Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA630990
`ESTTA Tracking number:
`10/03/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91203462
`Plaintiff
`Raj Abhyanker
`KUSCHA HATAMI
`RAJ ABHYANKER PC
`1580 W EL CAMINO REAL, STE 13
`MOUNTAIN VIEW, CA 94040
`UNITED STATES
`kuscha@legalforcelaw.com, michelle@legalforcelaw.com
`Other Motions/Papers
`Kuscha Hatami
`kuscha@legalforcelaw.com, arun@legalforcelaw.com
`/Kuscha Hatami/
`10/03/2014
`Final Opposer Response Supplemental Brief.pdf(3719809 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`
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`Opposition Nos. 91214783 and 91203462
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`
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`Mark(s): NEXTDOOR
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`
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`Serial No. 85/236,918
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`
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`Published: January 10, 2012
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`
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`RAJ ABHYANKER
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`Opposers,
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`v.
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`NEXTDOOR.COM INC.,
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`Applicant.
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`
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`OPPOSER’S OPPOSITION RESPONSE TO APPLICANT NEXTDOOR.COM,
`INC.’S SUPPLEMENTAL BRIEF IN SUPPORT OF ITS
`NOTICE OF JUDGMENT IN FAVOR OF NEXTDOOR.COM AND
`RAJ ABHYANKER’S DISMISSAL WITH PREJUDICE OF ALL CLAIMS
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`On November 6, 2012, the Board stayed Opposition Nos. 91203462 and 91203762
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`pursuant to a “CONSENTED MOTION TO SUSPEND PENDING TERMINATION OF
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`RELATED FEDERAL TRADEMARK LITIGATION” between the parties: Nextdoor.com. Inc.
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`v. Raj Abhyanker, Case No. CV-12-5667 (the “Civil Action”). Specifically, the proceeding was
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`stayed until the parties, in the Civil Action, resolve the following four Issues:
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` COUNT I: Declaratory Judgment Under 28 U.S.C. § 2201 whether Nextdoor.com Inc.
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`
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`(“Nextdoor”) is lawfully using the NEXTDOOR Mark and has priority of use of the
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` NEXTDOOR Mark;
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` COUNT II: Declaratory Judgment Under 28 U.S.C. § 2201 whether Nextdoor is
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`lawfully using the NEXTDOOR Mark and is not committing infringement onto
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` Opposer’s FATDOOR Mark;
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`1 
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` COUNT III: Whether Opposer is in Violation of 15 U.S.C.A. § 1125(d)(1) for
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` allegations of Cyberpiracy; and
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` COUNT IV: Whether Opposer is in Violation of 15 U.S.C.A. § 1125(A) for
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` allegations of violations of the Lanham Act.
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`See Exhibit A.
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`
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`Subsequently, Applicant is now improperly attempting to assert that a dismissal of this
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`proceeding is warranted based on a dismissal of Count I in the Civil Action, and a recent order
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`by the same Court dismissing Count II, all while admitting that Nextdoor still has two pending
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`claims in the Civil Action, specifically, Counts III, for cyberpiracy, and Counts IV, for violations
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`of the Lanham Act. See Exhibit B at 2, Footnote 1.
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`I. Background
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`
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`On August 11, 2014, Applicant, in the Civil Action, filed its Motion to Dismiss its claims
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`for declaratory relief. See Exhibit C.
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`On September 11, 2014, Applicant, in the Civil Action, preemptively to any ruling on its
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`August 11 motion, filed a Motion for Summary Judgment as to Counts II and IV. See Exhibit D.
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`On September 19, 2014, in the Civil Action, the Court issued an order granting
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`Applicant’s Motion to Dismiss Count II without prejudice. See Exhibit E.
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`On September 26, 2014, in the Civil Action, Opposer filed its response to Applicant’s
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`motion for summary judgment on Counts II and IV. See Exhibit F.
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`On October 2 and 3, 2014, in the Civil Action, Applicant filed its Reply in support of its
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`Motion for Summary Judgment and its Administrative Motion to Seal Portions of Its Reply. See
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`Exhibit G.
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`2 
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`In sum, Applicant’s attempt to dismiss this proceeding based on the “without prejudice”
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`dismissal of Count II in the Civil Action, in spite of the fact that half of Applicant’s counts in the
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`Civil Action are yet to be adjudicated, is improper and in bad faith.
