Case: 22-1213 Document: 36 Page: 1 Filed: 03/09/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: OXITENO S.A. INDUSTRIA E COMERCIO,
Appellant
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2022-1213
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Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
88865509.
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Decided: March 9, 2023
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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: 2 Filed: 03/09/2023
2 IN RE: OXITENO S.A. INDUSTRIA E COMERCIO
Appellant Oxiteno S.A. Indústria e Comércio (“Ox-
iteno”) appeals a decision of the Trademark Trial and Ap-
peal Board (“Board”) affirming the Examining Attorney’s
refusal to register the mark OXIPURITY for various chem-
ical 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, diethan-
olamine, diethylene glycol monoethyl ether, ethox-
ylated castor oil, fatty alcohol ethoxylated, fatty
amine ethoxylates, glycerin, glyceryl monos-
tearate, mixtures of surfactants medium-chain tri-
glycerides, mineral oil, monoethanolamine, mpeg,
nonylphenol ethoxylates, oleochemical products,
petrolatum, phenoxyethanol, phosphate ester, po-
laxamer, polyethylene glycol, polyoxyethylene, al-
kyl ethers, polyoxyethylene, castor oil derivatives,
polyoxyethylene, sorbitan fatty acid esters, polyox-
yethylene stearates, sodium lauryl sulfate, sol-
vents, sorbitan esters (sorbitan fatty acid esters),
sorbitan esters ethoxylated, stearic acid, stearyl al-
cohol andtriethanolamine, for use in the manufac-
ture of additives, pharmaceutical auxiliary,
emulsifier, dispersant, humectant, adjuvant and
solvents; all of the aforementioned products for use
Case: 22-1213 Document: 36 Page: 3 Filed: 03/09/2023
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 reg-
istration and the application were not identical, the Exam-
ining Attorney found the goods to be related based on third-
party 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, sim-
ilarity of the marks, the Board found the marks to be “sim-
ilar 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 fra-
grance, and cosmetic fields.
J.A. 132.
Case: 22-1213 Document: 36 Page: 4 Filed: 03/09/2023
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 in-
dustries.” J.A. 9–10. The Board also relied on FMC’s bro-
chure, 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 so-
phisticated.
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 sim-
ilarity 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 Of-
fice (“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). Likeli-
hood 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 sub-
stantial evidence and the weighing of the DuPont factors
de novo.
Id.
Oxiteno’s primary contention is that the actual or po-
tential 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 prod-
ucts in the pharmaceutical, veterinary, flavor and fra-
grance, 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 po-
tential 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 es-
tablish a likelihood of confusion. The knowledge of the ac-
tual or potential purchasers potentially leading to source
confusion is not limited to knowledge generated in pur-
chase 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 chan-
nels 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 intrin-
sically 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 appli-
cant’s goods and the owner of the registered mark,” In re
Rittenhouse,
124 F.3d 228 (Fed. Cir. 1997) (unpublished ta-
ble decision) (citing 3 J. Thomas McCarthy, McCarthy on
Case: 22-1213 Document: 36 Page: 6 Filed: 03/09/2023
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.” Hewlett-
Packard 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 pur-
chase 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 po-
tential purchaser of hydrogen peroxide for water purifica-
tion purposes. FMC’s brochure states that it sells hydrogen
peroxide products, albeit under different trade names, to
the food processing/packaging and drugs/cosmetics indus-
tries. 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.” Appel-
lant’s Br. 15. While evidence that purchasing occurred
within different departments of the same corporation is rel-
evant, 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 deter-
mination.
CONCLUSION
We have considered Oxiteno’s remaining arguments
and find them unpersuasive. The Board’s decision is af-
firmed.
AFFIRMED
