Progrexion IP, Inc.v.One Technologies, LLC

Trademark Trial and Appeal Board

May 9, 2019

91233945 (T.T.A.B. May. 9, 2019)

This Opinion is not a
Precedent of the TTAB

Hearing: December 4, 2018 Mailed: May 9, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Progrexion IP, Inc.

v.

One Technologies, LLC

_____

Opposition No. 91233945

_____

John C. Stringham and James W. McConkie III of Workman Nydegger, for
Progrexion IP, Inc.

Dustin Mauck of Regitzmauck PLLC, for One Technologies, LLC.

_____

Before Mermelstein, Goodman, and Lynch, Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
One Technologies, LLC (“Applicant”) seeks registration on the Principal Register
of the mark BETTER CREDIT BETTER LIFE (in standard characters) for “Providing
an online computer database in the field of financial information in the specific areas
of credit reports checking, credit score services, and credit reporting services” in
International Class 36 and “Providing an online computer database in the field of
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financial identity monitoring services in the specific areas of financial identity
monitoring services for fraud protection purposes and providing information in the
field of personal physical security” in International Class 45.1
Progrexion IP, Inc. (“Opposer”) opposed registration of Applicant’s mark on the
ground that Applicant’s mark, when used in connection with Applicant’s services, so
resembles Opposer’s previously-used mark BETTER CREDIT, BETTER LIFE for
“providing and offering a wide variety of consumer credit repair and legal services,
including but not limited to consumer credit consulting and counseling, evaluation of
credit bureau data, credit repair and restoration and credit score analysis” as to be
likely to cause confusion.2 Opposer alleges extensive use of the BETTER CREDIT,
BETTER LIFE mark by Opposer (and its related entities) “well before any use or
constructive use by Applicant of the BETTER CREDIT BETTER LIFE mark” and
alleges that it has “obtained common law rights in such mark, which are superior to
Applicant.”3 Opposer also alleges ownership of a pending application for the mark
BETTER CREDIT, BETTER LIFE for the following services:4

1 Application Serial No. 86943937 was filed on March 17, 2016 based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
References to the record or briefs are to the Board’s TTABVUE docketing system. The number
preceding “TTABVUE” corresponds to the docket entry number; the number(s) following
“TTABVUE” refer to the page number(s) of that particular docket entry.
2 1 TTABVUE 5, ¶ 5.
3 Id., ¶ 6.
4 Application Serial No. 87210724 was filed on October 20, 2016, based upon Opposer’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Opposition No. 91233945
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Consumer credit consultation; Credit counseling services;
Evaluation of credit bureau data; Financial services,
namely, credit repair and restoration; Financial services,
namely, credit repair services, namely, assisting
consumers to process requests for correction or removal of
unverifiable, or erroneous information on record with
credit bureaus and credit reporting agencies to require
compliance with legally mandated credit reporting rules
and regulations in International Class 36 and
Legal services dealing with credit report repair;
Consultation services, namely, investigation and
authentication of credit reports and credit history, and
correcting and ensuring for regulatory compliance with
credit reporting rules and regulations, analysis of credit
score improvements in International Class 45.5
By its answer, Applicant denied the salient allegations in the notice of opposition
and asserted as an affirmative defense that Opposer does not use BETTER CREDIT,
BETTER LIFE as a service mark or in a manner analogous to service mark use.6
The parties filed briefs, Opposer filed a reply brief, and each party was
represented by counsel at an oral hearing held before this panel.
I. Evidentiary Matters
A. Objections
Applicant has raised objections as to the weight to be accorded to Opposer’s former
employees’ testimony and certain documentary evidence. As a general matter, the
Board is capable of weighing the strength or weakness of the objected-to testimony

5 There is an outstanding fee requirement for the Class 45 services.
6 4 TTABVUE 3, ¶ 14. This is not a true affirmative defense because it remains Opposer’s
burden to demonstrate that it owns a trademark that was used, or has made use analogous
to trademark use, prior to Applicant’s first use or constructive use of its mark. Applicant’s
other affirmative defenses were more in the nature of amplifications of its denials of the
likelihood of confusion claim.
Opposition No. 91233945
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and evidence, including any inherent limitations, and we have accorded whatever
probative value the subject testimony and evidence merit.
Applicant objects to consideration of Opposer’s witness, Natalie Pino’s, declaration
testimony because it was allegedly not served.7 However, Applicant failed to timely
move for an appropriate remedy, and we consider the objection waived. Cf.
Trademark Rule 2.125(b), 37 C.F.R. § 2.125(b).
B. Stipulations
The parties stipulated to the authenticity of business records produced under Fed.
R. Civ. P. 34, in connection with Opposer’s Notice of Reliance #5 and Applicant’s
Notice of Reliance. The parties reserved their right to object to this evidence on the
basis of relevance, materiality, and weight.8
Applicant also filed a stipulation as to likelihood of confusion between the parties’
marks.9 By stipulating to likelihood of confusion, Applicant has removed this issue
from the case. The only issue remaining is one of priority, that is, which party was
the first to use the BETTER CREDIT, BETTER LIFE service mark. See e.g., Kemi
Organics, LLC v. Gupta, 126 USPQ2d 1601, 1602 (TTAB 2018) (parties stipulated to
likelihood of confusion, so only priority need be determined); Cf. Automedx Inc. v.

7 We note that the declaration that was filed with the Board includes a certificate of service,
and that a certificate of service is prima facie proof of service. Trademark Rule 2.119(a), 37
C.F.R. § 2.119(a); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
§ 113.02 (2018).
8 15 TTABVUE. The Board approved this stipulation on October 22, 2018. 21 TTABVUE.
9 “Applicant One Technologies, LLC hereby stipulates to ‘likelihood of confusion’ between
Applicant’s mark and Opposer’s claimed mark.” 16 TTABVUE.
Opposition No. 91233945
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Artivent Corp., 95 USPQ2d 1976, 1985 (TTAB 2010) (only issue is priority because
applicant essentially conceded likelihood of confusion by not submitting any
argument or evidence on the issue).
C. Issue Tried by Implied Consent
A plaintiff seeking to prove priority via analogous use must plead such use in its
complaint. See Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ 1134, 1142
(TTAB 2013); Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1537-38 (TTAB
2007). Opposer, in its notice of opposition, did not specifically plead activities relating
to priority by analogous use. However, Applicant raised as an affirmative defense in
its answer that “[t]here is no legally sufficient evidence of Opposer’s analogous use
and adoption of the ‘BETTER CREDIT, BETTER LIFE’ mark to challenge Applicant’s
constructive use priority date of March 17, 2016.”10 Opposer relied on the same
evidence for both technical service mark and analogous use, and both Opposer and
Applicant addressed arguments relating to whether Opposer had proven priority
based on analogous use. Therefore, we find that the issue of whether Opposer has
priority based on analogous use was tried by implied consent.
II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved application. Opposer introduced the
following testimony and other evidence:

10 4 TTABVUE 3, ¶ 14.
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1) Testimony declaration of Eric Kamerath, counsel to the Progrexion family of
companies;11

2) Testimony declaration of Jeff Johnson, Chairman and CEO of PGX Holdings,
Inc., Progrexion Holdings, Inc., Progrexion Marketing, Inc., and Progrexion IP,
Inc.;12

3) Testimony declaration of Josh Aston, Vice President of Digital Marketing at
Progrexion Marketing, Inc.;13