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`II. APPLICANT HAS IMPROPERLY AND IN BAD FAITH INTERPRETED
`THE CIVIL COURTS SEPTEMBER 19 ORDER DISMISSING COUNT II OF
`THE CIVIL ACTION
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`Applicant wants the board to believe that simply because the Court in the Civil Action
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`dismissed Applicant’s count II without prejudice, Opposer has lost all claims against Nextdoor or
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`the Nextdoor mark.
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`Applicant dubiously interprets this development to signify that all of Opposer’s claims
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`against Applicant have been adjudicated on the merits, however, Applicant fails to note that the
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`Court’s order was specific only to Applicants Motion to Dismiss, and Opposer’s voluntary
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`dismissal of his counter claims. The Court did not resolve the remaining claims in the Civil
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`Action or otherwise in dispute.
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`Moreover, Applicant indecorously wants the Board to accept that the Court rejected
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`Opposer’s TTAB claims as “mistaken and irrelevant”, yet suspiciously fails to note that the
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`counter arguments referenced do not revolve around this TTAB proceeding, but rather,
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`Opposer’s arguments that (a) Opposer still may bring claims against other infringing conduct,
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`specifically, future infringement by Applicant and other parties, and (b) that a licensee of
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`Opposer’s FATDOOR Mark could enforce the same trademark rights against Applicant, both in
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`reference to the at issue Declaratory Relief that Applicant was pursuing a dismissal off. See
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`Exhibit E at 3 and 4. The rights of licensees of Opposer's mark in relation to Applicant's rights
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`are still at issue, as well as issues regarding infringement of downstream users of Applicant's
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`3 
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`mark, to which the present matter before the Board can adequately address in terms of likelihood
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`of confusion and rights to the marks as listed in the subject applications and registration.
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`Even interpreting Applicant’s flawed assertion that “the TTAB matter did not leave an
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`issue open that permitted declaratory relief”, most favorable to Applicant, this does not preclude
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`the Board from resolving the still pending issues as to whether Applicant’s NEXTDOOR Mark is
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`confusingly similar to Opposer’s FATDOOR Marks, and/or, whether preclusion is warranted in
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`light of the fact that the Court’s September 19 Order solely based on Opposer’s voluntary
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`dismissal of his counter claims in the Civil Action and not an analysis of whether the at issue
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`Marks of the respective parties are sufficiently similar for likelihood of confusion. Specifically,
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`having dismissed COUNT II without prejudice does not resolve the controversy as to confusion
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`between the at issue marks and any future disputes by the parties and/or licensees of Opposer.
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`Since the Court’s order is merely predicated on Opposer’s voluntary dismissal, rather than
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`adjudication on the merits, future claims for, by way of example, likelihood of confusion,
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`declaratory relief, and/or fraud remain ripe. Thus, final adjudication of the remaining Civil
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`Action claims are paramount to the Board’s final decision of Counts I and II on this proceeding.
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`Therefore, in the interest of justice, Opposer respectfully requests that the Board continue the
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`stay in this proceeding.
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`III. APPLICANT ERRONEOUSLY ASSERTS THAT OPPOSER’S CLAIMS IN
`THIS PROCEEDING ARE BARRED BY THE DOCTRINE OF RES
`JUDICATA
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`By citing the TTAB, Applicant has eloquently orchestrated untenable arguments based on
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`the doctrine of res judicata for why this proceeding should be dismissed with prejudice.
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`Suspiciously, Applicant neglects to mention the Court of Appeals for the Federal Circuit’s
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`(“CAFC”) opinion regarding the effect of res judicata in Board proceedings. Specifically, in a
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`Board proceeding for likelihood of confusion under Section 2(d) of the trademark act, the CAFC
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`vacated and remanded the Board’s decision concluding that the Board erred in applying res
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`judicata and collateral estoppel arising out of prior district court litigation. Mayer Berkshire
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`Corp v. Berkshire Fashions, Inc., 424 F.3d 1229 (Fed. Cir. 2005); and Exhibit H.
