motion for suspension in view of civil proceeding with

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA504078Filing date: 11/06/2012

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding. 91203462

Applicant DefendantNextdoor.com, Inc.

Other Party PlaintiffRaj Abhyanker

Motion for Suspension in View of Civil Proceeding With Consent

The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly,Nextdoor.com, Inc. hereby requests suspension of this proceeding pending a final determination of the civilaction. Trademark Rule 2.117.Nextdoor.com, Inc. has secured the express consent of all other parties to this proceeding for the suspensionand resetting of dates requested herein.Nextdoor.com, Inc. has provided an e-mail address herewith for itself and for the opposing party so that anyorder on this motion may be issued electronically by the Board.

Certificate of Service

The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their addressrecord by First Class Mail on this date.Respectfully submitted,/Jennifer L. Kelly/Jennifer L. [email protected], [email protected], [email protected]@legalforcelaw.com, [email protected]/06/2012

http://estta.uspto.gov

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.

) ) ) )

Opposition Nos. 91203462 and 91203762

Nextdoor.com, Inc., ) Applicant. ) )

CONSENTED MOTION TO SUSPEND PENDING TERMINATION OF RELATED FEDERAL TRADEMARK LITIGATION

Applicant, Nextdoor.com, Inc., hereby moves, pursuant to 37 C.F.R. 2.117(a) & (c)

(“Rule 2.117”) and Trademark Trial and Appeal Board Manual of Procedure (“TBMP”)

§ 510.02, to suspend both Opposition No. 91203462 and Opposition No. 91203762

(together, the “Consolidated Opposition Proceedings”) pending the outcome of the

related federal district court trademark litigation between Opposer Raj Abhyanker

(“Opposer” or “Abhyanker”) and Applicant Nextdoor.com, Inc. (“Applicant” or

“Nextdoor.com”), Nextdoor.com, Inc., v. Raj Abhyanker, No. CV-12-5667 (N.D. Cal. filed

November 5, 2012 (the “Civil Action”). Because the Civil Action has a direct bearing on

the Consolidated Opposition Proceedings, a suspension of the Consolidated Opposition

Proceedings pending termination of the Civil Action is warranted. Opposer agrees

with and consents to this motion.

Mark: NEXTDOOR Opposition No. 91203462

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ARGUMENT

I. INTRODUCTION

Pursuant to Rule 2.117 and TBMP § 510.02, the Trademark Trials and Appeal

Board (“TTAB” or “Board”) may suspend a proceeding when one or more of the parties

is engaged in civil litigation that may have a bearing on the Board proceeding. In the

Consolidated Opposition Proceedings (Opposition Nos. 31203462 and 91203762,

submitted on January 20, 2012 and February 9, 2012, respectively and consolidated by the

Board in its order dated September 10, 2012), Opposer seeks to block Applicant’s pending

Application for a federal registration in its NEXTDOOR mark. The Oppositions are

based, inter alia, on Opposer’s claims that (1) he has prior rights in the terms “nextdoor”

and “fatdoor” as well as the phrase “fatdoor get to know your neighbors”, and (2) there is

a likelihood of confusion between Plaintiff’s NEXTDOOR mark and Abhyanker’s

purported rights in “nextdoor”, “fatdoor” and “fatdoor get to know your neighbors.” See

generally, Opposer’s Amended Notice of Opposition in the 462 Opposition, filed February

9, 2012 and Opposer’s Amended Notice of Opposition in the 762, filed September 26,

2012. Applicant disputes these claims on numerous bases, including that Applicant has

priority of use in the mark NEXTDOOR; that there is no likelihood of confusion between

Applicant’s use of the mark NEXTDOOR and Opposer’s purported rights in the terms

“fatdoor” and “fatdoor get to know your neighbors;” and that Opposer lacks standing.

