Application

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006)

OMB No. 0651-0009 (Exp 02/28/2021)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006)

OMB No. 0651-0009 (Exp 02/28/2021)

Trademark/Service Mark Application, Principal Register

Serial Number: 88817577

Filing Date: 03/02/020

To the Commissioner for Trademarks:

MARK: METRICSTREAM (Standard Characters, see mark)
The literal element of the mark consists of METRICSTREAM. The mark consists of standard characters, without claim to any particular font style, size, or color.
The applicant, MetricStream, Inc., a corporation of Delaware, having an address of
      2600 E. Bayshore Road
      Palo Alto, California 94303
      United States
      tmdocket@dlapiper.com

requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:

International Class 009:  Downloadable software for enterprise governance, risk, and compliance (GRC) management; downloadable articles, guides, analyst reports, case studies, and white papers in the field of enterprise governance, risk, and compliance management, and integrated risk management.

In International Class 009, the mark was first used by the applicant or the applicant's related company or licensee or predecessor in interest at least as early as 10/01/2001, and first used in commerce at least as early as 10/01/2001, and is now in use in such commerce. The applicant is submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed goods/services, consisting of a(n) screenshot of login page from mobile application on Apple App Store featuring use of mark.
Specimen File1

International Class 009:  Downloadable integrated risk management software for enterprise and operational risk management, managing technology and security related risks, managing regulatory, governmental and corporate compliance, audit management, developing and management of enterprise risk policies, management of relationships with third parties and third party contracts, engagements and related risks, managing regulatory, governmental and corporate compliance, and automating business continuity, crisis management and disaster recovery planning and execution; downloadable software for interfacing GRC application programs to databases, log management, problem management, operations management, and asset management systems, for use in querying databases, data analytics, and for use in generating reports from databases; downloadable software for identification, assessment, analysis, mitigation, remediation and monitoring of IT risks, threats and vulnerabilities; downloadable software for application development to allow third party software developers to build and customize their computer software applications, and for project and workflow management
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.

International Class 035:  Business consulting in the field of enterprise governance, risk, and compliance management; business consulting in the field of decision-making, business management and performance; providing business information and business event information via a website in the field of enterprise governance, risk, and compliance management, innovation in business, entrepreneurship, utilizing big data in business, business models, business leadership, corporate culture, integrated risk management, business management, corporate compliance for business purposes, business auditing, business risk policies, business relationships with third parties and business investigations in the field of vendor due diligence, business taxation, human resources, trade and logistics, and control management frameworks in the field of business management; testing, analysis, and evaluation of the knowledge in the field of enterprise governance, risk, and compliance management, and on subjects in the field of integrated risk management, to determine mastery of subject matters for business and career purposes

In International Class 035, the mark was first used by the applicant or the applicant's related company or licensee or predecessor in interest at least as early as 10/01/2001, and first used in commerce at least as early as 10/01/2001, and is now in use in such commerce. The applicant is submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed goods/services, consisting of a(n) screenshots of webpages from Applicant's web site featuring use of mark.

Original PDF file:
SPE0-20811615710-20200225155110193721_._METRICSTREAM_cl_35_Specimen_1.pdf
Converted PDF file(s) (1 page)
Specimen File1
Original PDF file:
SPE0-20811615710-20200225155110193721_._METRICSTREAM_cl_35_Specimen_2.pdf
Converted PDF file(s) (1 page)
Specimen File1

International Class 041:  Business training; Educational services, namely, conducting conference, seminars, non-downloadable webinars, workshops, corporate training programs and presentations in the field of enterprise governance, risk, and compliance management, integrated risk management, business management, business goal-setting, auditing, and risk policies; Business education and training services, namely, developing leadership and executive development programs, providing executive coaching services, and providing business education programs to employees and executives; Business education and training services, namely, providing public keynote presentations to business leaders; providing online non-downloadable educational and instructional videos and online courses of instruction in the field of enterprise governance, risk, and compliance management, integrated risk management, and quality management; education services, namely, providing seminars, non-downloadable webinars, workshops, corporate training programs and presentations in the field of IT compliance, audit, taxation, finance, human resources, IT security and governance, control management frameworks, energy and utilities, healthcare, life sciences, trade and logistics, biotechnology, medical devices and clinical research

In International Class 041, the mark was first used by the applicant or the applicant's related company or licensee or predecessor in interest at least as early as 10/01/2001, and first used in commerce at least as early as 10/01/2001, and is now in use in such commerce. The applicant is submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed goods/services, consisting of a(n) screenshot of webpage from Applicant's web site featuring use of mark.