4) Testimony declaration of Natalie Pino, former Social Media
Coordinator/Integrated Marketing Manager at Progrexion Marketing, Inc.;14

5) Testimony declaration of Sable Petersen, former Brand & Consumer Insights
Manager at Progrexion Marketing, Inc.;15

6) Testimony declaration of Gavin Van Wagoner, former Vice President of
Consumer Engagement and Insights at Progrexion ASG, Inc.;16

7) Testimony declaration of Emily Madsen, Senior Director of Communications and
Culture at Progrexion ASG, Inc.;17

8) A notice of reliance (#1) on Opposer’s Answers to Applicant’s Interrogatories
Nos. 1–15;18

9) A notice of reliance (#2) on official records for trademark application Serial No.
86943937;19

11 7 TTABVUE 2-10. The portions of the Kamerath declaration and exhibits designated as
confidential are posted at 6 TTABVUE.
12 7 TTABVUE 11-27. The portion of the Johnson declaration designated as confidential is
posted at 6 TTABVUE.
13 7 TTABVUE 28-39.
14 7 TTABVUE 40-47.
15 7 TTABVUE 48-79.
16 7 TTABVUE 80-162.
17 7 TTABVUE 163-291.
18 8 TTABVUE 2-15. Opposer’s notice of reliance on its own interrogatory responses is not
admissible under Trademark Rule 2.120(k)(5).
19 8 TTABVUE 16-25.
Opposition No. 91233945
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10) A notice of reliance (#3) on official records for trademark application Serial No.
87210724;20

11) A notice of reliance (#4) on Applicant’s responses to Interrogatory Nos. 3, 4, 6,
12, 13, 14, 15, 18, 21–25;21 and

12) A notice of reliance (#5) on Applicant’s produced documents (Bates numbers
APP0001–APP0009).22

Applicant introduced the following testimony and evidence:

1) Declaration testimony of Michael B. Regitz, counsel for Applicant;23

2) Declarant Deposition of Emily Madsen (oral cross-examination of Opposer’s
witness);24

3) Declarant Deposition of Sable Petersen (oral cross-examination of Opposer’s
witness);25

4) Applicant’s Notice of Reliance on documents produced by Opposer, namely e-
mail correspondence (Bates numbers OPP000225, OPP000226, and
OPP00000450).26

III. Standing
To have standing, a plaintiff must have a real interest, i.e., a personal stake in the
outcome of the proceeding and a reasonable basis for its belief that it will be damaged.

20 8 TTABVUE 26-35.
21 8 TTABVUE 36-52.
22 8 TTABVUE 53-74. The parties stipulated to the authenticity of Applicant’s produced
documents listed in this notice of reliance as discussed above. The parties did not stipulate
to the authenticity of any other documents produced by Applicant.
23 11 TTABVUE.
24 12 TTABVUE.
25 13 TTABVUE.
26 14 TTABVUE. The parties stipulated to the authenticity of Opposer’s produced documents
listed in this notice of reliance as discussed above. The parties did not stipulate to the
authenticity of any other documents produced by Opposer.
Opposition No. 91233945
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See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,
1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-28
(Fed. Cir. 1999).
Applicant argues that Opposer has not established its standing because it is
relying on use by other entities. Applicant also argues that Opposer’s filing of a
trademark application six months after Applicant’s application is an attempt to
manufacture standing.
The purpose of the standing requirement is to prevent mere intermeddlers from
initiating proceedings. Ritchie, 50 USPQ2d at 1025-26. Here, Opposer has established
that it has a commercial interest in using the phrase BETTER CREDIT, BETTER
LIFE. Opposer’s witnesses testified as to the filing of Opposer’s BETTER CREDIT,
BETTER LIFE application, the “substantial overlap” in the consumer credit services
and consumer credit reporting services in the parties’ applications, and the potential
for confusion.27 Opposer also has filed for the record a copy of application Serial No.
87210724 (for Opposer Progrexion IP) for the mark BETTER CREDIT, BETTER
LIFE for the Class 36 and 45 services identified above.28
It has been shown that Opposer is not an intermeddler by its ownership of a
pending application for registration of the same mark and overlapping or similar
services. Toufigh v. Persona Parfum Inc., 95 USPQ2d 1872, 1874 (TTAB 2010). The
filing of the application subsequent to the filing date of Applicant’s application does

27 Aston Decl., ¶¶ 12-21, 7 TTABVUE 30-33; Madsen Decl., ¶ 12, 7 TTABVUE 168.
28 8 TTABVUE 26, Notice of Reliance #3.
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not impact Opposer’s standing. See e.g., Life Zone Inc. v. Middleman Grp. Inc., 87
USPQ2d 1953, 1959 (TTAB 2008) (standing found based on application filed
subsequent to applicant’s application filing date).
Accordingly, we find that Opposer has established its standing in this proceeding.
IV. Priority
Opposer has not pleaded ownership of any registered service mark, and relies on
its asserted prior use of BETTER CREDIT, BETTER LIFE to prove priority.
WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034,
1040-41 (TTAB 2018). Applicant is entitled to a constructive use date of March 17,
2016, the filing date of its application. See Trademark Act Section 7(c); 15 U.S.C. §
1057(c); Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d, 1840, 1844 (TTAB
1995); Zirco Corp. v. Am. Tel. & Tel. Co., 21 USPQ2d 1542, 1544 (TTAB 1991).
Applicant relies on its constructive use date, and not any earlier date. Thus, Opposer
must establish proprietary rights in its pleaded common-law mark that precede
Applicant’s constructive use of its involved mark. See Otto Roth & Co. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981); RxD Media, LLC v. IP
Application Dev., 125 USPQ2d 1801, 1808 (TTAB 2018) (citing Larami Corp., 36
USPQ2d at 1845), aff’d, 2019 WL 1394369 (E.D. Va. Mar. 27, 2019), appeal docketed,
No. 19-1461 (4th Cir. Apr. 30, 2019).
In order for Opposer to prevail on a claim of likelihood of confusion based on its
ownership of common-law rights in a mark, the mark must be distinctive, inherently
or otherwise, and Opposer must show priority of use. See Otto Roth, 209 USPQ at 44.
Opposition No. 91233945
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It appears that both parties view BETTER CREDIT, BETTER LIFE as a distinctive
mark. We will do the same in making our determination. See, e.g., Giersch v. Scripps
Networks Inc., 90 USPQ2d 1020, 1023 (TTAB 2009) (“Respondent has not raised an
issue as to the distinctiveness of petitioner’s mark or otherwise put petitioner on
notice of this defense, and therefore we find that the mark is distinctive.”) (citing Wet
Seal Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (absent argument
or evidence from applicant, opposer’s mark deemed distinctive)).
Before discussing the testimony and evidence of record, we note that the parties
disagree as to the applicable standard of proof for priority. Opposer contends that it
need only prove priority by a preponderance of the evidence.29 Applicant, citing
among other cases, Hydro-Dynamics, Inc. v. George Putnam & Co., Inc., 811 F.2d
1470 , 1 USPQ2d 1772, 1773 (Fed. Cir. 1987), maintains that the appropriate level of
proof is clear and convincing evidence because Opposer filed an intent-to-use
application, which is a change in position that it was using the mark before
Applicant’s constructive use date.30
Applicant’s reliance on Hydro-Dynamics is misplaced. The heightened standard of
clear and convincing evidence applies only in instances “[w]here an applicant seeks
to prove a date earlier than the date alleged in its application.” Id. Otherwise, “the
decision as to priority is made in accordance with the preponderance of the evidence.”
Id. See also Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1834 (TTAB

