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CONSENT AGREEMENTS AREN'T A GET-OUT-OF-2(D) JAIL CARD

du Pont Lessons from In re A-Plant 2000 ApS
CrossBeamIP - Trademark Street Smarts (2026 0601)
  • A consent agreement can be powerful evidence under the du Pont framework, but it is not self-executing. The Trademark Trial and Appeal Board (the “Board”) of the United States Patent and Trademark Office (the “USPTO”) – the Board’s nonprecedential decision in In re A-Plant 2000 ApS is a useful reminder that even a negotiated coexistence arrangement may fail where the marks remain highly similar, the goods overlap, and the agreement does not meaningfully reduce the likelihood of consumer confusion.

  • For trademark practitioners, the opinion is valuable less because it breaks new doctrinal ground than because it synthesizes a familiar principle in a fact pattern that recurs often in prosecution: a junior applicant attempts to overcome a Section 2(d) refusal through consent, while also relying on stylization to distance an otherwise weak word mark. Read alongside du Pont, In re Mastic, In re Four Seasons Hotels, and In re Bay State Brewing, the decision shows both what the Board expects from a serious consent agreement and why private bargains cannot displace the USPTO’s duty to protect the public from source confusion.

  • The place of consent within du Pont

  • The Board in A-Plant 2000 correctly began with first principles. Under In re E.I. du Pont de Nemours & Co., likelihood of confusion turns on a nonexclusive set of evidentiary factors, with similarity of the marks and similarity of the goods typically carrying outsized importance. A consent agreement does not exist outside that framework; rather, it is considered under the market interface factor and must be weighed together with all other relevant circumstances.

  • That point matters because applicants sometimes overread du Pont as creating a strong presumption in favor of registrability once both parties have agreed to coexist. The case law is more nuanced. du Pont itself observed that “naked” consent may carry little weight, whereas a detailed agreement may carry substantial weight because experienced trademark owners generally have strong commercial incentives to avoid confusion. But later decisions make equally clear that there is no per se rule requiring the Office to accept the parties’ assessment at face value.

  • The Federal Circuit’s decision in In re Mastic is especially important here. There, the court explained that a consent agreement is not dispositive simply because sophisticated business actors signed it; the question is whether the agreement reflects marketplace realities or merely a private accommodation that leaves the public exposed to confusion. If confusion would likely persist, absent a trademark license or meaningful product differentiation, consent alone may be insufficient.

  • Why the consent failed in A-Plant 2000

  • The applicant in A-Plant 2000 sought registration of a stylized NORDIC-formative mark for live plants and flowers, while the cited registration covered NORDIC in standard characters for “live plants, namely holly cultivars.” The Board found the marks highly similar in appearance, sound, connotation, and commercial impression, particularly because the cited mark was in standard characters and could appear in lettering close to the applicant’s presentation.

  • On the goods side, the applicant’s identification included “natural plants,” which the Board found broad enough to encompass the registrant’s holly cultivars, making the goods legally identical in part. That conclusion triggered the usual presumption that identical goods move through the same trade channels to the same classes of purchasers. By the time the Board reached the consent agreement, the applicant was already facing a difficult record on the core du Pont factors.

  • The revised consent agreement was more than a bare statement of nonobjection, but the Board still found it wanting for several reasons. First, the parties’ promise that the applicant would not use the mark on holly cultivars did not resolve the problem because the application itself was not amended to reflect that limitation, and the remaining goods remained highly related. Second, the agreement did not meaningfully separate channels of trade, consumers, or commercial fields of use; indeed, it acknowledged overlapping customers such as landscape contractors, re-wholesalers, and garden centers.

  • Third, the agreement leaned too heavily on abstract assurances. The parties promised to use their marks in a manner “calculated to avoid consumer confusion” and to cooperate if confusion arose, but they did not identify concrete marketplace mechanisms, such as differentiated packaging, consistent house-mark use, labeling protocols, or point-of-sale distinctions, to make that promise operational. Under Mastic and the current TMEP guidance, the lack of specificity sharply reduces the persuasive force of a consent because the Board has little basis to conclude that confusion will be avoided in practice.

  • The Board also rejected the applicant’s effort to distinguish the goods by asserting that its plants would be marketed as “tough and hardy,” whereas the registrant’s NORDIC plant referred to a specific inkberry cultivar. That claimed distinction did not track marketplace reality because “hardy” is a common descriptive attribute in the nursery trade and could easily encompass holly cultivars as well. A consent agreement loses force when its supposed differentiators are semantic rather than structural.

