United States Court of Customs and Patent Appeals

“ On October 24, 1968, subsequent to the October 9 deadline, appellant submitted what it termed "Opposer's Record" which was a collection of documents comprising an affidavit executed by Basciani on October 9 indicating the adoption, as his testimony, of the discovery deposition taken by appellee, a transcript of that deposition, a series of exhibits, and an alleged stipulation *998 by the parties concerning the accuracy of certain of the exhibits. On the following day, October 25, 1968, the Patent Office prepared the letter which now rests at the heart of the controversy. ”

“ In response to the show cause order, appellant made various arguments to the effect that the deposition was not really a discovery deposition and that opposer should not be deprived of its cause of action purely on procedural technicalities, and alleged that appellant corporation was financially incapable of undergoing further expense. ”

“ The board found that when considered in their entireties, applicant's mark so resembles opposer's HOLIDAY that there would be a likelihood of confusion or mistake. The board adhered to its decision on reconsideration. We affirm. ”

“ Aside from the fact the discovery deposition was untimely filed and was not accompanied by a notice of reliance thereon, opposer is not a proper party under subparagraphs d (1) , (2) and (4) of Rule 26. Opposer is not the party intended by the rule to use the deposition taken by its adversary.
The attorney-examiner thus granted appellee's motion to strike the "record" on several grounds under Rule 2.120 as well as on the ground that the deposition was defective under Rule 1.276 as noted in the letter. ”

“ Where the appeal is predicated on the failure to receive notice, the particular factual setting is critical, and Beecham Products does not state a flat rule, as urged by appellant, that a failure to receive a paper from the Patent Office will lead to a reversal of the board's decision by this court. ”

“ In a supplemental brief, appellant further pressed the argument stating: Appellant repeatedly made the point before the Patent Office that a certain Notice dated October 25, 1968, was never communicated to it. To this date that Notice has not been communicated to Appellant. A copy of that so-called Notice has been reproduced in the transcript herein. * *
It is fatal to any administrative proceeding to take an action, procedural or substantive, against a particular party without communicating a Notice to that party. ”

“ These things happen, and unless the facts are reasonably certain, responsibility should not be haphazardly assigned. [3]
[2] For the reasons we have set forth, we affirm the board's decision. This leaves two matters for consideration. First, appellee has moved to strike from the record before this court certain parts of the "Opposer's Record" certified hereto by the Patent Office at appellant's instance. Judge Baldwin denied appellee's motion without prejudice to renewal at oral hearing, and it was so renewed. We now deny appellee's motion with prejudice. ”