NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: OXITENO S.A. INDUSTRIA E COMERCIO,

Appellant

______________________ 

2022-1213

______________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

88865509.

______________________ 

Decided: March 9, 2023

______________________ 

MARY CATHERINE MERZ, Merz & Associates, PC, Oak 

Park, IL, for appellant.

 CHRISTINA J. HIEBER, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, for 

appellee Katherine K. Vidal. Also represented by MARY L.

KELLY, THOMAS W. KRAUSE, MATTHEW DERRICK 

MCCLELLAN, AMY J. NELSON, FARHEENA YASMEEN 

RASHEED, MARY BETH WALKER. 

 ______________________ 

Before DYK, BRYSON, and PROST, Circuit Judges. 

DYK, Circuit Judge. 

Case: 22-1213 Document: 36 Page: 1 Filed: 03/09/2023
2 IN RE: OXITENO S.A. INDUSTRIA E COMERCIO

Appellant Oxiteno S.A. Indústria e Comércio (“Oxiteno”) appeals a decision of the Trademark Trial and Appeal Board (“Board”) affirming the Examining Attorney’s 

refusal to register the mark OXIPURITY for various chemical products. We affirm. 

BACKGROUND

Oxiteno filed an intent-to-use trademark application 

for the mark OXIPURITY. The description of goods, as 

amended, included dozens of chemical products “for use in 

the pharmaceutical, veterinary, flavour and fragrance, and 

cosmetic fields.”1 J.A. 132. 

1 Oxiteno’s full description of goods stated:

Chemical products for use in the manufacture of 

pharmaceuticals products, veterinary, flavour and 

fragrances, [and] cosmetic; chemical products 

namely, cetostearyl alcohol, cetyl alcohol, diethanolamine, diethylene glycol monoethyl ether, ethoxylated castor oil, fatty alcohol ethoxylated, fatty 

amine ethoxylates, glycerin, glyceryl monostearate, mixtures of surfactants medium-chain triglycerides, mineral oil, monoethanolamine, mpeg, 

nonylphenol ethoxylates, oleochemical products, 

petrolatum, phenoxyethanol, phosphate ester, polaxamer, polyethylene glycol, polyoxyethylene, alkyl ethers, polyoxyethylene, castor oil derivatives, 

polyoxyethylene, sorbitan fatty acid esters, polyoxyethylene stearates, sodium lauryl sulfate, solvents, sorbitan esters (sorbitan fatty acid esters), 

sorbitan esters ethoxylated, stearic acid, stearyl alcohol andtriethanolamine, for use in the manufacture of additives, pharmaceutical auxiliary, 

emulsifier, dispersant, humectant, adjuvant and 

solvents; all of the aforementioned products for use 

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IN RE: OXITENO S.A. INDUSTRIA E COMERCIO 3

The Examining Attorney refused to register the mark 

due to a likelihood of confusion with a previously registered

OXYPURE mark. The OXYPURE mark, registered by 

FMC Corporation, covers “hydrogen peroxide intended for 

use in the treatment of public and private potable water 

systems and supplies.” J.A. 50 (capitalization changed). 

The Examining Attorney found OXIPURITY and 

OXYPURE to be similar marks, leading to a likelihood of 

confusion. Although the goods covered by the earlier registration and the application were not identical, the Examining Attorney found the goods to be related based on thirdparty websites that marketed both hydrogen peroxide (the 

goods covered by FMC’s OXYPURE mark) and one or more 

of the chemicals that Oxiteno sought to be covered by the

OXIPURITY mark. Oxiteno filed a response challenging 

the Examining Attorney’s refusal and offering evidence in 

support of its position. The Examining Attorney issued a 

final refusal. 

Oxiteno appealed to the Board. The Board considered 

the likelihood of confusion factors laid out in Application of 

E. I. DuPont DeNemours & Co. (DuPont), 476 F.2d 1357, 

1361 (CCPA 1973). Regarding the first DuPont factor, similarity of the marks, the Board found the marks to be “similar in sound, meaning and commercial impression.” J.A. 

5. Accordingly, the Board found that this factor “strongly 

favors a finding of likelihood of confusion.” J.A. 7. 

The Board then considered the second and third 

DuPont factors, the similarity of the goods and channels of 

trade, and found that the goods are different but related. 

The Board found that the third-party websites “establish 

that [Oxiteno’s] chemicals and [FMC’s] hydrogen peroxide 

in the pharmaceutical, veterinary, flavour and fragrance, and cosmetic fields.

J.A. 132.

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4 IN RE: OXITENO S.A. INDUSTRIA E COMERCIO

are commonly manufactured by a single source, and are 

sold directly to a variety of industries, including the waste 

treatment, pharmaceutical, biotech, and personal care industries.” J.A. 9–10. The Board also relied on FMC’s brochure, which stated that FMC offered other hydrogen 

peroxide products, albeit under different brand names, to 

industries such as the drugs/cosmetics industry. 

In its consideration of the fourth DuPont factor, “[t]he 

conditions under which and buyers to whom sales are 

made, i.e. ‘impulse’ vs. careful, sophisticated purchasing,” 

DuPont, 476 F.2d at 1361, the Board found that the nature 

of the goods—chemical products used in manufacturing 

other products—suggested that the consumers would be sophisticated. 

