Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA620020
`ESTTA Tracking number:
`08/06/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91203462
`Defendant
`Nextdoor.com, Inc.
`JENNIFER L KELLY
`FENWICK & WEST LLP
`555 CALIFORNIA STREET
`SAN FRANCISCO, CA 94104
`UNITED STATES
`trademarks@fenwick.com, jkelly@fenwick.com, gjobson@fenwick.com
`Other Motions/Papers
`Jennifer L. Kelly
`trademarks@fenwick.com, jkelly@fenwick.com, eball@fenwick.com
`/Jennifer L. Kelly/
`08/06/2014
`Reply_ISO_Notice_of_Judgment.pdf(277058 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

`
`IN THE
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the matter of
`Trademark Application Serial No. 85/236,918 for NEXTDOOR
`
`
`
`
`
`
`
`
`
`Raj Abhyanker,
`
` Opposer,
`
`
`
`vs.
`
`
`
`
`Nextdoor.com, Inc.,
`
` Applicant.
`
`
`
`
`
`
`
`
`
`
`Opposition Nos. 91203462
`and 91203762
`
`
`
`
` )
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`)
`)
`)
`)
`)
`)
`)
`)
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`NEXTDOOR.COM, INC.’S REPLY IN SUPPORT OF ITS
`NOTICE OF JUDGMENT IN FAVOR OF NEXTDOOR.COM
`AND RAJ ABHYANKER’S DISMISSAL WITH PREJUDICE OF ALL CLAIMS
`
`
`NEXTDOOR.COM, INC.’S
`REPLY ISO NOTICE OF JUDGMENT AND
`REQUEST TO TERMINATE OPPOSITIONS
`Mark: NEXTDOOR
`Opposition Nos. 91203462 and 91203762
`
`

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`I.
`
`INTRODUCTION
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`Opposer Raj Abhyanker’s response to Applicant Nextdoor.com’s Notice of Judgment
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`ignores the consequence of: (1) the District Court’s Judgment against Opposer; (2) Opposer’s
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`dismissal with prejudice of all trademark claims against Nextdoor.com; and (3) Opposer’s
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`representations to the District Court regarding this TTAB proceeding.
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`First, Opposer concedes that he has no basis to assert a claim in the NEXTDOOR mark
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`against Nextdoor.com’s application for the NEXTDOOR mark. See Dkt. No. 20 at 2. Second,
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`there is no dispute that Opposer dismissed with prejudice all claims based on his purported
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`FATDOOR marks against Nextdoor.com’s application for the NEXTDOOR mark. Id.
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`(conceding that “Applicant is correct in asserting that Opposer’s claims in the Civil Action have
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`been dismissed with prejudice, and that all claims regarding ownership of the NEXTDOOR mark
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`have been resolved in Applicant’s favor…”). Opposer lost all his claims in the District Court
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`litigation. He has no more rights in his purported NEXTDOOR or FATDOOR marks to assert
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`against Nextdoor.com.
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`Third, and most significantly, Opposer already conceded that the parties had resolved
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`each of Opposer’s claims in the District Court litigation, rendering it appropriate for
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`proceedings to resume in the TTAB. As recently as June 19, 2014, Opposer notified the District
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`Court that: “because of the Court’s Judgment confirming Nextdoor.com’s right to the
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`NEXTDOOR mark [Dkt. Nos. 192-193] and Abhyanker’s dismissal of all claims [Dkt. No. 226],
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`the parties are required to notify the TTAB of the resolution of Abhyanker’s claims so that the
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`1
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`NEXTDOOR.COM, INC.’S
`REPLY ISO NOTICE OF JUDGMENT AND
`REQUEST TO TERMINATE OPPOSITIONS
`Mark: NEXTDOOR
`Opposition No. 91203462
`
`
`
`

`
`TTAB proceedings can resume and Nextdoor.com’s application for the NEXTDOOR mark can
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`proceed to registration.” See Dkt. No. 19, Ex. C at 12. Opposer does not dispute this admission.
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`Knowing that he has no valid basis to continue to block Nextdoor.com’s trademark
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`application, Opposer latches onto two thin reeds. First, Opposer claims that the Board should
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`wait until the time for an appeal has run before resuming the Opposition. The time for appeal
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`has now expired. Fed. R. App. P. 4 (providing a party thirty days to appeal a judgment or order).
