Optum, Inc. (P) vs OPTUS Pharmaceutical CO., LTD. (D)
Pending
Oppositions
Proceeding Details
Proceeding Number
Filing Date
Apr 3, 2024
Last Status Update
Feb 19, 2026
Interlocutory Attorney
STEVEN W FERRELL
Parties
Plaintiff
Optum, Inc.



1075 PEACHTREE ST. NE, SUITE 2500
ATLANTA, GA 30309
Attorney / Correspondent:
Marks:
OPTUM
Registered
|Reg #: 4621384|S/N: 85225761
OPTUM
LIVE - REGISTERED
Service MarkWordOwner: OPTUM, INC.
Status: REGISTERED AND RENEWED
Record Details
Serial No.
85225761
Registration No.
4621384
Status
LIVE
Important Dates
Filed
Jan 25, 2011
Registered
Oct 14, 2014
First Use
Aug 15, 1992
Goods & Services
Class 035
Employee assistance services, namely, referral services for physical health, mental health, substance abuse and daily living problems; health care utilization and review services; managed care services, namely, utilization review and pre-certification services; medical cost management; medical case management and disease management services, namely, medical referral of individuals to appropriate health management programs; organizing and administering networks of health care providers; providing medical business directory information services regarding health care professionals and health care provider organizations; promoting the medical services of others by dissemination of prior effectiveness record information indicating that the providers meet certain criteria; medical and health-care cost/price analysis; [administration of a discount program for enabling participants to obtain health care services from a network of health care providers;] cost management services for health benefit plans of others; business management consultation, namely, development of health care delivery systems for independent practice associations, medical clinics and other forms of physician organizations; business consultation to the health care industry in the fields of the development and implementation of policies, practices, and quality assurance; [promoting the sale of credit card and debit card accounts through the administration of a discount program for enabling participants to obtain discounts on goods and services through use of discount membership cards and purchasing with a credit card or debit card.] promoting the goods and services of others through the distribution of discount membership cards; accounts receivable services; administration and reconciliation of accounts on behalf of others; [providing computerized database and telephone communication management services, namely, aggregating and organizing electronic transmissions of voice mail, electronic mail and facsimile messages, namely, computerized database management services;] telephone communication management services, namely, providing health-related consumer information and information about health providers via a global computer network; Health care and medical practice administration services, namely, providing back office services for physician practices, medical billing services; business management consultation, namely, development of health care delivery systems for independent practice associations, medical clinics and other forms of physician organizations; managed health care services, namely, electronic processing of health care information; providing information in the field of business administration of health care and medical practices; consultation in the field of management, operation, and development of business systems for the delivery of health care; healthcare management service organization (mso) services, namely, providing practice organization, management and administrative support services to individual physicians or small group practices; Administration of pharmacy reimbursement programs; cost management services for pharmacy benefit and prescription drug benefit plans of others; business management of pharmacy benefit plans and prescription drug benefit plans of others; mail order services featuring prescription medications, specialty pharmaceuticals, over-the-counter medications, diabetic products, health products, home care products, first aid products, foot care products, eye and ear care products, oral care products, skin care products, vitamins, nutritional supplements, and women's health products. Physician practice and medical practice management for others; computerized database management in the fields of medical records and medical billing; online business and financial records management in the fields of medical records and medical billing; research in the nature of providing health economics and outcomes research and market informatics to the biotech and pharmaceutical industry; reimbursement consulting to the biotech and pharmaceutical industry in the nature of analyzing current health