29 18 TTABVUE 23.
30 19 TTABVUE 19.
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2013). (“[O]pposer must prove by a preponderance of the evidence that its common
law rights were acquired before any date upon which applicant may rely.”). In this
case, Opposer filed an intent-to-use application, and it has not yet filed an allegation
of use under Trademark Act § 1(c) or (d). Because Opposer has not yet alleged any
dates of use in its application, this is not a case in which Opposer “seeks to prove a
date earlier than the date alleged in its application.” Hydro-Dynamics does not apply.
Applicant also argues that “[i]f Progrexion is found to have standing pursuant to
that application, then it should be held to have admitted that Progrexion has never
used the BCBL mark in commerce, as it filed an ‘Intent to Use’ trademark
application.”31 However, the filing of an intent-to-use application is in no way an
admission of non-use or otherwise inconsistent with actual use of the mark. See Corp.
Document Servs. Inc. v. I.C.E.D. Mgmt. Inc., 48 USPQ2d 1477, 1479 (TTAB 1998)
(“An intent-to-use applicant is entitled to rely upon actual use, or use analogous to
trademark use, prior to the constructive use date of the intent-to-use application.”).
We conclude that priority must be determined by a preponderance of the evidence.
A. Opposer’s Testimony and Evidence
1. Lexington Law and CreditRepair.com
To establish its priority, Opposer relies on the use of BETTER CREDIT, BETTER
LIFE through affiliates John C. Heath Law firm d/b/a Lexington Law (“Lexington
Law”) and CreditRepair.com, Inc. (“CreditRepair.com”).32

31 19 TTABVUE 16.
32 Although there is no specific testimony related to CreditRepair.com’s entity type, we know
from the witness testimony that its full name is CreditRepair.com Inc., which indicates that
Opposition No. 91233945
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Lexington Law is affiliated with Opposer through licensing and other agreements
and provides credit repair and counseling services.33 Lexington Law’s licensing
agreements, designated confidential, provide for the licensing of intellectual property
products as well as “a proprietary credit repair system and related software.”34 The
original and amended and restated licensing agreements also “provide that any
intellectual property developed by or for . . . Lexington Law belongs to Progrexion
IP.”35 The Kamerath testimony quotes from and relies on these general terms in the
confidentially filed original and restated and amended licensing agreements but does
not reference any provision in these agreements that specifically identifies BETTER
CREDIT, BETTER LIFE as intellectual property of Opposer.36
Opposer and CreditRepair.com are under the “Progrexion family” of companies.37
Opposer and CreditRepair.com are held by and controlled by PGX Holdings, Inc.
(“PGX Holdings”).38 Although the testimony relating to the nature of Opposer’s

it is an incorporated entity. Kamerath Decl., ¶ 2, 7 TTABVUE 2; Johnson Decl., ¶ 3, 7
TTABVUE 12.
33 Kamerath Decl., ¶ 3-4, 7 TTABVUE 3; Van Wagoner Decl., ¶ 3, 7 TTABVUE 81; Johnson
Decl., ¶ 18, 7 TTABVUE 14.
34 Kamerath Decl., ¶ 11, 7 TTABVUE 4; Aston Decl., ¶ 7, 7 TTABVUE 29. According to Mr.
Kamerath, Opposer entered into a 2010 licensing agreement, and “amended and restated”
the licensing agreement in 2012 and 2014. Kamerath Decl., ¶¶ 3, 4, 7 TTABVUE 3.
Confidential exhibits referenced in the Kamerath Declaration are posted at 6 TTABVUE.
35 Johnson Decl., ¶ 19, 7 TTABVUE 14.
36 Kamerath Decl., 7 TTABVUE 2-11.
37 Johnson Decl., ¶¶ 1, 3, 7 TTABVUE 11-12.
38 Johnson Decl., ¶ 6, 7 TTABVUE 12.
A holding company is defined as “a Joint stock company that controls another company or
companies. Ownership may be complete (100%) or partial (ownership of 50%+ of the voting
shares in the company). Such ownership confers powers to control the policies of subsidiary
Opposition No. 91233945
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business and its relationship to the other Progrexion family companies has been
designated confidential, we can say generally that Opposer has an affiliate
relationship with CreditRepair.com, and that Opposer’s assets include intellectual
property.39 CreditRepair.com offers credit repair and counseling services that include
helping consumers repair and monitor their credit, pulling consumer credit reports
and analyzing them in order to create a plan to improve the consumer’s credit reports,
acting as a liaison with credit bureaus to ensure appropriate changes are made to
consumers’ credit reports, and providing consumers with tools to monitor their credit
reports.40 CreditRepair.com “markets and sells its services through direct sales
personnel and/or affiliates, website, email, social media, and radio. As the name
implies, CreditRepair.com is primarily a website through which credit repair services
may be marketed and sold to consumers.”41
2. Opposer’s quality control
Jeff Johnson is Chairman and CEO of PGX Holdings, Progrexion Holdings, Inc.
(“Progrexion Holdings”), Progrexion Marketing, Inc. (“Progrexion Marketing”), and

companies.” Collins Dictionary of Business, (3d ed. 2002), https://financialdictionary.the free
dictionary.com/ holding+company. Accessed May 2, 2019.
The Board may take judicial notice of dictionary definitions, including online dictionaries,
which exist in printed format. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006);
See also Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). We take judicial notice of this
definition.
39 Johnson Decl., ¶¶ 13, 19, 16, 20, 7 TTABVUE 13, 14, 16; Aston, Decl., ¶ 7, 7 TTABVUE
29; Petersen Decl., ¶ 3, 7 TTABVUE 49.
40 Johnson Decl., ¶¶ 13, 14, 7 TTABVUE 13.
41 Aston Decl., ¶ 24, 7 TTABVUE 33.
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Opposer Progrexion IP, Inc. (“Progrexion IP”).42 PGX Holdings “hold[s] and
exercise[s] control over the Progrexion family of companies, which includes, among
others, Progrexion Holdings, Progrexion Marketing, Progrexion ASG, Inc.
(Progrexion ASG), Progrexion IP, and CreditRepair.com, Inc.”43 In these positions,
Mr. Johnson works closely with “each of the Progrexion companies to maintain the
quality and content of the goods and services we offer to consumers.”44 Mr. Johnson
oversees, directs and manages the business activities of these Progrexion companies,
the goods and services offered by them, and the marketing and advertising efforts for
these companies.45 As the Chairman and CEO of Opposer, Mr. Johnson makes
decisions to ensure the “continued quality of the credit repair and counseling services
offered by Creditrepair.com” as well as “the manner in which the BETTER CREDIT,
BETTER LIFE mark is used” in connection with the services.46 Mr. Johnson monitors
and reviews CreditRepair.com’s credit repair and counseling services, and from time
to time, reviews and evaluates the work of CreditRepair.com and the goods or services
it offers to its customers.47 Mr. Johnson also serves as Chairman and CEO of
Progrexion Marketing which handles “[m]arketing and brand management for the
Progrexion family of companies.”48 Mr. Johnson carefully oversees “the work of