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`Opposer did not appeal either the District Court’s May 16, 2014 Judgment (Dkt. No. 19, Ex. A)
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`or the District Court’s June 19, 2014 Order (Dkt. No. 19, Ex. B). This is because there was
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`nothing to appeal. Opposer stipulated to both the District Court’s Judgment and Order
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`dismissing with prejudice all trademark claims against Nextdoor.com. Opposer cannot appeal
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`his own stipulation. Second, Opposer turns the analysis upside down by claiming that
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`Nextdoor.com’s affirmative claims against the Opposer should delay Nextdoor.com’s pursuit of
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`its registration. But Nextdoor.com’s claims against Opposer are not at issue in this TTAB
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`opposition. Opposer offers no basis for why Nextdoor.com should have to wait for its
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`registration based on the independent misdeeds of Opposer.
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`Opposer’s continued pursuit of his Opposition, after losing all claims against
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`Nextdoor.com, is a baseless attempt to delay the inevitable and thwart Nextdoor.com’s imminent
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`registration of the NEXTDOOR mark. With each and every trademark claim by Opposer against
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`Nextdoor.com fully resolved, there is no further judicial economy or judicial consistency benefit
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`to a continued stay of the Opposition. Rather, as the parties already agreed: “the TTAB
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`2
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`NEXTDOOR.COM, INC.’S
`REPLY ISO NOTICE OF JUDGMENT AND
`REQUEST TO TERMINATE OPPOSITIONS
`Mark: NEXTDOOR
`Opposition No. 91203462
`
`
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`

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`proceedings can resume and Nextdoor.com’s application for the NEXTDOOR mark can proceed
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`to registration.” Dkt. No. 19, Ex. C at 12.
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`II.
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`ARGUMENT
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`A. Opposer Lost All Claims Against Nextdoor.com’s Application to Register the
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`NEXTDOOR Mark.
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`Opposer’s dismissal with prejudice of his likelihood of confusion claims regarding the
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`FATDOOR and FATDOOR GET TO KNOW YOUR NEIGHBORS marks bars his continued
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`pursuit of his oppositions against Nextdoor.com.1 Specifically, the res judicata doctrine protects
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`a party’s reasonable expectations as to the finality of judgments and protects against duplicative
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`proceedings. See Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 (1979). At its core, res
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`judicata ensures that “a judgment on the merits in a prior suit bars a second suit involving the
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`same parties or their privies based on the same cause of action.” Jet, Inc. v. Sewage Aeration
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`Systems, 223 F.3d 1360, 1362 (Fed. Cir. 2000), quoting Parklane Hosiery, 439 U.S. at 326; see
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`Lawlor v. National Screen Serv. Corp., 349 U.S. 322, 326 (1955).
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`Even more, the res judicata doctrine bars relitigation of claims in an administrative
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`tribunal (e.g. the TTAB) in the same way, and to the same extent, that it bars relitigation in a
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`federal court. “The evils of vexatious litigation and waste of resources are no less serious
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`
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`1 Opposer originally based his oppositions on his alleged rights in the NEXTDOOR and
`FATDOOR marks. Opposer’s response concedes that he has no basis to assert any further rights
`in the NEXTDOOR mark. See, e.g., Dkt. No. 20 at 2 (conceding that “Applicant is correct in
`asserting that Opposer’s claims in the Civil Action have been dismissed with prejudice, and that
`all claims regarding ownership of the NEXTDOOR mark have been resolved in Applicant’s
`favor…”). Given Opposer’s concessions, the focus of this reply is on Opposer’s assertion of
`rights in the FATDOOR marks.
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`3
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`NEXTDOOR.COM, INC.’S
`REPLY ISO NOTICE OF JUDGMENT AND
`REQUEST TO TERMINATE OPPOSITIONS
`Mark: NEXTDOOR
`Opposition No. 91203462
`
`
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`

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`because the second proceeding is before an administrative tribunal.” Young Engineers, Inc. v.
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`U.S. Intern. Trade Com’n, 721 F.2d 1305, 1315 (Fed. Cir. 1983); see Nasalok Coating Corp. v.
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`Nylok Corp., 522 F.3d 1320 (Fed. Cir. 2008) (affirming dismissal of trademark cancellation
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`proceedings on res judicata grounds following district court litigation).
