Assignment of Trademarks and Trademarks License. (a) Upon the terms and subject to the conditions set forth in this Section 2.4, Delta hereby assigns, transfers and conveys to Ultra all of Delta’s right, title and interest in the trademarks, service marks, logos, and domain names listed on Schedule 2.4(a), whether registered or unregistered, and any and all goodwill symbolized thereby (the “Transferred Marks”). (b) Upon the terms and subject to the conditions set forth in this Section 2.4, including Section 2.4(d), Delta hereby grants to Ultra and Ultra Subsidiaries a non-transferrable, non-assignable, royalty-free, non-exclusive, limited license to use the trademarks, service marks, logos, and domain names listed on Schedule 2.4(b), whether registered or unregistered (the “Licensed Marks”), as a corporate or entity name within the Ultra Field in connection with the operation, advertisement, marketing, promotion and support of the Ultra Business and the Licensed Products in a manner not likely to cause confusion with the Unlicensed Marks (the “Trademarks License”). (c) Ultra acknowledges and agrees, and agrees to cause all Ultra Subsidiaries to acknowledge and agree, that all right (including all Intellectual Property Rights), title and interest in the Licensed Marks are owned exclusively by Delta. No right, title or interest in any Unlicensed Marks is granted to Ultra, Ultra Subsidiaries or any Third Party by this Agreement. (d) Notwithstanding anything herein to the contrary, the Trademarks License with respect to the use of any Ultra existing corporate or entity name is hereby expressly limited to the period commencing on the Effective Date and ending no later than the date six (6) months after the Effective Date; provided, however, that Ultra shall, and shall cause the applicable Ultra Subsidiaries to, (i) use its and their best efforts to promptly file amended articles of incorporation (or equivalent organizational documents) with the appropriate Governmental Entity changing its corporate or entity name to a corporate or entity name that does not contain “DXC,” “Enterprise Services,” “Electronic Data Systems” or “EDS,” and (ii) provide Delta with any additional information, documents and materials that Delta may request to evidence those filings. Ultra will make commercially reasonable efforts to remove all Delta trademarks (but not proprietary legends) from Customer-visible materials within six (6) months after the Effective Date. Customer-visible materials shall include, but not be limited to, externally-facing website material, distributed sales and support material and customer presentations. (e) Ultra’s and Ultra Subsidiaries’ use of the Licensed Marks shall comply with relevant elements of Delta’s trademark guidelines and applicable Laws. Delta further reserves the right to approve the quality and propriety of any goods or services using the Licensed Marks, which approval shall not be unreasonably withheld, conditioned or delayed. It is the purpose of this provision to prevent uses of the Licensed Marks in a manner that are inconsistent with Delta’s high quality of goods and services or in a manner that might be offensive to ordinary and customary standards of exceptional service as determined by Delta, in its sole discretion, or that could undermine or damage the reputation of Delta. Ultra further agrees to furnish Delta, upon request, with sample specimens of each item bearing or displaying the Licensed Marks or pre-printed promotional literature, video, media production, web pages, or other marketing aids which Ultra or Ultra Subsidiaries proposes to use with and which incorporate the Licensed Marks. Ultra agrees that all advertising and promotional materials in which it and Ultra Subsidiaries use the Licensed Marks shall be truthful in all respects. Delta shall have the right to require Ultra and Ultra Subsidiaries to make reasonable changes to such literature or marketing aids, or to any goods or services, for the purpose of eliminating inaccuracies, to ensure compliance with the requirements of this section or otherwise to protect the Licensed Marks. If no objection is made by Delta within ten (10) Business Days after its receipt of such material, Delta shall be deemed not to object to its use or distribution. Delta shall not be deemed to endorse the accuracy of, or assume any legal responsibility for the contents of, such promotional material or media presentations. Ultra and Ultra Subsidiaries may not modify, change