Erica L. Han

Counsel

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  • JD (Intellectual Property), magna cum laude, Boston University School of Law, 2005; Boston University Law Review
  • MS (Mass Communication), Boston University College of Communication, 2005
  • BA (Communications (major), German (minor)), summa cum laude, Boston College, 2002; Phi Beta Kappa, Departmental Honors

Qualifications

  • Massachusetts, 2005
  • Intellectual Property Section Co-Chair, Boston Bar Association (2016-2019)
  • Boston Bar Association (Steering Committee Member 2019-2020, 2014-2015, 2012-2013; IP Law Committee Co-Chair 2010-2012)
  • WTR1000: The World's Leading Trademark Professionals (2017-2020)

Erica L. Han

Counsel

Erica Han is a counsel in the firm’s intellectual property transactions practice group. Erica advises a wide range of clients in diverse and complex transactions involving corporate and intellectual property matters, including licensing and collaboration agreements, mergers and acquisitions, supply and distribution agreements, sponsorship and co-promotion arrangements, IP considerations in whole-business securitizations, and other strategic commercial agreements. She also advises consumer branded product companies in relation to global brand strategy, trademark clearance and prosecution, advertising clearance, and resolution of intellectual property disputes. Erica is sought out by private equity investors focused on consumer branded product companies to assist with the acquisition, licensing, and spin-out of global brands.

Erica rejoined Ropes & Gray in 2014. Prior to rejoining the firm, Erica served as senior intellectual property counsel at a leading global sports apparel and equipment company. 

Experience

  • Advised WellSky, a portfolio company of TPG Capital and Leonard Green & Partners, in its agreement with Allscripts to acquire Careport, a leading care coordination software company that connects acute and post-acute providers and payers.
  • Advised Centric Brands, whose brands portfolio includes Calvin Klein, Tommy Hilfiger and Nautica, in connection with commercial arrangements related to a reorganization plan approved by the United States Bankruptcy Court for the Southern District of New York.
  • Acted as IP counsel for a major life sciences company on the spin-out of a business unit, including transitional license agreements and follow-on amendments and carve-outs.
  • Assisted a wholesale food business in a transaction involving multiple commercial agreements following a restructuring of a customer relationship.
  • Assist Luxury Brand Partners LLC with the development of beauty and personal care product brands from initial mark selection and clearance through worldwide rights acquisition, as well as worldwide management of the IN COMMON, IGK, V76, R+CO, SMITH & CULT, ELALUZ, and ONE/SIZE brands. Also advise on a variety of transactional matters including new brand acquisitions, supply and distribution agreements, and publicity rights agreements on a global basis.
  • Advise Jones Snowboards in connection with consulting and distribution agreements, athlete sponsorship agreements, global trademark portfolio management, and the resolution of disputes with third parties on an ongoing basis.
  • Advises leading hospitals and health systems on licensing trademarks to third parties, trademark disputes, IP ownership structure, and intercompany licensing arrangements on a global basis.
  • Advised a restoration company as primary IP counsel in connection with a whole business securitization, including intercompany licensing agreements.
  • Represented Reebok International Ltd. in its sales of The Rockport Company and Mitchell & Ness.
  • Represented a global information technology company on intellectual property issues related to the international separation of the company into two separate businesses. Counseled on the creation and structure of a trademark holding company for brands important to both businesses, drafted template licenses and commercial agreements for both businesses post-split, and provided advice on intellectual property strategy and enforcement processes post-split.
  • Represented Reebok International Ltd. in its exclusive outfitter and apparel deal with UFC.
  • Represent a children’s toy manufacturer in the management of its global trademark portfolio and provide global strategic advice in connection with registered IP filings, strategic enforcement of trademarks, copyrights, and trade dress, anti-counterfeiting, IP watch procedures, clearance of advertising and marketing materials, and general matters related to cross-border operations and sales.
  • Represented an advertising agency on corporate and commercial matters, including legal review and clearance of advertising materials, negotiation of talent agreements, and legal structure of contests and promotions.
  • Represented a global clothing company in connection with a stock purchase, trademark license, and license and sponsorship agreement related to the roll-out of a new product division.
  • Represented a leading food and beverage company in connection with the acquisition of a wholesale beverage business subsequent to a retail spin-off.

Publications

Presentations

  • Panelist, “Where Trademarks Meet the Taxman: Becoming a Strategic Partner by Developing Tax Reflexes in Trademark Practice,” INTA Annual Meeting & Leadership Meeting (November 2020)
  • Panelist, “Name/Image/Likeness Primer for Colleges and Universities: Part One,” Ropes & Gray Webinar (November 9, 2020)
  • Co-Host, Right of Publicity Roundtable (February 26, 2020)
  • Panelist, “NCAA Student-Athletes' Right of Publicity,” Sports Lawyers Association (November 4, 2019)
  • Guest Lecturer, “Trademark Portfolio  Management,” UNH School of Law (April 19, 2019)
  • Faculty, “How to Identify and Handle Intellectual Property Issues: IP and Social Media,” Massachusetts Continuing Legal Education Seminar (November 13, 2018)
  • Presenter, “Advanced Topics in Responding to Trademark Office Actions,” Strafford Webinar (September 26, 2018)
  • Guest Lecturer, “Trademark Strategy and Management,” UNH School of Law (April 6, 2018)
  • Presenter, “Trademark Portfolio Management,” Boston Bar Association (November 13, 2017)
  • Presenter, “Advanced Topics in Responding to Trademark Office Actions,” Strafford Webinar (September 12, 2017)
  • Presenter, “Trademark Basics Workshop,” Boston Bar Association (March 29, 2017) 
  • Presenter, “Trademark Basics,” Boston Bar Association (May 2016)
  • Guest Lecturer, “IP Management,” UNH School of Law (March 2016)
  • Presenter, “Trademark Year in Review,” Boston Bar Association IP Year in Review (January 2016)
  • Presenter, “Supreme Court IP Roundup,” Boston Bar Association (May 2015)
  • Presenter, “Intellectual Property Basics Workshop:  Responding to an Office Action,” Boston Bar Association (April 2015)
  • Presenter, “IP and Social Media,” MCLE Intellectual Property BasicsPlus! (November 2012 and October 2014)
  • Presenter, “Intellectual Property Basics Workshop: Filing and Prosecution a Federal Trademark Application,” Boston Bar Association (April 2014)
  • Presenter, “Intellectual Property Basics Workshop: Trademark Clearance,” Boston Bar Association (September 2013)
  • Presenter, “Copyright Year in Review,” Boston Bar Association (January 2009 and January 2010)
  • Panelist, Franklin Pierce IP Symposium (April 2009)
  • Presenter, “Trademark Fraud after Medinol,” Boston Bar Association (December 2008)
  • JD (Intellectual Property), magna cum laude, Boston University School of Law, 2005; Boston University Law Review
  • MS (Mass Communication), Boston University College of Communication, 2005
  • BA (Communications (major), German (minor)), summa cum laude, Boston College, 2002; Phi Beta Kappa, Departmental Honors
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