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`The Federal Circuit has outlined a three-part test for application of the res judicata
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`doctrine. There must be (1) identity of parties; (2) an earlier final judgment on the merits of a
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`claim; and (3) a “second claim [that] is based on the same set of transactional facts as the first.”
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`Jet, Inc., 223 F.3d at 1362. Each prong of this test is met here.
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`First, the parties to the District Court litigation and this TTAB proceeding are identical.
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`Opposer here was counterclaim-plaintiff in the District Court. Applicant Nextdoor.com here was
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`the counterclaim-defendant in the District Court.
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`Second, Opposer’s agreement to a stipulation and order dismissing with prejudice his
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`likelihood of confusion claims in the District Court litigation is an adjudication of the merits. See
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`Peterson v. U.S., No. 08-406 T, 2009 WL 1979263, *7 (Fed. Cl. 2009), appeal dismissed, No.
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`2009-5126, 2009 WL 3832547 (Fed. Cir. 2009), citing Scott Aviation v. U.S., 953 F.2d 1377,
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`1378 (Fed. Cir. 1992) (“[a] dismissal with prejudice effectively renders an adjudication on the
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`merits”).2 Having bargained for, and received, dismissal of the District Court litigation with
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`
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`2 See also, Stewart v. U.S. Bancorp, 297 F.3d 953, 956 (9th Cir. 2002) (The phrase “final
`judgment on the merits” is often used interchangeably with “dismissal with prejudice.”);
`Intermedics, Inc. v. Ventritex, Inc., 775 F. Supp. 1258, 1262-63 (N.D. Cal. 1991) (finding that a
`“voluntary dismissal, with prejudice, entered by stipulation of the parties, is considered a final
`judgment on the merits for purposes of res judicata”) citing Eichman v. Fotomat Corp., 759 F.2d
`1434, 1438-39 (9th Cir.1985).
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`4
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`NEXTDOOR.COM, INC.’S
`REPLY ISO NOTICE OF JUDGMENT AND
`REQUEST TO TERMINATE OPPOSITIONS
`Mark: NEXTDOOR
`Opposition No. 91203462
`
`
`
`

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`prejudice, Opposer is barred from seeking to overturn that result. He certainly cannot revive his
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`claim in this TTAB proceeding. Lawlor v. National Screen Service Corp., 349 U.S. 322, 327
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`(1955) (holding that a lawsuit, dismissed with prejudice pursuant to a settlement agreement,
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`“bars a later suit on the same cause of action”).
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`Third, Opposer’s claims here are based on “the same set of transactional facts” as his
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`District Court counterclaims. For purposes of this analysis, the Federal Circuit looks to the test
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`in the Restatement (Second) of Judgments (“Restatement”) § 24, which confirms that res
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`judicata principles extinguish “all rights of the plaintiff to remedies against the defendant with
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`respect to all or any part of the transaction, or series of connected transactions, out of which the
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`action arose.” Young Engineers, 721 F.2d at 1314 (quoting Restatement, § 24(1)).
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`
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`In Zoba Int’l. Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106 (TTAB
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`2011), the Board addressed the very issue at the heart of the dispute in this matter. There, as is
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`the case here, the Petitioner/Opposer had asserted counterclaims against the Registrant/Applicant
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`in District Court litigation. In both the TTAB proceedings and the District Court proceedings,
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`the Petitioner based his claims on the same marks or “the same, or nearly the same, factual
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`allegations as those asserted in these proceedings.” Jet Inc., 223 F.3d at 1363, reh’g and reh’g
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`en banc denied (Sept. 28, 2000). Then, the Petitioner agreed to a stipulation and order
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`dismissing its counterclaims with prejudice. With these facts, the Board applied the res judicata
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`doctrine and barred Petitioner from reasserting his dismissed District Court claims in the TTAB
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`proceeding. Zoba Int’l. Corp., 98 USPQ2d at 1106.
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`5
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`NEXTDOOR.COM, INC.’S
`REPLY ISO NOTICE OF JUDGMENT AND
`REQUEST TO TERMINATE OPPOSITIONS
`Mark: NEXTDOOR
`Opposition No. 91203462
`
`
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`

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`The same result should occur here. Opposer asserted the same FATDOOR and
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`FATDOOR GET TO KNOW YOUR NEIGHBORS marks in the District Court litigation as he’s
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`asserting in this TTAB proceeding. Compare Exhibit 1, ¶¶ 164-1733 with Dkt. No. 11
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`(Opposer’s Amended Opposition). He’s asserting these marks against the same NEXTDOOR
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`application at issue in the District Court and TTAB. Compare Exhibit 1, ¶¶ 174-186 with Dkt.
