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What’s in a Name? How to Protect Your Brand When Doing Business Globally

30 Nov 2016 3:27 PM | TB OWIT (Administrator)

The short answer is A LOT. We had an amazingly insightful presentation at the TBOWIT August 2016 lunch with Cory Shade, EVP, General Counsel and Secretary of Perry Ellis International. I found it amazing because I did not know half of what it takes to protect one’s brand overseas. What a resource it was to have Cory share Perry Ellis’ experiences.

Perry Ellis International has over 30 brands including:  Perry Ellis®, Original Penguin® by Munsignwear®, Laundry by Shelli Segal®, Rafaella®, and on. Plus, Perry Ellis has licensing trademarks from third parties, including:  Nike®, and Jag® for swimwear, and Callaway®, PGA TOUR®, and Jack Nicklaus® for golf apparel.

Perry Ellis International garners approximately $3.3B in global retail sales. To reach this point and to grow the company one has to begin with strong brands and expand strategically with strong justification of the trademarks. Cory works hard with her team and the other departments at Perry Ellis International to protect the company’s brands with both offensive and defensive filings because it’s all about the name, brand equity = your strength. A business’s most valuable asset is its trademark. Think of McDonald’s (golden arches), Coca-Cola (colors, bottle, font), or Kleenex.

There are four basic pillars which all tie into financial considerations

  • ·         Choose a strong mark
  • ·         Use the mark
  • ·         Monitor/Watch mark
  • ·         Enforce against mark

For each pillar Cory expanded the thought and gave great examples and in-depth details. I would write them here, but my notes are too chock full to type; it would take a long time. The best way to end is to say that as you expand overseas, you will need in-country experts because there are many layers and there are a lot of financial considerations.

Let’s say it together, “Use your mark, Monitor your mark, Enforce your mark.” 


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