care payment program reimbursement policy and evaluating product cost-effectiveness for the purposes of product development, product approval and market acceptance; Business consultation services for the healthcare industry; Outsourcing services in the field of healthcare; Computerized health care provider business data and information management in the fields of health care and insurance; Providing on-line directory information service featuring electronic healthcare trading partners, namely, healthcare providers and claims processors and payers, including their electronic data interchange capabilities and requirements for healthcare transactions. Providing temporary employment staffing for technical, scientific, and administrative positions for medical, pharmaceutical, and biotechnology research; Providing data management and bio statistics services for the pharmaceutical and biotechnology industries; Business consulting and outsourcing in the field of clinical and health economic research services for pharmaceutical, biotech, medical device companies, and other health care companies; Management services of a business nature for clinical trials in the field of investigational drugs, namely, arranging for sites to perform clinical trials, arranging for the import, packaging, shipping, labeling, and distribution of drugs and other investigational supplies to and from the clinical trial sites, regulatory submission management for investigational new drugs, and preparing statistical reports resulting from clinical trials; Business research in the field of health care data; Business consulting for the health care industry based on health care data analysis; Providing an online computer database for collecting and reporting controlled substance prescription drug dispensing information for business purposes; Conducting business research and surveys; conducting business surveys in the field of health and wellness; business administration and business organization consultation services provided to pharmacies; administration of pharmacy reimbursement programs and services; arranging of managed care contractual services in the field home health care; providing referral services to the elderly in the fields of health care and well-being, wellness and nutrition, medical equipment and medical supplies, transportation, housing and home repair, financial counseling and financial services, insurance services, community services and resources and legal services
OPTUM
Registered
|Reg #: 4799993|S/N: 85550797
OPTUM
LIVE - REGISTERED
Service MarkWordOwner: Optum, Inc.
Status: REGISTERED AND RENEWED
Record Details
Serial No.
85550797
Registration No.
4799993
Status
LIVE
Important Dates
Filed
Feb 23, 2012
Registered
Aug 25, 2015
First Use
Jun 1, 2011
Goods & Services
Class 035Class 044
[ Catalog ordering service featuring medical equipment, medical supplies, health products, home care products, diabetic testing supplies, and durable medical equipment; ] On-line ordering services featuring medical equipment, [ medical supplies, ] health products, home care products, diabetic testing supplies, and durable medical equipment; telephone ordering service featuring medical equipment, medical supplies, health products, home care products, diabetic testing supplies, and durable medical equipment [ ; arranging of managed care contractual services in the fields of home health care and durable medical equipment; providing consumer information in the field of durable medical equipment ]; Providing information in the fields of sleep apnea and related sleep disorders, and diabetes
OPTUM
Registered
|Reg #: 6634701|S/N: 90341752
OPTUM
LIVE - REGISTERED
Service MarkWordOwner: Optum, Inc.
Status: REGISTERED
Record Details
Serial No.
90341752
Registration No.
6634701
Status
LIVE
Important Dates
Filed
Nov 25, 2020
Registered
Feb 1, 2022
First Use
Nov 1, 2020
Goods & Services
Class 035
Online retail store services, namely, retail drug store and retail store services featuring health and medical products and services accessible online and by means of mobile applications; on-line retail store services, namely, retail drug store and retail store services featuring delivery service; Provision of an online marketplace for buyers and sellers of goods and services; Administration of a customer loyalty program which provides rewards in the form of discounted and expedited shipping services; Retail services, namely, administration of a discount program for enabling participants to obtain discounts and expedited options on shipping services through use of a discount membership program
OPTUM RX
Registered
|Reg #: 4218669|S/N: 85237071
OPTUM RX
LIVE - REGISTERED
Service MarkWordOwner: Optum, Inc
Status: REGISTERED
Record Details
Serial No.
85237071
Registration No.