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`No. 11. And he’s asserting the same claim of a likelihood of confusion between the parties’
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`marks. Compare Exhibit 1, ¶¶ 164-186 with Dkt. No. 11. Indeed, Opposer did not merely
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`reference these marks generally. He specifically asserted that his FATDOOR and FATDOOR
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`GET TO KNOW YOUR NEIGHBORS trademark applications, including each of the goods and
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`services associated therewith, was likely to be confused with Nextdoor.com’s application for the
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`NEXTDOOR mark and its goods and services. There is a complete similarity of the parties,
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`marks, applications and allegations by Opposer in both proceedings. Accordingly, Opposer is
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`barred from reasserting his likelihood of confusion claims based on the FATDOOR and
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`FATDOOR GET TO KNOW YOUR NEIGHBORS marks. Any further assertion of these
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`claims by Opposer would ignore the District Court’s rulings and waste the parties’ and Board’s
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`resources.
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`Since Opposer has no basis to assert a claim, Nextdoor.com requests, pursuant to TBMP
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`510.02(b), that the Board dismiss Opposition Nos. 91203462 and 91203762 with prejudice and
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`
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`3 Attached hereto as Exhibit 1 is a true and correct copy of Opposer’s Second Amended
`Complaint. On December 12, 2013, the District Court issued an order accepting Exhibit A to
`Exhibit 1 as Opposer’s operative complaint in the District Court litigation. The Court has since
`dismissed each of Opposer’s claims in Exhibit A to Exhibit 1.
`6
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`NEXTDOOR.COM, INC.’S
`REPLY ISO NOTICE OF JUDGMENT AND
`REQUEST TO TERMINATE OPPOSITIONS
`Mark: NEXTDOOR
`Opposition No. 91203462
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`
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`

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`enter a Judgment in Nextdoor.com’s favor so that Nextdoor.com’s Application Serial No.
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`85/236,918 for the NEXTDOOR mark may proceed to registration.
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`B. Opposer Cannot Appeal His Own Stipulation to Dismiss Each of His Claims
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`The time for appeals has expired and Opposer did not appeal the District Court’s
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`Judgment or Order dismissing with prejudice each of his claims against Nextdoor.com’s
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`application for the NEXTDOOR mark. See Fed. R. App. P. 4. Rather than appeal, Opposer
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`stipulated to both the District Court’s Judgment and Order. See Dkt. No. 19, Exs. A and B.
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`Even more, after stipulating to the District Court’s rulings, Opposer confirmed the impact of
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`these rulings on the TTAB proceedings. Specifically, Opposer represented that because of the
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`District Court’s rulings, “the TTAB proceedings can resume and Nextdoor.com’s application for
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`the NEXTDOOR mark can proceed to registration.” See Dkt. No. 19, Ex. C. Opposer cannot
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`now go back on his word. Having stipulated away his claims, there is nothing left to appeal.
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`C. Nextdoor.com’s Remaining Claims Against Opposer Are Not At Issue in this
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`TTAB Proceeding
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`Opposer has offered no basis for his assertion that Nextdoor.com’s independent claims
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`against Opposer should delay the progress of Nextdoor.com’s trademark application. First,
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`Opposer should not be able to use his own misdeeds to thwart Nextdoor.com’s rightful pursuit of
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`its mark. Opposer agrees. In filing the parties’ motion to suspend the opposition proceedings,
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`the parties emphasized that Nextdoor.com’s cybersquatting claims against Opposer are not at
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`issue in the Board proceedings. See Dkt. No. 14 at 6. Second, Nextdoor.com’s use of its
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`7
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`NEXTDOOR.COM, INC.’S
`REPLY ISO NOTICE OF JUDGMENT AND
`REQUEST TO TERMINATE OPPOSITIONS
`Mark: NEXTDOOR
`Opposition No. 91203462
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`
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`

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`NEXTDOOR mark is not at issue in these opposition proceedings. The Board only addresses
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`likelihood of confusion between the parties’ applications and registrations; not the use of those
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`marks in commerce. General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d
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`1584, 1591 (TTAB 2011) (holding that the Board has no authority to determine the right to use,
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`or the broader questions of infringement, unfair competition, damages or injunctive relief).