42 Johnson Decl., ¶ 1, 7 TTABVUE 11.
43 Johnson Decl., ¶¶ 6-7, 7 TTABVUE 12.
44 Johnson Decl., ¶ 12, 7 TTABVUE 13.
45 Johnson. Decl., ¶ 13, 7 TTABVUE 13.
46 Johnson. Decl., ¶¶ 1, 12-13, 7 TTABVUE 11, 13.
47 Johnson. Decl., ¶ 15, 7 TTABVUE 14.
48 Johnson. Decl., ¶ 16, 7 TTABVUE 14.
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Progrexion Marketing and as it pertains to intellectual property belonging to
Progrexion IP.”49
3. Lexington Law’s use of Better Credit, Better Life
The BETTER CREDIT, BETTER LIFE mark was first conceived for and used by
Lexington Law, in 2010, both internally and “to a lesser extent externally with
customers and potential customers.”50 Lexington Law used BETTER CREDIT,
BETTER LIFE internally on “visible” signage, purchased in 2013.51 There is no
testimony in the record as to when this signage was put into use and whether this
signage was visible to customers during the rendering of the services.
52
Lexington Law also used BETTER CREDIT BETTER LIFE externally in its
marketing brochure, shown below, but no dates of use of the marketing brochure have

49 Id.
50 Van Wagoner Decl., ¶¶ 5, 7, 11, 7 TTABVUE 81, 82; Aston Decl., ¶¶ 5, 6, 7 TTABVUE 29;
Johnson Decl., ¶ 17, 7 TTABVUE 14.
51 Van Wagoner Decl., ¶¶ 11, 12a, 7 TTABVUE 82-83.
52 Van Wagoner Decl., ¶¶ 11, 12a and Exhibit E, 7 TTABVUE 82-83, 96.
Opposition No. 91233945
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been provided by the witness testimony.53 There also is no testimony or evidence
related to sales of services rendered under the BETTER CREDIT, BETTER LIFE
mark by Lexington Law.
54
4. CreditRepair.com’s use of Better Credit, Better Life
Although the BETTER CREDIT, BETTER LIFE tagline “was first used and
developed for use [in 2010] by a Progrexion IP affiliate and licensee,” Lexington Law,

53 Van Wagoner Decl., ¶¶ 12a, 12c, 12e, Exhibits E, H and J, 7 TTABVUE 82-83, 96, 108, 142.
Petersen Decl., ¶ 7, Exhibit B, 7 TTABVUE 50, 58.
54 Van Wagoner Decl., Exhibit H, 7 TTABVUE 108.
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Opposer later directed external use in 2014 by CreditRepair.com alone.55 Opposer’s
witnesses testified that BETTER CREDIT, BETTER LIFE has been “continuously
used” from April 2014 to the present by CreditRepair.com.56
The first external uses by CreditRepair.com were on social media in April 2014.57
The social media platforms used by CreditRepair.com were Facebook, Google+,
YouTube and Twitter.58 Social media posts using the BETTER CREDIT, BETTER
LIFE tagline were uploaded to CreditRepair.com’s social media platforms “on or
about the dates listed: Google+ (April 2014); YouTube (July 2014); Twitter (April
2014); and LinkedIn (Summer 2014).”59 Prior to and including March 16, 2016,
BETTER CREDIT, BETTER LIFE was also used on the CreditRepair.com website,

55 Aston Decl., ¶¶ 5, 6, 7 TTABVUE 29; Johnson Decl. ¶ 17, 7 TTABVUE 14.
56 Madsen Test., 12 TTABVUE 56-57; Johnson Decl., ¶ 20, 7 TTABVUE 14.
57 Petersen Decl. ¶¶ 8, 12, 7 TTABVUE 50-51; Madsen Decl., ¶ 8, 7 TTABVUE 165.
58 Aston Decl., ¶ 9, 7 TTABVUE 30; Pino Decl., ¶ 3, 7 TTABVUE 41.
59 Pino Decl., ¶ 6, 7 TTABVUE 41; Petersen Test., 13 TTABVUE 52-54. Ms. Petersen’s
declaration testimony references an email confirming her findings of first use dates of
BETTER CREDIT, BETTER LIFE on social media, attached as Exhibit F. Petersen Decl.,
¶ 12, 7 TTABVUE 51, 78-79. Although some of these images provided as documentary
evidence of CreditRepair.com’s use are undated, testimony in the record indicates their
placement and use between April 2014 through March 2016. Petersen Decl. ¶ 12, 7
TTABVUE 51; Petersen Test., 13 TTABVUE 54-55; Madsen Decl., ¶ 8, 7 TTABVUE 165;
Madsen, Test., 12 TTABVUE 56-57, 61. Ms. Petersen testified that she identified the images
used around the April 2014 time frame by accessing the social media accounts by story date,
by clicking on the image to obtain the original post date, and through a project management
tool. Petersen Test., 12 TTABVUE 52-54. Ms. Madsen testified to CreditRepair.com’s
“extensive social media use” and the display of the images in the social media campaigns that
ran during the time period of April 2014 through March 2016. Madsen Test., 12 TTABVUE
56-57. During the campaigns, Ms. Madsen verified the images were placed on the account
pages as she was “often on the social media accounts” and would see the “banners placed,”
and she was a follower of the Facebook and Twitter accounts. Id. According to Ms. Madsen,
the Facebook page cover photo is still used. Id. at 61.
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in radio advertising,60 other advertising materials (electronic marketing brochure),
and banner ads made available to affiliates between March and April 2014.61 The
mark was also used on stress balls and T-shirts, with both items being given to
employees.62
A Facebook “cover photo” and two Facebook pages with the cover photo image that
include the dates the page was “liked” are below.63 The profile or cover photo used on
Facebook was one that was rotated with other images; Opposer’s witness did not
know how often it was displayed during the relevant period.64

60 The reports provided in connection with the radio spots identify the dates, times, stations,
and air dates of the advertisement that mentioned the BETTER CREDIT, BETTER LIFE
tagline. Madsen Decl., ¶ 10b, 7 TTABVUE 166. The radio spot that aired multiple times prior
to the March 17, 2016 date. Madsen Test., 12 TTABVUE 38. The witness was unable to testify
as to the effectiveness or awareness of the radio advertisement. Id. at 39.
61 Aston Decl., ¶ 11, 7 TTABVUE 30; Madsen Decl. ¶¶ 10b-c, 10f, 7 TTABVUE 166, 167;
Madsen Test., 12 TTABVUE 52.
Ms. Madsen testified as to seeing the banner ads on multiple affiliate websites “as early as
the summer of 2014” and “used regularly and continuously from that point forward.” Madsen
Test., 12 TTABVUE 51.
62 Petersen Decl., ¶¶ 9-10, 7 TTABVUE 50-51; Madsen Decl. ¶ 4, Exhibit A, 7 TTABVUE 164,
172.
63 Petersen Decl., ¶ 12 Exhibit F, 7 TTABVUE 51, 78.
64 Madsen Test., 12 TTABVUE 61.
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65
66

65 Petersen Decl., ¶ 12 and Exhibit F, 7 TTABVUE 51, 78.
66 Id.
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67
A Google+ image used in April 2014:68

A Twitter page image is shown below.69 Ms. Petersen’s email exhibit states that
the Twitter cover page image was “in use since assumed April 2014.”70 Under cross-

67 Id.
68 Id.
69 Id. at 51, 78-79; Petersen Test., 13 TTABVUE 43, 53.
70 Petersen Decl., Exhibit F, 7 TTABVUE 78.
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examination, Ms. Petersen acknowledged that the Twitter page image provided was
a recent post and did not reflect an April 2014 date. Ms. Petersen did not explain how
she verified that the Twitter page cover image was in use in April 2014, or before the
March 17, 2016 date. She did not explain why she was unable to locate or provide
evidence of a Twitter page cover image with an earlier use date.

