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

Cookies Settings

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

Anita Polott, who is celebrating three decades at Morgan Lewis this year, reflects on career progression, stepping into unfamiliar territory, and leadership frameworks
Technical excellence remains essential, but many firms are discovering that packaging IP with complementary practice areas can unlock new clients and a stronger competitive position
As international interest in Southeast Asia grows, Sheng Rong Tng discusses how changing client demands and the firm’s multidisciplinary model are helping it compete for complex regional mandates
Todd Hopfinger, director in Sterne Kessler’s electronics practice group, says IP owners are contemplating how patent rights will be enforced as commercial activity expands beyond Earth
Christopher Stothers' arrival strengthens the firm's life sciences, technology and UPC offering as competition for top European litigators intensifies
Armstrong Teasdale’s Jim Heinen Jr discusses the challenge of balancing billables, business development and family life and explains why not all patent lawyers are science nerds
From cross-border jurisdiction to the end of the transitional period, Powell Gilbert’s Ioana Sabau and Bryce Matthewson predict the biggest talking points ahead
A wave of office launches and lateral hires reflects the draw of patent disputes, but booming AI, semiconductor and data centre markets are offering an even bigger IP opportunity
The hire of Frederick Nicolle as a partner continues Pinsent Masons' expansion while reducing Simmons’ patent prosecution offering in London to zero
The expansion into Granada forms part of a national ‘decentralisation’ strategy focused on providing proximity to research and tech businesses away from traditional hubs
Gift this article