Certain Intellectual Property Matters. (a) From the Closing until the date that is one hundred eighty (180) days after the Closing (such period, the “Transitional Trademark License Period”), Seller hereby grants the Buyer and the Acquired Companies a worldwide, royalty-free, non-transferable, non-exclusive, irrevocable license to use the Excluded Marks solely in connection with the continued operation of the Business and in accordance with the quality standards in existence as of the Closing. From the end of the Transitional Trademark License Period until the date that is one (1) year after the Closing, Seller hereby grants to the Buyer and the Acquired Companies a worldwide, royalty-free, non-transferable, non-exclusive, irrevocable license to use the Excluded Marks solely in stylized text form in connection with the continued operation of the Business solely for the purpose of explaining the history of the products and services and in accordance with the quality standards in existence as of the Closing. Notwithstanding the foregoing, to the extent that Buyer and the Acquired Companies have not obtained any applicable Permit, authorization, Approval, consent or waiver of any Governmental Entity to allow the Acquired Companies to continue selling (and operating the Business without the use of an Excluded Xxxx with respect to) any particular product or service of the Business in a particular jurisdiction, the Transitional Trademark License Period shall be extended solely with respect to such particular product or service in such particular jurisdiction, and solely to the extent reasonably necessary (taking into account voluntary and best practice processes related to Federal Highway Administration eligibility letters) and for such period of time necessary, to allow the Acquired Companies to continue selling such particular product or service of the Business in such particular jurisdiction until the date that Buyer or the Acquired Companies obtains such applicable Permit, authorization, Approval, consent, waiver or eligibility letter of any Governmental Entity. With respect to each piece of equipment of the Acquired Companies that is leased to a third party as of the Closing and will remain leased to such third party for more than one hundred eighty (180) days after the Closing, the Transitional Trademark License Period with respect to such piece of equipment shall be extended until the earlier to occur of (i) the one (1) year anniversary of the Closing and (ii) thirty (30) days after the date that such third-party lease expires or is earlier terminated. Any and all goodwill arising from the Buyer and Acquired Companies’ use of the Excluded Marks as permitted in this Section 5.11(a) shall inure solely to Seller’s benefit. Following the Transitional Trademark License Period, and except as otherwise expressly permitted in this Section 5.11(a), Buyer shall, and shall cause the Acquired Companies and each of Buyer’s other Affiliates to: (i) cease to make any use of the Excluded Marks, including as part of any company name or Internet domain name; and (ii) cease to, and not at any time thereafter, hold itself or themselves out as having any affiliation or association with Seller or any of its Affiliates. Without limiting the generality of the foregoing, within one hundred fifty (150) days following the Closing, Buyer shall cause each of the Acquired Companies having a corporate name that includes the Excluded Marks to change its name to a corporate name that does not include the Excluded Marks, including making any Governmental Filings necessary to effect such change, and, after the Transitional Trademark License Period or except as otherwise expressly permitted herein, shall complete the removal of the Excluded Marks from all products, signage, vehicles, properties, technical information, stationery and promotional or other marketing materials and other assets.
Appears in 1 contract
Samples: Purchase and Sale Agreement (Trinity Industries Inc)
Certain Intellectual Property Matters. (ai) From All Company Intellectual Property (as hereinafter defined) shall be owned solely by and belong exclusively (subject to the Closing until license rights granted herein) to the date Company, and Xxxxxxx shall (A) leave in the Company's possession, either in paper form or stored electronically on the portable hard drive referred to below, all documents that is one hundred eighty form part of the Company's Intellectual Property, (180B) days after promptly execute and deliver to the Closing Company, without additional compensation, such instruments as the Company may reasonably require from time to time to evidence its ownership of any such Company Intellectual Property (such period, the “Transitional Trademark License Period”"Intellectual Property Documents"), Seller and (C) not challenge or otherwise call into doubt the Company's ownership of such Company Intellectual Property. If the Company is unable because of Xxxxxxx'x mental or physical incapacity or for any other reason to secure Xxxxxxx'x signature for any Intellectual Property Document, then Xxxxxxx hereby grants irrevocably