Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1207480
`
`Filing date:
`
`05/06/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Ex parte appeal
`no.
`
`88667617
`
`Appellant
`
`Sensory Path Inc.
`
`Applied for mark
`
`THE SENSORY PATH
`
`Correspondence
`address
`
`Submission
`
`Attachments
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`STEPHAN MCDAVID
`MCDAVID & ASSOCIATES PC
`1109 VAN BUREN AVENUE
`OXFORD, MS 38655
`UNITED STATES
`Primary email: smcdavid@mcdavidlaw.com
`Secondary email(s): admin@mcdavidlaw.com
`662-281-8300
`
`Request for remand/amendment
`
`22.5.6 Sensory Path USPTO Motion to Remand.pdf(1680820 bytes )
`
`Stephan McDavid
`
`smcdavid@mcdavidlaw.com, admin@mcdavidlaw.com
`
`/Stephan McDavid/
`
`05/06/2022
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`In re Application of Sensory Path Inc.
`
`Ex Parte Appeal No. 88667617
`
`Trademark: THE SENSORY PATH
`
`APPLICANT’S REQUEST FOR
`SUSPENSION OF APPEAL AND REMAND TO EXAMINING ATTORNEY
`
`Pursuant to TBMP §§ 1207.02 and 1209.04, Sensory Path Inc. (“Applicant”) hereby
`
`respectfully requests that the Trademark Trial and Appeal Board suspend proceedings in the
`
`above-captioned ex parte appeal and remand the matter to the examining attorney for consideration
`
`of newly obtained evidence, including two surveys demonstrating that the SENSORY PATH mark
`
`is not generic or merely descriptive of applied-for goods and should be classified as suggestive.
`
`I.
`
`Background.
`
`Holly Clay is the creator and founder of Sensory Path Inc. Ms. Clay was a teacher for
`
`twenty-two years and served as an Autism educational consultant for families and therapists who
`
`work with children in after-school programming. Over ten years ago, Ms. Clay began researching
`
`and developing movement paths as a method of improving cognition and reducing sensory
`
`stimulation in children with autism by using body movements in a coordination pattern developed
`
`to target key areas of the neurological system.
`
`In May of 2018, Ms. Clay created an original plan for two movement paths to be installed
`
`her elementary school. These designs consisted of interactive floor and wall decals, thematically
`
`designed based on Ms. Clay’s research to specifically help children with autism or sensory
`
`processing disorders reduce sensory seeking behaviors to increase cognition. Shortly thereafter,
`
`
`
`1
`
`

`

`Ms. Clay coined her products and business “Sensory Path.” On September 3, 2018, Ms. Clay
`
`posted a video of a child using a Sensory Path product on her personal Facebook page. This video
`
`has since received over 43,000,000 views and been shared nearly 1,000,000 times. On September
`
`11, 2018, Ms. Clay bought the domain thesensorypath.com and began building a website to launch
`
`her business.
`
`Within one year of its launch, Applicant was achieving great commercial success.
`
`Applicant recognized the importance protecting its invaluable intellectual property and began
`
`taking steps to police the SENSORY PATH mark. On September 26, 2019, Applicant first filed a
`
`word mark application seeking registration of SENSORY PATH (Serial No. 88632487). On
`
`October 24, 2019, Applicant filed the instant design mark application seeking registration of its
`
`logo, include the wording THE SENSORY PATH. The application was filed in International Class
`
`16 in connection with “[i]nteractive decals with permanent adhesive backing, designed for use by
`
`children to improve cognition and other skills.” Due to multiple letters of protest filed by
`
`Applicant’s primary competitor, Fit and Fun Playscapes LLC, on September 12, 2020, the
`
`examining attorney issued a Final Office Action requiring that the Applicant disclaim the wording
`
`“THE SENSORY PATH” because “it is merely descriptive of an ingredient, quality, characteristic,
`
`function, feature, purpose, or use of applicant’s goods and/or services.” On March 12, 2021,
`
`Applicant filed the instant appeal.
`
`II.
`
`Consumer Surveys.
`
`During the pendency of this appeal, Applicant has retained two trademark survey experts
`
`and conducted multiple consumer surveys. In January of 2021, Applicant retained James Berger
`
`as a trademark expert to assist in conducting surveys regarding the categorization of the
`
`SENSORY PATH trademark within the scheme of genetic, descriptive, or suggestive. In March
`
`
`
`2
`
`

