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

Executive chair Matt Dixon, who reveals a new associate hire, says the firm wants to offer a realistic pathway to partnership while avoiding the ‘corporate machine’ route
Mayer Brown’s role in cardiovascular technology dispute reflects how firms are pursuing precedent-setting cases to try and guide AI and patent law
Kevin Mack, Via’s new president, emphasises the importance of collaborative licensing structures and shares how AI tools can help create new lines of business
A Tokyo District Court ruling concerning movie spoilers, and a second chance for VLSI against Intel were also among the top talking points
Practitioners believe new AI tools at the USPTO will not replace lawyers or disrupt revenue, but instead expose where a trademark attorney’s value lies
Leighton Cassidy Legal hopes to leverage its founder's international experience and provide clients with a rare chance to receive litigation and prosecution under one umbrella
UKIPO rejects trademark application for 'Cristiano Ronaldo Origins' following opposition by Beck Greener client in a rare case that considered actual use
Partners at both firms have voted in favour of the tie-up, which marks ‘the largest law firm merger in history’
Head of IP, Andrew Brennan, and new partner, France Delord, explain how tech provides an edge in the battle for global brand owners’ business
Anton Hopen, shareholder at Trenam Law, shares how counsel should construct Section 101 claims as early 2026 PTAB data shows reversals rising in technical cases
Gift this article