The YouTube page image used in 2014:71

71 Petersen Decl., ¶ 12 and Exhibit 12, 7 TTABVUE 51, 79.
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A portion of an electronic marketing brochure from February 2015:72

According to Ms. Madsen’s testimony, marketing emails were created and sent “at
least” between June 10, 2014 and June 10, 2016.73 Below is a portion of an email with
the BETTER CREDIT, BETTER LIFE tagline sent to consumers “at least between
June 2014 and June 2016” for “month 4” of an ongoing 2015 email marketing

72 Madsen Decl., 10d, Exhibit F, 7 TTABVUE 166, 230. The brochure is accessed from a link
in an email that directs the reader to a web page. Madsen Test., 12 TTABVUE 33.
73 Madsen Decl., ¶ 10e, Exhibit G, 7 TTABVUE 166-67.
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campaign.74 The originating email of the campaign began in February 2015, with
follow-up emails on a timeline; consumers were contacted over a period of many
months.75

Other emails sent to consumers during the 2015 campaign are in a similar letter
format and include the tagline in the same lettering and location:

74 Madsen Decl., ¶ 10e, Exhibit G, 7 TTABVUE 166-67, 241-43. The accompanying email
campaign report shows the number of emails sent, the bounce rate, the delivery rate, the
number of emails opened and click through rates. Madsen Test., and Exhibit 3, 12 TTABVUE
45-51, 141-43. The initial email for the 2015 marketing campaign has not been provided.
75 Madsen Test., 12 TTABVUE 58-59. The witness described the email campaign as a “drip
campaign.” Id. at 58.
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76

Below are excerpts from email letters for months 5, 7, 8 and 9 of the 2015
campaign. The last paragraphs of these email letters directly precede the tagline
and reference the consumer credit repair services in a call to action:77

***
Credit repair is a process, one that takes motivation and education.
Contact me directly if you’re looking for an advocate. … I can help you
find the tools to succeed.78

***

If your credit is holding you back from living your life as a money
savvy person, I can help. Call me now … for a free TransUnion credit
report and together we’ll craft a personalized plan to help you employ
these practices in your life.79

***

If you’ve faced the passing of a loved one unprepared and felt the
impact on your credit report. I can help. Please call me today … to
learn how your report can be vindicated from unfair or inaccurate
items harming your score.80
***

76 Madsen Decl., Exhibit G, 7 TTABVUE 235-281.
77 Ms. Madsen’s declaration does not provide a “month 6” email as an exhibit.
78 Madsen Decl., Exhibit G, Month 5, 7 TTABVUE 244-246.
79 Madsen Decl., Exhibit G, Month 7, 7 TTABVUE 247-249.
80 Madsen Decl., Exhibit G, Month 8, 7 TTABVUE 250-252.
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If your student loans have already negatively impacted your score, I’d
love to help in any way that I can. Call me today … to find out how
CreditRepair.com can assist you.81

Opposer’s use in a banner advertisement is shown below:82

B. Arguments and Analysis
1. Can Opposer rely on use of BETTER CREDIT, BETTER LIFE by
Lexington Law and Credit Repair.com?
Applicant argues that Opposer cannot claim the benefit of the use of BETTER
CREDIT, BETTER LIFE by Lexington Law or CreditRepair.com. As to licensee
Lexington Law, Applicant argues that the use by Lexington Law does not inure to
Opposer’s benefit because the licensing agreement does not identify the BETTER
CREDIT, BETTER LIFE mark.

81 Madsen Decl., Exhibit G, Month 9, 7 TTABVUE 253-255.
82 Madsen Decl., ¶ 10f and Exhibit I, 7 TTABVUE 167, 286.
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Ownership rights in a trademark or service mark may be acquired and maintained
through the use of the mark by a controlled licensee even when the only use of the
mark has been made by the licensee. Cent. Fid. Banks, Inc. v. First Bankers Corp. of
Fla., 225 USPQ 438, 440 (TTAB 1984). Lexington Law is a controlled licensee because
the license agreement requires Lexington Law to “maintain the quality of the services
it offers” and “to submit to inspection by Opposer or its authorized representative of
the facilities used and services offered by Lexington Law under the agreement.”83
Opposer’s licensing agreements with Lexington Law also cover the development and
use of intellectual property and provide that intellectual property products produced,
created or developed related to the licensed materials and services “shall
automatically become the property of [Progrexion IP].”84 Although BETTER CREDIT,
BETTER LIFE was not specifically identified in the licensing agreements as a mark,
the testimony and evidence establish that the BETTER CREDIT, BETTER LIFE
tagline was developed for Lexington Law in connection with these agreements and
that the provisions of the agreements relating to the ownership and use of developed
intellectual property would apply. Therefore, Opposer was the owner of the BETTER
CREDIT, BETTER LIFE tagline under the licensing agreement and any use by
Lexington Law of BETTER CREDIT, BETTER LIFE would inure to Opposer’s
benefit.

83 Kamerath Decl., ¶ 10, 7 TTABVUE 4.
84 Kamerath Decl., ¶ 11, 7 TTABVUE 4.
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As to CreditRepair.com, Applicant argues that CreditRepair.com’s use does not
inure to Opposer’s benefit because CreditRepair.com is neither Opposer’s parent nor
subsidiary and there is no written agreement between the companies regarding the
use of BETTER CREDIT, BETTER LIFE.85
Opposer’s testimony indicates that Progrexion IP and CreditRepair.com are
affiliates and that they are both held by and under the control of PGX Holdings. Two
companies may be affiliated if they are controlled by a separate, third party.86
Trademark Act Section 5, 15 U.S.C. § 1055, in pertinent part, provides that
“[w]here a registered mark or a mark sought to be registered is or may be used
legitimately by related companies, such use shall inure to the benefit of the registrant
or applicant for registration, and such use shall not affect the validity of such mark
or of its registration, provided such mark is not used in such manner as to deceive
the public.” The term “related company,” as defined by Trademark Act Section 45, 15
U.S.C. § 1127, means “any person whose use of a mark is controlled by the owner of
the mark with respect to the nature and quality of the goods or services on or in
connection with which the mark is used.”87