See Applicant’s Answer to Amended Notice of Opposition in the 462 Opposition,

submitted March 15, 2012 (“462 Answer”) and Applicant’s Answer to Amended Notice of

Opposition in the 762 Opposition, submitted November 5, 2012 (“762 Answer”).


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On November 5, 2012, Applicant commenced the Civil Action in the Northern

District of California requesting declaratory relief regarding its right to the NEXTDOOR

mark, and its non-infringement of any rights that Opposer claims in either NEXTDOOR

or “fatdoor” or “fatdoor get to know your neighbors.” Attached hereto as Exhibit A is a

true and correct copy of the file endorsed complaint, Dkt. 1, in the matter of Nextdoor.com,

Inc. v. Raj Abhyanker, No. No. CV-12-5667 (N.D. Cal. filed November 5, 2012) (the “Civil

Complaint”). In addition, in the Civil Action, Applicant Nextdoor.com alleges that

Abhyanker has, by his registration and use of the domain name www.nextdoor.cm (the

“.cm Domain”), engaged in cybersquatting in violation of 15 U.S.C.A. § 1125(d)(1).

Exhibit A, pages 14-15 (Paragraphs 64-71). Applicant also alleges in the Civil Action that

Opposer has violated the Lanham Act by incorporation of Plaintiff’s NEXTDOOR mark

in, inter alia, the .cm Domain. Id. at pages 15-16 (Paragraphs and 72-78).

The parties agree that the Board should suspend the Consolidated Opposition

Proceedings because the Civil Action necessarily will require resolution of issues before

the Board in these proceedings. Specifically, the Civil Action will decide, among other

things:

1. Whether Applicant is lawfully using the NEXTDOOR mark and not

committing infringement of any purported trademark rights held by

Abhyanker;

2. Whether Applicant has priority of use of the NEXTDOOR mark in

the relevant field of use;


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3. Whether there is a likelihood of confusion between Applicant’s use

of NEXTDOOR and Abhyanker’s purported rights, if any exist, in the

terms “fatdoor” or “fatdoor get to know your neighbors”;

4. Whether Abhyanker has standing to assert any rights in the marks he

claims;

5. Whether Abhyanker’s use of the .cm Domain constitutes cyberpiracy

in violation of 15 U.S.C.A. § 1125(d)(1);

6. Whether Abhyanker’s use of the .cm Domain constitutes

infringement of Nextdoor.com’s rights in the NEXTDOOR mark;

7. Whether Abhyanker’s inclusion of Applicant’s NEXTDOOR mark

and reference to the Nextdoor.com name and domain name in

various websites owned and operated by him constitutes

infringement of Nextdoor.com’s rights in the NEXTDOOR mark.

Issues (1), (2), (3) and (4) are before the Board in the instant Consolidated

Opposition Proceedings. Because the Civil Action may determine those issues, in

addition to others, and the Board will be bound by the district court’s decision on those

issues, the Board should suspend the Consolidated Opposition Proceedings pending the

outcome of the Civil Action.

II. THE BOARD SHOULD SUSPEND THE INSTANT OPPOSITION PROCEEDINGS UNTIL THE CIVIL ACTION DETERMINES THE SUBSTANTIVE ISSUES PRESENTLY BEFORE THE BOARD

The Board’s policy, as embodied in Rule 2.117(a) and explained in TBMP §

510.02(a), is to suspend proceedings “whenever” there is a federal district court action


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involving one or more parties to a TTAB proceeding that may have a bearing on the

Board case. As the TBMP makes clear, “To the extent that a civil action in a federal

district court involves issues in common with those in a proceeding before the Board, the

decision of the federal district court is often binding upon the Board, while the decision of

the Board is not binding upon the court.” TBMP § 510.02(a). Demonstrating the Board’s

deference to federal district court proceedings, TBMP § 510.02(a) continues, “Ordinarily,

the Board will suspend proceedings in the case before it if the final determination of the

other proceeding will have a bearing on the issues before the Board” (emphasis added).

