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Klemchuk Kubasta LLP is a business, technology, and innovation focused law firm in Dallas, Texas providing patent, trademark,
trade dress, copyright, and trade secret services, including litigation, licensing, prosecution, and other intellectual property counseling.
J.F. (JIM) CHESTER, JD/LL.M | OF COUNSEL
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PHONE
214.367.6000

FAX
214.764.6677
OFFICE
8150 North Central Expy
10th Floor
Dallas, Texas 75206
PRACTICE AREAS

Intellectual Property Licensing and Counseling; Trademark and Copyright Registration and EnforcementTrade Secret Protection and Enforcement; Import/Export and International Trade Regulation; Technology Transactions; International Business Transactions

 

 



EDUCATION

Graduate Tax Program, Southern Methodist University, Dedman School of Law, 2001

  

LL.M., International Economic Law, University of Houston School of Law, 2000

  

J.D., South Texas College of Law (Law Journal, Mock trial), 1997

  

B.S., Economics/Political Science (Double major), magna cum laude, Texas A&M University, Commerce, 1994

 

 

  




PEOPLE
Shannon W. Bates
Kirby Drake
Casey L. Griffith
James E. Davis
Kelly J. Kubasta
Darin M. Klemchuk
Remy M. Davis
Kelsey Weir Johnson
Austin Champion
Todd Basile
Sita Desai


 

I advise entrepreneurs, start-ups and privately-held companies of all sizes in a variety of industries regarding trademark, copyright, and trade secret protection, licensing & enforcement in the US and abroad, and I regularly represent clients before the US Patent and Trademark Office (USPTO) and the US Library of Congress (Copyright Office). 

 

In addition, I assist companies in international business transactions and joint ventures.  To date, I have advised clients on business deals involving almost 100 countries. I also coordinate with foreign counsel on legal projects around the world on behalf of U.S. clients, and serve as legal advisor to foreign companies doing business with or in the U.S.  

 

To be an effective international business attorney, I must also have significant experience and expertise handling domestic business matters, including entity formations, transactions, acquisitions, and other legal issues commonly faced by my clients.

 

My international practice also involves advising clients regarding international trade regulations, including compliance and enforcement issues involving Customs/import and export laws, ITAR, and the FCPA.  I have represented numerous clients before US Customs & Border Protection, US Department of Commerce, US Department of Defense Trade Controls, the Office of Foreign Asset Controls, the US International Trade Administration, and other state, federal and foreign governing bodies and agencies. In addition to being admitted to practice law in Texas and Washington, DC., I am a licensed US Customs Broker.

 

In addition to my work at the firm, I am an adjunct professor of law at Baylor University Law School, teaching courses on International Trade Law and International Business Transactions.  I also previously served as an adjunct professor of Business Law at the University of Dallas.

 

HONORS

Fellow, Dallas Bar Foundation (2010 - Present) 

“Rising Stars Under 40,” by Law & Politics Magazine published in Texas Monthly and Texas Rising Stars Magazines (2008, 2009)

“AV® Preeminent” Peer Review Rating by Martindale Hubbell® 

Fellow, Texas Bar Foundation (2009 - Present)

Member, Texas Bar College (2008 - Present)

Alumni Ambassador Award, Texas A&M University, Commerce (1998)

 

PROFESSIONAL ACTIVITIES

Founder/Director, DARN Lawyers Network, (2004-Present) 

Founder/Chairman, DFW-STCL Alumni Network, (2008-Present)

Member, Pro Bono College of the State Bar of Texas (2000-2004)

Member, State Bar of Texas (IP and International Law Sections)

Member, Dallas Bar Association

Member, District of Columbia Bar Association

Member, Customs & International Trade Bar Association

Member, International Trademark Association (INTA)

Member, American Intellectual Property Lawyer Association (AIPLA)

 

SPEECHES

“Financing Int’l Trade,” International Small Business Development Center, Ft. Worth 2010

"Implementing an Effective FCPA Compliance Program,"  Texas Minority Counsel Program Annual Conference 2010 

“Combating Counterfeits,” 47th Ann. IP Law Conf., Cntr. for Amer. & Int’l Law, 2009

“Protecting IP in International Trade, Texas Bar Assn Annual Mtg., 2009

“Basic of Intellectual Property Protection,” Collin County Bar Assn

(Plano) 2009

“Domestic vs. Int’l Contracts,” Inst. Supply Chain Mgmt.

(San Antonio) 2009

“Keys to Int’l Trade Compliance,” Inst. Supply Chain Mgmt.

(Waco) 2008

“Export Controls and Technology,” DBA Computer Law Section 2008

“Legal Aspect of Int’l Trade,” Ft. Worth Int’l. Center 2008

“Financing Int’l Trade,” Ft. Worth Int’l. Center 2008

“Keys to Int’l Trade Compliance” Inst. Supply Chain Mgmt.

