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

Lawyers at Pinsent Masons discuss why the advent of ‘AI-free’ might be a crucial moment for brands seeking to protect their identity
Newly independent King & Wood has established offices in North America, while Mallesons has entered a ‘new era’ with a 1,200-lawyer firm across Australia and Singapore
Ryan Dykal and John Wittenzellner of Boies Schiller Flexner tell Managing IP what’s driving the firm’s patent litigation expansion
News of Dolby suing Snap over AV1 and HEVC patents and SCOTUS offering guidance on the liability of internet service providers were also among the top talking points
Arrival of Caitlin Heard will bolster the soon-to-be-created Ashurst Perkins Coie’s IP presence in the capital
AI, cybersecurity and data practice group will provide clients with legal guidance around AI alongside a 'deep technical foundation’ in IP
Lawyers at Vondst and Biopatents say a ruling concerning the protected status of trade secrets could see the UPC flooded with requests to prevent access to confidential information
Sharad Vadehra of Kan & Krishme discusses why older IP firms still have an edge over up-and-coming boutiques and how the firm is using AI to provide quick and cost-effective service
Lawyers at Appleyard Lees share how they picked apart a plant breeder’s infringement claims concerning the ‘Tango’ mandarin
A further decision on long-arm status, and a new hire for Pentarc in Germany from Taylor Wessing were also among top developments
Gift this article