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`A trademark infringement action in the district court is not automatically of preclusive
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`effect in a cancellation proceeding before the TTAB, for a claim for trademark infringement may
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`not be based on the same transactional facts as a petition to cancel a registered mark, or the facts
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`relevant to infringement may not be sufficiently applicable to trademark registration that
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`warrants preclusion. Id at 1231. In a trademark infringement action, the owner of a registered
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`mark sues for relief from the injury caused by the defendant’s actual sale, offering for sale, or
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`advertising of goods or services bearing the challenged mark, whereas an opposition to
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`registration is based on the content of the registration application. To succeed in an opposition
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`proceeding the opposer must show that “he would be damaged by the registration of a mark upon
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`the principal register….”. Id. These different causes of action thus involve different sets of
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`transactional facts, different proofs, different burdens, and different public policies. Id.
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`Registrability is not at issue in infringement litigation, and although the likelihood of
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`confusion analysis presents a “superficial similarity,” differences in transactions facts will
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`generally avoid preclusion. Id; See also Jet, Inc. v. Sewage Aeration Systems, 223 F.3d at 1360,
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`1364-65 (Fed. Cir. 2000). Furthermore, as the Federal Circuit explained and the TTAB
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`emphasized in American Hygienic Labs., Inc. v. Tiffany & Co., 228 USPQ 855, 857 (TTAB
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`1986), in an opposition proceeding “a claim of infringement before the court and a claim of
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`priority and likelihood of confusion before this Board are different claims. The former claims is,
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`in essence, a claim of injury resulting from applicant’s use of its mark in commerce; the latter
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`5 
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`claim, in essence, is a claim that opposer believes it would be damaged by registration of
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`applicant’s mark.” Mayer Berkshire Corp, 424 F.3d at 1233. Furthermore, in In re Infinity
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`Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001) the Board stated that “In
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`Board proceedings, likelihood of confusion is determined independent of the context of actual
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`usage. In an infringement action, on the other hand, the context of the use of the mark is
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`relevant.” Id. In addition, “a claim for infringement is not the same as an inter partes claim for
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`opposition or cancellation against another’s registration of a mark.” Id.
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`Thus, an opposer would not necessarily be barred by the rule of claim preclusion when it
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`lost a previous infringement claim in court.” Id; See also J.T. McCarthy, McCarthy on
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`Trademark and Unfair Competition, §32:82 at 32:143 (4th ed. 2004). Moreover, in an opposition
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`proceeding the question of likelihood of confusion requires consideration not only of what the
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`applicant has already marketed or has stated the intention to market, but of all the items for
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`which registration is sought. Mayer Berkshire Corp, 424 F.3d at 1233. In the Civil Action, the
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`issues rested on four claims brought on by Applicant, as Plaintiff, two counts for declaratory
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`relief, cyberpiracy, and violations of the Lanham act for trademark infringement by Opposer.
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`However, the stayed Opposition proceeding revolves around specific issues of likelihood of
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`confusion as to the actual goods and services offered by Applicant under its NEXTDOOR mark
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`and trademark application, which clearly were not addressed in the Civil Action, or the Court’s
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`most recent order. See Exhibit E.
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`Caution is warranted in the application of preclusion by the United States Patent and
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`Trademark Office, for the purpose of administrative trademark procedures include protecting
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`both the consuming public and the purveyors. Mayer Berkshire Corp, 424 F.3d at 1233. Thus
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`the party objecting to a registration may raise grounds not only of commercial injury to itself, but
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`6 
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`of confusion or deception or mistake to the consumer. Id. The public policy underlying the
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`principles of preclusion, whereby potentially meritorious claims may be barred from judicial
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`scrutiny, has led to hold that circumstances for preclusion “must be certain to every intent.” Id;
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`See also Russell v. Place, 94 U.S. (4 Otto) 606, 610 (1878) (denying preclusion in a patent
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`infringement case, stating that “According to Coke, an estoppel must ‘be certain to very intent;’
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`and if upon the face of a record any thing is left to conjecture as to what was necessarily
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`involved and decided, there is no estoppel in it when pleaded and nothing conclusive in it when
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`offered as evidence. “); Foster v. Hallco Mfg. Co., 947 F.2d 469, 480 (Fed. Cir. 1991) (the
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`proponent of claim preclusion bears the burden of showing that the cause of action in the two
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`suits was the same); McNellis v. First Fed. Sav. And Loan Ass’n of Rochester, New York, 364
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`F.2d 251, 251 (2d Cir. 1966) (“Finally, although the principles of res judicata should not be
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`frugally applied, cf. United States v. Munsingwear Inc., 340 U.S. 36, 38 (1950), a reasonable
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`doubt as to what was decided in the first action should preclude the drastic remedy of foreclosing
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`a party from litigating an essential issue.”).
