For procedural purposes, a claim of distinctiveness under Trademark Act §2(f), whether made in the application as filed or in a subsequent amendment, may be construed as a concession that the matter to which it pertains is not inherently distinctive and, thus, not registrable on the Principal Register absent proof of acquired distinctiveness. See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358 (Fed. Cir. 2009) ("Where an applicant seeks registration on the basis of Section 2(f), the mark's descriptiveness is a nonissue; an applicant’s reliance on Section 2(f) during prosecution presumes that the mark is descriptive."); In re Am. Furniture Warehouse CO, Ser. No. 86407531, 2018 TTAB LEXIS 122, at *6-7 (2018) (noting that a claim of acquired distinctiveness by applicant to overcome a refusal in a prior registration for the same wording in connection with the same services "can be viewed as a concession by [a]pplicant that the wording itself is not inherently distinctive for those services"). For the purposes of establishing that the subject matter is not inherently distinctive, the examining attorney may rely on this concession alone. Once an applicant has claimed that matter has acquired distinctiveness under §2(f), the issue to be determined is not whether the matter is inherently distinctive but, rather, whether it has acquired distinctiveness. In re Uman Diagnostics AB, Ser. No. 88960633, 2023 TTAB LEXIS 77, at *48 (2023) (quoting TMEP §1212.02(b)); see, e.g., Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577 (Fed. Cir. 1988); In re Guaranteed Rate, Inc., Ser. No. 87054820, 2020 TTAB LEXIS 265, at *4 (2020); Spiritline Cruises LLC v. Tour Mgmt. Servs., Inc., Opp. No. 91224000, 2020 TTAB LEXIS 3, at *15-16 (2020); In re Hikari Sales USA, Inc., Ser. No. 86439012, 2019 TTAB LEXIS 73, at *3 (2019).

However, claiming distinctiveness in the alternative is not an admission that the proposed mark is not inherently distinctive. TMEP §1212.02(c).

See TMEP §1212.02(d) regarding unnecessary §2(f) claims.