or alter any Licensed Xxxx without the prior written consent of Delta. Ultra agrees that it shall not, directly or indirectly, do, omit to do, or permit to be done, any act that will or may dilute the goodwill associated with the Licensed Marks or tarnish or bring into disrepute the reputation of or goodwill associated with the Licensed Marks or Delta or that will or may invalidate or jeopardize any registration of the Licensed Marks. Ultra and Ultra Subsidiaries shall not purchase Internet keywords or domain names containing the Licensed Marks. (f) Ultra recognizes the ownership of, and great value of the goodwill associated with, the Licensed Marks. Ultra acknowledges that such goodwill belongs to Delta and that such Licensed Marks, have inherent and/or acquired distinctiveness and are famous marks. Nothing in this Agreement gives Ultra and Ultra Subsidiaries any right, title, or interest in the Licensed Marks, except the right to use the Licensed Marks in accordance with the terms of this Agreement. Ultra’s and Ultra Subsidiaries’ use of the Licensed Marks shall inure to the benefit of Delta. Ultra and Ultra Subsidiaries will not, and will not cause any other Person to, seek to register any marks for, containing, or confusingly similar to, the Licensed Marks. Ultra and Ultra Subsidiaries shall not, and shall not cause any other Person to, oppose or seek to cancel or challenge, in any forum anywhere in the world, including, but not limited to, the United States Patent and Trademark Office, any application or registration by Delta for the Licensed Marks, or any composite xxxx containing a Licensed Xxxx as an element of such composite xxxx. Further, Ultra and Ultra Subsidiaries shall not, and shall not cause any other Person to, object to, or file any action or lawsuit because of, any use by Delta of (i) the Licensed Marks, (ii) any composite xxxx containing a Licensed Xxxx, or (iii) any company name, corporate name, trade name, keyword, or domain name consisting of or containing any of the Licensed Marks, for or in connection with any goods or services, whether such use is by Delta directly or through Delta’s licensees, Delta Subsidiaries, or Delta’s authorized users; and Ultra and Ultra Subsidiaries will not, and will not cause any other Person to, take any other action that may adversely affect or contest Delta’s ownership of or right to use or the validity, incontestability or enforceability of the Licensed Marks, any composite xxxx containing a Licensed Xxxx, or the goodwill associated with the Licensed Marks. (g) Ultra and Ultra Subsidiaries will display on materials utilizing or displaying the Licensed Marks any notice, marking, or indicia of ownership required by this Agreement or otherwise by Delta from time to time. Ultra and Ultra Subsidiaries will in all material respects, use the Licensed Marks in a manner reasonably calculated to prevent the Licensed Marks from becoming generic or otherwise invalid. (h) Ultra agrees to notify Delta in writing, as promptly as reasonably practicable, of any of the following that may come to the attention of Ultra: (i) any adoption, use, or registration of any xxxx, trade name, trading style or corporate name, domain name, or designation which would infringe, impair or dilute, or tend to infringe, impair or dilute, the Licensed Marks, (ii) any challenge to Delta’s use, Ultra’s use, or Ultra Subsidiaries’ use of any Licensed Xxxx, or (iii) any claim made by any Person of any rights in any Licensed Xxxx. (i) Except as provided herein, Delta shall be responsible, at its sole discretion, for renewing and maintaining at Delta’s expense all trademark applications and registrations for the Licensed Marks. Delta may elect, for any reason, not to renew any applications and registrations for the Licensed Marks. Each Party agrees to cooperate and provide promptly, upon any request by the other Party, appropriate samples and specimens of Delta’s, Ultra’s, and Ultra Subsidiaries’ use of the Licensed Marks and to otherwise assist the relevant Party in applying for, registering, maintaining and renewing Delta’s applications and registrations for the Licensed Marks, at Delta’s expense. (j) Nothing in this Agreement shall constitute any representation or warranty by Delta that any Licensed Xxxx is valid or that the exercise by Ultra or any Ultra Subsidiary of any rights granted under this Agreement with respect to any Licensed Xxxx will not infringe the Intellectual Property Rights of any Person.