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`As evident in the cited cases above, numerous issues are still left to conjecture, including
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`but not limited to, (a) whether Opposer has infringed on Applicant’s purported trademark rights,
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`(b) whether Opposer has committed cyberpiracy, (c) whether all of Applicant’s goods and
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`services in applicant’s application have been considered in the Court’s determination that
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`Applicant’s Count II for declaratory relief should be dismissed as to the issue of likelihood of
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`confusion between Opposer’s Marks and Applicant’s Mark, (d) whether new information
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`unveiled by virtue of expert reports in the Civil Action are dispositive as to Counts I and II in
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`this proceeding, (e) whether information in Opposer’s expert reports in the Civil Action are
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`dispositive of a potential fraud claim against Applicant, (f) whether acts of Applicant will cause
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`7 
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`confusion or deception or mistake to the consumer, (g) whether Applicant’s voluntary dismissal
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`of his counter claims are dispositive of Counts I and II in this proceeding, and (h) whether acts
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`by Applicant will damage licensees of Opposer’s trademark rights.
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`IV.
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`IN LIGHT OF THE PENDING SUMMARY JUDGMENT MOTION IN THE
`CIVIL ACTION, CONTINUING THE STAY IN THIS PROCEEDING WILL
`NOT PREJUDICE APPLICANT
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`As set forth above, Applicant filed a Motion for Summary Judgment on its Count II and
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`still pending Count IV filed on September 11, 2014 in the Civil Action. Opposer filed its
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`response on September 26, 2014, and Applicant recently filed its reply papers. See Exhibit I.
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`Hence, the Civil Action is ongoing, and there would be no prejudice to Applicant - no additional
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`costs of litigation would ensue as a result of a continued stay, nor would there be any additional
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`prejudice in regards to waste of valuable time, or otherwise because the parties are still engaged
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`in motion practice in the Civil Action germane to this proceeding.
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`V.
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`INFORMATION UNCOVERED DURING THE CIVAL ACTION IS
`SUFFICIENT FOR OPPOSER, IN CONJUNCTION WITH THIS REPLY, TO
`FILE HIS MOTION FOR LEAVE TO AMEND OPPOSER’S NOTICE OF
`OPPOSITION, AND AMENDED NOTICE OF OPPOSITION
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`Finally, Opposer apprises the Board that certain new facts uncovered during Expert
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`discovery in the Civil Action are sufficient for Opposer to request, in conjunction with this
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`response, leave to amend Opposer’s Notice of Opposition, and file an amended Notice of
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`Opposition. Specifically, forensics expert, Jon Berryhill (“Berryhill”), retained by Opposer in
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`the Civil Action, authenticated several emails between October 2006 and September 2007, where
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`Opposer discusses his Nextdoor and Fatdoor ventures with then retained independent contractor
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`Sandeep Sood and software developer Ankur Verma. Based on information and belief, and
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`corroborated by an investigation by Opposer which uncovered that Sood disclosed Opposer’s
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`Nextdoor concept and business plan to Applicant’s co-founder Prakash Janikiraman, who in turn
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`discussed this information with co-founder Nirav Tolia (“Tolia”). Moreover, Opposer
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`discovered that Tolia was a replacement candidate for Opposer as Chief Executive Officer
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`(“CEO”) of Opposer’s then company, and as a result had access to certain documents,
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`confidential information, and website password all related to Opposer’s business plans, and
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`rights to the at issue Mark years prior to Applicant’s purported date of first use in 2011. See
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`Exhibit J. In addition, several witnesses have recently come forth who purportedly have
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`knowledge of Opposer’s NEXTDOOR venture, and its testing program for Opposer’s
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`NEXTDOOR social network in the same neighborhood where Applicant first tested its
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`NEXTDOOR social network years after Opposer. This newly discovered information and facts
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`are probative of fraud before the USPTO when Applicant executed its USPTO declaration at the
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`time it filed for the at issue NEXTDOOR Mark.