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`Third, the Board has no power to issue a declaratory judgment regarding use or registration of
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`marks. Kelly Services Inc. v. Greene's Temps. Inc., 25 USPQ2d 1460, 1464 (TTAB 1992)
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`(finding that the Board is not empowered to render a declaratory judgment). Thus, any
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`remaining declaratory judgment claim against Opposer before the District Court should not
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`delay registration of Nextdoor’s NEXTDOOR mark.
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`Here, the only issue the Board can address—whether there is a likelihood of confusion
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`between Opposer’s mark and Nextdoor.com’s NEXTDOOR mark—has already been decided by
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`the District Court. See Dkt. No. 19, Exs. A and B (attaching the District Court’s two rulings,
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`which dismiss with prejudice each of Opposer’s claims against Nextdoor.com and its application
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`for the NEXTDOOR mark).
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`III. CONCLUSION
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`The District Court dismissed with prejudice each of Opposer’s claims against the
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`NEXTDOOR application. There are no issues of confusion left for the Board to decide. And
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`Opposer has no valid basis for reasserting his fully resolved claims in the TTAB. Without any
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`claims to assert, Opposer has latched onto the current stay as his last hope to delay
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`8
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`NEXTDOOR.COM, INC.’S
`REPLY ISO NOTICE OF JUDGMENT AND
`REQUEST TO TERMINATE OPPOSITIONS
`Mark: NEXTDOOR
`Opposition No. 91203462
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`

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`Nextdoor.com’s registration. The Board should not appease such tactics. After more than two
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`and a half years, it is time for these proceedings to end, and for Nextdoor.com’s application for
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`/Jennifer L. Kelly/
`Jennifer Kelly, Esq.
`FENWICK & WEST LLP
`555 California Street
`San Francisco, California 94104
`Tel: (415) 875-2300
`Attorneys for Applicant
`Nextdoor.com, Inc.
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`the NEXTDOOR mark to proceed to registration.
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`Dated: August 6, 2014
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`By:
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`9
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`NEXTDOOR.COM, INC.’S
`REPLY ISO NOTICE OF JUDGMENT AND
`REQUEST TO TERMINATE OPPOSITIONS
`Mark: NEXTDOOR
`Opposition No. 91203462
`
`
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`

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`CERTIFICATE OF SERVICE
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`
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`I declare that:
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`I am employed in the County of Santa Clara, California.
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`I am over the age of eighteen years and not a party to the within cause. My
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`business address is Fenwick & West LLP, Silicon Valley Center, 801 California Street,
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`Mountain View, CA 94041. On the date set forth below, I served the within
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`NEXTDOOR.COM, INC.’S REPLY IN SUPPORT OF ITS NOTICE OF JUDGMENT IN
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`FAVOR OF NEXTDOOR.COM AND RAJ ABHYANKER’S DISMISSAL WITH
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`PREJUDICE OF ALL CLAIMS on the interested parties in this action by placing a true copy
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`thereof enclosed in a sealed envelope with postage thereon fully prepaid, and causing it to be
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`placed for first class delivery by the U.S. Postal Service, which envelope was addressed as
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`Kuscha Hatami, Esq.
`Raj Abhyanker, P.C.
`1580 W. El Camino Real, Suite 13
`Mountain View, CA 94040
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` declare under penalty of perjury that the foregoing is true and correct, and that
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` I
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`follows:
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`this declaration was executed at Mountain View, California, this 6th, day of August, 2014.
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`/Deborah A. Shaw/
` Deborah A. Shaw
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`10
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`NEXTDOOR.COM, INC.’S
`REPLY ISO NOTICE OF JUDGMENT AND
`REQUEST TO TERMINATE OPPOSITIONS
`Mark: NEXTDOOR
`Opposition No. 91203462
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`EXHIBIT 1
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`EXHIBIT 1EXHIBIT 1
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`

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`Case3:12-cv-05667-EMC Document132 Filed12/05/13 Page1 of 92
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`
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`BRUNO W. TARABICHI, CA State Bar No. 215129
`bruno@legalforcelaw.com
`HEATHER R. NORTON, CA State Bar No. 257014
`heather@legalforcelaw.com
`ROY MONTGOMERY, CA State Bar No. 279531
`roy@legalforcelaw.com
`LEGALFORCE RAJ ABHYANKER, P.C.
