Trademark/Service Mark Application, Principal Register
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
The mark consists of standard characters, without claim to any particular font style, size, or color.
REGISTER
Principal
APPLICANT INFORMATION
*OWNER OF MARK
MetricStream, Inc.
*MAILING ADDRESS
2600 E. Bayshore Road
*CITY
Palo Alto
*STATE
(Required for U.S. applicants)
California
*COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
United States
*ZIP/POSTAL CODE
(Required for U.S. and certain international addresses)
94303
*EMAIL ADDRESS
tmdocket@dlapiper.com
LEGAL ENTITY INFORMATION
TYPE
corporation
STATE/COUNTRY/REGION/JURISDICTION/U.S. TERRITORY OF INCORPORATION
Delaware
GOODS AND/OR SERVICES AND BASIS INFORMATION
INTERNATIONAL CLASS
009
*IDENTIFICATION
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.
screenshot of login page from mobile application on Apple App Store featuring use of mark
INTERNATIONAL CLASS
009
*IDENTIFICATION
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
FILING BASIS
SECTION 1(b)
INTERNATIONAL CLASS
035
*IDENTIFICATION
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
screenshots of webpages from Applicant's web site featuring use of mark
INTERNATIONAL CLASS
041
*IDENTIFICATION
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
screenshot of webpage from Applicant's web site featuring use of mark
INTERNATIONAL CLASS
042
*IDENTIFICATION
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
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.
screenshot of webpage from Applicant's web site featuring use of mark
ATTORNEY INFORMATION
NAME
Heather A. Dunn, Esq.
ATTORNEY DOCKET NUMBER
394150-118
ATTORNEY BAR MEMBERSHIP NUMBER
XXX
YEAR OF ADMISSION
XXXX
U.S. STATE/ COMMONWEALTH/ TERRITORY
XX
FIRM NAME
DLA Piper LLP (US)
STREET
555 Mission Street, Suite 2400
CITY
San Francisco
STATE
California
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
United States
ZIP/POSTAL CODE
94105-2933
PHONE
415-836-2557
FAX
415-836-2501
EMAIL ADDRESS
tmfilings@dlapiper.com
OTHER APPOINTED ATTORNEY
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.
CORRESPONDENCE INFORMATION
NAME
Heather A. Dunn, Esq.
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE
tmfilings@dlapiper.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES)
NOT PROVIDED
FEE INFORMATION
APPLICATION FILING OPTION
TEAS Standard
NUMBER OF CLASSES
5
APPLICATION FOR REGISTRATION PER CLASS
275
*TOTAL FEES DUE
1375
*TOTAL FEES PAID
1375
SIGNATURE INFORMATION
SIGNATURE
/Thien Dinh/
SIGNATORY'S NAME
Thien Dinh
SIGNATORY'S POSITION
VP of Legal
SIGNATORY'S PHONE NUMBER
(650) 620-2939
DATE SIGNED
02/28/2020
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.
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.
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.
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).
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