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`CONCLUSION
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`For the foregoing reasons, and in the interest of justice, judicial economy and
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`consistency, and pursuant to TBMP 510.02, Opposer respectfully requests that the Board
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`continue its suspension of Opposition Nos. 91203462 and 91203762 until final adjudication and
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`termination of the Civil Action.
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`Respectfully submitted,
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`/Kuscha Hatami/
`Kuscha Hatami
`Raj Abhyanker P.C. dba LegalForce
`1580 W. El Camino Real
`Suite 13
`Mountain View, CA. 94040
`Tel. 650.390.6429
`Fax. 650.989.2131
`Kuscha@legalforcelaw.com
`Attorneys for Opposer
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`1 
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`Dated: October 3, 2014
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of OPPOSER’S OPPOSITION
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`RESPONSE TO APPLICANT NEXTDOOR.COM, INC.’S SUPPLEMENTAL BRIEF IN
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`SUPPORT OF ITS NOTICE OF JUDGMENT IN FAVOR OF NEXTDOOR.COM AND
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`RAJ ABHYANKER’S DISMISSAL WITH PREJUDICE OF ALL CLAIMS is being served
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`by mailing a copy thereof, by United Parcel Service, postage prepaid, addressed to the following
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`individuals, identified in the Notice of Opposition as the attorneys of record and correspondents
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`on this 6rd day of October, 2014:
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`Jennifer L. Kelly
`Fenwick West LLP
`801 California Street
`Mountain View, CA. 94041
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`Attorneys for Applicant
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`/Kuscha Hatami/
`Kuscha Hatami
`Raj Abhyanker P.C. dba LegalForce
`1580 W. El Camino Real
`Suite 13
`Mountain View, CA. 94040
`Tel. 650.390.6429
`Fax. 650.989.2131
`Kuscha@legalforcelaw.com
`Attorneys for Opposer
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`10 
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`EXHIBIT A 
`EXHIBIT A
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`

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`Case3:12-cv-05667-EMC Document1 Filed11/05/12 Page1 of 46
`Case3:12—cv— 56‘67—EMC Documentl Filedll/05,1172“ Page1of46
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`
`LAURENCE F. PULGRAM (CSB No. 115163)
`lpulgram@fenwick.com
`JENNIFER L. KELLY (CSB No. 193416)
`jkelly@fenwick.com
`GUINEVERE L. JOBSON (CSB No. 251907)
`gjobson@fenwick.com
`FENWICK & WEST LLP
`555 California Street, 12th Floor
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`San Francisco, CA 94104 Telephone:
`SAN FRANCI@ Dix/gig!
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`Facsimile:
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`415.875.2300
`415.281.1350
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`Attorneys for Plaintiff
`NEXTDOOR.COM, INC.
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`NEXTDOOR.COM, INC.,
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`Case No.:
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`Plaintiff,
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`V.
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`RAJ ABHYANKER,
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`Defendant.
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`COMPLAINT FOR DECLARATORY
`RELIEF, CYBERPIRACY, AND
`TRADEMARK INFRINGEMENT;
`DEMAND FOR JURY TRIAL
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`Plaintiff Nextdoor.com, Inc. (“Nextdoor.com” or “the Company”), for its Complaint
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`against Defendant Raj Abhyanker (“Abhyanker”), alleges as follows:
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`THE NATURE OF THE ACTION
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`1.
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`As a fundamental principle of trademark law, trademark rights are established
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`through use of a mark in commerce—not through hopes and dreams that are not acted upon. In
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`this action for declaratory relief, cyberpiracy, trademark infringement, and attorneys’ fees, the
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`Company seeks to eliminate any doubt that it, not Defendant Abhyanker, is the rightful owner of
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`the Nextdoor trademark (hereinafter, the “NEXTDOOR Mark”). The Company’s use of the
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`NEXTDOOR Mark in connection with its highly successful online social network for
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`neighborhoods commenced well before Abhyanker used that Mark in any arguably related field.
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`COMPLAINT
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`Case No.