`1580 W. El Camino Real, Suite 13
`Mountain View, California 94040
`Telephone: 650.965.8731
`Facsimile: 650.989.2131
`
`Attorneys for Defendant
`Raj Abhyanker
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN FRANCISCO DIVISION
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`NEXTDOOR.COM, INC., a Delaware
`corporation,
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`
`Case No. 3:12-cv-05667-EMC
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`Plaintiff,
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`vs.
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`RAJ ABHYANKER, an individual,
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`DEFENDANT AND
`COUNTERCLAIMANT RAJ
`ABHYANKER’S NOTICE REGARDING
`SECOND AMENDED ANSWER AND
`COUNTERCLAIMS
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`Defendant.
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`Courtroom:
`Judge:
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`5 – 17th Floor
`Honorable Edward M. Chen
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`RAJ ABHYANKER, an individual
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`Counterclaimant,
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`vs.
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`NEXTDOOR.COM, INC., a Delaware
`corporation; PRAKASH
`JANAKIRAMAN, an individual;
`BENCHMARK CAPITAL PARTNERS,
`L.P., a Delaware limited partnership;
`BENCHMARK CAPITAL
`MANAGEMENT CO. LLC, a Delaware
`limited liability company; SANDEEP
`SOOD, an individual; MONSOON
`ENTERPRISES, INC., a California
`corporation, and DOES 1–50, inclusive;
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`Counterdefendants.
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`NOTICE RE 2ND AMENDED ANSWER
`(CASE NO. 3:12-cv-05667-EMC)
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`Case3:12-cv-05667-EMC Document132 Filed12/05/13 Page2 of 92
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`On November 21, 2013, this Court heard oral argument on Mr. Abhyanker's Motion for
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`Leave to File Second Amended Answer and Counterclaims. During the hearing, this Court
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`ordered Mr. Abhyanker to inform the Court whether his proposed Third Counterclaim for
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`infringement of an unregistered trademark would be premised solely on his common law rights in
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`the FATDOOR trademark or whether it would be premised on common law rights in both the
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`FATDOOR trademark and NEXTDOOR trademark. This Order is reflected in the Court's
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`November 22, 2013 Minute Order. ECF No. 127.
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`Pursuant to the Court's Order, Mr. Abhyanker hereby informs the Court that he intends to
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`maintain his claim for common law trademark infringement of his NEXTDOOR trademark in his
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`10
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`Third Counterclaim. In addition, Mr. Abhyanker also informs the Court of two other changes to
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`the proposed Second Amended Answer and Counterclaims, namely, the deletion of the patent
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`12
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`infringement claim and a wording change to paragraph 144. In this regard, Mr. Abhyanker has
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`attached as Exhibit A the final revised version of the Second Amended Answer and
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`Counterclaim and has attached as Exhibit B a redline showing the changes made to the Second
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`Amended Answer and Counterclaim from the last version of the pleading that was before the
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`Court during the November 21, 2013 hearing. Each of these issues is discussed in more detail
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`below.
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`I.
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`NEXTDOOR COMMON LAW TRADEMARK INFRINGEMENT
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`Mr. Abhyanker intends to pursue his counterclaim for infringement of his common law
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`rights in his unregistered NEXTDOOR trademark in the Third Counterclaim. Even with his
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`counterclaim for common law infringement of NEXTDOOR, the claim is still simply a mirror
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`claim of Nextdoor.com's affirmative declaratory claims. Specifically, Count I in Nextdoor.com's
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`Complaint seeks a declaration that Nextdoor.com does not infringement Mr. Abhyanker's rights
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`in NEXTDOOR. ECF No. 1, ¶¶ 57-59.
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`In addition, Mr. Abhyanker has revised the title of the Third Counterclaim from "False
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`Designation of Origin" to "Infringement of an Unregistered Trademark" because Nextdoor.com's
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`counsel believes that the two are different. In any event, because Mr. Abhaynker's claim is
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`simply a claim for an infringement of an unregistered trademark, the counterclaim was revised to
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`NOTICE RE 2ND AMENDED ANSWER
`CASE NO. 3:12-cv-05667-EMC
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`make that even clearer.
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`II.