Appears in 2 contracts
Samples: Intellectual Property Matters Agreement (DXC Technology Co), Intellectual Property Matters Agreement
Assignment of Trademarks and Trademarks License. (a) Upon the terms and subject to the conditions set forth in this Section 2.4, Delta hereby assigns, transfers and conveys to Ultra all of Delta’s right, title and interest in the trademarks, service marks, logos, and domain names listed on Schedule 2.4(a), whether registered or unregistered, and any and all goodwill symbolized thereby (the “Transferred Marks”).
(b) Upon the terms and subject to the conditions set forth in this Section 2.4, including Section 2.4(d), Delta hereby grants to Ultra and Ultra Subsidiaries a non-transferrable, non-assignable, royalty-free, non-exclusive, limited license to use the trademarks, service marks, logos, and domain names listed on Schedule 2.4(b(b), whether registered or unregistered (the “Licensed Marks”), as a corporate or entity name within the Ultra Field Field, in connection with the operation, advertisement, marketing, promotion and support of the Ultra Business and the Licensed Products in a manner not likely to cause confusion with the Unlicensed Marks (the “Trademarks License”).
(c) Ultra acknowledges and agrees, and agrees to cause all Ultra Subsidiaries to acknowledge and agree, that all right (including all Intellectual Property Rights), title and interest in the Licensed Marks are owned exclusively by Delta. No right, title or interest in any Unlicensed Marks is are granted to Ultra, Ultra Subsidiaries or any Third Party by this Agreement.
(d) Notwithstanding anything herein to the contrary, the Trademarks License with respect to the use of any Ultra existing corporate or entity name is hereby expressly limited to the period commencing on the Effective Date and ending no later than the date right of Ultra to use, for up to six (6) months after the Effective Datedate hereof, such marks as part of an existing corporate or entity name of any Ultra Subsidiary and for no other purpose whatsoever; provided, however, that Ultra shall, and shall cause the applicable Ultra Subsidiaries to, (i) use its and their best efforts to promptly file amended articles of incorporation (or equivalent organizational documents) with the appropriate Governmental Entity changing its corporate or entity name to a corporate or entity name that does not contain “DXC,” “Enterprise Services,” “Electronic Enterprise Data Systems” or “EDS,” and (ii) provide Delta with any additional information, documents and materials that Delta may request to evidence those filings. None of the other Licensed Marks may be used by Ultra will make commercially reasonable efforts to remove all Delta trademarks (but not proprietary legends) from Customer-visible materials within six (6) months after the Effective Date. Customer-visible materials shall includeor Ultra Subsidiaries as a corporate or entity name, but not be limited to, externally-facing website material, distributed sales and support material and customer presentationsor trade name.
(e) Ultra’s and Ultra Subsidiaries’ use of the Licensed Marks shall comply with relevant elements of Delta’s trademark guidelines and applicable Laws. Delta further reserves the right to approve the quality and propriety of any goods or services using the Licensed Marks, which approval shall not be unreasonably withheld, conditioned or delayed. It is the purpose of this provision to prevent uses of the Licensed Marks in a manner that are inconsistent with Delta’s high quality of goods and services or in a manner that might be offensive to ordinary and customary standards of exceptional service as determined by Delta, in its sole discretion, or that could undermine or damage the reputation of Delta. Ultra further agrees to furnish Delta, upon request, with sample specimens of each item bearing or displaying the Licensed Marks or pre-printed promotional literature, video, media production, web pages, or other marketing aids which Ultra or Ultra Subsidiaries proposes to use with and which incorporate the Licensed Marks. Ultra agrees that all advertising and promotional materials in which it and Ultra Subsidiaries use the Licensed Marks shall be truthful in all respects. Delta shall have the right to require Ultra and Ultra Subsidiaries to make reasonable changes to such literature or marketing aids, or to any goods or services, for the purpose of eliminating inaccuracies, to ensure compliance with the requirements of this section or otherwise to protect the Licensed Marks. If no objection is made by Delta within ten (10) Business Days after its receipt of such material, Delta shall be deemed not to object to its use or distribution. Delta shall not be deemed to endorse the accuracy of, or assume any legal responsibility for the contents of, such promotional material or media presentations. Ultra and Ultra Subsidiaries may not modify, change or alter any Licensed Xxxx without the prior written consent of Delta. Ultra agrees that it shall not, directly or indirectly, do, omit to do, or permit to be done, any act that will or may dilute the goodwill associated with the Licensed Marks or tarnish or bring into disrepute the reputation of or goodwill associated with the Licensed Marks or Delta or that will or may invalidate or jeopardize any registration of the Licensed Marks. Ultra and Ultra Subsidiaries shall not purchase Internet keywords or domain names containing the Licensed Marks.