85 19 TTABVUE 26.
86 “The definition of “affiliated company” will vary, depending on the context in which the
term is used. … Companies also may be affiliated when they are subsidiaries of a third
company.” Webster’s New World Finance and Investment Dictionary (2010).
https://www.yourdictionary.com/affiliated-company. Accessed April 4, 2019. We take judicial
notice of this definition.
87 The term “person” includes a “juristic person.” Section 45 of the Trademark Act, 15 U.S.C.
§ 1127. A juristic person is defined to include “a firm, corporation, union, association, or other
organization capable of suing and being sued in a court of law.” Id.
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In cases where the involved entities are sister corporations, the fact that two sister
corporations are controlled by a single parent corporation does not necessarily mean
that they are “related” companies within the meaning of the statute. Great Seats, Ltd.
v. Great Seats, Inc., 84 USPQ2d 1235, 1243 (TTAB 2007). Only if the other sister
corporation exercises appropriate control over the nature and quality of the goods or
services on or in connection with which the mark is used will use by one sister
corporation be considered to inure to the benefit of the other sister corporation.
Moreno v. Pro Boxing Supplies, 124 USPQ2d 1028, 1035 (TTAB 2017); Great Seats,
84 USPQ2d at 1242. Thus, to establish that Opposer and CreditRepair.com, affiliated
companies, are “related companies” under the Trademark Act, Opposer must show
that it controlled CreditRepair.com’s use of the mark with respect to the nature and
quality of the services rendered under the mark.
Opposer’s Chairman and CEO Jeff Johnson testified that he makes decisions to
ensure the continued quality of CreditRepair.com’s services and the manner of
BETTER CREDIT, BETTER LIFE’s use which includes monitoring and reviewing
the services, reviewing and evaluating CreditRepair.com’s work and the goods and
services offered by CreditRepair.com from time to time, as well as managing and
directing its advertising and marketing. This testimony is sufficient to establish
Opposer’s control over the nature and quality of the services rendered by
CreditRepair.com under the BETTER CREDIT, BETTER LIFE mark. In this case,
there is no formal written agreement in the record; however, the Board recognizes
oral and informal agreements. See, e.g., Nestle Co. Inc. v. Nash-Finch Co., 4 USPQ2d
Opposition No. 91233945
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1085, 1089 (TTAB 1987) (written license not required); Basic Inc. v. Rex, 167 USPQ
696, 697 (TTAB 1970) (“An oral license is sufficient to show a related company
condition and there are elements of control between applicant and the licensee.”). It
is apparent there is at least an informal agreement as to CreditRepair.com’s external
use of BETTER CREDIT, BETTER LIFE.88 Opposer, as an affiliate to
Creditrepair.com, exercises appropriate control over the nature and quality of the
goods or services on or in connection with which BETTER CREDIT, BETTER LIFE
is used. Thus, contrary to Applicant’s arguments, CreditRepair.com’s use inures to
Opposer’s benefit.
Applicant also argues that there is no evidence that a consumer would believe that
Opposer, Lexington Law, and CreditRepair.com comprise a single source of the
services. However, the witness testimony demonstrates that there is a unity of
control. Jeff Johnson, the CEO and Chairman of PGX Holdings, the holding company
that controls Opposer and CreditRepair.com, as well as the CEO and Chairman of
Opposer, provided detailed testimony to establish how he controlled the nature and
quality of CreditRepair.com’s services used in connection with BETTER CREDIT,
BETTER LIFE as well as his control over the manner of use of BETTER CREDIT,
BETTER LIFE. As to any pre-2014 external use of BETTER CREDIT, BETTER
LIFE, unity of control was shown by Eric Kamerath’s testimony describing Opposer’s
quality control, which would have been overseen by Jeff Johnson, Chairman and CEO
of PGX Holdings and Opposer, over licensee Lexington Law’s products and services,

88 Van Wagoner Decl., ¶ 13, 7 TTABVUE 84.
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and which included the use of any intellectual property developed under the license.
Applicant does not point to any evidence that demonstrates a failure on the part of
Lexington Law or CreditRepair.com to meet Opposer’s requirements to provide
products and services of acceptable quality under BETTER CREDIT, BETTER LIFE.
Thus, there is no evidence that Opposer’s quality control was ineffectual or
nonexistent.
2. Does CreditRepair.com’s and Lexington Law’s use of BETTER
CREDIT, BETTER LIFE constitute technical service mark use?
Applicant argues that in its internal marketing materials CreditRepair.com does
not refer to BETTER CREDIT, BETTER LIFE as a service mark but as a tagline. But
a tagline is just another name for a slogan, and slogans may be trademarks.89 In re
Wilderness Grp., Inc., 189 USPQ 44, 45 (TTAB 1975) (citing cases); see also
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1213.05(b)(i) (Oct. 2018)
(“A registrable slogan is one that is used in a trademark sense and functions as a
trademark or service mark….”). Applicant also argues that Opposer was not using
BETTER CREDIT, BETTER LIFE “as a trademark” and that Opposer did not include
the trademark (“TM”) or service mark (“SM”) designation to provide public notice of
use of the tagline as a mark. “The fact that no symbol, such as ‘TM’ or ‘SM,’ is used
to designate an alleged mark is also some evidence that the phrase is not being used
in a trademark or service mark sense.” In re Wakefern Food Corp., 222 USPQ 76, 78-

89 Tagline is defined as “An often repeated phrase associated with an individual,
organization, or commercial product; a slogan.” American Heritage Dictionary of the English
Language, (5th ed. 2016), https://www.thefreedictionary.com/tagline. Accessed April 4, 2019.
We take judicial notice of this definition.

Opposition No. 91233945
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79 (TTAB 1984). That said, there is certainly no requirement that the “TM” or “SM”
symbol must be used in connection with an asserted trademark or service mark, and
use of those designations does not establish that the matter so identified is a
trademark. See In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)
(noting that the use of “TM” may “lend[ ] a degree of visual prominence” to the
designated matter, but is not dispositive of whether the designated matter functions
as a mark (quoting In re Dell, Inc., 71 USPQ2d 1725, 1729 (TTAB 2004)). The question
is whether relevant purchasers recognize the matter as an indication of source, not
whether it is explicitly identified as such.
In order to demonstrate technical service mark use as defined in the Trademark
Act, it must be shown that the mark has been used or displayed in the sale or
advertising of the services and that the services have been rendered in commerce. See
Trademark Act § 45, 15 U.S.C. § 1127; Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d
1350, 90 USPQ2d 1301, 1305 (Fed. Cir. 2009).
We consider whether BETTER CREDIT, BETTER LIFE, as used, would have
been recognized in itself as an indication of source for Lexington Law’s and
CreditRepair.com’s services. This necessitates a determination as to whether
BETTER CREDIT, BETTER LIFE is used in such a manner to make it known to
purchasers and to have such individuals associate it with a source for the services.
We therefore consider whether the slogan or tagline is used in connection with the
sale, rendering or performance of the services or whether, as used, the slogan or
tagline includes a reference to the services. Cf. In re Metriplex, Inc., 23 USPQ2d 1315,
Opposition No. 91233945
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1316 (TTAB 1992) (indicating that a specimen that does not explicitly refer to the
services may be acceptable if it “show[s] use of the mark in the rendering, i.e., sale,
of the services”). We also consider whether the designation creates a commercial
impression separate and apart from the other material appearing on the signage, the
social media uses, the electronic and print brochure, the banner advertisement, or
the email solicitation letters so that it will be recognized as an indication of origin for
the particular product or service. See Procter & Gamble Co. v. Keystone Auto.
Warehouse, Inc., 191 USPQ 469, 474 (TTAB, 1976), and cases cited therein. We
discuss the usages of BETTER CREDIT, BETTER LIFE separately, here, and in our
discussion of analogous use, but we have viewed all the evidence on which Opposer
bases its claim of prior use “as a whole, as if each piece of evidence were part of a
puzzle which, when fitted together, establishes priority,” to see if Opposer has
established prior use. W. Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 31 USPQ2d
1660, 1663 (Fed. Cir. 1994).
We find that Opposer has not proven priority based on Lexington’s Law’s use of
BETTER CREDIT, BETTER LIFE. As to the internal signage, we do not know the
date when first used, and there is no testimony that consumers were exposed to these
uses during the rendering of services. As to the brochure, there is no testimony
relating to its distribution date.
As to CreditRepair.com’s social media and other Internet use of BETTER
CREDIT, BETTER LIFE, the cover images or header images for Facebook, Twitter,
Google+ and YouTube, and the use of BETTER CREDIT, BETTER LIFE on the
Opposition No. 91233945
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banner advertisement, do create a separate and distinct commercial impression,
given the size and position of BETTER CREDIT, BETTER LIFE on the cover or
header images and banner advertisement. But the Facebook, Google+ and YouTube
header images and the banner advertisement do not include textual references to any
services, only a reference to CreditRepair.com’s website, although the banner
advertisement does include the additional text “learn more.” We find that the
Facebook, Google+ and YouTube pages or header images and the banner
advertisement do not constitute technical service mark use because there are no
references to CreditRepair.com’s services to create an association for the consumer
between BETTER CREDIT, BETTER LIFE and CreditRepair.com’s services.
The Twitter page header image does create an association between the BETTER
CREDIT, BETTER LIFE and the services by the wording “We are the Credit Repair
Experts. Our motto is Better Credit Better Life.” But the testimony in the record does
not clearly establish that this header image and reference to the services was in use
prior to Applicant’s March 17, 2016 constructive use date. Therefore, we cannot rely
on this evidence for purposes of priority as technical service mark use.
With regard to the email marketing letters and electronic brochure, although
BETTER CREDIT, BETTER LIFE is shown on the second page of both the multi-
page letter and the brochure, the slogan is not buried within a line of text but is set
out separately from the other text in a distinctly different color and typeface. Cf. In
re McDonald’s Corp., 229 USPQ 555, 556 (TTAB 1985) (“It is not that the subject
matter must be more prominent than everything else on the specimens. On the other
Opposition No. 91233945
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hand, it must not blend so well with other matter on the specimens that it is difficult
or impossible to discern which element is supposed to be the service mark.”); In re
Niagara Frontier Servs., Inc., 221 USPQ 284, 285 (TTAB 1983) (while slogan “We
Make It, You Bake It!” appears on two separate lines of the five line message, “it
reads as a natural part of the larger thought, is presented in the same type size and
style as the other matter (with the exception of the term PIZZA which appears in all
capital letters)”).
The email marketing letters’ call to action, which directly precede the BETTER
CREDIT, BETTER LIFE slogan, explain the nature of the services. For example, the
letter from the fourth month of the 2015 email campaign states: “If you’ve been a
victim of fraud, or had your credit score damaged by closing a credit account,
CreditRepair.com can help. …We’ll look at the report together and put a plan in place
to clean up your credit and grow your score.”90 The services are also referenced in the
email letters by the wording that follows below the BETTER CREDIT, BETTER LIFE
slogan: “Get on the path to credit improvement with our proven service.” As to the
electronic brochure, reference to the services is shown below the BETTER CREDIT,
BETTER LIFE slogan by the sentence “start repairing your credit today.”
Contrary to Applicant’s arguments, we find that this evidence shows use of
BETTER CREDIT, BETTER LIFE in the manner of a service mark in connection
with the email marketing letters and the electronic brochure.

