Below is an excerpt from John McKeown’s May 2019 Monthly IP Blog.
There are significant risks and costs associated with launching a new product or service. Many new products fail. One method of reducing the risk is to extend an existing brand to a new category of products or a service. When this is done, the core brand is extended to the new product. A consumer seeing the core brand will attribute its qualities to the new product. However, it is still necessary to carry out trademark searches before proceeding to market and prudent to file appropriate trademark applications for the extended mark.
The promotion of the new product will benefit all of the products in the product line. For example, the VIRGIN and NIKE brands have been extended across a diverse group of products and services. Such extensions may be carried out directly or by licensing a third party to manufacture and sell the new products under a licence from the brand owner.
Developing a brand name which is derived from an existing brand name to create a family of brands with a common denominator is conceptually similar to a brand extension. An example is KODAK and KODACHROME or the Starbucks Corporation’s use of their STARBUCKS trademark. Care must be taken to ensure that any variant is legally protected to avoid any negative impact on the distinctiveness of the lead brand name.
Unfortunately, there are potential costs associated with leveraging a brand in this fashion. First, if one of the products loses credibility, all of the products and services associated with the brand may be affected. Second, the core brand may become diluted. For example, it has been suggested that the HEWLETT-PACKARD brand for use in association with high-end scientific instruments has been diluted by the use of the brand in association with value priced printers.
Canada’s New Trademark Regime: The Practical, Tactical Guide to Navigating the Sweeping Changes
I was co-Program Chair at the Osgoode Professional Development Webinar on April 30, 2019, entitled Canada’s New Trademark Regime: The Practical, Tactical Guide to Navigating the Sweeping Changes. The program was videotaped and will be shown again on May 27,2019.
The program is a one-day intensive presentation by industry leaders designed to provide practical advice and strategies to allow lawyers and trademark agents to navigate the new regime and protect their clients’ interests. The program went very well and is a must for any one who wants all the details on Trademark reform.
If you have any questions, please contact me at mckeown@gsnh.com.
Goldman Sloan Nash & Haber LLP
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Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.