Intellectual Property Matters. (a) Buyer and its Affiliates (and Permitted Designees and their respective Affiliates) have, and after the Relevant Closing, the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliates. (b) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law. (c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval. (d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 2 contracts
Samples: Security and Asset Purchase Agreement (Willis Towers Watson PLC), Security and Asset Purchase Agreement (Arthur J. Gallagher & Co.)
Intellectual Property Matters. (a) Buyer Seller hereby assigns, sells, conveys and transfers (and agrees to cause its Affiliates to assign, sell, convey and transfer) to the appropriate Purchased Entity (as set forth on Schedule 1.1(a)) all its (and Permitted Designees their) rights, title and their respective Affiliatesinterest in and to the Transferred IP Assets to be held and enjoyed by such Purchased Entity, its successors and assigns. Seller hereby further assigns, sells, conveys and transfers (and agrees to cause its Affiliates to assign, sell, convey and transfer) haveto such Purchased Entity all its (and their) right, title and interest in and to any and all causes of action and rights to recover past, present and future infringement of the Transferred IP Assets (whether before or hereafter accrued), to settle and retain proceeds from any such actions, and after the Relevant Closing, right to claim priority from the Transferred Entities IP Assets. At Purchaser’s reasonable request and expense, Seller shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliates.
(b) As promptly as practicable after the Relevant Closing, Buyer shallprovide, and shall cause its Affiliates to provide, any cooperation and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marksperform any other acts as may be reasonably necessary or appropriate, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using to fully assign to such Purchased Entity all rights, title and interest in and to the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business Transferred IP Assets assigned or with Governmental Authoritiesrequired to be assigned hereunder, (ii) retaining or using to record and otherwise perfect such assignments, including by promptly executing and delivering to such Purchased Entity all forms and other documents (such as short form assignment agreements for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’purposes of recording any such assignments) internal business reasonably requested by such Purchased Entity for such purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using to convey possession to such Purchased Entity of copies of any such Transferred IP Assets that are not in the Seller Marks to possession or control of such Purchased Entity as of the extent required by applicable Lawdate of this Agreement.
(ci) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, Prior to and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire Seller shall, and shall cause its Affiliates to, change assign, sell, convey and transfer to the appropriate Purchased Entity all signage containing of Seller’s and its Affiliates’ rights, title and interest in, to and under all Internet domain names Related to the Business Trademarks, either by covering or removing such signagePurchased Entities Businesses, including any signage affixed (x) all registrations, and applications for registration therein, and the exclusive right to apply for and maintain such Internet domain names, (y) all goodwill associated therewith and symbolized by such Internet domain names, and (z) all benefits, privileges, causes of action and remedies relating to any real property of Sellers the foregoing, whether before or their Affiliates. As soon as is reasonably practicable following hereafter accrued (including the Relevant rights to xxx for all past, present or future infringements or other violations of any rights in such Internet domain names and to settle and retain proceeds from any such actions).
(ii) Prior to and after the Closing, but Purchaser shall, and shall cause its Affiliates (including, after the Closing, the Purchased Entities) to, assign, sell, convey and transfer to Seller all of Purchaser’s and its Affiliates’ rights, title and interest in, to and under all Internet domain names Related to the Excluded Businesses, including (x) all registrations and applications for registration therein and the exclusive right to apply for and maintain such Internet domain names, (y) all goodwill associated therewith and symbolized by such Internet domain names and (z) all benefits, privileges, causes of action and remedies relating to any of the foregoing, whether before or hereafter accrued (including the rights to xxx for all past, present or future infringements or other violations of any rights in no event later than two such Internet domain names and to settle and retain proceeds from any such actions).
(2iii) months following Prior to the Relevant Closing DateClosing, Sapphire the parties shall negotiate in good faith to identify Internet domain names that will be assigned hereunder.
(c) (i) Prior to and after the Closing, Seller shall, and shall cause its Affiliates to, discontinue assign, sell, convey and transfer to the appropriate Purchased Entity all use of the Business Trademarks such Seller’s and its Affiliates’ rights, title and interest in, to and under, and, at Sapphireto the extent that a right cannot be assigned, license or otherwise provide a contractual use right (with the same breadth and exclusivity as Seller’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If ’ use rights) to, all Intellectual Property (other than Internet domain names and patents and patent applications) Related to the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvalPurchased Entities Businesses.
Appears in 2 contracts
Samples: Stock Purchase Agreement (Gsi Commerce Inc), Stock Purchase Agreement (Gsi Commerce Inc)
Intellectual Property Matters. (a) Buyer Licensor warrants to its best knowledge and its Affiliates (and Permitted Designees and their respective Affiliates) have, and after the Relevant Closing, the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliates.
