| Serial Number | 85244679 |
| Word Mark | OPTUM |
| Filing Date | Thursday, February 17, 2011 |
| Status | 702 - SECTION 8 & 15 - ACCEPTED AND ACKNOWLEDGED |
| Status Date | Wednesday, September 16, 2020 |
| Registration Number | 4645410 |
| Registration Date | Tuesday, November 25, 2014 |
| Mark Drawing | 3000 - Illustration: Drawing or design which also includes word(s) / letter(s) / number(s) |
| Published for Opposition Date | Tuesday, December 6, 2011 |
| Description of Mark | The mark consists of the wording "OPTUM" in brown, and the design of a curved diamond shape with smaller diamond shapes set within the borders of the design appearing in the colors light orange, orange, yellow, dark yellow, light brown, gray, light gray and brown. |
| Indication of Colors claimed | The color(s) light orange, orange, yellow, dark yellow, light brown, gray, light gray and brown is/are claimed as a feature of the mark. |
| Goods and Services | 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 |
| Translation of Words in Mark | The wording "OPTUM" has no meaning in a foreign language. |
| International Class | 035 - Advertising; business management; business administration; office functions. |
| US Class Codes | 100, 101, 102 |
| Class Status Code | 6 - Active |
| Class Status Date | Wednesday, February 23, 2011 |
| Primary Code | 035 |
| First Use Anywhere Date | Friday, September 30, 2011 |
| First Use In Commerce Date | Friday, September 30, 2011 |
| Party Name | OPTUM, INC. |
| Party Type | 30 - Original Registrant |
| Legal Entity Type | 03 - Corporation |
| Address | MINNETONKA, MN 55343 |
| Party Name | OPTUM, INC. |
| Party Type | 20 - Owner at Publication |
| Legal Entity Type | 03 - Corporation |
| Address | MINNETONKA, MN 55343 |
| Party Name | OPTUM, INC. |
| Party Type | 11 - New Owner Before Publication |
| Legal Entity Type | 03 - Corporation |
| Address | MINNETONKA, MN 55343 |
| Party Name | RIO Holdings, Inc. |
| Party Type | 10 - Original Applicant |
| Legal Entity Type | 03 - Corporation |
| Address | Minnetonka, MN 55343 |
| Event Date | Event Description |
| Saturday, November 25, 2023 | COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED |
| Tuesday, January 17, 2023 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Tuesday, January 17, 2023 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Tuesday, January 17, 2023 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Wednesday, September 16, 2020 | NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED |
| Wednesday, September 16, 2020 | REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. |
| Wednesday, September 16, 2020 | CASE ASSIGNED TO POST REGISTRATION PARALEGAL |
| Monday, August 17, 2020 | TEAS SECTION 8 & 15 RECEIVED |
| Monday, November 25, 2019 | COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED |
| Tuesday, November 25, 2014 | REGISTERED-PRINCIPAL REGISTER |
| Tuesday, October 21, 2014 | NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED |
| Monday, October 20, 2014 | ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED |
| Thursday, October 9, 2014 | TEAS/EMAIL CORRESPONDENCE ENTERED |
| Thursday, October 9, 2014 | CORRESPONDENCE RECEIVED IN LAW OFFICE |
| Tuesday, September 30, 2014 | STATEMENT OF USE PROCESSING COMPLETE |
| Monday, July 28, 2014 | USE AMENDMENT FILED |
| Monday, July 28, 2014 | AMENDMENT AFTER NOA NOT ENTERED |
| Monday, July 28, 2014 | TEAS STATEMENT OF USE RECEIVED |
| Tuesday, February 11, 2014 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Saturday, February 8, 2014 | SOU EXTENSION 4 GRANTED |
| Thursday, January 23, 2014 | SOU EXTENSION 4 FILED |
| Thursday, January 23, 2014 | SOU TEAS EXTENSION RECEIVED |
| Saturday, August 3, 2013 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Friday, August 2, 2013 | SOU EXTENSION 3 GRANTED |
| Wednesday, July 31, 2013 | SOU EXTENSION 3 FILED |
| Wednesday, July 31, 2013 | SOU TEAS EXTENSION RECEIVED |
| Tuesday, July 9, 2013 | ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED |
| Tuesday, July 9, 2013 | TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED |
| Monday, June 17, 2013 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Saturday, January 26, 2013 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Friday, January 25, 2013 | SOU EXTENSION 2 GRANTED |
| Wednesday, January 23, 2013 | SOU EXTENSION 2 FILED |
| Wednesday, January 23, 2013 | SOU TEAS EXTENSION RECEIVED |
| Tuesday, August 14, 2012 | NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED |
| Monday, August 13, 2012 | SOU EXTENSION 1 GRANTED |
| Thursday, July 26, 2012 | SOU EXTENSION 1 FILED |
| Monday, August 13, 2012 | CASE ASSIGNED TO INTENT TO USE PARALEGAL |
| Thursday, July 26, 2012 | SOU TEAS EXTENSION RECEIVED |
| Tuesday, January 31, 2012 | NOA E-MAILED - SOU REQUIRED FROM APPLICANT |
| Tuesday, December 6, 2011 | OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED |
| Tuesday, December 6, 2011 | PUBLISHED FOR OPPOSITION |
| Wednesday, November 16, 2011 | NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED |
| Thursday, November 3, 2011 | LAW OFFICE PUBLICATION REVIEW COMPLETED |
| Tuesday, November 1, 2011 | APPROVED FOR PUB - PRINCIPAL REGISTER |
| Tuesday, November 1, 2011 | EXAMINER'S AMENDMENT ENTERED |
| Tuesday, November 1, 2011 | NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED |
| Tuesday, November 1, 2011 | EXAMINERS AMENDMENT E-MAILED |
| Tuesday, November 1, 2011 | EXAMINERS AMENDMENT -WRITTEN |
| Wednesday, July 27, 2011 | AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP |
| Friday, June 17, 2011 | TEAS CHANGE OF CORRESPONDENCE RECEIVED |
| Tuesday, May 3, 2011 | COMBINED EXAMINER'S AMENDMENT/PRIORITY ACTION ENTERED |
| Tuesday, May 3, 2011 | ASSIGNED TO LIE |
| Tuesday, May 3, 2011 | NOTIFICATION OF EXAMINER'S AMENDMENT/PRIORITY ACTION E-MAILED |
| Tuesday, May 3, 2011 | EXAMINER'S AMENDMENT/PRIORITY ACTION E-MAILED |
| Tuesday, May 3, 2011 | EXAMINERS AMENDMENT AND/OR PRIORITY ACTION - COMPLETED |
| Thursday, April 28, 2011 | ASSIGNED TO EXAMINER |
| Thursday, April 28, 2011 | ASSIGNED TO EXAMINER |
| Thursday, February 24, 2011 | NOTICE OF DESIGN SEARCH CODE MAILED |
| Wednesday, February 23, 2011 | NEW APPLICATION OFFICE SUPPLIED DATA ENTERED |
| Monday, February 21, 2011 | NEW APPLICATION ENTERED |