`

`of 2021, Mr. Berger, using Russell Research Group, first conducted a pilot survey, which was sent
`
`to approximately fifty (50) respondents (the “Pilot Classification Survey”). The preliminary results
`
`indicated that SENSORY PATH is clearly not considered to be a generic trademark and falls
`
`between descriptive and suggestive. Based on these results, in May of 2021, Russell Research
`
`Group conducted a larger survey, consisting of approximately two-hundred and fifty (250)
`
`respondents (the “Full Classification Survey”). This survey produced similar results as the pilot
`
`survey. Report of James Berger, attached as Exhibit “1.”
`
`In November of 2021, with Mr. Berger’s direction, Applicant’s counsel assisted in the
`
`facilitation of a third survey (the “Sensory Path Suggestive Survey”), designed to gauge whether
`
`SENSORY PATH should be classified as descriptive or suggestive based on consumers’
`
`impression of the term. The key question of the survey asked the respondents to “select the choice
`
`which most closely matches your impression of what ‘Sensory Path’ is.” The potential choices
`
`included the following:
`
`1. A chain of neurons, from receptor organ to cerebral cortex, that are responsible
`for the perception of sensations.
`
`2. A set of decals creating a specialized series of guided movements specifically
`designed help reduce a child’s sensory seeking behaviors.
`
`3. An outdoor walk incorporating various textures, smells, and sounds specifically
`designed to stimulate the senses.
`
`4. An educational board game used to teach children the five senses by providing
`sensory stimulating activities as they move around the board.
`
`5. None of these.
`
`6. I don’t know.
`
`At its conclusion in December of 2021, this survey received 494 responses. These
`
`responses showed that 251 respondents selected “a chains of neurons,” 187 respondents selected
`
`
`
`3
`
`

`

`some other response, and 56 respondents selected “a set of decals.” On a percentage basis, only
`
`11% (56/494) of the respondents associated SENSORY PATH with its product, decals, which
`
`overwhelmingly indicates that SENSORY PATH is a suggestive trademark.
`
`As indicated in Applicant’s Request for Extension of Time to File a Brief on Appeal (Dkt.
`
`14), Mr. Berger subsequently suffered an unexpected major illness, and Applicant recently learned
`
`that he is unable to appropriately opine on the underlying data of the Applicant’s surveys. As a
`
`result, Applicant retained an alternative expert witness, Gary Myers.
`
`Mr. Myers is a Professor of Law at the University of Missouri School of Law in Columbia,
`
`Missouri who holds the Earl F. Nelson Professorship and has authored multiple intellectual
`
`property books. Mr. Myers reviewed the underlying data of these surveys and developed an
`
`independent analysis and report. For purposes of this matter, Mr. Myers’ opinion is limited to the
`
`Sensory Path Suggestive Survey as it is conclusive as to the issue in question— whether the
`
`SENSORY PATH mark is descriptive or suggestive. In reviewing this survey and its data, Mr.
`
`Myers concluded that “the survey evidence strongly supports the conclusion that “Sensory Path”
`
`is not generic or descriptive and indicates that it is a suggestive term, which is therefore inherently
`
`distinctive for trademark marketplace purposes.” Report of Gary Myers, attached as Exhibit “2.”
`
`III. This Matter Should Be Remanded For Consideration of Newly Obtained Survey
`Evidence.
`
`
`
`The Board may grant requests to remand to introduce additional evidence upon a showing
`
`of good cause, provided that the request is filed before the Board’s final decision on appeal and
`
`that the evidence sought to be introduced is submitted with the request. TBMP § 1207.02. The
`
`Board’s evaluation of good cause takes a number of factors into account, including the point in the
`
`appeal process at which the request for remand is made and whether the evidence was available
`
`prior to appeal. Id.
`
`
`
`4
`
`