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`1 2
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`10
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`FENWICK&wesrLLP§ATTORNEYSATLAW
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`SANFRANCISCO
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`Case3:12-cv-05667-EMC Document1 Filed11/05/12 Page2 of 46
`Case3:12—cv—C&§/_67—EMC Documentl Filedll/051,12, Page2 of46
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`"
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`As such, Abhyanker’s recent adoption of that Mark——begun only after the Company’s launch in
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`an attempt to leverage a claim against the Company—infringes the Company’s trademark rights.
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`2.
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`This action is necessitated by Abhyanker’s fabricated claim that the Company
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`“stole” his business idea and the idea of using the NEXTDOOR Mark. Abhyanker repeatedly has
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`made these baseless claims, including in a lawsuit he previously dropped against the Company
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`and an opposition he filed before the United States Trademark Trial and Appeal Board (“TTAB”).
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`3.
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`Contrary to Abhyanker’s allegations, the Company independently developed both
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`its business idea to create an online social network for neighborhoods, and the idea to brand that
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`network as NEXTDOOR. It did so long before it had ever heard of Abhyanker’s purported hopes
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`to develop some kind of business that might use that same name.
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`4.
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`It was not until after the Company’s highly acclaimed public launch in October
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`2011 that Abhyanker first attempted to stake any claim in the NEXTDOOR Mark. Before this,
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`Abhyanker had (1) never used the term “nextdoor” as a source identifier for any online social
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`network (much less a neighborhood-based one), (2) never applied to register that term as a
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`trademark, and (3) never acquired or used the domain name www.nextdoor.com. Instead, several
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`years prior to the Company’s public launch of Nextdoor.com, Abhyanker’s company used———and
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`applied to register—a different term: “fatdoor.”
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`5.
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`It is time for Abhyanker’s interference with the Company’s business to stop. By
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`this action, the Company seeks a declaration that it is the senior user and owner of the
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`NEXTDOOR Mark in its field, including online social networking for neighborhoods. The
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`Company also seeks to end Abhyanker’s recent acts of infringement and cyberpiracy, which are
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`designed to make it appear as though he has been using the NEXTDOOR Mark in connection
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`with some kind of neighborhood-based social network. This includes Abhyanker’s acquisition
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`and use of the domain name www.nextdoor.cm (“the .cm Domain”), where Abhyanker has set up
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`COMPLAINT
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`2
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`Case No.
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`FENWICK8:WESTLLP
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`ATTORNEYSATLAw
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`SANFRANCISCO
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`Case3:12-cv-05667-EMC Document1 Filed11/05/12 Page3 of 46
`Case3:12—cv—C}56\67—EMC Documentl Filedll/O5/12px Page3 of46
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`’" ;
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`FENWICK&WESTLLP
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`ATTORNEYSATLAW
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`SANFRANCISCO
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`a shell website that inserts the word “nextdoor” and references Plaintiffs Nextdoor.com business
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`in various places, but has absolutely nothing to do with providing online social networking for
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`neighbors. These wrongful acts constitute cybersquatting and trademark infringement in
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`violation ofthe Lanham Act, 15 U.S.C. §§ 1125 et seq.
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`PARTIES
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`6.
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`Plaintiff Nexdoor.com is incorporated under the laws of Delaware, with its
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`principal place of business at 101 Spear Street, Suite 230, San Francisco, California 94105.
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`7.
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`Defendant Raj Abhyanker is an individual. Upon information and belief,
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`Abhyanker resides in this district and has a principal place of business at 1580 W. El Camino
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`Real, Suite 8, Mountain View, California 94040. Abhyanker has engaged in continuous and
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`systematic business in California and within this judicial district.
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`JURISDICTION AND VENUE
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`8.
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`This action arises under the Declaratory Judgment Act, 28 U.S.C. § 2201, and the
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`Lanham Act, 15 U.S.C. § 1125 et seq. This Court has jurisdiction over the subject matter of this
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`action pursuant to 28 U.S.C. §§ 1331, 1338, and 1367.
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`9.
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`Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391 in that both
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`parties reside and a substantial part of the events giving rise to the claims herein occurred in this
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`judicial district.
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`10.
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`This Court has personal jurisdiction over Abhyanker by virtue of his residence and
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`doing business here, and his express aiming of his infringing and misleading conduct at Plaintiff
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`Nextdoor.com in this judicial district.