designates and appoints the Buyer Company and its duly authorized officers and agents as his agent and attorney in fact, to act for and on his behalf and in his stead to execute and file any Intellectual Property Document and to do all other lawfully permitted acts to evidence or perfect the Acquired Companies a worldwideCompany's ownership and rights of and to any Company Intellectual Property with the same legal force and effect as if executed by Parkman; provided, royalty-freehowever, non-transferablethat the Company shall have first furnished Xxxxxxx'x guardian, non-exclusiveconservator, irrevocable license executor, administrator or other personal representative or successor with written notice of its proposed execution and filing of such Intellectual Property Documents, including copies of same. Xxxxxxx acknowledges and agrees that he has no right to use or possess Company Intellectual Property except as provided in this Agreement. Xxxxxxx further acknowledges and agrees that the Excluded Marks solely in connection with Company Intellectual Property includes the continued operation name "Xxxxxx Xxxxxxx & Co." and all reasonable variations thereof (the "Company Names"), and Xxxxxxx agrees not to challenge the Company's rights to or use of (and Xxxxxxx agrees not to use) the Business and in accordance with the quality standards in existence as of the Closing. From the end of the Transitional Trademark License Period until the date that is one (1) year after the Closing, Seller hereby grants to the Buyer and the Acquired Companies a worldwide, royalty-free, non-transferable, non-exclusive, irrevocable license to use the Excluded Marks solely in stylized text form in connection with the continued operation of the Business solely for the purpose of explaining the history of the products and services and in accordance with the quality standards in existence as of the ClosingCompany Names. Notwithstanding the foregoing, to the extent that Buyer Xxxxxxx retains, and the Acquired Companies have Company agrees not obtained to challenge, Xxxxxxx'x right to use his own name (together with any applicable Permit, authorization, Approval, consent or waiver of any Governmental Entity to allow the Acquired Companies to continue selling (and operating the Business without the use of an Excluded Xxxx with respect to) any particular product or service of the Business in a particular jurisdiction, the Transitional Trademark License Period shall be extended solely with respect to such particular product or service in such particular jurisdiction, and solely to the extent reasonably necessary (taking into account voluntary and best practice processes related to Federal Highway Administration eligibility letters) and for such period of time necessary, to allow the Acquired Companies to continue selling such particular product or service of the Business in such particular jurisdiction until the date that Buyer or the Acquired Companies obtains such applicable Permit, authorization, Approval, consent, waiver or eligibility letter of any Governmental Entity. With respect to each piece of equipment of the Acquired Companies that is leased to a third party as of the Closing and will remain leased to such third party for more than one hundred eighty (180) days after the Closing, the Transitional Trademark License Period with respect to such piece of equipment shall be extended until the earlier to occur of (i) the one (1) year anniversary of the Closing and (ii) thirty (30) days after the date that such third-party lease expires or is earlier terminated. Any and all goodwill arising from the Buyer and Acquired Companies’ use of the Excluded Marks as permitted in this Section 5.11(a) shall inure solely to Seller’s benefit. Following the Transitional Trademark License Period, and except as otherwise expressly permitted in this Section 5.11(a), Buyer shall, and shall cause the Acquired Companies and each of Buyer’s other Affiliates to: (i) cease to make any use of the Excluded Marks, including as part of any company name or Internet domain name; and (ii) cease to, and not at any time thereafter, hold itself or themselves out as having any affiliation or association with Seller or any of its Affiliates. Without limiting the generality of the foregoing, within one hundred fifty (150) days following the Closing, Buyer shall cause each of the Acquired Companies having a corporate name that includes the Excluded Marks to change its name to a corporate name that does not include the Excluded Marks, including making any Governmental Filings necessary to effect such change, variations thereof and, after the Transitional Trademark License Period or except as otherwise expressly permitted hereinif Xxxxxxx so elects, shall complete the removal of the Excluded Marks from all products, signage, vehicles, properties, technical information, stationery and promotional or in combination with any other marketing materials and other assetsnames not including "Xxxxxx") in any new business operated by Xxxxxxx.
Appears in 1 contract
Samples: Separation and Release Agreement (Petrie Parkman & Co., Inc.)