(f) Ultra recognizes the ownership of, and great value of the goodwill associated with, the Licensed Marks. Ultra acknowledges that such goodwill belongs to Delta and that such Licensed Marks, have inherent and/or acquired distinctiveness and are famous marks. Nothing in this Agreement gives Ultra and Ultra Subsidiaries any right, title, or interest in the Licensed Marks, except the right to use the Licensed Marks in accordance with the terms of this Agreement. Ultra’s and Ultra Subsidiaries’ use of the Licensed Marks shall inure to the benefit of Delta. Ultra and Ultra Subsidiaries will not, and will not cause any other Person to, seek to register any marks for, containing, or confusingly similar to, the Licensed Marks. Ultra and Ultra Subsidiaries shall not, and shall not cause any other Person to, oppose or seek to cancel or challenge, in any forum anywhere in the world, including, but not limited to, the United States Patent and Trademark Office, any application or registration by Delta for the Licensed Marks, or any composite xxxx containing a Licensed Xxxx as an element of such composite xxxx. Further, Ultra and Ultra Subsidiaries shall not, and shall not cause any other Person to, object to, or file any action or lawsuit because of, any use by Delta of (i) the Licensed Marks, (ii) any composite xxxx containing a Licensed Xxxx, or (iii) any company name, corporate name, trade name, keyword, or domain name consisting of or containing any of the Licensed Marks, for or in connection with any goods or services, whether such use is by Delta directly or through Delta’s licensees, Delta Subsidiaries, or Delta’s authorized users; and Ultra and Ultra Subsidiaries will not, and will not cause any other Person to, take any other action that may adversely affect or contest Delta’s ownership of or right to use or the validity, incontestability or enforceability of the Licensed Marks, any composite xxxx containing a Licensed Xxxx, or the goodwill associated with the Licensed Marks.
(g) Ultra and Ultra Subsidiaries will display on materials utilizing or displaying the Licensed Marks any notice, marking, or indicia of ownership required by this Agreement or otherwise by Delta from time to time. Ultra and Ultra Subsidiaries will in all material respects, use the Licensed Marks in a manner reasonably calculated to prevent the Licensed Marks from becoming generic or otherwise invalid.
(h) Ultra agrees to notify Delta in writing, as promptly as reasonably practicable, of any of the following that may come to the attention of Ultra: (i) any adoption, use, or registration of any xxxx, trade name, trading style or corporate name, domain name, or designation which would infringe, impair or dilute, or tend to infringe, impair or dilute, the Licensed Marks, (ii) any challenge to Delta’s use, Ultra’s use, or Ultra Subsidiaries’ use of any Licensed Xxxx, or (iii) any claim made by any Person of any rights in any Licensed Xxxx.
(i) Except as provided herein, Delta shall be responsible, at its sole discretion, for renewing and maintaining at Delta’s expense all trademark applications and registrations for the Licensed Marks. Delta may elect, for any reason, not to renew any applications and registrations for the Licensed Marks. Each Party agrees to cooperate and provide promptly, upon any request by the other Party, appropriate samples and specimens of Delta’s, Ultra’s, and Ultra Subsidiaries’ use of the Licensed Marks and to otherwise assist the relevant Party in applying for, registering, maintaining and renewing Delta’s applications and registrations for the Licensed Marks, at Delta’s expense.
(j) Nothing in this Agreement shall constitute any representation or warranty by Delta that any Licensed Xxxx is valid or that the exercise by Ultra or any Ultra Subsidiary of any rights granted under this Agreement with respect to any Licensed Xxxx will not infringe the Intellectual Property Rights of any Person.