`

`Here, Applicant requests remand of this matter to the examining attorney for consideration
`
`of newly obtained survey evidence testing consumer perception of the SENSORY PATH mark as
`
`discussed above. Good cause exists for the remand. This appeal is in its very beginning phase and
`
`granting a remand will not interrupt a briefing schedule or otherwise disrupt the appeal process.
`
`Applicant has not been dilatory in developing and submitting this new evidence. In fact, given the
`
`significant expense and effort involved in obtaining survey expert evidence, Applicant submits
`
`that it was reasonable not to undertake a consumer survey until after attempting in one office action
`
`response to overcome this refusal based solely on arguments and evidence held by Applicant. See,
`
`e.g., In re Hotels.com, L.P., App. Serial No. 78277681 (T.T.A.B. Feb. 13, 2007) (granting request
`
`to remand to examining attorney to submit survey evidence on issue of genericness). Finally,
`
`Applicant’s survey results constitute extremely persuasive evidence that the SENSORY PATH
`
`mark is not descriptive of the applied-for goods. Accordingly, Applicant submits that justice
`
`requires that Applicant’s newly-obtained survey evidence be considered as part of the evidentiary
`
`record in this matter.
`
`IV. Conclusion
`
`For all the reasons stated above, Applicant respectfully requests that this appeal be suspended
`
`and its application remanded to the examining attorney for consideration of the newly obtained
`
`evidence attached hereto.
`
`
`
`
`
`Date: May 6, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`SENSORY PATH, INC.
`
` By: /Stephan L. McDavid/
`Stephan L. McDavid
`McDavid & Associates, PC
`P.O. Box 111
`Oxford, MS 38655
`Phone: (662)-218-8300
`Fax: (662)-218-8353
`smcdavid@mcdavidlaw.com
`Attorney for Applicant
`
`5
`
`

`

`EXHIBIT 1
`EXHIBIT 1
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`Report of James T. Berger
`
`Re: Sensory Path Inc. v. Fun Playscapes LLC
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Report of James T. Berger 1 2/3/2022
`
`

`

`Report of James T. Berger
`
`Re: Sensory Path Inc. v. Fun Playscapes LLC
`
`
`I.
`
`Executive Summary
`
`I am an expert in marketing communications and trademark surveys. I have been retained
`
`by the Plaintiff’s attorneys, McDavid & Associates, PC, to explore the level of distinctiveness
`
`of the Sensory Path trademark. In doing, I am reporting on two surveys. The first was
`
`conducted through Russell Research in Rutherford, N.J. The second was conducted
`
`through McDavid & Associates, PC. My consulting fee is $500 per hour and is not in any
`
`way dependent on the results of my study nor the outcome of the case. I reserve the right
`
`to add to my comments if additional information becomes available. In my preliminary
`
`study, I have found evidence that the Sensory Path mark lies between descriptive and
`
`suggestive on the distinctiveness continuum. The second survey I have found proof that
`
`Sensory Path is perceived to be a suggestive mark.
`
`II.
`
`Personal Background [See Exhibit A]
`
`A.
`
`Present Activities. I am currently principal of James T. Berger/Market Strategies,
`
`a strategic marketing communications and consulting firm, and a faculty member at
`
`Roosevelt University, Chicago, IL. I currently teach courses in Advertising, Consumer
`
`Behavior, Personal Selling and Sales Management, Global Marketing, Marketing
`
`Management, and Marketing in Theory and Practice at Roosevelt University’s Walter E.
`
`Heller College of Business Administration. I have previously taught graduate and
`
`undergraduate marketing-related courses at DePaul University and Loyola University, and
`
`Northwestern University’s Kellogg Graduate School of Management. In addition, I have
`
`taught undergraduate courses at Northwestern University’s School of Continuing Studies,
`
`Report of James T. Berger 2 2/3/2022
`
`