Certain Intellectual Property Matters. (a) From e)MSC hereby acknowledges and agrees that MPM and its subsidiaries have certain intellectual property and common law rights associated with the Closing until the date that is one hundred eighty (180) days after the Closing (such periodword “Momentive” and all related trademarks, service marks, brand names, logos, certification marks, assumed names and trade names, including the “Transitional Trademark License Period”)Momentive” stylized logo, Seller hereby grants the Buyer colors, and the Acquired Companies a worldwide, royalty-free, non-transferable, non-exclusive, irrevocable license to use the Excluded Marks solely other indicia as used 6 in connection with the continued operation name and business of MPM (collectively, “MPM Marks”). During the Term (and during any transition period provided in Section 10.04), MPM hereby agrees not to, and to cause its respective controlled affiliates not to, assert any claims against MSC, MSC Holdings and their respective controlled affiliates with respect to the use of the Business word “Momentive” or any MPM Xxxx in their respective names, businesses and in accordance products and services; provided, such use shall be substantially consistent with the trademark practices and quality standards in existence of MPM so as not to weaken the value of the ClosingMPM Marks. From the end of the Transitional Trademark License Period until the date that is one (1) year after the ClosingSuch use, Seller hereby grants and all goodwill associated with such use, shall inure to the Buyer and benefit of MPM. MPM shall have the Acquired Companies a worldwide, royalty-free, non-transferable, non-exclusive, irrevocable license right to use monitor the Excluded Marks solely in stylized text form in connection with the continued operation of the Business solely for the purpose of explaining the history quality of the products and services bearing the MPM Marks provided by MSC, including any promotional materials for the same. The MPM Marks shall remain the exclusive property of MPM. (f)MPM hereby acknowledges and in accordance agrees that MSC has certain intellectual property and common law rights associated with the quality standards word “Hexion” and all related trademarks, service marks, brand names, logos, certification marks, assumed names and trade names, including the “Hexion” stylized logo, colors, and other indicia as used in existence as connection with the name and business of MSC (collectively, “Hexion Marks”). During the Closing. Notwithstanding the foregoing, to the extent that Buyer and the Acquired Companies have not obtained any applicable Permit, authorization, Approval, consent or waiver of any Governmental Entity to allow the Acquired Companies to continue selling Term (and operating the Business without during any transition period provided in Section 10.04), MSC hereby agrees not to, and to cause its respective controlled affiliates not to, assert any claims against MPM, MPM Holdings and their respective controlled affiliates with respect to the use of an Excluded the word “Hexion” or any Hexion Xxxx in their respective names, businesses and products and services; provided, that such use shall be substantially consistent with respect to) any particular product or service the trademark practices and quality standards of MSC so as not to weaken the value of the Business in a particular jurisdictionHexion Marks. Such use, the Transitional Trademark License Period shall be extended solely with respect to such particular product or service in such particular jurisdiction, and solely to the extent reasonably necessary (taking into account voluntary and best practice processes related to Federal Highway Administration eligibility letters) and for such period of time necessary, to allow the Acquired Companies to continue selling such particular product or service of the Business in such particular jurisdiction until the date that Buyer or the Acquired Companies obtains such applicable Permit, authorization, Approval, consent, waiver or eligibility letter of any Governmental Entity. With respect to each piece of equipment of the Acquired Companies that is leased to a third party as of the Closing and will remain leased to such third party for more than one hundred eighty (180) days after the Closing, the Transitional Trademark License Period with respect to such piece of equipment shall be extended until the earlier to occur of (i) the one (1) year anniversary of the Closing and (ii) thirty (30) days after the date that such third-party lease expires or is earlier terminated. Any and all goodwill arising from associated with such use, shall inure to the Buyer and Acquired Companies’ use benefit of MSC. MSC shall have the right to monitor the quality of the Excluded products and services bearing the Hexion Marks provided by MPM, including any promotional materials for the same. The Hexion Marks shall remain the exclusive property of MSC. (g)In connection with the entry into this Agreement, MSC and MPM are entering into a Master Confidentiality and Joint Development Agreement, substantially in the form attached hereto as permitted in this Section 5.11(a) shall inure solely Exhibit B (as amended from time to Seller’s benefit. Following time, the Transitional Trademark License Period, and except as otherwise expressly permitted in this Section 5.11(a“Joint Development Agreement”), Buyer shall, which is incorporated by reference herein. In the event of any conflict or inconsistency between the terms of this Agreement and shall cause the Acquired Companies and each of Buyer’s other Affiliates to: (i) cease to make any use terms of the Excluded MarksJoint Development Agreement, including as part of any company name or Internet domain name; and (ii) cease to, and not at any time thereafter, hold itself or themselves out as having any affiliation or association with Seller or any of its Affiliates. Without limiting the generality terms of the foregoing, within one hundred fifty (150) days following the Closing, Buyer Joint Development Agreement shall cause each of the Acquired Companies having a corporate name that includes the Excluded Marks to change its name to a corporate name that does not include the Excluded Marks, including making any Governmental Filings necessary to effect such change, and, after the Transitional Trademark License Period or except as otherwise expressly permitted herein, shall complete the removal of the Excluded Marks from all products, signage, vehicles, properties, technical information, stationery and promotional or other marketing materials and other assetscontrol. ARTICLE IV.