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`INTRADISTRICT ASSIGNMENT
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`11.
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`For purposes of Civil Local Rule 3—2(d), this case is to be assigned on a district-
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`wide basis because it is an intellectual property action. This action arises in San Francisco
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`10
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`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`21
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`22
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`23
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`24.
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`25
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`26
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`27
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`28
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`COMPLAINT
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`3
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`Case No.
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`

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`Case3:12-cv-05667-EMC Document1 Filed11/05/12 Page4 of 46
`Case3:12—cv—O@67—EMC Documentl Filedll/O5/1,2 Page4 of46
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`"I
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`{
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`County, where Plaintiff Nextdoor.com is located and where substantial parts of the actions,
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`statements and threats described above and below were directed.
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`GENERAL ALLEGATIONS
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`Plaintiff Nextd00r.com’s Business Trademark A lication and Launch
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`12.
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`, Plaintiff Nextdoor.com is a private social network for neighborhoods and is
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`designed to allow neighbors to communicate online and bring back a sense of community to a
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`neighborhood. It allows neighbors to set up free websites for their neighborhoods, where they
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`can safely talk about issues and topics that matter to their local neighborhoods or communities.
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`The Company provides software and services which makes this possible for consumers.
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`13.
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`The Company that today is doing business as Nextdoor.com was founded in
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`FENWICK&WESTLLP
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`ATTORNEYSATLAW
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`SANFRANCISCO
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`December 2007 and initially called SPN, Inc. In January 2008, SPN changed its name to Round
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`Two, Inc. After approximately one and a half years of work, Round Two, Inc. launched a website
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`called www.fanbase.com, which was an online almanac of professional and college athletes.
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`Round Two, Inc. later changed its name to Fanbase Inc. The website, Fanbase.com, however, did
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`not achieve the traction for which it had hoped.
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`14.
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`As a result, Fanbase Inc. decided it needed to change business direction. It began
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`considering new business concepts during the spring of 201 0. It considered many. Eventually,
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`the Company decided on the concept of building a neighborhood communications platform and
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`providing an online, private social network for neighborhoods. The Company generated this
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`concept independently and without having had access to or seeing or using any non-public
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`materials of Abhyanker’s.
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`15.
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`The Company then considered names for the business and its platform. Internally,
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`several names were considered. Eventually, in December 2010, a Company employee
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`independently came up with the name Nextdoor. Again, it did so without having had access to or
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`COMPLAINT
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`4
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`Case No.
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`

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`Case3:12-cv-05667-EMC Document1 Filed11/05/12 Page5 of 46
`Case3:12—cv—Oa(:67—EMC Documentl Filedll/O5/p1_2 Page5 of46
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`seeing or using any non-public materials of Abhyanker’s.
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`16.
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`In January 2011, the Company secured the rights to the domain
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`www.nextdoor.com, where it intended to host its service. The Company purchased the rights to
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`this domain through an intermediary from the previous owner. Upon information and belief, the
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`previous owner was in the business of providing millwork supplies, including doors, windows,
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`vinyl siding, locks, and stair parts at the time he transferred this domain to the Company.
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`17.
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`On February 8, 2011, the Company applied for a federal registration of the
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`NEXTDOOR Mark, Application Serial No. 85/236,918 in International Classes 9, 35, 38, 42 and
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`45 (the “Application”).
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`18.
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`In February 2011, the Company began using www.nextdoor.com as the domain
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`from which it operated beta versions of its online social networking service.
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`19.
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`In March 2011, the Company officially changed its legal name from Fanbase Inc.
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`to Nextdoor.com, Inc.
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`20.
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`Over the next several months, the Company continued to prepare its service for a
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`public launch, using the NEXTDOOR Mark on its beta versions, and garnering pre-launch media
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`attention.
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`21.
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`Finally, on October 26, 201 1, the Company publicly launched the
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`www.nextdoor.com service nationwide. The launch received substantial accolades in the press.
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`Since the launch, the business has grown rapidly from 176 neighborhoods at launch to almost
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`6,000 neighborhoods a year later.
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`Abhyanker’s Response to Plaintiff Nextdoor.com’s Launch
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`22.
