Uspto Office Action Response — Development skill for Claude Code

USPTO Office Action Response Skill

A Claude skill that helps an attorney analyze, strategize, and draft a response to a USPTO Office Action on a trademark application the attorney filed. It is built for practicing lawyers, not for first-time filers: it skips basic explanations, flags weaknesses and counterarguments without being asked, and refuses to guess at citations.

What it does

Given an Office Action (non-final or final), the skill produces:

1. Record check. Current TSDR status for the application and every cited registration or prior-pending application.
2. Deadline computation. Trigger date, governing rule, day-count, nominal and rolled dates, extension availability, and consequence of default, in a standard block for every deadline.
3. Issue-by-issue triage. Each refusal or requirement sorted into curable by amendment, requires argument and evidence, or fatal or near-fatal.
4. Candid strategy memo. Options for each contested issue (argue, amend, disclaim, divide, substitute specimen, Supplemental Register, amend basis, suspend), with strongest argument, strongest counterargument, evidence needed, probability range, scope-of-protection effects, and cost.
5. Draft response. A .docx in the user's voice, organized by issue and formatted for transfer into TEAS.
6. Verification pass. An independent check of every cite, rule, and deadline before the draft is delivered.
7. Filing handoff. Filing checklist, docket entry, and follow-up reminders.

Issues covered

• Section 2(d) likelihood-of-confusion refusals
• Section 2(e) descriptiveness and geographic refusals
• Specimen refusals
• Identification of goods and services requirements
• Disclaimer requirements
• Ownership and applicant-entity issues
• Requests for information under 37 C.F.R. § 2.61(b)
• Prior-pending-application advisories and suspension notices
• Final refusals: request for reconsideration versus appeal to the TTAB

What it does not cover

• Filing a new app