Indeed, “Suspension of a Board case is appropriate even if the civil case may not be

dispositive of the Board case, so long as the ruling will have a bearing on the rights of the

parties in the Board case.” Soc. Mex. Am. Eng’rs. & Scientists v. GVR Pub. Relations

Agency, Inc., 2002 TTAB LEXIS 697 at *10 (TTAB 2002) (internal citations omitted).

A. The Board Should Defer To The Civil Action Because The Civil Action Will Determine Issues Before The Board

The Board should suspend the proceedings here because the resolution of the Civil

Action may be dispositive of issues before the Board in the Consolidated Opposition

Proceedings. See Argo & Co. v. Carpetsheen Manufacturing, Inc., 187 USPQ 366, 367 (TTAB

1995) (suspension granted because state court litigation which would decide applicant’s

ownership of mark “may have a bearing on the question of applicant’s right of

registration”); Whopper-Burger, Inc. v. Burger King, Inc., 171 USPQ 805, 807 (TTAB 1971)

(suspension granted where complaint sought to enjoin defendant from using mark and

requested cancellation of the mark). Here, there is identity of parties involved in both the


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Consolidated Opposition Proceedings and the Civil Action, and the Civil Action may

dispose of issues before the Board.

Additionally, resolution of the Civil Action would also decide issues not before the

Board: the Civil Action involves Applicant’s claims that Opposer is engaged in

cyberpiracy in violation of 15 U.S.C.A. § 1125(d)(1) and that Opposer is affirmatively

infringing Applicant’s trademark rights in violation of 15 U.S.C.A. § 1125 et seq.

Applicant also seeks statutory damages, disgorgement of profits, conveyance of the .cm

Domain, and injunctive relief for those offenses. The Consolidated Opposition

Proceedings cannot dispose of all the issues before the district court, but the district court

can dispose of most of the issues involved in the Consolidated Opposition Proceedings.

B. Suspension Of The Instant Consolidated Opposition Proceedings Would Promote Judicial Economy

Recognizing the need for judicial economy, the Board found it proper to suspend

the proceedings in GVR because it would avoid duplicating the effort of the Court and

the possibility of reaching an inconsistent conclusion. See GVR, 2002 TTAB LEXIS 697 at

*11-12. The same conclusion should be reached here. If both proceedings move forward

simultaneously, two separate forums would face the expense and effort of dealing with

issues that could be better resolved in one forum—the district court—because of its more

comprehensive jurisdiction to consider all of the issues.

III. CONCLUSION

The interests of judicial economy and judicial consistency require that the Board

suspend the Consolidated Opposition Proceedings until termination of the Civil Action.


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Accordingly, Applicant respectfully requests that the Board enter an order suspending

Opposition Nos. 462 and 762 pending a final judgment in the Civil Action.

Dated: November 6, 2012 By: /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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CERTIFICATE OF SERVICE

I declare that:

I am employed in the County of Santa Clara, California.

I am over the age of eighteen years and not a party to the within cause;

my business address is Fenwick & West LLP, Silicon Valley Center, 801 California

Street, Mountain View, CA 94041. On the date set forth below, I served the within

CONSENTED MOTION TO SUSPEND PENDING TERMINATION OF RELATED

FEDERAL TRADEMARK LITIGATION on the interested parties in this action by

placing a true copy thereof enclosed in a sealed envelope with postage thereon fully

prepaid, and causing it to be placed for first class delivery by the U.S. Postal Service,

which envelope was addressed as follows:

Kuscha Hatami, Esq. Raj Abhyanker, P.C. 1580 W. El Camino Real, Suite 13 Mountain View, CA 94040

I declare under penalty of perjury that the foregoing is true and correct,

and that this declaration was executed at Mountain View, California, this 6th day of

November, 2012.

/Christine Sakurai / Christine Sakurai

Exhibit A

motion for suspension in view of civil proceeding with

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