Appears in 1 contract
Samples: Intellectual Property Matters Agreement (Perspecta Inc.)
Assignment of Trademarks and Trademarks License. (a) Upon the terms and subject to the conditions set forth in this Section 2.4, Delta hereby assigns, transfers and conveys to Ultra all of Delta’s right, title and interest in the trademarks, service marks, logos, and domain names listed on Schedule 2.4(a), whether registered or unregistered, and any and all goodwill symbolized thereby (the “Transferred Marks”).
(b) Upon the terms and subject to the conditions set forth in this Section 2.4, including Section 2.4(d), Delta hereby grants to Ultra and Ultra Subsidiaries a non-transferrable, non-assignable, royalty-free, non-exclusive, limited license to use the trademarks, service marks, logos, and domain names listed on Schedule 2.4(b), whether registered or unregistered (the “Licensed Marks”), as a corporate or entity name within the Ultra Field in connection with the operation, advertisement, marketing, promotion and support of the Ultra Business and the Licensed Products in a manner not likely to cause confusion with the Unlicensed Marks (the “Trademarks License”).
(c) Ultra acknowledges and agrees, and agrees to cause all Ultra Subsidiaries to acknowledge and agree, that all right (including all Intellectual Property Rights), title and interest in the Licensed Marks are owned exclusively by Delta. No right, title or interest in any Unlicensed Marks is granted to Ultra, Ultra Subsidiaries or any Third Party by this Agreement.
(d) Notwithstanding anything herein to the contrary, the Trademarks License with respect to the use of any Ultra existing corporate or entity name is hereby expressly limited to the period commencing on the Effective Date and ending no later than the date six (6) months after the Effective Date; provided, however, that Ultra shall, and shall cause the applicable Ultra Subsidiaries to, (i) use its and their best efforts to promptly file amended articles of incorporation (or equivalent organizational documents) with the appropriate Governmental Entity changing its corporate or entity name to a corporate or entity name that does not contain “DXC,” “Enterprise Services,” “Electronic Data Systems” or “EDS,” and (ii) provide Delta with any additional information, documents and materials that Delta may request to evidence those filings. Ultra will make commercially reasonable efforts to remove all Delta trademarks (but not proprietary legends) from Customer-visible materials within six (6) months after the Effective Date. Customer-visible materials shall include, but not be limited to, externally-facing website material, distributed sales and support material and customer presentations.
(e) Ultra’s and Ultra Subsidiaries’ use of the Licensed Marks shall comply with relevant elements of Delta’s trademark guidelines and applicable Laws. Delta further reserves the right to approve the quality and propriety of any goods or services using the Licensed Marks, which approval shall not be unreasonably withheld, conditioned or delayed. It is the purpose of this provision to prevent uses of the Licensed Marks in a manner that are inconsistent with Delta’s high quality of goods and services or in a manner that might be offensive to ordinary and customary standards of exceptional service as determined by Delta, in its sole discretion, or that could undermine or damage the reputation of Delta. Ultra further agrees to furnish Delta, upon request, with sample specimens of each item bearing or displaying the Licensed Marks or pre-printed promotional literature, video, media production, web pages, or other marketing aids which Ultra or Ultra Subsidiaries proposes to use with and which incorporate the Licensed Marks. Ultra agrees that all advertising and promotional materials in which it and Ultra Subsidiaries use the Licensed Marks shall be truthful in all respects. Delta shall have the right to require Ultra and Ultra Subsidiaries to make reasonable changes to such literature or marketing aids, or to any goods or services, for the purpose of eliminating inaccuracies, to ensure compliance with the requirements of this section or otherwise to protect the Licensed Marks. If no objection is made by Delta within ten (10) Business Days after its receipt of such material, Delta shall be deemed not to object to its use or distribution. Delta shall not be deemed to endorse the accuracy of, or assume any legal responsibility for the contents of, such promotional material or media presentations. Ultra and Ultra Subsidiaries may not modify, change or alter any Licensed Xxxx without the prior written consent of Delta. Ultra agrees that it shall not, directly or indirectly, do, omit to do, or permit to be done, any act that will or may dilute the goodwill associated with the Licensed Marks or tarnish or bring into disrepute the reputation of or goodwill associated with the Licensed Marks or Delta or that will or may invalidate or jeopardize any registration of the Licensed Marks. Ultra and Ultra Subsidiaries shall not purchase Internet keywords or domain names containing the Licensed Marks.