90 Madsen Decl., Exhibit G, 7 TTABVUE 241-242.
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The testimony is consistent and clear that Opposer was offering the services under
BETTER CREDIT, BETTER LIFE prior to March 17, 2016, and the documentary
evidence shows use in the manner of a service mark. Additionally, although less clear
and detailed, the testimony indicates that Opposer was rendering services under
BETTER CREDIT, BETTER LIFE prior to March 17, 2016.91 We find that Opposer
has established technical service mark use of BETTER CREDIT, BETTER LIFE prior
to Applicant’s constructive use date.
Because Applicant stipulated that the parties’ use of their marks is likely to cause
confusion, our finding that Opposer established priority is sufficient to render
judgment in Opposer’s favor.
3. Whether Opposer has established use analogous to service mark
use?
For completeness, we consider whether, in the alternative, Opposer’s evidence
establishes use analogous to service mark use. Applicant argues that “[t]he evidence
before this Board conclusively proves that Progrexion’s use of BCBL was non-
trademark use, while the evidence conspicuously absent (i.e., evidence of substantial
impact on the purchasing public) is dispositive.”92 Opposer argues, on the other hand,
that the uses described above “also constitute the kind of analogous use sufficient to

91 Johnson Decl., ¶¶ 13-14, 7 TTABVUE 13; Van Wagoner Decl., ¶ 14, 7 TTABVUE 84; Aston
Decl., ¶ 7, TTABVUE 29. Applicant has not argued that Opposer’s affiliate was not rendering
services under the mark. We consider Applicant’s arguments to be aligned with those priority
cases where the party was selling goods or rendering services but had not used the
designation in the manner of a mark.
92 19 TTABVUE 22.
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establish priority in and with PROGREXION”93 if its uses do not constitute technical
service mark use.94
Before a prior non-technical trademark or service mark use can become an
analogous use sufficient to create proprietary rights, a party must show prior use
sufficient to create an association in the minds of the purchasing public between the
mark and the services. Malcolm Nicol & Co. v. Witco Corp., 881 F.2d 1063, 11
USPQ2d 1638, 1639 (Fed. Cir. 1989). The activities claimed to constitute non-
technical trademark or service mark use, or analogous use, must have a substantial
impact on the purchasing public. T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 37
USPQ2d 1879, 1882 (Fed. Cir. 1996). See, e.g., Liqwacon Corp. v. Browning-Ferris
Indus., Inc., 203 USPQ 305, 308-309 (TTAB 1979) (“the use … must be an ‘open and
notorious’ use reaching purchasers or prospective purchasers of the goods or services
for which the mark is employed”).
We reject Applicant’s contention that we should draw a negative inference from
the fact that Opposer did not conduct a survey regarding whether the consuming
public associates BETTER CREDIT, BETTER LIFE with Opposer or its services.
“The cases on analogous use have not required that the opposer proffer survey
evidence or other direct evidence of the consuming public’s identification of the target
word or phrase with the opposer as the source of a given product or service.” T.A.B.
Sys. v. PacTel Teletrac, 37 USPQ2d at 1881. Rather, “we may infer the fact of

93 18 TTABVUE 28.
94 19 TTABVUE 30.
Opposition No. 91233945
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identification of the mark with the party on the basis of indirect evidence regarding
the party’s use of the word or phrase in advertising [such as] brochures, catalogs,
newspaper ads, and articles in newspapers and trade publications” as well as online
advertising. Id.
As stated above, we do not rely on Lexington Law’s use on signage or the print
brochure due to lack of sufficient testimony regarding its use. We also cannot
determine the impact on the consumer of CreditRepair.com’s electronic brochure
(accessible from a webpage) because Opposer’s witness did not provide any
information as to how often CreditRepair.com’s electronic brochure was viewed.
As to Opposer’s social media use, as stated above, except for the Twitter page,
which we do not rely on for the reasons already discussed, there is no reference to the
services. There also is no testimony relating to the extent of consumer exposure to
the social media platforms (such as the number of followers, likes, or other analytics)
during the relevant period prior to March 17, 2016.95 To the extent the documentary
evidence demonstrating CreditRepair.com’s use of BETTER CREDIT, BETTER LIFE
on various social media accounts bears figures that would purport to show the
exposure of these pages to the public, those figures are hearsay and do not establish
the truth of the matter.96