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`One day after the www.nextdoor.com website was publicly launched, Abhyanker
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`sent an email to the Company’s co-founder Nirav Tolia. The email congratulated Mr. Tolia on
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`the launch of the site. In that email, Mr. Abhyanker also expressed his interest in being involved
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`COMPLAINT
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`5
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`Case No.
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`FENWICK8:WESTLLP
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`ATTORNEY‘:ATLAW
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`SANFRANCISCO
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`

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`FENWICK6:WESTLLP
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`ATTORNEYSATLAW
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`SANFRANCISCO
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`Case3:12-cv-05667-EMC Document1 Filed11/05/12 Page6 of 46
`Case3:12-cv-O 667-EMC Documentl Filedll/O5/(12,, Page6 of 46
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`with, and designated as a “Co-founder” of the Company. Mr. Tolia, not having known or even
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`having heard of Mr. Abhyanker previously, did not respond to that email.
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`23.
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`Shortly thereafter, on November 10, 2011, Abhyanker filed suit in California
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`Superior Court, Case No. 1-11-CV-212924, against the Company, its founders and its investors
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`(the “State Court Action”). In his complaint, Abhyanker made many inaccurate allegations
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`regarding the Company’s business concept and name, and claimed to have thought of the idea of
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`a local social networking service in 2005.
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`24.
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`Notably, however, Abhyanker did not claim any trademark rights in the term
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`“nextdoor” in the State Court Action. He admitted in those pleadings that he did not purchase the
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`nextdoor.com domain name or ever launch a business operating under the name “nextdoor.” To
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`the contrary, he admitted that he instead chose the name Fatdoor, Inc. and the website
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`www.fatdoor.com for the business he had hoped would operate a neighborhood social networking
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`website. Abhyanker further admitted in his pleadings that Fatdoor, Inc. terminated his
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`employment in the summer of 2007 and abandoned the local social networking field when its
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`Board of Directors decided to take the business in a completely different direction. The domain
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`www.fatdoor.com is inaccessible and appears defunct as of November 1, 2012.
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`25.
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`On December 28, 2011, about two months after the public launch of the
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`www.nextdoor.com website and six weeks after filing the State Court Action, Abhyanker applied
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`for a federal registration in the standard character mark NEXTDOOR in International Class 42
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`(Application Serial Number 85/5 04,896).
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`26.
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`On information and belief, prior to that time, Abhyanker had never applied to
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`register any mark incorporating the term “nextdoor.”
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`27.
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`Rather, Abhyanker had previously applied, on behalf of his fonner employer,
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`Fatdoor, Inc., for registrations for the standard character mark FATDOOR (Application Serial
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`COMPLAINT
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`6
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`Case N0.
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`

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`Case3:12-cv-05667-EMC Document1 Filed11/05/12 Page7 of 46
`(;age3;12-cv-o,667—EMC Documentl Filedll/O5/;_2 Page? of46
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`T
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`Number 77/049,286) and the phrase GET TO KNOW YOUR NEIGHBORS (Application Serial
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`Number 77/049,854). Neither mark ever registered; publicly available records indicate that these
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`
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`applications were abandoned on November 10, 2008.
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`28.
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`85/537,718).
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`FENWICK&:WESTLLP
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`ATTORNHSATLAW
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`SANFRANCISCO
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`Abhyanker’s Registration of the Nextd00r.cm Domain
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`29.
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`Abhyanker has engaged in efforts to confuse consumers about his affiliation with
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`the Company and/or its www.nextdoor.com service, including, inter alia, operating a website
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`viewable from the www.nextdoor.cm domain name (the “.cm Domain”)——a domain that is
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`confusingly similar to the Company’s website——and by blatantly using the Company’s name, its
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`NEXTDOOR Mark, and its website URL (www.nextdoor.com) repeatedly throughout his .cm
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`Domain website, without the Company’s consent.
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`30.
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`On information and belief, on December 28, 201 l, the same day he filed an
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`application to register a NEXTDOOR Mark, Abhyanker also registered the domain name
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`www.nextdoor.cm. The “.cm” represents the top level domain for the nation of Cameroon in
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`Central Africa.
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`31.
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`As of the time of the filing of this Complaint, the registrant of the .cm Domain
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`name is identified as Raj Abhyanker and the registrant’s address on file matches that of
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`Def