The Board weighed the relevant DuPont factors and 

found a likelihood of confusion. Although the consumers 

were sophisticated, the Board found that “[t]he strong similarity of the marks for related goods, which move in the 

same channels of trade to the same classes of customers

renders confusion likely.” J.A. 13.

DISCUSSION

Under the Lanham Act, the Patent and Trademark Office (“PTO”) can refuse to register a mark if the mark “so 

resembles a mark registered in the Patent and Trademark 

Office . . . as to be likely, when used on or in connection 

with the goods of the applicant, to cause confusion, or to 

cause mistake, or to deceive.” 15 U.S.C. § 1052(d). Likelihood of confusion is a legal conclusion based on underlying 

factual findings regarding the DuPont factors. QuikTrip 

W., Inc. v. Weigel Stores, Inc., 984 F.3d 1031, 1034 (Fed. 

Cir. 2021). We review the Board’s factual findings for substantial evidence and the weighing of the DuPont factors 

de novo. Id.

Oxiteno’s primary contention is that the actual or potential consumers for the products covered by the 

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IN RE: OXITENO S.A. INDUSTRIA E COMERCIO 5

application and the registration are not the same and thus 

there is no likelihood of confusion. The Board found that 

the relevant goods would be “purchased by scientists, 

chemists, and manufacturers.” J.A. 12. Oxiteno does not 

dispute this finding. Instead, it argues that the scientists,

chemists, and manufacturers purchasing Oxiteno’s products in the pharmaceutical, veterinary, flavor and fragrance, or cosmetic fields are not the same scientists, 

chemists, and manufacturers purchasing FMC’s hydrogen 

peroxide for potable water systems. Oxiteno’s argument 

falls short for two reasons. 

First, typically the inquiry focuses on “whether there is 

likely to be sufficient overlap of the respective purchasers 

of the parties’ goods and services to confuse actual and potential purchasers,” Elec. Design & Sales, Inc. v. Elec. Data 

Sys. Corp., 954 F.2d 713, 716 (Fed. Cir. 1992). But it is not 

necessary to show that the consumers are the same to establish a likelihood of confusion. The knowledge of the actual or potential purchasers potentially leading to source 

confusion is not limited to knowledge generated in purchase transactions. See 4 J. Thomas McCarthy, McCarthy 

on Trademarks and Unfair Competition § 23:5 (5th ed., 

2022). Though the buyers may be different, they may have 

overlapping knowledge due to market conditions or channels of trade such that purchasers are familiar with both 

products. See In re Shell Oil Co., 992 F.2d 1204, 1207 (Fed. 

Cir. 1993) (“It is relevant to consider the degree of overlap 

of consumers exposed to the respective services, for . . . 

even when goods or services are not competitive or intrinsically related, the use of identical marks can lead to the 

assumption that there is a common source.”). Trademark 

law is concerned with “confusion as to source, sponsorship, 

affiliation, endorsement, or connection between the applicant’s goods and the owner of the registered mark,” In re 

Rittenhouse, 124 F.3d 228 (Fed. Cir. 1997) (unpublished table decision) (citing 3 J. Thomas McCarthy, McCarthy on 

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6 IN RE: OXITENO S.A. INDUSTRIA E COMERCIO

Trademarks and Unfair Competition § 24:6 (1997)), even in 

the absence of consumer overlap. 

Here, even to the extent that the buyers are different, 

the goods are related (the second DuPont factor), and there 

is evidence that they are sold in the same channels of trade 

(the third DuPont factor). Several specialty websites sell

the chemicals for which Oxiteno seeks its OXIPURITY 

mark as well as hydrogen peroxide, the chemical covered 

by FMC’s registration. The fact that “a single company 

sells the goods and services of both parties . . . is relevant 

to a relatedness [DuPont factor two] analysis.” HewlettPackard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267 

(Fed. Cir. 2002). 

Second, there is record evidence that there is consumer 

overlap, i.e., to some extent the same customers would purchase both Oxiteno’s and FMC’s goods. Seidler Chemical, 

a bulk chemical supplier that offers many of the chemicals 

for which Oxiteno seeks its OXIPURITY mark, states that 

“[n]early every business has a need for either purification 

of water for the manufacturing process, or to clean a waste 

stream/effluent,” J.A. 125, that is, every business is a potential purchaser of hydrogen peroxide for water purification purposes. FMC’s brochure states that it sells hydrogen 

peroxide products, albeit under different trade names, to 

the food processing/packaging and drugs/cosmetics industries. Thus, substantial evidence supports the conclusion 

that at least some of the consumers would be the same.

Oxiteno argues that, even if the same institution or 

manufacturer were to purchase both products, “purchasers 

would fall in completely different departments.” Appellant’s Br. 15. While evidence that purchasing occurred 

within different departments of the same corporation is relevant, Elec. Design, 954 F.2d at 717–18, there is no record 

evidence showing that purchasing occurs here in different 

departments of the same institution. Substantial evidence 

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IN RE: OXITENO S.A. INDUSTRIA E COMERCIO 7

supports the Board’s overall likelihood of confusion determination. 

CONCLUSION

We have considered Oxiteno’s remaining arguments 

and find them unpersuasive. The Board’s decision is affirmed. 

AFFIRMED

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