TTAB Finds "THE JONES" for a Host of Services to be Primarily Merely a Surname

The Board affirmed a refusal to register the mark THE JONES for a laundry list of disparate services, including educational consulting, hotel accommodation, and beauty care [this is a Section 66(a) request for extension of protection filed by a UK company], finding the mark to be primarily merely a surname under Section 2(e)(4). Applicant argued that "[g]iven the overwhelming frequency with which consumers are accustomed to encountering marks comprised of THE and a surname, for hotel and hotel-related services, the public is most likely to perceive [THE JONES] as a source indicator for such services." The Board was not accommodating. In re Solomon & Silver Limited, Serial No. 79405252 (October 21, 2026) [not precedential] (Opinion by Judge Robert Lavache).

Examining Attorney Andrew Crowder-Schaefer relied on evidence from Ancestry.com and Wikipedia stating that JONES is the fifth most common surname in the United States. The 2010 U.S. Census data confirmed that point. "This evidence establishes that JONES is an extremely common surname in the U.S. and Applicant’s brief does not contend otherwise." Nor did applicant contest that JONES, alone, has the look and feel of a surname.

Applicant maintained, however, that the addition of the word THE to JONES makes a difference. It pointed to what it called "numerous registrations for, and widespread third-party use of, marks constructed in the form THE + [surname] in connection with the pertinent [hotel and hotel-related] services." The Board noted, however, that the file histories of those registrations were not in evidence, "and thus we do not know the examining attorneys’ reasons for approving the relevant marks for registration." In any case, the Board observed once again, each case must be decided on its own record. As to applicant's evidence:

Some of the names reflected in both the third-party registrations and the examples of use do appear to have primary significance as surnames. These include “Moore,” “Crawford,” “Pittman,” “Barnes,” “Williams,” and “Duniway.” But many of the others, including “Alexander,” “James,” “Tony,” “Thomas,” “Stanley,” and “Drake” could also be perceived as first names. Still other examples feature words that have other non-name significance, such as “Butler,” “Cooper,” and “Brown.” We therefore disagree with Applicant’s characterization of the evidence . . . ." 

The Board also noted that there was no evidence as to how the public "would view any proposed mark with a similar construction that is used in connection with hotel services as something other than just a surname."

Applicant pointed to In re IMH Columbia, LLC [TTABlogged here], where the Board reversed a Section 2(e)(4) refusal of the mark THE MERRIWEATHER for hotel services, but the Board distinguished that case:

[T]he decision explicitly states that the Board’s determination was also "based on ‘Merriweather’ being a relatively uncommon surname, having several possible non-surname meanings, including a very similar, known historical first name." Here, JONES is an extremely common surname and the record contains no evidence that it has any non-surname meanings. Thus, we agree with the Examining Attorney that Applicant’s evidence of hotel names prefaced by “the” does not compel us to reach the same conclusion here as in IMH Columbia.

Merriweather Clark

Even if we were convinced that the purchasing public would view the primary significance of THE JONES as something other than a surname when used in connection with hotel services, Applicant seeks registration of more than just hotel services. Indeed, the application identifies other services in International Class 43, as well as various services in International Classes 41 and 44.24 And, as the Examining Attorney points out, there is no evidence of record to support a finding that the addition of “THE” lends the proposed mark non-surname significance when used in connection with any of the identified non-hotel services in Classes 41, 43, and 44.

And so, the Board affirmed the refusal.

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TTABlogger comment: What if the applicant files a new application for THE JONES for hotel services?

Text Copyright John L. Welch 2026.