertising review and clearance programs
Team and event sponsorships
Internet use and advertising issues
Other promotional marketing efforts

Representative Cases/Matters

Mr. Hiscox has represented leading global brand-holders over the years with:

The registration of key trademarks and service marks in every country in which U.S. companies may register their marks
The establishment and conduct of internal brand development, management and marketing compliance programs
The negotiation of multi-national licenses, distribution agreements, and other vehicles to enhance and expand brand coverage and promote entry into new geographic and online markets
The conduct of anti-counterfeiting programs, both locally and internationally, including the seizure and destruction of counterfeit products and the civil and criminal prosecution of counterfeiters
The protection of "famous" marks against threats of dilution in the United States and abroad
The negotiation of endorsement agreements with athletes and celebrities such as Joe Montana, Karl Malone, and Michael Jackson; team sponsorship agreements with teams such as the Los Angeles Lakers and New York Knicks; event sponsorship agreements with events such as the Los Angeles Marathon and the NBA All Star Game; product placement agreements for films such as Home Alone 2; and branded product licensing agreements with companies such as Mattel and Moretz Mills.
The review and analysis of advertising, labeling, marketing, and promotional programs in all media and markets to help assure compliance with a broad variety of legal requirements
The identification and acquisition of Internet domain names critical to a client's identity and operations
And a range of other legal matters having to do with a client's brand and identity in the marketplace

Memberships and Affiliations

Intellectual Property Section of the State Bar of California, Member
International Trademark Association, Information Resources Committee, Chair (2008-2009); Associate Member and committee participant in various committees (1986-present)
Santa Clara County Bar Association, Member

Court Admissions

U.S. Court of Appeals, Ninth Circuit
U.S. District Court, Northern District of California
U.S. District Court, Central District of California

Other Distinctions

Mr. Hiscox has several times been named to Best Lawyers in the Silicon Valley, and was recently characterized as an “undisputed star” among trademark practitioners by Legal 500: IP, Media, Technology, and Telecoms.