(f) Ultra recognizes the ownership of, and great value of the goodwill associated with, the Licensed Marks. Ultra acknowledges that such goodwill belongs to Delta and that such Licensed Marks, have inherent and/or acquired distinctiveness and are famous marks. Nothing in this Agreement gives Ultra and Ultra Subsidiaries any right, title, or interest in the Licensed Marks, except the right to use the Licensed Marks in accordance with the terms of this Agreement. Ultra’s and Ultra Subsidiaries’ use of the Licensed Marks shall inure to the benefit of Delta. Ultra and Ultra Subsidiaries will not, and will not cause any other Person to, seek to register any marks for, containing, or confusingly similar to, the Licensed Marks. Ultra and Ultra Subsidiaries shall not, and shall not cause any other Person to, oppose or seek to cancel or challenge, in any forum anywhere in the world, including, but not limited to, the United States Patent and Trademark Office, any application or registration by Delta for the Licensed Marks, or any composite xxxx containing a Licensed Xxxx as an element of such composite xxxx. Further, Ultra and Ultra Subsidiaries shall not, and shall not cause any other Person to, object to, or file any action or lawsuit because of, any use by Delta of (i) the Licensed Marks, (ii) any composite xxxx containing a Licensed Xxxx, or (iii) any company name, corporate name, trade name, keyword, or domain name consisting of or containing any of the Licensed Marks, for or in connection with any goods or services, whether such use is by Delta directly or through Delta’s licensees, Delta Subsidiaries, or Delta’s authorized users; and Ultra and Ultra Subsidiaries will not, and will not cause any other Person to, take any other action that may adversely affect or contest Delta’s ownership of or right to use or the validity, incontestability or enforceability of the Licensed Marks, any composite xxxx containing a Licensed Xxxx, or the goodwill associated with the Licensed Marks.
(g) Ultra and Ultra Subsidiaries will display on materials utilizing or displaying the Licensed Marks any notice, marking, or indicia of ownership required by this Agreement or otherwise by Delta from time to time. Ultra and Ultra Subsidiaries will in all material respects, use the Licensed Marks in a manner reasonably calculated to prevent the Licensed Marks from becoming generic or otherwise invalid.
(h) Ultra agrees to notify Delta in writing, as promptly as reasonably practicable, of any of the following that may come to the attention of Ultra: (i) any adoption, use, or registration of any xxxx, trade name, trading style or corporate name, domain name, or designation which would infringe, impair or dilute, or tend to infringe, impair or dilute, the Licensed Marks, (ii) any challenge to Delta’s use, Ultra’s use, or Ultra Subsidiaries’ use of any Licensed Xxxx, or (iii) any claim made by any Person of any rights in any Licensed Xxxx.
(i) Except as provided herein, Delta shall be responsible, at its sole discretion, for renewing and maintaining at Delta’s expense all trademark applications and registrations for the Licensed Marks. Delta may elect, for any reason, not to renew any applications and registrations for the Licensed Marks. Each Party agrees to cooperate and provide promptly, upon any request by the other Party, appropriate samples and specimens of Delta’s, Ultra’s, and Ultra Subsidiaries’ use of the Licensed Marks and to otherwise assist the relevant Party in applying for, registering, maintaining and renewing Delta’s applications and registrations for the Licensed Marks, at Delta’s expense.
(j) Nothing in this Agreement shall constitute any representation or warranty by Delta that any Licensed Xxxx is valid or that the exercise by Ultra or any Ultra Subsidiary of any rights granted under this Agreement with respect to any Licensed Xxxx will not infringe the Intellectual Property Rights of any Person.those
Appears in 1 contract
Samples: Intellectual Property Matters Agreement (Perspecta Inc.)
