Expert Witness

Consulting and Services

James T. Berger, Principal of Market Strategies, offers  intellectual property 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 an academician. His firm, James T. Berger/Market Strategies, LLC, is a full- service marketing company that develops and implements marketing programs for clients. At the same time, Berger is a faculty member at Roosevelt University where he teaches courses in Market Research, Marketing Management, Strategic Marketing, Selling and Sales Management, Consumer Buyer Behavior and Retail Merchandising & Control.

Expert Witness Services Include:

  1. Intellectual property surveys, including research design, analysis and interpreting market research data, that test trademark infringement issues such as likelihood of confusion, secondary meaning, trade dress, generic issue, distinctiveness and dilution.
  2. Critiquing surveys on likelihood of confusion secondary meaning, trade dress, generic issues, distinctiveness and dilution.
  3. Intellectual property brand valuation analysis.
  4. Creating and implementing surveys to test alleged infringement of design patents (
  5. Assessing losses in cases where brand equity has been diminished or diluted.
  6. Consulting on the valuation of intellectual property (see article) for brand acquisition, divestiture and licensing purposes.
  7. Serving as either a consulting or testifying expert witness, and helping develop cross-examination strategies for opposing expert witnesses.
  8. Determining the extent of liability in cases involving errors and omissions in the creation, production and dissemination of marketing and advertising information.

Expert Witness –Areas of Involvement:

Intellectual Property: Brand Name and Trademark Infringement

  1. Determining the present and future market values of brand names and trademarks (see articles).
  2. Conducting research in trademark actions to determine likelihood of confusion, secondary meanings, trade dress, dilution, distinctiveness and generic issues (see articles).

Brand Awareness Levels and Values of Brands

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

Expert Witness–Specific Capabilities:

  • Conducting trademark 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 and trade association studies, trade publication data, media studies and secondary research 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
  • Cybersquatting
  • Defending class actions
  • Internet advertising and sponsored links
  • Media accountability

Accredited CLE Provider

James T. Berger is now offering an accredited course Intellectual Property Litigation Surveys. Best Practices at no cost. The seminar has been offered before the Chicago Bar Association, Milwaukee Bar Association, St. Louis Bar Association, Texas Bar Association and Indiana Bar Association. A PowerPoint Presentation of this course is available on request. here.