Plan your brand extension

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

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.

more from across site and SHARED ros bottom lb

More from across our site

Examiner statistics could help patent prosecution practitioners tailor strategies, turning an area of high variability into a potential competitive advantage
The England and Wales High Court’s ruling in Accord v Novartis may not rewrite the law on plausibility, but it does signal a pragmatic approach that could provide greater certainty for life sciences innovators
Firms with established sports relationships and specialised expertise are well positioned to capture the market’s expanded pool of IP work
Gunjan Paharia discusses developing RIA, an AI platform built to draw on decades of institutional knowledge, support junior lawyers, and reshape how legal teams work
A strong Canadian business helped lift profits, but the IP service group's latest results underline the pressure facing its operations in Australia, New Zealand and parts of Asia
Wins in court have been key to the six-year-old firm’s growth, as one of its founders explains
The firm’s co-CEO discusses patent litigation, collaboration with overseas colleagues and the next generation of leaders
Two recent decisions demonstrate the courts’ creativity in cutting-edge IP disputes that tested their jurisdictional powers
Aditi Verma Thakur, managing partner at Aishani Partners, discusses 5 am wake-ups, working with high-performing professionals and staying calm under pressure
After more than three decades at Wilson Sonsini, Ian Edvalson explains why he moved to expand his life sciences transactional practice
Gift this article