(Wichita, KS) 2008

“Overview of IP Law,” Professionals Roundtable of Dallas 2007

“Overlap between IP and Trade Law,” DBA Computer Law Section 2006

 

PUBLICATIONS

Co-author, "Proactive Approaches to the IP Licensing Process”, Intellectual Property Licensing Strategies, 2011 ed.: Leading Lawyers on Educating Clients, Drafting Licensing Agreements, and Resolving Disputes (Inside the Minds).  (West, Aspatore Books 2010) 

“Protecting Intellectual Property” eSide Supply Management (July/Aug 2009)

“Protecting IP in International Trade,” (Headnotes, July 2009)

“PRO-IP to Target Counterfeiters,” (Texas Lawyer, Feb 2, 2009)

“Chester’s Practical Guide to Int’l Trade Regulation” 

(Baylor Univ Law 2008)

“Comparing Int’l & Domestic Contracts,” eSide Supply Management

(Fall 2008)

Editor-In-Chief, Trade & Innovation Law Update (2003-Present)

“Convergence of IP and International Trade Law,”

(Natl. Law Jrnl. 2005)

“Case Study: Potential Trademark Infringements”

(Jrnl. of Bus. & Econ. Res., 2005)

”In the Zone: Creating Profits Thru Savings Using FTZs,”

(Texas Lawyer, July 4, 2005)

 

COMMUNITY ACTIVITIES

Director, Dallas Housing Crisis Center (2008-Present)

Director, STCL Alumni Association, (2009-Present)

President, Lakewood Neighborhood Association (2005-2006)

Advisor, Global Business Program, University of Dallas (2004-2006)

Advisor, Foreign Trade Institute, University of Texas at Dallas (2005-2006)

 

ADMITTED TO PRACTICE

State of Texas, 1997

District of Columbia Bar, 2004

U.S. District Court, Northern District of Texas, 1998

U.S. Court of International Trade, 1998

 

PROFESSIONAL HISTORY

Immediately prior to joining the firm, I was a shareholder in a mid-sized downtown Dallas law firm, where I chaired both the IP and international business practice groups.  I also previously worked in-house at a major multinational energy company, and for international business & intellectual property boutique law firms.

 

PURSUITS

Following football (Pro, college & fantasy), politics and world events, minor league baseball, DIY projects around my home in Lakewood, tennis, and sailing.  I also enjoy spending as much time as I can with my wife and four children.

 

 

 

 

 

 

 

 

 

"AV® Preeminent ™ and BV® Distinguished™ are certification marks of Reed Elsevier Properties Inc., used in accordance with the Martindale-Hubbell certification procedures, standards and policies." 

 


SELECT CLIENT REPRESENTATIONS

Managed foreign counsel in filing and prosecution of European trademark registrations.

 

Advised US wireless Internet company in Mexican joint venture.

 

Advised US defense contractor in formation of Turkish subsidiary.

Assisted in the formation of Texas corporation for Latvian oil company.

 

Represented Sri Lankan Tea importer in various US business and trademark matters.

 

Supervised foreign counsel during creation of Italian subsidiary of U.S. company. 

 

Created ITAR and export compliance program for US satellite component manufacturer. 

 

Developed privacy and DMCA policy for Internet company.

 

Assisted Internet-based service company in expanding operations worldwide. 

 

Advised German high-tech company regarding legal implications of U.S. operations. 

 

Management of global TM portfolio for Fortune 500 hospital operating company.

 

Negotiated amicable settlement in copyright infringement case relating to imported fashion accessories involving major retailer.

 

Drafted & negotiated patent license & development agreement for semiconductor/Chip company to Singapore fab.

 

Drafted and negotiated numerous domestic and international IP agreements, including licenses, NDAs and CNCs

 

Facilitated the establishment of Chilean/U.S. joint venture.

 

Advised German high-tech company regarding regulatory implications of U.S. operations. 

 

Represented tech services company in its $1.7 million acquisition of Ohio corporation.

 

Drafted and negotiated employment and agency agreements for foreign agents of U.S. energy company. 

 

Facilitated the establishment of Chilean/U.S. joint venture to import and sell flowers in the U.S.  

 

Directed foreign counsel on formation and start-up of Italian subsidiary of U.S. semiconductor company.

 

Drafted and negotiated international distribution agreement between U.S. media company and South Korean entity. 

 

Assisted U.K. company in establishing U.S. subsidiary & business operations.

 

Coordinated formation of U.S. subsidiary of Latvian trading company.

 

Mitigated aggregate of $1.6 million in Customs penalties to $14,000.

 

Mitigated aggregate of $400,000 in Customs penalties to $900.

 

Settled $50,000 Customs marking penalty for $1,800.

 

Filed prior disclosure to avoid over $2 million in Customs penalties related to NAFTA imports of textiles. 

 

Counsel in CIT litigation resulting in the dismissal of a $1.4 million Customs penalty against textile importer.

 

Developed in-bond and cargo security program compliant with DHS guidelines for $1billion LTL carrier. 

 

Coordinated review and improvement of foreign vendor management program for large mass merchandiser.

 

Developed import compliance and vendor management program for discount mass merchandiser. 

 

Audited & revised FCPA policy for US-based multinational valve manufacturer.  

 

Advised US candle importer during ITA/ITC antidumping investigation.

 

Developed deemed export policy for US subsidiary of South Korean technology giant. 

 

Coordinated with South Korean Customs agency to obtain release of cargo.

 

Drafted OFAC, FCPA, & ITAR guidelines and audited import operations of major U.S. defense contractor.  

 

Established trade compliance program for US subsidiary of large Japanese high-tech company. 

 

Drafted and negotiated FTZ operating agreement with South Texas port authority. 

 

Established import/export and FTZ compliance program for multinational petrochemical company. 

 

Validated GSP qualification of numerous products for well-known mass merchandiser.

 

Obtained favorable Customs ruling used by entire oil/petrochemical industry for imports of synthetic crude.