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`DELETION OF PATENT INFRINGEMENT CLAIM
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`On November 21, 2013, Nextdoor.com filed a Rule 11 Motion for Sanctions alleging that
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`Mr. Abhyanker's proposed patent infringement claim is frivolous. ECF No. 125. However,
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`Nextdoor.com filed the Rule 11 Motion without providing Mr. Abhyanker with the statutorily
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`required 21 day safe harbor period. When Mr. Abhyanker's counsel informed Nextdoor.com's
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`counsel of this procedural deficiency, Nextdoor.com withdrew the deficient Rule 11 Motion.
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`ECF No. 130.
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`to Amend and during oral argument, Mr. Abhyaner firmly believes that his patent infringement
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`claim is not only not frivolous but that Nextdoor.com is liable for patent infringement. However,
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`during oral argument, the Court expressed its reluctance to permit Mr. Abhyanker to add the
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`claim at this juncture. As such, it appears that, in any event, leave to amend to add this claim will
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`not be permitted.
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`Accordingly, Mr. Abhyanker will continue his due diligence regarding Nextdoor.com's
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`infringement of his patent and assert it in a separate lawsuit as appropriate rather than opposing
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`Nextdoor.com's frivolous Rule 11 Motion. As such, the proposed Second Amended Answer and
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`Counterclaims attached as Exhibit A has been revised to delete the patent infringement
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`counterclaim.
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`III. REVISION TO ALLEGATION IN PARAGRAPH 144
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`Finally, at Nextdoor.com's request, Mr. Abhyanker has made a small revision to the
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`language in Paragraph 144 of the proposed Second Amended Answer and Counterclaims.
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`Previously, Paragraph 144 alleged on information and belief that Nirav Tolia and Prakash
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`Janakiraman looked through the electronic archives at Benchmark. As revised, Paragraph 144
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`alleges on information and belief that Nirav Tolia and Prakash Janakirman had the capability of
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`reviewing confidential pitch information at Benchmark.
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`***
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`In conclusion, Mr. Abhyanker respectfully requests that he be allowed to file the proposed
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`NOTICE RE 2ND AMENDED ANSWER
`CASE NO. 3:12-cv-05667-EMC
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`Second Amended Answer and Counterclaims attached as Exhibit A hereto or that the Court deem
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`it filed.
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`Dated: December 5, 2013
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`Respectfully submitted,
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`LEGALFORCE RAJ ABHYANKER, P.C.
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`By
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`/s/
`Bruno W. Tarabichi
`Heather R. Norton
`Roy Montgomery
`Attorneys for Defendant
`Raj Abhyanker
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`NOTICE RE 2ND AMENDED ANSWER
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`EXHIBIT A
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`NOTICE RE 2ND AMENDED ANSWER
`CASE NO. 3:12-cv-05667-EMC
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`BRUNO W. TARABICHI, CA State Bar No. 215129
`bruno@legalforcelaw.com
`HEATHER R. NORTON, CA State Bar No. 257014
`heather@legalforcelaw.com
`ROY MONTGOMERY, CA State Bar No. 279531
`roy@legalforcelaw.com
`LEGALFORCE RAJ ABHYANKER, P.C.
`1580 W. El Camino Real, Suite 13
`Mountain View, California 94040
`Telephone: 650.965.8731
`Facsimile: 650.989.2131
`
`
`Attorneys for Defendant
`Raj Abhyanker
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN FRANCISCO DIVISION
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`NEXTDOOR.COM, INC., a Delaware
`corporation,
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`
`Case No. 3:12-cv-05667-EMC
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`Plaintiff,
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`vs.
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`DEFENDANT RAJ ABHYANKER'S
`[PROPOSED] SECOND AMENDED
`ANSWER AND COUNTERCLAIMS FOR
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`1. TRADE SECRET
`MISAPPROPRIATION
`2. TRADEMARK INFRINGEMENT
`3. INFRINGEMENT OF UNREGISTERED
`TRADEMARK
`4. CALIFORNIA UNFAIR
`COMPETITION
`
`DEMAND FOR JURY TRIAL
`
`Case Filed: November 5, 2012
`Judge:
`Honorable Edward M. Chen
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`RAJ ABHYANKER, an individual,
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`Defendant.
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`RAJ ABHYANKER, an individual
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`Counterclaimant,
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`vs.