`

`The University of Illinois at Chicago, and The Lake Forest Graduate School of
`
`Management. In November 2011, Oxford University Press published a book that I co-
`
`authored with R. Mark Halligan, of the law firm of FisherBroyles entitled Trademark
`
`Surveys: A Litigator’s Guide. The second edition of this book came out in 2015. A third
`
`edition (2019) has just been published. This book is now published and being marketed
`
`by Lexis-Nexis Matthew Bender. A second book I authored, Trademark Surveys in the
`
`Age of Daubert, was also published by Lexis-Nexis Matthew Bender in spring, 2017. I
`
`have authored many articles dealing with marketing and other business-related issues. A
`
`copy of my curriculum vitae (CV) provides a summary of my teaching experience,
`
`publications list (which includes all publications authored by me within the last 10 years),
`
`billing rate and testimony experience, is attached to this report as Exhibit A. My CV
`
`includes a list of all cases in which I have testified as an expert in deposition and trial in
`
`the last four (4) years.
`
`B.
`
`Education. I received a master’s degree in Business Administration in 1978 from
`
`the University of Chicago Graduate School of Business, with concentrations in marketing
`
`and finance. I also received a Master of Science Degree in Journalism from Northwestern
`
`University’s Medill School of Journalism in 1965, with concentrations in the news and
`
`editorial sequence, and a Bachelor of Arts Degree with a major in journalism from the
`
`University of Michigan in 1964.
`
`C.
`
` Prior Experience. I have previously worked as an Account Supervisor for two
`
`Downtown Chicago advertising agencies, as Vice President and Director of Public
`
`Relations for another Chicago advertising agency, and as Account Supervisor for two
`
`major Chicago public relations agencies. I have had my own marketing communications
`
`Report of James T. Berger 3 2/3/2022
`
`

`

`consulting practice for more than 30 years and have been involved in marketing consulting
`
`and survey work for law firms for more than 20 years.
`
`D. Market Research/Trademark Experience. I have extensive market research
`
`experience, including quantitative and qualitative survey research, and have performed in-
`
`person, telephone, and Internet-based interviewing in various industries with respect to
`
`brands and trademarks. I have also designed and coordinated market research programs,
`
`including drafting questionnaires, performing, and supervising personal interviews,
`
`organizing focus groups, tabulating, and evaluating data, and preparing research reports. I
`
`have delivered continuing legal education programs entitled “Intellectual Property
`
`Surveys: Best Practices” twice before the Chicago Bar Association, twice before the
`
`Milwaukee Bar Association, before the St. Louis Bar Association, and before the Texas
`
`Bar Association. In addition, I was a presenter at a session in March 2003, before the
`
`Minnesota State Bar Association, entitled “The Effective Use of Survey Experts and
`
`Evidence in Trademark Cases.” Furthermore, I have authored 22 published articles on
`
`intellectual property and trademark/secondary meaning surveys for INTELLECTUAL
`
`PROPERTY TODAY Magazine: (1) “10 Frequently Asked Questions About Intellectual
`
`Property Surveys,” which appeared in the August 2003 issue; (2) “Swimming in Shark-
`
`Infested Waters,” which appeared in the June 2004 issue; (3) “Creativity Key to Executing
`
`Toughest IP Survey Projects,” which appeared in the July 2005 issue; (4) “What IP
`
`Attorneys Should Know About Expectations and Costs for Survey Research,” which
`
`appeared in the April 2006 issue; (5) “10 Easy Ways to Blow Away A Survey,” which
`
`appeared in the January 2007 issue; (6) “The Power and Perils of Internet Surveys,” which
`
`appeared in the August 2007 issue; (7) “How to Do an IP Survey Without Giving Away
`
`Report of James T. Berger 4 2/3/2022
`
`

