To the Commissioner for Trademarks:

With all due respect to the Examining Attorney, in reviewing Applicant’s mark TRANSCEND THE LAB it is distinct in appearance, sound and meaning, GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199,1206 (9^th Cir. 2000) (emphasis added).  

TRANSCEND THE LABORATORY and TRANSEND (or TranSEND) are marketably different with distinct meanings (GoTo.com, Inc. supra.)    Whereas, Applicant’s mark has a focus on what the scientist might do with the technology to improve the laboratory experience, Registrant’s play on words, incorporating the acronym SEND (discussed below), in view of its Class 42 definition (in part “services featuring a software for FDA regulatory submissions,” (emphasis added)), is unique in definition and context from applicant’s mark.

Respectfully, while Examining Attorney wrote “[t]he compared services need not be identical or even competitive to find a likelihood of confusion,” and “use in pharmaceutical research, which presumably encompasses all services of the type described, including registrant’s more narrow software and platform as services featuring software for FDA regulatory submissions” -- in reality the contrasting contexts here could not leave a reasonable consumer with a “mistaken belief that [the services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP§1207.01(a)(i). 

Applicant’s mark, TRANSCEND THE LABORATORY, “Transcend” spelled correctly, and as noted by Examining Attorney’s previous attachment, meaning “to rise above or go beyond the limits of”, has no implication of providing a delivery service, or referring to the known industry acronym Standard for the Exchange of NonClinical Data (“SEND”), as availed by Registrant.  https://www.cdisc.org/standards/foundational/send, the verb from which the acronym is likely derived, per Merriam-Webster, 7 “to cause to be carried to a destination.”  Indeed, Registrant is explicit in its marketing materials and user manual that its mark is a play on and solely focused on the acronym SEND, stating, "TranSEND™ is the all-encompassing software solution to get your preclinical data SEND-ready."  https://www.pdslifesciences.com/regulatory-submission-reporting.aspx and Specimen File 1 at 6, Registrant's May 1, 2017 Response to Office Action.  See also "TranSEND™, our platform-agnostic SEND solution designed to produce submission-ready SEND datasets from any data source."  Are you SEND Ready? at 12.  https://www.pdslifesciences.com/Userfiles/Docs/PDS-SEND-Primer-for-CROs-Sept-2015.pdf.  In contrast, to impute Registrant's use of SEND to Applicant's use of Transcend would imply, in effect, that Applicant offers to "SENDS" the Lab, which would be nonsensical in the context of any potential customer.  Thus, there is little chance of customer confusion with Applicant's and Registrant's respective marks.

Finally, the Lanham Act at 15 U.S.C. Section 1052(d) includes “confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used.”(emphasis added).  Again, Applicant’s mark and its class 42 definition emphasize improving the overall laboratory experience.  Registrant’s use of “SEND,” in TRANSEND, the exchange (the “E” in SEND) of information or submissions to such entities as the FDA.