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Free Claude skill · Intellectual property
Office Action Summary
Plain-English summary of a USPTO office action: each refusal and requirement, response deadline to verify, options, and what's needed from the client.
office-action-summary/SKILL.md+1 more in the download
# Office Action Summary Turns a USPTO trademark office action into a short internal summary for the attorney and a plain-English explanation the attorney can adapt for the client, with every issue, the deadline to confirm and what the client must supply. ## What to ask for - The full office action (PDF or text), including any attachments the examiner cites (search results, dictionary entries, third-party registrations, web evidence). - The application details: serial number, mark, owner, filing basis, current identification of goods and services, and any prior office actions or responses. - The client's specimens and use facts if a specimen or use issue is raised. - If something isn't in the material, summarize what's there and mark each gap as [MISSING: ...]. ## How to work 1. **Identify the action.** Non-final or final, issue or mailing date, serial number, mark, examining attorney and law office. Note whether it's a first action, a subsequent action, a suspension letter or an examiner's amendment. Read the response-period language in the action itself. 2. **Deadline.** Quote the response-period language from the action and compute the deadline from the issue date as a draft only. Note whether the action mentions an extension option and what it says. Put the computed date under "To verify"; never present it as final. 3. **List every issue in order.** Separate substantive refusals (for example likelihood of confusion, descriptiveness, genericness, surname, geographic, failure to function, ornamental, specimen refusal) from requirements (identification wording, classification, disclaimer, description of the mark, color claim, translation, signature or verification, entity or citizenship information, fees for added classes). Use the section labels the examiner uses. 4. **For each issue, extract:** what the examiner says in plain English; the evidence cited (registrations by number and owner, dictionary or web evidence); which goods, services or classes are affected; whether it's an advisory note only. 5. **For a likelihood-of-confusion refusal,** list each cited registration: mark, registration or serial number, owner, goods/services, status if stated. Note facts that may matter to the attorney (differences in goods, channels, mark appearance, a cited registration near its maintenance date, a possible consent). Don't argue the refusal or predict the outcome. 6. **Options per issue,** as a neutral menu for the attorney: argue, amend (ID, disclaimer, description, basis, delete goods or classes), submit a substitute specimen with declaration, claim acquired distinctiveness, move to the Supplemental Register, seek consent or coexistence, petition to cancel or watch a cited registration, or let the affected classes go. Mark each "for attorney evaluation". 7. **Client needs.** What the attorney will likely need from the client for each issue: use facts, dates, substitute specimens, evidence of marketplace use, sales and advertising information, decision on narrowing goods, contact information for a cited owner. 8. **Status risk.** Note if the action is final (narrower response routes) or if any part is already past the period. ## Output **Office Action Summary: [Mark]** Serial No. [number] Issued: [date] Type: [non-final / final / other] 1. **Bottom line** (2-3 lines): number of refusals and requirements, which are substantive, and the deadline to verify. 2. **Issues** table: # | Issue | Refusal or requirement | Goods/classes affected | What the examiner says (plain English) | Evidence cited 3. **Cited marks** table (if any): Mark | Reg./Serial No. | Owner | Goods/services | Notes for the attorney 4. **Response options** table: Issue # | Options for attorney evaluation | What we'd need 5. **What we need from the client** (numbered, plain English) 6. **Client-facing explanation** (one short paragraph per issue, no jargon, no outcome predictions; for attorney edit) 7. **To verify** (response deadline and any extension terms from the action, current fees for extensions or added classes, final action response routes) ## Rules - Draft for attorney review; not legal advice and not a prediction of whether the refusal can be overcome. - The response deadline comes from the action and its issue date. Put the computed date and any extension terms under "To verify"; never state them as final. - Never invent registration numbers, owners, goods or evidence. Copy them from the action exactly; unknown = [MISSING]. - Don't draft arguments in this skill. List options; the attorney chooses the strategy. - In the client-facing paragraph, don't name an outcome, a fee or a deadline the attorney hasn't confirmed.
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