`

`the Store,” which appeared in the April 2008 issue; (8) “New Challenges to the IP Survey
`
`Process,” which appeared in the July 2009 issue; (9) “Introducing the Internet/Telephone
`
`‘Hybrid’ Survey,” which appeared in the July 2010 issue; (10) “When NOT To Do An
`
`Intellectual Property Survey,” which appeared in the November 2010 issue; (11) “A New
`
`Survey Protocol for Proving/Disproving Design Patent Infringement,” which appeared in
`
`the April 2011 issue; (12) “How to Apply Theory of Probability to Decision to the Decision
`
`of Whether to Do an I.P. Survey,” which appeared in the February 2011 issue; (13) “The
`
`Descriptive/Suggestive Conundrum in Trademark Surveys,” which appeared in the
`
`November 2011 issue; (14) “The Pre-Litigation Pilot Trademark Survey,” which appeared
`
`in the March 2012 issue; (15) “Frequently Asked Questions About Trademark Surveys,”
`
`which appeared in the December, 2012 issue; (16) “Internet Surveys Come of Age,” which
`
`appeared in the July, 2013 issue; (17) “10 Common Myths About Trademark Surveys,”
`
`which appeared in the September, 2013 issue; (18) “Will A Survey Help Win A Likelihood
`
`of Confusion Case?” in the September, 2014 issue; (19)”Will a Survey Enhance the
`
`Chances of Winning a Trademark Case,” in the Fall, 2018, issue of Bright Ideas, a
`
`publication of the Intellectual Property Law Section of the New York State Bar
`
`Association; (20) “Ten Things to Avoid When Doing Trademark Surveys,” IP Watchdog,
`
`March 2, 2019; (21) Costs, Expectations and Methodologies for Trademark Surveys,”
`
`Texas Bar Journal, March, 2019; (22) “Why the Internet Has Become the Smart Way To
`
`Do Trademark Surveys,” IP Watchdog, Aug.10, 2019; (23) “Ten Best Practices for
`
`Trademark Surveys,” Michigan Bar Review, March 2020; (24) “Some Bizarre Facts About
`
`Celebrity Trademarking in Life and Death,” published in the Spring, 2020, Entertainment and
`
`Sports Lawyer, an American Bar Association publication. I also do extensive freelance writing
`
`Report of James T. Berger 5 2/3/2022
`
`

`

`for magazines and other publications on a variety of business-related topics, including
`
`marketing, marketing communications and trademarks. Early in my career, I worked as
`
`Account Executive and later Account Supervisor at The Public Relations Board, Inc.
`
`Chicago. In this capacity, I developed several surveys and was responsible for compiling
`
`the MUSIC U.S.A., an annual compilation of statistical data of the music industry and
`
`music participation in the United States.
`
`E.
`
`Trademark Testimony Experience. I have testified as an expert in strategic
`
`marketing, marketing communications and intellectual property surveys with respect to
`
`brands and trademarks. Over the last 15 years, I was retained as an expert in more than
`
`100 lawsuits. In many of those lawsuits, the issue involved was some form of trademark
`
`and/or trade dress infringement, likelihood of confusion, and/or whether a trademark had
`
`achieved secondary meaning. In addition, I have been retained as an expert in cases
`
`involving efforts to prove or disprove whether names were generic, descriptive, or
`
`suggestive. In many of those lawsuits, I have given deposition and/or trial testimony.
`
`III.
`
`Study Mechanics
`
`A.
`
`Assignment. My task was to do preliminary research on Sensory Path and provide
`
`an opinion as to where it stands on the distinctiveness continuum. In doing so, I was
`
`involved in conducting two surveys. The central issue or hypothesis to be tested is whether
`
`Sensory Path is descriptive or suggestive.
`
`B.
`
`Survey One. The purpose of the survey was to learn how a national sample of
`
`kindergarten through 8th Grade (K-8) schoolteachers classified various learning products
`
`as generic, descriptive, or suggestive. The study consisted of 255 respondents; 49% were
`
`males and 51% were females. I used Russell Research, Rutherford, NJ, as my field research
`
`Report of James T. Berger 6 2/3/2022
`
`

