is principal of Northbrook (IL)-based James T. Berger/Market Strategies, LLC. A marketing consultant with broad experience in corporate and agency marketing services, he also performs expert witness work and consulting for intellectual property attorneys throughout the U.S. He focuses on likelihood of confusion, trade dress, secondary meaning, genericness, distinctiveness and dilution issues. In addition to developing surveys, he also critiques adversarial surveys. He co-authored Trademark Surveys—A Litigator’s Guide (Oxford University Press) with Mark Halligan of FisherBroyles. The Third Edition of this book will soon by published. He has also given continuing legal education seminars before bar associations in the Midwest and Texas. He is a faculty member at Roosevelt University and an often-published freelance writer.
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A few years ago, internet surveys in intellectual property (IP) litigation were novelties—but not anymore. In fact, the internet survey has more than come of age, it has become the preferred methodology for many types of IP litigation-related surveys—especially trademark-related matters. The biggest reason for the rise of the internet survey is the demise of the other more established conventional methodologies. At the same time, the internet continues to add new technological features that enhance its ability to reach populations and probe relevant target markets.
Surveys to prove or disprove trademark infringement or likelihood of confusion have been used by attorneys for many years. Unfortunately, many attorneys using surveys can weaken a survey’s impact by failing to avoid some crucial pitfalls. Here are 10 important things to avoid and correct when developing surveys for litigation purposes.