95 There is testimony that “as of March 19, 2018, … 101,579 people have liked the
CreditRepair.com Facebook page, and 100,969 people are following the CreditRepair.com
Facebook page.” Pino Decl., ¶ 7, 7 TTABVUE 41-42.
96 In any event, these numbers do not show significant exposure to the public from the social
media platforms. The social media exhibits show on their face the following: YouTube channel
(274 subscribers), Twitter (1684 followers and 283 likes); Facebook (likes from Natalie Pino
Opposition No. 91233945
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As to the BETTER CREDIT, BETTER LIFE banner advertisement, as stated
above, there is no reference to the services. The testimony indicates that it was a
“popular ad” for affiliates and was used (and still is used) regularly by affiliates to
generate sales leads,97 but there is no specific testimony related to how often the
banner ad was used or its impact on consumers (e.g., number of times the ad was
served (impressions), the click through rates, number of viewers or potential viewers,
or number of conversions) during the period prior to March 17, 2016. Testimony in
the record also indicates that radio advertisements ran in media markets in the
United States from March 14 through April 17, 2016.98 One advertisement that,
according to the testimony, included the BETTER CREDIT, BETTER LIFE tagline
ran multiple times two days prior (March 14 - March 16, 2016) to the critical March
17, 2016, date. But there is no testimony related to impressions, reach or market
share resulting from the radio advertisement, and Opposer’s witness could not speak
to the effectiveness or increased awareness for the March 14th - March 16th time
period.99 Opposer also points to its distribution of BETTER CREDIT, BETTER LIFE
T-shirts and stress balls to employees as a basis for priority, but these items were not
distributed to prospective purchasers.

and 10 others on March 14, 2014; Likes from Paige Alsup, Natalie Pino and 43 others on
April 14, 2014). Petersen Decl., ¶ 12, 7 TTABVUE 75, 92-94.
97 Madsen Test., 12 TTABVUE 52.
98 Madsen Decl., 7 TTABVUE 165-66. The script of the radio advertisement was not provided.
99 Madsen Test., 12 TTABVUE 39.
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Lastly, we consider CreditRepair.com’s February 2015 email campaign. One
report evidencing the campaign covers the period from June 10, 2014 through June
10, 2016, while an excerpted second report covers the period from June 4, 2014
through February 29, 2016. As to the excerpted report, Applicant submits that we
should make an adverse inference against Opposer because this report fails to include
delivery information. As to the June 10, 2014 through June 10, 2016 report, Applicant
submits that this report is not reliable because it “includes a significant amount of
time that is after the Critical Date (i.e., March 17, 2016), [and] it cannot be relied
upon to accurately reflect e-mails sent only prior to the Critical Date.”100
We need not make an adverse inference regarding the June 4, 2014 - February 29,
2016 excerpted report, but have accorded it less probative weight. In connection with
the June 10, 2014 - June 10, 2016 report, Opposer’s witness testified that the
origination date for the email campaign was February 2015, with follow-up emails to
the consumer over a period of months.
Q Okay. Do you see anywhere on this document the same information that you
just identified in Exhibit 7?

A I do.·The top line of this under “Campaign” is “CR Infographic February 2015.”
Q Does that in any way refresh your recollection as to when this information, this
marketing particular campaign would have been sent out or used by
Progrexion?

A Yes. It would have been sent in February 2015.
Q … Are the other entries on this particular table, which is Exhibit 7 -- or Exhibit

100 19 TTABVUE 34.
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3, are they -- do you know whether or not they represent marketing pieces, e-
mails, et cetera, sent out in connection with the CR Infographic blast February
2015 campaign?

A So this shows that, yes, the CR Infographic blast campaign would have
happened in 2015, February of 2015.101

***
Q So once the original -- I just want to make sure we understand this. Once the
original blast goes out in February of 2015, can you tell me whether or not your
-- whether or not it’s your testimony that the following nine e-mails listed on
the table went out in successive months?

A That’s correct. It would be a series or a campaign that would then run its
course over those --that time frame.102

***
A This report shows the number of times these different e-mail campaigns were
sent during this two-year window. The name of the campaign indicates to me
the point of time that they were sent. Month 4 would indicate the fourth month
they were involved in one of our campaigns. Month 5 would mean Month 5 of
that campaign. Month 6, the sixth month of that campaign and so forth. And
then the same is to be said for days. They receive an initial transmission of an
e-mail, and then these are follow-up campaigns.103

***

Q The information with respect to the e-mails, as far as the time period
this report was ran, it has a period of time, a significant period of time
that ran after March 17, 2016, correct?

A I wouldn't call it a significant time, but there are a couple months, a few
months. But, again, this shows a campaign series that would have lasted
at least eight months beyond an initial e-mail. So this backs up at least

101 Id. at 45-46.
102 Id. at 46-47.
103 Madsen Test., 12 TTABVUE 20.
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eight months prior to June 16.104

105

106

104 Madsen Test., 12 TTABVUE 59.
105 Madsen Decl., Exhibit H, 7 TTABVUE 283.
106 Id. at 284.
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Based on the testimony, we can consider the portion of the June 10, 2014 - June
10, 2016 report in connection with the “CR Infographic Blast Feb 2015” and the CR
email months 4-9, all of which would have been sent prior to Applicant’s March 17,
2016 constructive use date.107 The campaign was a “drip campaign” that resulted in
an originating email with follow-up emails sent to these consumers over a period of
months.108 We also know from the testimony that different personalized email
templates with the BETTER CREDIT, BETTER LIFE tagline were sent to the
consumers based on the months of the campaign.109 As discussed above, these emails
included the BETTER CREDIT, BETTER LIFE tagline followed by the wording “Get
on the path to credit improvement with our proven service,” and a reference to the
credit repair services in the call to action, directly preceding the tagline.
Although the two reports are inconsistent as to the numbers of emails sent due to
the periods of time covered by the reports, both show that the campaign involved
sending a substantial number of consumer emails. We know from the June 2014 -
June 2016 report that the delivery rate was at least 99%, and we can infer a similar
delivery rate with the excerpted report that does not include the delivery rate. Even
if we consider the lower numbers of emails sent, based on the excerpted report, a

107 Ms. Madsen’s testimony did not address the CV campaign listed on the report, and given
the time frame of the report, we do not consider it.
108 Madsen Test., 12 TTABVUE 58-59.
109 Madsen Test., 12 TTABVUE 50. Although Applicant complains that email templates were
provided as evidence rather than actual emails to consumers, the testimony corroborates that
these were the templates used in the campaign, and sent to the customers in personalized
form. Madsen Test., 12 TTABVUE 16. (“Templates? I don't know if templates describes them,
but these are actual e-mails that were sent. Templates, yes, in that you can insert a name to
personalize them.”).
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substantial amount of consumers received and accessed these emails. Also, the 2015
email advertising campaign was of sufficient clarity and repetition using the
BETTER CREDIT, BETTER LIFE tagline to create the required identification with
the consumers who might be expected to purchase CreditRepair.com’s services. We
find that the email campaign sufficiently establishes priority based on use analogous
to service mark use.
Considering the evidence as a whole, we find in the alternative, that Opposer has
established by a preponderance of the evidence that it made analogous use of
BETTER CREDIT, BETTER LIFE prior to any date upon which Applicant may rely,
and that Opposer’s use was sufficient to create an association in the mind of the
relevant public with Opposer and its services.
V. Conclusion
As to priority, Opposer proved that it used BETTER CREDIT, BETTER LIFE as
a mark prior to Applicant’s constructive use date, or in the alternative, made
sufficient analogous use. As to likelihood of confusion, the marks are identical, the
services similar or related, and Applicant has stipulated that confusion is likely. We
find that Opposer has proven its Section 2(d) claim.
Decision: The opposition is sustained and registration to Applicant is refused.