`

`general contractor. The survey I developed was a variation of the well-accepted “Teflon
`
`Protocol.” [ See Exhibit B] This protocol attempts to educate respondents as to the
`
`differences between generic, descriptive and suggestive brands. The survey then presents
`
`a variety of brands and asks the respondent to place each brand into one of the three
`
`categories.
`
`Brands selected were BOOKMARK, ADVENTURE ACADEMY, FIT AND FUN,
`
`WEKLY READER, FUNBRAIN TOYS, SENSORY PATH and WEEKLY LESSON
`
`PLAN. The SENSORY PATH trademark received the following results:
`
`SENSORY PATH
`Generic – 18%
`Descriptive – 38%
`Suggestive – 23%
`Don’t Know – 21%
`
`
`
`
`
`
`
`The full report can be reviewed as Exhibit B.
`
`Based on this sample, I conclude that SENSORY PATH is clearly NOT
`
`
`
`considered to be a generic mark and falls between descriptive and suggestive.
`
`C.
`
`Survey Two. The purpose of the survey was to gauge whether SENSORY PATH
`
`should be classified as DESCRIPTIVE or SUGGESTIVE based on consumers’ impression
`
`of the term. For purposes of cost efficiency, McDavid and Associates, PC assisted in
`
`facilitating this survey using Qualtrics, a web-based survey tool used to conduct the
`
`research evaluation and other data collection activities. The survey was distributed via
`
`email to a list of 48,475 email addresses. The survey was distributed by email invitation
`
`only and not linked to any external search engines. Each email address on the distribution
`
`list received a unique time used to link to access the survey. After respondent completed
`
`the survey, he/she could not use the same link to access the survey a second time. The
`
`Report of James T. Berger 7 2/3/2022
`
`

`

`survey was also designed to prevent multiple submissions from the same IP address and
`
`block any subsequent attempts. This survey received a total of 518 responses. 24 responses
`
`were disqualified due to age or marketing affiliation.
`
`The key question of the survey focused on the respondents’ impression of SENSORY
`
`PATH and asked the respondents to “select the choice which most closely matches your
`
`impression of what ‘Sensory Path’ is.” The potential choices included the following:
`
`1. A chain of neurons, from receptor organ to cerebral cortex, that are responsible
`for the perception of sensations.
`2. A set of decals creating a specialized series of guided movements specifically
`designed help reduce a child’s sensory seeking behaviors.
`3. An outdoor walk incorporating various textures, smells, and sounds specifically
`designed to stimulate the senses.
`4. An educational board game used to teach children the five senses by providing
`sensory stimulating activities as they move around the board.
`5. None of these.
`I don’t know.
`6.
`
`This question received the following results:
`
`Responses showed that 251 respondents selected “a chains of neurons,” 187
`
`respondents selected some other response, and 56 respondents selected “a set of decals.”
`
`On a percentage basis, only 7.7% (56/494) associated SENSORY PATH with its product,
`
`decals.
`
`Report of James T. Berger
`
` 8
`
`2/3/2022
`
`

`

`VI.
`
`Conclusions
`
`While Survey One showed Sensory Path to be between descriptive and suggestive, Survey
`
`Two clearly shows Sensory Path is suggestive as it does not immediately convey an
`
`association with indoor decals. In my opinion, based on this research, Sensory Path should
`
`be considered to be a suggestive trademark.
`
`James T. Berger
` February 3, 2022
`
`Report of James T. Berger
`
` 9
`
`2/3/2022
`
`