  • Finally, the agreement lacked strong evidence of coexistence free of confusion in the U.S. The applicant had not yet used its mark in U.S. interstate commerce, so the absence of actual confusion had limited probative value. That feature distinguishes cases in which the parties could show years of side-by-side domestic use under conditions likely to reveal confusion if it existed.

  • Corroborating authority

  • The outcome in A-Plant 2000 fits comfortably within the broader arc of Federal Circuit and TTAB authority. In In re Four Seasons Hotels Ltd., the Federal Circuit reversed the Board and accorded substantial weight to a detailed consent agreement, but did so in a context where the marks, trade conditions, and restrictions supported the parties’ judgment that confusion was unlikely. Four Seasons is best read not as a command to accept all consents, but as a demonstration that a carefully drafted agreement tied to marketplace distinctions can materially alter the du Pont balance.

  • By contrast, In re Bay State Brewing Co. confirms that even detailed consent will not necessarily overcome the use of highly similar marks for identical goods. There, the Board found TIME TRAVELER and TIME TRAVELER BLONDE likely to cause confusion for beer despite a consent agreement, emphasizing that the marks were extremely close and the agreement did not adequately mitigate the overlap in goods and purchasing conditions. The same logic is visible in A-Plant 2000: once the Board determined that NORDIC and the stylized NORDIC formative mark were near matches for overlapping plant goods, the agreement had to do substantial work, and it simply did not.

  • The TMEP reflects the same doctrinal middle ground. It instructs examining attorneys to consider whether a consent agreement recites reasons why confusion is unlikely and, critically, whether it includes provisions designed to avoid confusion in the marketplace. Among the most useful features are field-of-use restrictions, customer or channel separations, trade dress or packaging commitments, and evidence of meaningful concurrent use without confusion. A-Plant 2000 is therefore less an outlier than a straightforward application of established examination principles.

  • The stylization issue and the problem of weak wording

  • The opinion also offers a useful companion lesson on weak wording and the limits of stylization. Once the applicant disclaimed NORDIC, it effectively conceded that the term was primarily geographically descriptive for the identified plant goods, given the applicant’s Danish origin and the geographic significance of “Nordic.” The remaining question was whether the stylization created a separate and inherently distinctive commercial impression sufficient to carry the mark onto the Principal Register.

  • The Board said no, and that conclusion is doctrinally sound. The stylized “eth” like character and circumflex did not function as independent source indicators; instead, they remained too close to ordinary textual variations, especially given the USPTO’s treatment of diacritical marks and common characters in standard-character practice. In that respect, the case is consistent with earlier TTAB decisions distinguishing genuinely distinctive visual features from ordinary embellishment.

  • For prosecutors, the practical lesson is plain. Where wording is weak because it is geographically descriptive, highly suggestive, or otherwise source-poor, typographic novelty alone rarely solves the problem unless it creates a clearly separable design impression. More importantly, stylization does nothing to cure a Section 2(d) problem when the cited registration is in standard characters and therefore capable of appearing in a similar form.

  • Drafting implications for practitioners

  • For firm lawyers who counsel applicants or negotiate coexistence arrangements, A-Plant 2000 suggests several drafting principles.

  • First, the consent agreement should mirror the application and registration record. If a party agrees not to use a mark for certain goods, the identification should, where possible, be amended so that the Board is not forced to evaluate a broader legal scope than the parties intended.

  • Second, the agreement should identify concrete marketplace distinctions rather than aspirational ones: different channels, different consumers, consistent house marks, packaging conventions, labeling commitments, and escalation procedures.

  • Third, the agreement should account for ordinary consumers, not merely sophisticated intermediaries. The Board is unlikely to be persuaded by statements about knowledgeable trade purchasers if the goods can also reach retail buyers exercising ordinary care.

  • Fourth, where available, the agreement should document substantial, confusion-free U.S. coexistence under circumstances that would make confusion likely to surface if it were occurring.

  • In short, the best consent agreements do not merely recite the conclusion that confusion is unlikely. They change the factual landscape in ways the Board can credit under du Pont. A-Plant 2000 is a helpful cautionary example of what happens when the agreement sounds negotiated but does not meaningfully alter the marketplace analysis.

  • REFERENCES:
  • • In re E.I. du Pont de Nemours & Co. (1973)
  • • In re Mastic Inc., 829 F.2d 1114 (Fed. Cir. 1987)
  • • In Re Four Seasons Hotels Limited, 987 F.2d 1565 (Fed. Cir. 1993)
  • • TTAB Opinion: in Re State Brewing Company (2016)
  • • TTAB Opinion: in Re A-Plant 2000 ApS (2017)
  • • Section 1207 TMEP – Refusal on Basis of Likelihood of Confusion, Mistake, or Deception

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