Appears in 1 contract
Samples: Shared Services Agreement
Certain Intellectual Property Matters. (a) From the Closing until the date that is one hundred eighty (180) days after the Closing (such period, the “Transitional Trademark License Period”), Seller hereby grants the Buyer and the Acquired Companies a worldwide, royalty-free, non-transferable, non-exclusive, irrevocable license to use the Excluded Marks solely in connection with the continued operation of the Business and in accordance with the quality standards in existence Effective as of the Closing, each Owner hereby assigns to Federated Hermes (and its designated Affiliate) without further compensation any and all inventions, processes, designs, formulae, trade secrets, know-how, computer software, data and documentation, or other discoveries, technological innovations, improvements, copyrightable works or other Intellectual Property conceived, programmed, developed, created or otherwise made or invented by such Owner solely or jointly for the benefit of or relating to Seller, the Acquired Assets, the Business or any Product, whether or not conceived, programmed, developed, created or otherwise made or invented during working hours (as applicable), relating in any manner to the Business, business plans, or development plans of Seller, the Acquired Assets, the Business or any Product. From All such Intellectual Property, whether patentable, not patentable or otherwise, shall be the end sole and exclusive property of Federated Hermes (and its designated Affiliate) with respect to any and all countries. At the request and expense of Federated Hermes, at any time following the Closing Date, such Owner shall perform all lawful acts and execute, acknowledge and deliver all such instruments, agreements, assignments, certificates or other documents deemed necessary or desirable by Federated Hermes to vest or maintain in Federated Hermes (and its designated Affiliates) all right, title and interest in and to such Intellectual Property, and to enable Federated Hermes (and its designated Affiliates) to prepare, file and prosecute applications for patents, copyrights, trademarks or service marks (or other registrations) thereon in any and all countries selected by Federated Hermes, including renewals and reissues thereof, and to obtain or record sole and exclusive title to such applications, patents, copyrights, trademarks, service marks or other registrations for any and all said countries. To the extent that any work performed by any Owner is eligible to be deemed “work for hire” for purposes of the Transitional Trademark License Period until the date that is one (1) year after the ClosingUnited States copyright laws, such Owner, Seller and Federated Hermes intend for it to be work for hire. To the extent that any work performed by such Owner is not deemed to be a “work for hire”, such Owner hereby grants to the Buyer and the Acquired Companies a worldwideassigns, royalty-free, non-transferable, non-exclusive, irrevocable license to use the Excluded Marks solely in stylized text form in connection with the continued operation of the Business solely for the purpose of explaining the history of the products and services and in accordance with the quality standards in existence effective as of the Closing. Notwithstanding the foregoing, all proprietary rights, including copyright, in such work to the extent that Buyer and the Acquired Companies have not obtained any applicable Permit, authorization, Approval, consent or waiver of any Governmental Entity to allow the Acquired Companies to continue selling Federated Hermes (and operating the Business its designated Affiliates) without the use of an Excluded Xxxx with respect to) any particular product or service of the Business in a particular jurisdiction, the Transitional Trademark License Period shall be extended solely with respect to such particular product or service in such particular jurisdiction, and solely to the extent reasonably necessary (taking into account voluntary and best practice processes related to Federal Highway Administration eligibility letters) and for such period of time necessary, to allow the Acquired Companies to continue selling such particular product or service of the Business in such particular jurisdiction until the date that Buyer or the Acquired Companies obtains such applicable Permit, authorization, Approval, consent, waiver or eligibility letter of any Governmental Entity. With respect to each piece of equipment of the Acquired Companies that is leased to a third party as of the Closing and will remain leased to such third party for more than one hundred eighty (180) days after the Closing, the Transitional Trademark License Period with respect to such piece of equipment shall be extended until the earlier to occur of (i) the one (1) year anniversary of the Closing and (ii) thirty (30) days after the date that such third-party lease expires or is earlier terminated. Any and all goodwill arising from the Buyer and Acquired Companies’ use of the Excluded Marks as permitted in this Section 5.11(a) shall inure solely to Seller’s benefit. Following the Transitional Trademark License Period, and except as otherwise expressly permitted in this Section 5.11(a), Buyer shall, and shall cause the Acquired Companies and each of Buyer’s other Affiliates to: (i) cease to make any use of the Excluded Marks, including as part of any company name or Internet domain name; and (ii) cease to, and not at any time thereafter, hold itself or themselves out as having any affiliation or association with Seller or any of its Affiliates. Without limiting the generality of the foregoing, within one hundred fifty (150) days following the Closing, Buyer shall cause each of the Acquired Companies having a corporate name that includes the Excluded Marks to change its name to a corporate name that does not include the Excluded Marks, including making any Governmental Filings necessary to effect such change, and, after the Transitional Trademark License Period or except as otherwise expressly permitted herein, shall complete the removal of the Excluded Marks from all products, signage, vehicles, properties, technical information, stationery and promotional or other marketing materials and other assetsfurther compensation.
Appears in 1 contract