`

`Exhibit A
`Exhibit A
`
`

`

` CURRICULUM VITAE
`
`
`James T. Berger/Market Strategies, LLC
`IP Litigation Services & Surveys: Trademarks/Brands/Marketing.
`Marketing Consultant: Corporate Researcher, Free-Lance Writer; University Instructor
`
`James T. Berger/Market Strategies, LLC
`555 Skokie Blvd. - Suite 500, Northbrook, IL 60062
`847-897-5599 Fax 847-480-7859
`E-mail: jberger@jamesberger.net WEB: www.jamesberger.net
`
`
`EDUCATION
`
`
`
`
`
`MBA University of Chicago, Graduate School of Business, concentrations in marketing and
`
`finance.
`
`
`MS Northwestern University, Medill School of Journalism, concentration in news/editorial
`
`sequence.
`
` BA University of Michigan, College of Literature, Science and the Arts, major in journalism.
`
`
`PROFESSIONAL EXPERIENCE
`
`JAMES T. BERGER/MARKET STRATEGIES, LLC — Chicago. Evanston and Northbrook, IL
`(1983 to present) Principal of this marketing services/consulting firm, which specializes in:
`- Intellectual Property Expert Witness services.
`- Strategic marketing planning including creating written market plan documents.
`- Implementing marketing programs.
`- Integrated marketing communications services including advertising, public relations, sales
`promotion, direct mail.
`
`- Helping clients develop and maintain business relationships.
`As a "hands-on" consultant, I help clients develop strategies and programs as well as assist in the
`implementation. The firm concentrates on business-to-business marketing with specific focus on
`financial services, accounting and consulting services, commercial real estate, eldercare, office
`technology, manufacturing and distribution. Expert witness services include litigation support
`activities including surveys and testimony-related activities. Concurrent with the management of
`James T. Berger/Market Strategies, LLC, I became involved with:
`THE INVESTOR RELATIONS COMPANY, Northbrook, IL (June 1998 to July 1999)
`As Senior Vice President, I was involved in the full array of Investor Relations activities
`including account management; working with the financial press including magazines,
`
`
`
`James T. Berger CURRICULUM VITAE
`
`1
`
`7/27/2019
`
`

`

`newsletter and wire services; direct contacts with analysts and brokers; and writing of
`financial news releases, quarterly and annual reports, profiles and fact sheets. THE
`FINANCIAL RELATIONS BOARD, INC., Chicago, IL (April 1997 to June 1998) As an
`Account Manager for this large, national investor relations firm, I:
`• Coordinated account service, market intelligence and media activities.
`• Created investment profiles and fact sheets; developed and wrote annual reports,
`quarterly earnings releases and other news releases.
`
`
`STERN WALTERS/EARLE LUDGIN, Inc., Chicago, IL (1980-83) Vice President -- Account
`Supervisor:
`- Account manager for Associates Commercial Corporation account, a commercial finance
`company with advertising billings in excess of $7 million.
`- Account manager for Sears, Roebuck & Co. Contract Sales Group division.
`- Developed marketing strategies, planning and account management.
`
`THE WITTLEDER COMPANY, Inc., Chicago, IL (1976-80) Vice President -- Account
`Supervisor:
`- Created and implemented marketing strategies and programs.
`- Clients involved in office products and services, data systems, micrographics, commercial
`real estate, automotive aftermarket and financial services.
`
`BRAND ADVERTISING, Inc., Chicago, IL (1973-76) Vice President -- Director of Public
`Relations:
`- Responsible for firm's public relations profit center.
`- Programming, planning, client and media contact, writing and editing.
`- Active in new business development.
`- Clients involved in automotive aftermarket, industrial equipment, agriculture.
`
`
`GOLIN/HARRIS COMMUNICATIONS, Inc., Chicago, IL (1971-73) Account Supervisor for
`this large public relations agency:
`- Worked on McDonald's restaurants, agency's major account.
`- Created national model awareness program for Chicagoland market.
`- Managed McDonald's involvement in public affairs, ecology, energy conservation,
`relations and the inner city.
`- Involved in financial relations and marketing-support activities.
`
`
`
` labor
`
`EARLY EXPERIENCE
`
`Began career as copy, wire and make-up editor for CHICAGO DAILY NEWS. Moved into
`corporate public relations as editor of an employee publication for ILLINOIS BELL
`TELEPHONE COMPANY in Chicago and Springfield, IL. As a publicity specialist for
`MORTON INTERNATIONAL INC., I became involved in the consumer, industrial,
`institutional, automotive and agricultural markets. My first experience in agency public relations
`
`
`
`
`
`James T. Berger CURRICULUM VITAE
`
`2
`
`7/27/2019
`
`