Original PDF file:
SPE0-20811615710-20200225155110193721_._METRICSTREAM_cl_41_Specimen_1.pdf
Converted PDF file(s) (5 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5

International Class 042:  Providing online non-downloadable software for enterprise governance, risk, and compliance (GRC) management; Providing online non-downloadable software for integrated risk management software for enterprise and operational risk management, managing technology and security related risks, managing regulatory, governmental and corporate compliance, audit management, developing and management of enterprise risk policies, management of relationships with third parties and third party contracts, engagements and related risks, managing regulatory, governmental and corporate compliance, and automating business continuity, crisis management and disaster recovery planning and execution; Providing online non-downloadable software for use in interfacing GRC application programs to databases, log management, problem management, operations management, and asset management systems, for use in querying databases, data analytics, and for use in generating reports from databases; providing online non-downloadable software for identification, assessment, analysis, mitigation, remediation and monitoring of IT risks, threats and vulnerabilities; providing on-line non-downloadable software development tools to allow third party software developers to build and customize their computer software applications, and for project and workflow management; providing information in the field of IT risk and compliance with industry standards; providing an internet website portal featuring information in the field of IT risk and compliance with industry standards; consulting in the field of software programming and customization; custom software programming for others; Providing information in the field of IT security; providing an internet website portal featuring industry-specialized information in the field of IT security

In International Class 042, the mark was first used by the applicant or the applicant's related company or licensee or predecessor in interest at least as early as 01/01/2004, and first used in commerce at least as early as 05/01/2004, and is now in use in such commerce. The applicant is submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed goods/services, consisting of a(n) screenshot of login page featuring use of mark.
Specimen File1

International Class 045:  Providing information in the field of regulatory compliance, regulatory compliance auditing, IT security governance law; providing an internet website portal featuring industry-specialized information in the field of regulatory compliance, regulatory compliance auditing, IT security governance law.

In International Class 045, the mark was first used by the applicant or the applicant's related company or licensee or predecessor in interest at least as early as 01/01/2004, and first used in commerce at least as early as 05/01/2004, and is now in use in such commerce. The applicant is submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed goods/services, consisting of a(n) screenshot of webpage from Applicant's web site featuring use of mark.

Original PDF file:
SPE0-20811615710-20200225155110193721_._METRICSTREAM_cl_45_Specimen_1.pdf
Converted PDF file(s) (1 page)
Specimen File1
Original PDF file:
SPE0-20811615710-20200225155110193721_._METRICSTREAM_cl_45_Specimen_2.pdf
Converted PDF file(s) (1 page)
Specimen File1



The owner's/holder's proposed attorney information: Heather A. Dunn, Esq.. Other appointed attorneys are Gina L. Durham, Esq., Carissa Bouwer, Esq., Mark F. Radcliffe, Esq., Andrew P. Valentine, Esq., Alan Limbach, Esq., Susan N. Acquista, Esq., Megan M. Michaels, Esq., Jordan Chisek, Esq. and Pei Heng Li. Esq.. Heather A. Dunn, Esq. of DLA Piper LLP (US), is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at
      555 Mission Street, Suite 2400
      San Francisco, California 94105-2933
      United States
      415-836-2557(phone)
      415-836-2501(fax)
      tmfilings@dlapiper.com
The docket/reference number is 394150-118.
Heather A. Dunn, Esq. submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.

The applicant's current Correspondence Information:

Heather A. Dunn, Esq.

PRIMARY EMAIL FOR CORRESPONDENCE: tmfilings@dlapiper.com       SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the applicant owner/holder and the applicant owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

A fee payment in the amount of $1375 has been submitted with the application, representing payment for 5 class(es).

Declaration

	Basis: If the applicant is filing the application based on use in commerce under 15 U.S.C. § 1051(a): The signatory believes that the applicant is the owner of the trademark/service mark sought to be registered; The mark is in use in commerce on or in connection with the goods/services in the application; The specimen(s) shows the mark as used on or in connection with the goods/services in the application; and To the best of the signatory's knowledge and belief, the facts recited in the application are accurate. And/Or If the applicant is filing the application based on an intent to use the mark in commerce under 15 U.S.C. § 1051(b), § 1126(d), and/or § 1126(e): The signatory believes that the applicant is entitled to use the mark in commerce; The applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services in the application; and To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.
	To the best of the signatory's knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive.
	To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the allegations and other factual contentions made above have evidentiary support.
	The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

Declaration Signature

Signature: /Thien Dinh/   Date: 02/28/2020
Signatory's Name: Thien Dinh
Signatory's Position: VP of Legal
Payment Sale Number: 88817577
Payment Accounting Date: 03/02/2020

Serial Number: 88817577
Internet Transmission Date: Mon Mar 02 16:44:20 ET 2020
TEAS Stamp: USPTO/BAS-XXX.X.XXX.XX-20200302164420523
758-88817577-7109d6e9384e034780b66ede106
8d596b919d4992256ae981617a6e8dab2e1e-DA-
44204427-20200228163020518950