Erica L. Han

Partner

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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 (2017-2022)

Erica L. Han

Partner

Erica Han is a go-to advisor for global companies and investors seeking to maximize brand value and protect brand reputation in commercial transactions. A partner in Ropes & Gray’s intellectual property transactions group and former senior IP counsel at a leading global sportswear conglomerate, Erica draws on her deep and varied experience to advise on complex deals involving brands and consumer products, ongoing brand strategy, and other intellectual property matters.

Clients across industry sectors—including consumer goods, private equity, technology, sports, non-profits, and health care—regularly turn to Erica for her unique skillset. Erica brings substantive knowledge, particularly in the areas of trademarks, publicity rights, and eponymous brands, coupled with experience across a range of transactions. She assists clients with licensing & collaborations, whole business securitizations and other debt transactions, commercial arrangements in connection with bankruptcy/restructuring, supply chain transactions, sponsorship deals, and M&A, among others.

In addition to her extensive IP knowledge and transactional experience, clients appreciate Erica’s perspective as former in-house counsel. This perspective is particularly valuable when working with in-house teams, where Erica demonstrates a down-to-earth communication style and business-savvy approach to problem-solving. For these traits and more, Erica has been lauded over the years in external rankings such as World Trademark Review’s “WTR 1000.”

A recognized thought leader who frequently presents on IP-related topics, Erica is often quoted and published in outlets such as Wall Street Journal Risk & Compliance Journal, Lexis Practice Advisor and IP Litigator

Experience

Erica represents clients across a range of industries and matters. Erica has advised:

  • Numerous famous brands on the IP aspects of whole-business securitizations and follow-on offerings, including Servpro Industries, Domino’s Pizza, and European Wax Center.
  • Luxury Brand Partners LLC on a variety of matters, including brand acquisitions and divestitures, supply chain agreements, publicity rights agreements, and co-branding collaborations on a global basis. In addition, advises on the development of beauty and personal care product brands from initial mark selection and clearance through worldwide rights acquisition and defensive and offensive IP disputes.
  • Reebok International Ltd. in its exclusive outfitter and apparel deal with UFC. Also represented Reebok in its sales of The Rockport Company and Mitchell & Ness.
  • A leading global dairy cooperative in connection with licensing well known consumer brands in the United States and Canada, as well as related commercial arrangements, including a transition services agreement, a know-how license and collaboration agreement, and multiple intercompany IP licenses.
  • 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.
  • A global information technology company on intellectual property issues related to the 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 provide advice on intellectual property strategy and enforcement processes post-split.
  • National Association of Basketball Coaches on the formation of a new media company, Coaches + Media, and related services agreements.
  • A children’s toy manufacturer on global strategic advice in connection with new product clearance, protection and enforcement of trademarks, copyrights, and trade dress, and general matters related to cross-border operations and sales.
  • Crosspoint Capital on IP issues and a brand license agreement in connection with the spin-out acquisition of the RSA Conference business.
  • Jefferson River Capital on IP matters and licensing agreements in connection with its acquisition of Follett Corporation, a provider of educational products and services designed to help in education management for colleges and universities.
  • A leading private equity firm in its acquisition of a manufacturer of vitamins and organic food supplements, which included advice on going-forward IP policies and negotiating a complex celebrity endorsement and consulting agreement.

Publications

Presentations

  • Panelist, “Name/Image/Likeness Primer for Colleges and Universities: Part Two,” Ropes & Gray CLE Webinar Series (December 2, 2020)
  • Panelist, “Name/Image/Likeness Primer for Colleges and Universities: Part One,”  Ropes & Gray CLE Webinar Series (November 11, 2020)
  • Panelist, “Where Trademarks Meet the Taxman: Becoming a Strategic Partner by Developing Tax Reflexes in Trademark Practice,” INTA Annual Meeting & Leadership Meeting (November 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

Qualifications

  • Massachusetts, 2005
  • WTR1000: The World's Leading Trademark Professionals (2017-2022)
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