James J. Saul

Named to the World Trademark Review 1000 annually since 2016, J. J. has received repeated praise for his quality of work and service, including:

“J. J. is extremely responsive to emails and phone calls, and very collaborative with our group and his foreign contacts. He is very thoughtful when approaching an issue and thinks things through before responding. He thinks strategically and tactically. I trust his judgment and will often bounce things off him for his thoughts on matters before making a decision. He is great to work with, pleasant, respectful and friendly. He took time to understand our products and our unique company needs and budget requirements. I would recommend him to others seeking US counsel for their TM portfolio.” (2023)

“…a lawyer whose negotiations and communications consistently get results.” (2021)

“…a go-to in Chicago for expertise in anti-counterfeiting, especially in the pharmaceutical space. He is steeped in international legal practice and is rigorous, strategic and organized in taking the fight to fakers at a global level.” (2020)

J. J. has guided clients in various roles, including:

Anti-counterfeiting

• Lead anti-counterfeiting counsel to a top-15 global pharmaceutical company, supporting global investigations, internet monitoring, customs recordation, and criminal enforcement
• Co-led initiative for the development and dissemination of a manual to support federal and state prosecutors in their efforts to combat pharmaceutical counterfeiting
• Conducted discussions with COFEPRIS in Mexico and ANVISA in Brazil on behalf of the Alliance for Safe Online Pharmacies to raise awareness and encourage efforts to combat the scourge of fake medicines online
• Led litigation enforcement campaign securing damages and published apologies related to the counterfeiting of client’s world-renowned horticultural brand

Civil Litigation and Enforcement

• Filed suit to combat exorbitant financial demand from competitor claiming prior common law rights to a client’s new commercial lending brand and obtained favorable summary judgment decision and settlement to secure exclusive brand control
• Enforced client’s financial services brand against cryptocurrency company and negotiated favorable settlement of dispute, resulting in company’s rebranding and termination of its complaint for non-infringement
• Negotiated a global trademark coexistence agreement on behalf of a prominent tabletop gaming company to secure one of its key brands against a larger electronic gaming competitor
• Global brand protection counsel for top horticultural plant breeder, combatting numerous infringing applications and usages each year worldwide

Prosecution and Strategy

• Overhauled trademark portfolios for multiple healthcare accreditation companies to secure certification mark protection aligning with their business practices
• Cleared branding and secured global trademark protection for multiple investment management spin-offs
• Cleared branding and secured global trademark protection for recently launched children’s animated series and related merchandise, available worldwide

Prior Experience

Before law school, J. J. served as a U.S. Peace Corps Volunteer in León, Nicaragua. He provided business development training to small family enterprises, created a public access computer center with the support of AOL and La Fundación para el Desarrollo de León (FUNDAPADELE), taught classes at Universidad Nacional Autónoma de Nicaragua, and with the support of Trickle Up, launched a small grant program for single mothers of disabled children to establish home-based enterprises.