James T. Berger

Intellectual Property Expert Witness

Principal Market Strategies 1604 Chicago Ave Ste 4 Evanston, IL 60201 Phone: (847)328-9633 Fax: (847)328-9637 E-mail: James Berger My Blog    My CV

Consulting and Services

James T. Berger, Principal of Market Strategies, offers trial lawyers and their clients a unique capability in dealing with marketing-oriented legal actions. He combines the real-world, practical orientation of a professional business person with the theoretical knowledge of the academician.

Specific litigation support areas where he can be of assistance include:

1. Intellectual property: brand name, trade-dress and trademark infringement.
2. Determining awareness levels and values of brands.
3. Assessing losses in cases where brand equity has been diminished or diluted.
4. Consulting on the valuation of intellectual property (see article) for brand acquisition, divestiture and licensing purposes.
5. Conducting surveys including research design, analysis and interpreting market research data.
6. Serving as either a consultant or testifying witness, and helping develop cross-examination strategies for opposing expert witnesses.
7. Determining the extent of liability in cases involving errors and omissions in the creation, production and dissemination of marketing and advertising information.

Berger's firm, James T. Berger/Market Strategies, is a full-service marketing company that develops and implements marketing programs for clients. At the same time, Berger is a faculty member at Wakter E. Heller College of Business Administration at Roosevelt University where he teaches courses in Marketing Management, Strategic Marketing, Selling and Sales Management, Consumer Buyer Behavior and Retail Merchandising & Control.

Litigation Support--Areas of Involvement:

1. Determining the present and future market values of brand names and trademarks.
2. Conducting research in trademark actions to determine secondary meanings and likelihood of confusion (see the seven articles).
3. Assessing liability and developing remedy alternatives.

1. Quantitative and qualitative analysis to ascertain short- and long-term values of names/brands for damage analysis and sales strategies.
2. Analyzing and interpreting data concerning total market potential, annual sales volumes and market share.
3. Assessing losses in cases where brand equity has been diminished or diluted.

Litigation Support--Specific Capabilities:

• Conducting surveys including research design, analysis and interpretation of data.
• Serving as a consulting and/or testifying expert.
• Helping develop cross-examination strategies for opposing expert witnesses.
• Locating and assembling government studies, trade association studies, trade publication data, media studies and materials from data bases. Locating and assembling reports from private research firms and private data bases.
• Determining loses and the extent of liability in actions involving errors and omissions: (1) in the placement and scheduling of advertising in print and electronic media; (2) by advertising, sales promotion, public relations, and market research, media placement and creative agencies; (3) by data base and direct response marketing firms including fulfillment companies, list vendors and printing/production companies.

Marketing Communications -- Specific Capabilities:

• Anti-trust disputes involving product identification and branding
• Advertising agency billing and accountability
• Causal relationships between advertising, sales and profits
• Public perception of infomercial content and claims
• Licensing
• Advertising to children
• Puffery
• Defending class actions
• Internet advertising and sponsored links
• Media accountability

Accredited CLE Provider

James T. Berger is now offering an Illinois CLE accredited course Intellectual Property Litigation Surveys. Best Practices at no cost*. He has also applied for Wisconsin and Minnesota accreditation. You can download a PowerPoint Presentation of this course here. If you are an Illinois, Wisconsin or Minnesota law firm and you would like Mr. Berger to give this course at your company, please contact us and we will try to schedule it for you. To date this course has been presented several times.

*While I have no desire to make money on the course, I have to charge a pass-through fee of $50 plus $1 per person for everyone who attends, because that is what I am obligated to pay to CLE board. If you elect NOT to apply for CLE credits, the presentation is totally free of charge.

References:

• Stanley J. Adelman, DLA Piper, 203 North LaSalle, Chicago, IL 60601-1293, (312) 368-4095.
• Michael Abernathy , Bell, Boyd & Lloyd, Three First National Plaza, 70 West Madison, Suite 3200, Chicago, IL 60602, (312) 807-4257.
• Marvin N. Benn, Much Shelist, 191 North Wacker Drive, Suite 1800, Chicago, IL 60606-1615, (312) 521-2000.
• David S. Bloch, Winston & Strawn LLP, 101 California Street, San Francisco, CA 94111-5894, (415) 591-1452.
• Christine Byrd, Irell & Manella LP, 1800 Avenue of the Stars, Los Angles, CA 90067, (310) 277-1010.
• D.A.N. Chase, Chase Law Firm, L.C., 4400 College Boulevard, Suite 130, Overland Park, KS, 66211, (913)339-9666.
• Michael Elbein, Hovey Williams LLP, 2405 Grand Blvd – Suite 400, Kansas City, MO, 64106, (816) 474-9057.
• Jason Fisher, Buchalter Nemer, 601 S. Figueroa Suite 2400
  Los Angeles, CA 90017, (213) 891-5143.
• Michael E. Florey, Fish & Richardson, 60 South Sixth Street, 3300 Dain Rauscher Plaza, Minneapolis, MN 55402, (612) 335-5070.
• George Gerstman, Seyfarth Shaw LLP, 55 East Monroe Street, Chicago, IL 60603, (312) 269-8567.
• Alejandro (Alex) Menchaca, McAndrews Held & Malloy, 500 W. Madison St. 34th Floor, Chicago, IL 60661, (312) 775-8103.
• Raymond P. Niro, Niro, Scavone, Haller & Niro, 181 West Madison, Suite 4600, Chicago, IL 60602, (312) 236-0733.
• Mitch Reinis, Silver & Freedman, 2029 Century Park East, 19th floor, Los Angelos, CA 90007-3005, (310) 202-9400.
• Ivan Ross Ph.D. Ross Research, 7315 Franklin Avenue, Minneapolis, MN, 55426-2013, (952) 546-6312.