James T. Berger

 

Successful Engagements — Case Histories

 

        My work with lawyers involves different types of assignments.  In many cases, I   create and execute surveys; other cases involve critiquing of surveys performed by others.  In addition, there are assignments that analyze buyer behavior, truth in advertising, channels of trade and other marketing-oriented issues.  Following are some brief case histories of typical assignments.  (For confidentiality, the names of companies and individuals are not mentioned.)

 

Case History No. 1

 

The Issue:  Purchasing behavior — the key reasons why consumers purchased a well-known home electronics video game product.

 

My Involvement:  A critique of a consumer survey directed to the buyers of the product.

 

Findings:  While the survey expert did a highly professional job, questions were directed to the wrong target market.  The buyer of the video game was questioned and NOT the user.  It turned out many buyers had no idea how the game functioned and the only reason they made the purchase was as a gift for a child or grandchild.

 

Result: The highly expensive survey was neutralized by the critique and had no impact on the case.  The side that hired me received a damages in excess of $80 million.

 

Case History No 2

 

The Issue:  Trade dress/secondary meaning — a line of lamps sold by a national chain allegedly closely resembled a specialty lamp produced by a smaller manufacturer.

 

My Involvement: Creating and implementation of a mall intercept survey showing an array of products to test source recognition.

 

Findings: Practically no consumer recognition of the source of the allegedly infringing product.

 

Result: Summary judgment in favor of my client.

 

Case History No. 3

 

The Issue:  Likelihood of confusion — a small bank re-named itself to be phonetically similar to a major, nationally advertised mortgage brand.

 

My Involvement: To create and implement a mall intercept survey where participants were shown TV commercials of the mortgage company and then asked to recall the name from a list of financial institutions including the allegedly infringing bank.

 

Findings: Even though the national mortgage product was mentioned verbally and shown on the TV screen, a substantial number of participants evidenced confusion by identifying the commercial sponsor as the name of the bank. .

 

Result: Alleged infringing bank forced to change its name and pay a fine.

 

Case History No. 4

 

The Issue:  Trade dress infringement — a highly popular product put out by a major U.S. power tool company faced competition from knock-off products from the Far East that were nearly identical to the American product.

 

My Involvement:  Doing a survey among customers at two major national chains in which the infringing products were shown and the customers asked if they recognized the product by its brand name.

 

Findings: An overwhelming number of people believed the knock-off products were the  same brand as the trademarked American. product.

 

Result: Infringing products were confiscated and the makers and import agents were forced to pay fines.

 

Case History No. 5

 

The Issue: Truth in advertising/consumer behavior  — a bitter dispute among competitors selling similar concrete-drying tarpaulin products   Dispute centered on the labeling of the products.

 

My Involvement: To determine how and why customers buy these kinds of products.

 

Findings: My research showed customers purchased these products mainly on the basis of price and availability.  They considered products in this category to be generic and purchase decisions were not based on brand names nor product labeling.

 

Result:  Favorable settlement for my client.

 

 

Case History No. 6

 

The Issue: Advertising slogan confusion — a small financial institution accused a large banking organization with more than a hundred branch offices with developing a slogan confusingly similar to one the small institution had used for years.

 

My Involvement:  To test consumer recognition of the source of the slogan from the smaller institution.

 

Findings: In a mall intercept survey, bank customers recognized the large banking chain to be the source of the slogan of the smaller institution.

 

Result: Favorable settlement for my client..

 

Case History #7

 

The Issue: Trade dress/secondary meaning — consumer recognition of the source of a similar looking furniture product.

 

My Involvement: A mall intercept survey where consumers where shown photos of similar types of products.

 

Findings: Consumers unable to differentiate between the products and did not believe they came from the same source.

 

Results:  Summary judgment in favor of my client.

 

Case History #8

 

The Issue: Trademark infringement — a major Midwest university sued a small college-town T-shirt retailer over non-licensed apparel.

 

My Involvement: Creation of an Internet survey given to students and residents of the college community.  The survey tested beliefs as to whether T-shirts were licensed or not licensed.

 

Findings: Survey respondents were able to differentiate licensed and unlicensed products and expressed an overwhelming belief that products sold by the retailer were unlicensed.

 

Results: Jury verdict that allowed retailer to stay in business and continue to sell many of the products in question.

 

 

Case History #9

 

The Issue: Channels of trade — the maker of a knock-off household product sold by a dollar-type retailer argued that its product used channels of trade different from the channels used by buyers of the trademarked product.

 

My Involvement: A survey where researchers interviewed people coming out of the stores selling the knock-off products and asking them where else they shopped.

 

Findings: Customers shopping at the dollar-type store also shopped at those retailers selling the branded product.

 

Result: The knock-off product removed from the market and the developer of the product forced to pay damages.

 

Case History #10

 

The Issue:  Secondary meaning —  consumer determination if a generic/descriptive name of a dental practice chain is perceived as suggestive.

 

My Involvement: A mall intercept consumer survey in which respondents were shown a variety of flash cards representing generic, descriptive, suggestive and fanciful brands.

 

Findings: A majority of consumers recognized the name of the practice to be generic or descriptive and not suggestive.

 

The Result: Summary judgment in favor of my client.

 

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