BIOGRAPHICAL INFORMATION

MY CONTACT INFO:

James R. Sims III, Esq.

Suite 400

1455 Pennsylvania Avenue, NW

Washington, DC  20004

Main:   202.627.6844

Fax:      703.940.4333

Web:   jamessimslegal.com

  

James R. Sims III, Esq.

To contact me via this website, please fill in the following contact form (note that confidentiality of messages sent this way cannot be guaranteed; in addition, please understand that sending me an email doesn't create an attorney/client relationship or obligate me to provide any services - we would have to reach a formal agreement for that):

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I have more than 30 years of experience (over 20 of them as a partner) practicing law at a large international law firm (Morgan, Lewis & Bockius LLP), as well as working with numerous American Bar Association ("ABA") Section of Intellectual Property Law committees and divisions and the ABA's Forum on Franchising, focusing on a wide range of substantive trademark, copyright, and franchising issues.  In addition, I have been "secunded" as Chief Trademark Counsel to a Fortune 200 consumer products company - essentially stepping into the role of senior in-house trademark counsel and head of the entire trademark team (while continuing to serve as a partner at Morgan Lewis). 

 

I have also served on my prior firm's Professional Evaluation and Professional Development Committees (while an associate, I chaired the firm’s Washington Office Associates Committee).  I have recruited, mentored and trained numerous attorneys, paralegals, and other professionals, and worked with the Human Resources Department and others regarding personnel evaluations, compensation, and selected policies. 

Throughout my tenure with Morgan Lewis, I also regularly served as pro bono counsel in numerous representations.  As a volunteer for the ABA, I co-edited two editions of the ABA's The Intellectual Property Handbook  -  as well as authoring (or co-authoring) numerous substantive committee reports and articles on trademark, copyright, and franchise issues, and speaking at and organizing conferences and seminars.  In addition, I have experience serving on two non-profit organizations' boards of directors as well as on the corporate advisory board of a national for-profit enterprise.   As a life long learner, in April 2016, as a non-therapist, I also completed an eight month clinical training program on Imago Relationship Therapy theory and skills ("Imago" is one of the principal couples' communication and therapy models in use today); in September 2017, I completed the renowned Executive Leadership Coaching program of Georgetown University's Institute for Transformational Leadership and separately work with selected clients to develop and enhance their leadership skills.

 

This wide range of experience - from outside counsel, to acting in house chief trademark counsel, to board of director member, to ongoing learner - yields a practical perspective and creative approach that benefits the clients with whom I work and enables me to provide them with an excellent value proposition.   

 

- Jim Sims


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EXPERIENCE & VISION

Legal services focusing on trademark and copyright Issues, licensing and franchising, complex agreements, and mediation.

James R. Sims III, Esq.

PRACTICE AREAS

Trademarks
Advise clients regarding the selection, clearance, registration, protection, enforcement, licensing and commercialization of their valuable brands.
Agreements
For and with clients, negotiate and assist with complex agreements, including licensing, publishing, merger, consultant, software, joint venture, acquisition, distribution, and franchise agreements.
Copyrights
Counsel clients with respect to ownership and work for hire issues, registration, licensing, fair use, exploitation and enforcement of copyrights.
Dispute Resolution
Collaborate with clients to resolve disputes through settlements, co-existence arrangements, IP rights acquisitions and licenses, mediation and, where necessary, litigation.  
 
 
 
 
Safeguarding Client Interests
Work with clients to protect their interests through due diligence investigations, preparation of confidentiality agreements and letters of intent, and practical, creative problem solving.