`

`was with THE PUBLIC RELATIONS BOARD, INC., (now known as PORTER NOVELLI),
`first as an account executive and later as an account supervisor.
`
`
`PROFESSIONAL MEDIA EXPERIENCE
`
`- Copy Editor for Chicago Daily News, Chicago, IL
`- Editor and General Assignment Reporter for The Patriot Ledger, Quincy, MA
`- Correspondent for United Press International in Ann Arbor, MI
`- Part-time general assignment reporter for Pioneer Press newspapers, Wilmette and Highland
`Park, IL
`- Free-lance columnist for Homelife section of Chicago Sun Times
`
`
`BOOKS PUBLISHED
`
`Trademark Surveys: A Litigator’s Guide by James T. Berger and R. Mark Halligan (of the
`FisherBroyles law firm), published by Oxford University Press, 2011. Second edition published
`in 2015, and third edition published in 2019. Second and Third editions published by LexisNexis
`Matthew Bender
`Trademark Surveys in the Age of Daubert by James T. Berger, published by LexisNexis
`Matthew Bender in 2016.
`
`
`
`ARTICLES PUBLISHED
`
`
`
`
`
`
`
`Intellectual property litigation-related articles:
` — “10 Frequently Asked Questions about Intellectual Property Litigation Surveys”
`published in the August 2003 issue of Intellectual Property Today.
`— “Swimming in Shark-Infested Waters,” published in June 2004 issue of Intellectual
`Property Today.
`— “Creativity Key to Executing Toughest IP Survey Projects,” published in July 2005
`issue of Intellectual Property Today.
`— “What IP Attorneys Should Know About Expectations and Costs for Survey
`Research,” published in April 2006 issue of Intellectual Property Today.
`— “10 Easy Ways to Blow Away a Survey,” published in the January 2007 issue of
`Intellectual Property Today.
`— “The Power and Perils of the Internet Surveys,” published in August 2007 issue of
`Intellectual Property Today.
`— “How to do an IP Survey without Giving Away the Store,” published in April 2008
`issue of Intellectual Property Today.
`
`
`
`James T. Berger CURRICULUM VITAE
`
`3
`
`7/27/2019
`
`

`

`— “New Challenges to the IP Survey Process,” published in July 2009 issue of
`Intellectual Property Today.
`— “Introducing the Internet/Telephone ‘Hybrid’ Survey,” published in the July, 2010
`issue of Intellectual Property Today.
`— “How to Apply Theory of Probability to Decision of Whether to Do an I.P. Survey,”
`published in the February, 2011 issue of Intellectual Property Today.
`— “A New Survey Protocol for Proving/Disproving Design Patent Infringement” by
`James T. Berger and Tracy Zawaski, published in the April, 2011 issue of Intellectual
`Property Today.
`— “The Descriptive/Suggestive Conundrum in Trademark Surveys,” published in the
`November, 2011 issue of Intellectual Property Today.
`— “The Pre-Litigation Pilot Trademark Survey,” published in the March, 2012 issue of
`Intellectual Property Today,
`— “Frequently Asked Questions About Trademark Surveys,” published in the
`December, 2012 issue of Intellectual Property Today,
`— “Internet Surveys Come of Age,” published in the June, 2013 issue of Intellectual
`Property Today.
`— “10 Common Myths About Trademark Surveys,” published in the September, 2013,
`issue of Intellectual Property Today.
`— Will A Survey Help Win A Likelihood of Confusion C