4218669
Status
LIVE
Important Dates
Filed
Feb 8, 2011
Registered
Oct 2, 2012
First Use
Jun 6, 2011
Goods & Services
Class 035
Administration of pharmacy reimbursement programs; cost management services for pharmacy benefit and prescription drug benefit plans of others; business management of pharmacy benefit plans and prescription drug benefit plans of others; mail order services featuring prescription medications, specialty pharmaceuticals, over-the-counter medications, diabetic products, health products, home care products, first aid products, foot care products, eye and ear care products, oral care products, skin care products, vitamins, nutritional supplements, and women's health products; on-line retail store services featuring prescription medications, specialty pharmaceuticals, over-the-counter medications, diabetic products, health products, home care products, first aid products, foot care products, eye and ear care products, oral care products, skin care products, vitamins, nutritional supplements, and women's health products; retail drugstore and retail pharmacy services rendered by telephone featuring prescription medications, specialty pharmaceuticals, over-the-counter medications, diabetic products, health products, home care products, first aid products, foot care products, eye and ear care products, oral care products, skin care products, vitamins, nutritional supplements, and women's health products; drug utilization review (DUR) programs; health care utilization management services; health care utilization and review services; health care cost containment; business consultation services in the fields of health care, health benefits and health care systems; retail pharmacy services provided via a network of retail pharmacies; managed care services, namely, electronic processing of health care information; "RX"
VS
Defendant
OPTUS Pharmaceutical CO., LTD.

3333 WARRENVILLE RD., SUITE 200
LISLE, IL 60532
Attorney / Correspondent:
Marks:
OPTUS
Pending
S/N: 79346026
OPTUS
LIVE - PENDING
TrademarkCombinedOwner: OPTUS Pharmaceutical CO., LTD.
Status: OPPOSITION PENDING
Record Details
Serial No.
79346026
Status
LIVE
Important Dates
Filed
May 26, 2022
Goods & Services
Class 005Class 010
Eye drops; artificial tears; cleaning solutions for contact lenses; contact lens cleaning preparations; contact lens disinfectants; contact lens wetting solutions; solutions for contact lenses; pharmaceuticals, namely, anti-infectives; medicated preparations for skin treatment, namely, medicated serums for treatment of skin; antipyretic analgesics; vaginal washes for medical purposes; pharmaceutical preparations for regulating the immune system; pharmaceutical preparations for the treatment of viral diseases; cardiovascular pharmaceutical preparations; nutraceutical preparations for therapeutic or medical purposes, namely, nutraceuticals for use as a dietary supplement; medical and surgical plasters; biological tissue cultures for medical purposes; food for babies; pharmaceutical products for the treatment of infectious diseases; Promoting the goods and services of others by means of operating an on-line shopping mall with links to the retail web sites of others; business intermediary services relating to mail order by telecommunications, namely, mediation of agreements regarding the sale and purchase of goods via mail order; retail store services featuring medicines for eye diseases; wholesale distributorships services featuring medicines for eye diseases; commercial intermediary services in the field of medicines for eye diseases, namely, mediation of agreements regarding the sale and purchase of goods in the field of medicines for eye diseases; retail store services featuring nutritional supplements for therapeutic or medical use; wholesale distributorships services featuring nutritional supplements for therapeutic or medical use; commercial intermediary services in the field of health functional food for treatment or medical use, namely, mediation of agreements regarding the sale and purchase of goods in the field of health functional food for treatment or medical use; demonstration of goods for advertising purposes; advertising and commercial information services; publicity and sales promotion services; import and export agencies; retail store services featuring pharmaceutical products; wholesale distributorships services featuring pharmaceutical products; commercial intermediary services in the field of pharmaceutical products, namely, mediation of agreements regarding the sale and purchase of goods in the field of pharmaceutical products; arranging of contracts for the sale of pharmaceuticals products, namely, mediation of agreements regarding the sale and purchase of goods in the field of pharmaceutical products; outsourcing services in the nature of arranging procurement of goods for other businesses in the nature of pharmaceutical products; auction and reverse auction services; Eye droppers for medical purposes; electrically heated massaging apparatus for household purposes; portable electric massaging apparatus; sanitary masks for medical purposes; protective facial masks for medical purposes; gloves for medical purposes; contraceptive apparatus
Pending
S/N: 79346221
NO MARK TEXT PROVIDED
LIVE - PENDING
TrademarkDesignOwner: OPTUS Pharmaceutical CO., LTD.