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`NEXTDOOR.COM, INC., a Delaware
`corporation; PRAKASH
`JANAKIRAMAN, an individual;
`BENCHMARK CAPITAL PARTNERS,
`L.P., a Delaware limited partnership;
`BENCHMARK CAPITAL
`MANAGEMENT CO. LLC, a Delaware
`limited liability company; SANDEEP
`SOOD, an individual; MONSOON
`ENTERPRISES, INC., a California
`corporation, and DOES 1–50, inclusive;
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`Counterdefendants.
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`[PROPOSED] SECOND AMENDED
`ANSWER & COUNTERCLAIM
`(CASE NO. 3:12-cv-05667-EMC)
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`Defendant Raj Abhyanker (“Abhyanker”), through his attorneys, hereby answers Plaintiff
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`Nextdoor.com, Inc.’s (“Nextdoor.com”) Complaint as follows:
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`The Nature of the Action
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`1.
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`In response to paragraph 1, Abhyanker denies each and every allegation in
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`paragraph 1.
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`2.
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`In response to paragraph 2, Abhyanker denies each and every allegation in
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`paragraph 2.
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`3.
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`In response to paragraph 3, Abhyanker denies each and every allegation in
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`paragraph 3.
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`4.
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`In response to paragraph 4, Abhyanker denies each and every allegation in
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`paragraph 4.
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`5.
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`In response to paragraph 5, Abhyanker denies each and every allegation in
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`paragraph 5.
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`Parties
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`6.
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`In response to paragraph 6, Abhyanker responds that he lacks knowledge or
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`information sufficient to form a belief about the truth of the allegations in paragraph 6 and,
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`therefore, denies each and every allegation in paragraph 6.
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`7.
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`In response to paragraph 7, Abhyanker admits the allegations in paragraph 7.
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`Jurisdiction and Venue
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`8.
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`In response to paragraph 8, Abhyanker denies that any conduct or omission giving
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`rise to any claims against him has occurred. Abhyanker further responds that Nextdoor.com’s
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`allegations in paragraph 8 are legal conclusions and jurisdictional allegations that do not require a
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`response.
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`9.
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`In response to paragraph 9, Abhyanker denies that any conduct or omission giving
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`rise to any claims against him has occurred. Abhyanker further responds that Nextdoor.com’s
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`allegations in paragraph 9 are legal conclusions and jurisdictional allegations that do not require a
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`response.
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`[PROPOSED] SECOND AMENDED
`ANSWER & COUNTERCLAIM
`(case no. 3:12-cv-05667-EMC)
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`10.
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`In response to paragraph 10, Abhyanker admits that he resides and conducts
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`business in this judicial district and is subject to personal jurisdiction in this judicial district.
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`Except as expressly admitted, Abhyanker denies each and every allegation in paragraph 10.
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`Intradistrict Assignment
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`11.
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`In response to paragraph 11, Abhyanker denies each and every allegation in
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`paragraph 11.
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`General Allegations
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`12.
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`In response to paragraph 12, Abhyanker responds that he lacks knowledge or
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`information sufficient to form a belief about the truth of the allegations in paragraph 12 and,
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`therefore, denies each and every allegation in paragraph 12.
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`13.
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`In response to paragraph 13, Abhyanker responds that he lacks knowledge or
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`information sufficient to form a belief about the truth of the allegations in paragraph 13 and,
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`therefore, denies each and every allegation in paragraph 13.
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`14.
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`In response to paragraph 14, Abhyanker denies each and every allegation in
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`paragraph 14.
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`15.
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`In response to paragraph 15, Abhyanker denies each and every allegation in
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`paragraph 15.
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`16.
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`In response to paragraph 16, Abhyanker responds that he lacks knowledge or
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`information sufficient to form a belief about the truth of the allegations in paragraph 16 and,
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`therefore, denies each and every allegation in paragraph 16.
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`17.
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`In response to paragraph 17, Abhyanker denies each and every allegation in
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`paragraph 17.
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`18.
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`In response to paragraph 18, Abhyanker responds that he lacks knowledge or
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`information sufficient to form a belief about the truth of the allegations in paragraph 18 and,
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`therefore, denies each and every allegation in paragraph 18.
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`[PROPOSED] SECOND AMENDED
`ANSWER & COUNTERCLAIM
`(case no. 3:12-cv-05667-EMC)
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`19.
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`In response to paragraph 19, Abhyanker responds that he lacks know