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[Marc Bybee]

I'm involved in a produce committee which has recently begun using a new slogan "x with y" in some promotional materials (local and national).  We received a letter from a competing produce producer's lawyer requesting we stop using this phrase because it was used as part of it's marketing strategy which said "Bold produce gets x in the y!"  "x with y"  is not trademarked from what we can find out.  Are we in the wrong.

[Lyza]

I am not an attorney so anything I say here should not be viewed as legal advice.  

I think an attorney would respond that the issue upon which the OC is standing is confusion in the marketplace and subsequent lost revenues.  OC's client is afraid that consumers will be confused by the similarity of your marks into thinking that they are buying from OC's client when they are really purchasing from you.  

If OC's client has superior common law rights to the use of their phrase underwhich they market their produce, then the possibility exists that they could prevail in getting your application/registration cancelled.  Jeff, am I correct here?

The cease & desist letter you received is an attempt at intimidation.  I would get an attorney and pursue your options before responding.

[JSonnabend]

Lyza, I don't see anywhere in the OP's post a reference to an application or registration, only to use, so cancellation is not relevant.

As a starting point, the OP should understand that there is no such thing as "trademarked", and so the notion that the other party's mark "is not trademarked from what we can find out" is meaningless.  Either the other party has been using the phrase as a trademark (in which case they have trademark rights in the phrase) or they have not (in which case they lack TM rights).

Assuming trademark rights in the other party, then the OP's use might infringe those rights if the use of its phrase is likely to cause confusion with the other party's phrase.  With that in mind, the letter, while intimidating, might not be "an attempt to intimidate", as Lyza suggests -- it might be a legitimate attempt to inform the OP of a senior party's trademark rights the OP is violating.

Your best bet, as always, is to talk to an attorney directly about your matter.

- Jeff

[Lyza]

I guess I always, in my mind, go straight to filing an application to protect a mark, re: the cancellation language.  Should have mentioned that as opposed to leaving my chain of thought unspoken.  As always, you are correct.

Marc, there are several very good attorneys who participate on this List, and Jeff is a particularly good one.  His, and their, counsel should be heeded.  Good luck.

[Marc Bybee]

Thank you both for the help.

Is there a inexpensive way to check on the trademark rights for the phrase in question?

[JSonnabend]

Trademark rights arise from usage, so the task at hand is determining whether or not the other party has been using the phrase at issue as a mark -- whether or not they have a registration on the mark as well is almost immaterial.  From the sound of your original post, they very well might be.

A qualified TM attorney can help you with this.  Unfortunately, all the Q and A here will not get you to a satisfactory answer.

- Jeff