Status: OPPOSITION PENDING
Record Details
Serial No.
79346221
Status
LIVE
Important Dates
Filed
May 26, 2022
Goods & Services
Class 005
Eye drops; artificial tears; cleaning solutions for contact lenses; contact lens cleaning preparations; contact lens disinfectants; contact lens wetting solutions; solutions for contact lenses; pharmaceuticals, namely, anti-infectives; medicated preparations for skin treatment, namely, medicated serums for treatment of skin; antipyretic analgesics; vaginal washes for medical purposes; pharmaceutical preparations for regulating the immune system; pharmaceutical preparations for the treatment of viral diseases; cardiovascular pharmaceutical preparations; nutraceutical preparations for therapeutic or medical purposes, namely, nutraceuticals for use as a dietary supplement; medical and surgical plasters; biological tissue cultures for medical purposes; portable first-aid kits; food for babies; pharmaceutical products for the treatment of infectious diseases
TTAB Documents
Title | Date | Entry # | Category | Code | Actions |
|---|---|---|---|---|---|
TRIAL DATES REMAIN AS SET | Feb 25, 2026 | 25 | Scheduling | 206 | |
PROCEEDINGS RESUMED | Feb 19, 2026 | 24 | Status | 179 | |
P REPLY IN SUPPORT OF MOTION | Oct 6, 2025 | 23 | Motions | 335 | |
D OPP/RESP TO MOTION | Sep 16, 2025 | 22 | Motions | 405 | |
SUSP PEND DISP OF OUTSTNDNG MOT | Sep 3, 2025 | 21 | Status | 518 | |
D MOT TO SUBTITUTE THE PUBLIC VERSION OF D SECOND NOTICE OF RELIANCE AND W/D THE REDACTED PUBLIC VER | Aug 29, 2025 | 20 | Miscellaneous | 900 | |
P MOT TO STRIKE NOTICE OF RELIANCE | Aug 28, 2025 | 19 | Motions | 347 | |
D NOTICE OF RELIANCE | Aug 18, 2025 | 18 | Discovery | 116 | |
CONFIDENTIAL - PAPER RECEIVED AT TTAB | Aug 18, 2025 | 17 | Miscellaneous | 900 | |
D NOTICE OF RELIANCE | Aug 18, 2025 | 16 | Discovery | 116 | |
D TESTIMONY | Aug 18, 2025 | 15 | Discovery | 135 | |
P NOTICE OF RELIANCE | Jun 19, 2025 | 14 | Discovery | 129 | |
P NOTICE OF RELIANCE | Jun 19, 2025 | 13 | Discovery | 129 | |
P TESTIMONY | Jun 19, 2025 | 12 | Discovery | 136 | |
STIP OF FACTS | Jun 19, 2025 | 11 | Stipulations | 430 | |
EXTENSION OF TIME GRANTED | May 16, 2025 | 10 | Extensions | 513 | |
P MOT FOR EXT W/ CONSENT | May 15, 2025 | 9 | Motions | 650 | |
EXTENSION OF TIME GRANTED | Apr 15, 2025 | 8 | Extensions | 513 | |
P MOT FOR EXT W/ CONSENT | Apr 15, 2025 | 7 | Motions | 650 | |
EXTENSION OF TIME GRANTED | Jul 22, 2024 | 6 | Extensions | 513 | |
P MOT FOR EXT W/ CONSENT | Jul 22, 2024 | 5 | Motions | 650 | |
ANSWER | May 28, 2024 | 4 | Pleadings | 107 | |
INSTITUTED | Apr 15, 2024 | 3 | Status | 128 | |
NOTICE AND TRIAL DATES SENT; ANSWER DUE: | Apr 15, 2024 | 2 | Scheduling | 707 | |
FILED AND FEE | Apr 3, 2024 | 1 | Fees | 124 |