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Plan your brand extension

Lawyers whose clients want to extend their brand need to ask themselves four key questions, said John Joseph Cheek, Caterpillar Inc., at a session during the INTA Annual Meeting yesterday.

Do they want to extend a name or a logo; a product configuration; a brand promise; or a customer experience? Whatever companies do, he said, they should have a clear plan.

He was outlining Caterpillar’s experience of extending its brand from heavy machinery into footwear and apparel by way of a licensing deal at a session entitled The Living Brand: Borderless Extensions Limited Only by the Imagination, alongside two other in-house lawyers who have helped their companies boost revenues by expanding into new product areas.

Cheek underlined the importance of doing thorough clearance checks to identify similar marks that are registered for the goods or services you intend to start selling. And he warned that phased brand extensions may “telegraph” where you are taking the brand. “Frequent and speculative filings are double-edged swords,” he said.

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