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James J. Saul earned his J.D. and certificate in intellectual property law from the DePaul University College of Law in 2005. Between graduating from the University of Michigan in 1999 and enrolling three years later in law school, he worked for a leading consulting firm and the United States Peace Corps. He served in the Peace Corps from 2000 to 2002 in Nicaragua, where his assignments included developing a business and computer center, teaching business classes at a local university and establishing a grant program to help mothers of disabled children start and operate home-based ventures.
Concentrating in intellectual property protection, both domestic and international, JJ helps counsel a wide variety of companies, from multinationals intent on enforcing their intellectual property rights across the globe to small businesses seeking their first trademark registrations. Both colleagues and clients have cited his thoroughness and commitment to service as reasons for working with him. His assistance to our senior attorneys includes:
- counseling clients on trademark selection
- analyzing the availability of trademarks for registration in the United States
- prosecuting and maintaining trademark registrations before the U.S. Patent and Trademark Office
- responding to allegations of intellectual property infringement and enforcing trademark and plant variety rights in the U.S. and Europe
- advising on the licensing and acquisition of intellectual property
- consulting with U.S. companies doing business abroad on various issues, including the establishment of foreign business entities, marketing and distribution arrangements with foreign companies and compliance with U.S. sanctions and embargoes
- advising on advertising and e-copyright issues, such as laws governing sweepstakes and coupon promotions, the proper use of trademarks, the usage of Internet links in ads, framing and deep linking on Internet sites, the right of publicity and the fair use defense.
Since joining Schuyler Roche, JJ has worked on a number of important matters. Most notably he:
- developed and coordinated a litigation program to combat the plant variety and trademark infringement of a client's intellectual property in Poland
- implemented a worldwide intellectual property protection program for a European client
- successfully prosecuted a family of U.S. trademark applications based on foreign trademark registrations
- prepared distribution agreements for a U.S. client selling in Puerto Rico and Serbia and advised the client on a distribution relationship in Paraguay
- assisted a European client in establishing a subsidiary in Hong Kong
- advised a U.S. client on the most effective manner of obtaining trademark protection in Europe under the Madrid Protocol, Community Trademark and national trademark systems
- assisted European counsel in drafting various patent oppositions in Europe
- advised a multinational company on worldwide compliance with U.S. economic sanctions and embargoes
- drafted a licensing agreement for a client's long-term use of a trade secret formula and trademark.
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