Professional Activities

 

  • Co-Editor, The Intellectual Property Handbook:  A Practical Guide for Franchise, Business and IP Counsel, American Bar Association ("ABA"), 1st edition 2006; 2nd edition 2016 – solicit and guide authors, adjust subject matter outlines, and edit single-volume resource covering all major facets of IP

  • Member, Corsearch Advisory Board - advise one of two largest trademark research firms in country regarding product offerings, product enhancements, and trends in trademark practice

  • Member Emeritus, The George Washington University Law School Intellectual Property Advisory Board – advise Dean and Associate Dean for IP Law regarding legal and business issues affecting law school and legal education

  • Co-Chair, ABA IPL Section, 2007 and 2008 (and Vice Chair in 2009) Annual Continuing Legal Education (“CLE”) Programs – organize and direct three day multi-track program covering all facets of IP law:  develop curriculum, solicit speakers, organize concurrent CLE session schedules, facilitate related events

  • Past Chair, Copyright Division, ABA Intellectual Property Law (“IPL”) Section – responsible for nine committees covering domestic and international copyright legislation, Copyright Office affairs, and other copyright topics

  • Past Chair, Copyright Office Affairs Committee, ABA IPL Section  – organize annual meeting of Register of Copyrights and senior Copyright Office staff with ABA IPL Section members and other interested parties

  • Past Chair, Trademarks & Unfair Competition Division, ABA IPL Section – responsible for six committees covering Internet issues, federal trademark legislation, international treaties, Patent and Trademark Office affairs, state trademark laws, unfair competition, franchising, and counterfeiting

  • Past Chair, Franchising Committee, ABA IPL Section – organize activities of committee with focus on intersection of IP and franchise issues

  • Past Co-Chair, Publications Committee, ABA IPL Section – helped facilitate publication of The Intellectual Property Handbook: A Practical Guide for Franchise, Business and IP Counsel

  • Former Articles and Topics Editor, ABA Forum on Franchising’s Franchise Law Journal

  • Past Member, International Trademark Association

  • Member, Copyright Society of the USA

  • Member, Intellectual Property Law Sections, ABA and District of Columbia Bar Associations

  • Member, ABA Forum on Franchising

  • Student, Northern Virginia Mediation Service, 2015 - present, working on mediation certification 

 

Civic Activities and Memberships

 

  • Pro bono counsel  - represent clients with respect to IP, real estate, and other legal issues

  • Member, Board of Directors, American Hospice Foundation, 2003-2013 – help guide non-profit working to improve access to quality hospice care through public education, professional training, and consumer advocacy

  • Member, International Coach Federation

  • Chair, Washington, DC Law School Challenge, The George Washington University Law School, 2008 and 2009 – facilitated fundraising by local law firms

  • Member, James Madison University President’s Council, 2008-2012 – assisted with college fundraising; hosted first Council event in Washington, D.C.

  • Member, College of William and Mary Parents’ Leadership Circle, 2006-2010 – assisted with college fundraising

  • Member/co-coordinator of several past Morgan Lewis Christmas in April home repair teams and, more recently, an elementary school project during firm's Community Service Impact Week

  • Member (non-therapist), Mid Atlantic Association for IMAGO Therapists (local organization of IMAGO dialogue trained mental health professionals)

  • Member, Education Committee, Mid Atlantic Association for IMAGO Therapists

  • Member, Board of Directors and Co-Chair of Education Committee, 2016-2017, Mid Atlantic Association for IMAGO Therapists

  • Community Member (non-therapist member), IMAGO Relationships International (international organization of IMAGO dialogue-trained mental health professionals and educators)

 

Education

 

Georgetown University Institute for Transformational Leadership, Executive Leadership Coaching Program, Certificate, 2017

The George Washington University Law School (f/k/a The National Law Center, The George Washington University), J.D. with honors, 1986 (attended school part time while working full time)

  • First place, Van Vleck Upper Class Moot Court competition

  • Member, Regional Moot Court competition team  

 

Hope College, B.A. in Political Science, magna cum laude, 1981 (graduated in three years)

  • Internship in Washington, D.C. with ABA Government Relations Office, 1981

             

Bar Admissions            

 

  • District of Columbia                                                                                             

  • Pennsylvania (non-resident active status)                                                             

  • American Bar Association