(b) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials good faith belief that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using Licensor owns, free and clear of all liens and encumbrances, intellectual property, patents (including but not limited to United States Patent Numbers * ), trademarks, inventor's certificates, and applications therefor, printed and unprinted technical data, know-how, trade secrets, copyrights and other intellectual property rights inventions, discoveries, techniques, works, processes, methods, plans, software, designs, drawings, schematics, specifications, communications protocols, source and object code and modifications, test procedures, program cards, tapes, disks, algorithms and all other scientific or technical information in whatever form relating to, embodied in or used in the Seller Marks proprietary process to produce synthetic coal fuel extrusions, pellets, and briquettes from waste coal dust, coal fines and other similar coal derivatives, and, the right to freely use, sell and exploit Proprietary Binder Material used in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authoritiesmanufacturing synthetic coal fuel extrusions, pellets, and briquettes from waste coal dust, coal fines and other similar coal derivatives, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees Licensor has the right and their respective Affiliates’) internal business purposespower to grant to Licensee the licenses granted herein, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using Licensor has not made and will not make any agreement with another in conflict with the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shallrights granted herein, and shall cause its Affiliates (iv) the grant or sale to Licensee, and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names use by Licensee of the Transferred Entities to remove rights, Proprietary Binder Material and/or licenses granted herein as contemplated by this Agreement will not infringe any third-party's intellectual property rights. Licensor represents and warrants that valid technical information exists establishing that the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings 2% Proprietary Binder Material works successfully with the applicable Governmental Authority of each jurisdiction in which the ownership Coal Briquetting Technology using Eastern sub-bituminous coal fines producing a commercially acceptable synthetic coal extrusion, pellet or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, briquette and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all that use of the Business Trademarks and2% Proprietary Binder Material with the Coal Briquetting Technology is consistent with the Private Letter Ruling, at Sapphire’s sole cost and expensedated September 6, remove all Business Trademarks 1995, received by Licensor from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials the Internal Revenue Service that incorporate the Business Trademarks, whether any of production using the foregoing materials are held by Sapphire or its Affiliates or under Coal Briquetting Technology qualifies for the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvalSection 29 Tax Credit.
Appears in 2 contracts
Samples: License and Binder Purchase Agreement (Covol Technologies Inc), License and Binder Purchase Agreement (Covol Technologies Inc)
Intellectual Property Matters. (a) Buyer and its Affiliates (and Permitted Designees and their respective Affiliates) have, and after Following the Relevant Closing, the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliates.
(b) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller MarksAcquired Companies to, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As as soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months 60 days following the Relevant Closing Date, unless cease to (i) make any use of any names (including internet domain names) and only Trademarks that include (A) the term “Aeroflex” or “Cobham” or any names or Trademarks confusingly similar thereto, or likely to be confusingly similar thereto, or dilutive thereof (collectively the extent that“Similar Marks”); and (ii) a longer period is required by Section 5.08(c) below hold themselves out as having any affiliation or association with Seller or any of its current or former Affiliates (other than the Acquired Companies). In furtherance thereof, as soon as practicable but in no event later than 60 days following the Closing Date, Buyer shall cause the Acquired Companies to remove, strike over or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue obliterate all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Similar Marks from websitesall assets and other materials used or owned by the Acquired Companies, marketing and promotional materials, invoicesincluding any vehicles, business cards, schedules, displays, stationery, technical guidelines packaging materials, promotional materials, manuals, forms, websites, email, computer software and other supplies materials and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates)systems. Notwithstanding anything to the foregoing, nothing contrary in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees 5.11, from and their respective Affiliates) from after the Closing, the Acquired Companies may (i) using retain and use, for the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) Acquired Companies internal business purposes, records and other historical or archived documents containing or referencing the Seller Similar Marks; and (ii) refer on their websites and in their advertising, provided that such marketing and promotional materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following historical fact that the Relevant Closing DateAcquired Companies previously conducted their businesses under the Similar Marks. In addition to the foregoing, Buyer shall, and shall cause its Affiliates and within 2 Business Days following the Transferred Entities (and Permitted Designees and their respective Affiliates) toClosing Date, at Buyer’s sole cost and expenseprovide to Seller evidence, file any documentation necessary in form reasonably satisfactory to change the names Seller, that each of the Transferred Entities Acquired Companies have changed their legal names to remove the words term “Xxxxxx Xxxxxx Xxxxxx,Aeroflex” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvaltherefrom.
(db) As promptly as practicable after Notwithstanding anything to the Relevant Closingcontrary in this Section 5.11, Sapphire shallBuyer will be entitled to use, sell and shall cause its Affiliates to, change all signage distribute products containing any Similar Marks that are in the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property inventory of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following Acquired Companies on the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use but only for an amount of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months time following the Relevant Closing Date), and upon receipt reasonably necessary to sell all of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvalproducts.
Appears in 2 contracts
Samples: Stock Purchase Agreement, Stock Purchase Agreement (API Technologies Corp.)
Intellectual Property Matters. (a) Except (i) as expressly provided in this Agreement or any Ancillary Document or (ii) for the items of Intellectual Property owned by Buyer and the Transferred Companies as of the Closing that are not Excluded Assets, it is expressly agreed that none of Buyer or any of its Affiliates Subsidiaries (and Permitted Designees and their respective Affiliates) haveincluding, and after the Relevant Closing, the Transferred Entities shall haveCompanies) is purchasing, no acquiring, licensing or otherwise obtaining under this Agreement or any Ancillary Document any right, titletitle or interest (whether express or implied) in, interestto or under (A) the trademark “AT&T Inc.,” the globe design, license or and any other right whatsoever in the Trademarks that are owned or controlled by Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers or any of their Affiliates have its Subsidiaries, or any derivation, variation, translation or adaptation thereof, or any Trademarks that are confusingly similar to, including or embodying any of the foregoing (collectively, the “Seller Trademarks”), or (B) any other Intellectual Property owned by or licensed to Seller or any of its Subsidiaries (the foregoing, together with the Seller Trademarks, the “Seller IP”). Subject to the terms of this Agreement or any Ancillary Document, Buyer shall, and Buyer shall cause its Subsidiaries (including after the Closing, the Transferred Companies) to, cease and discontinue promptly as of the Closing any and all uses of any and all Seller IP. Without limiting the foregoing, each Transferred Company shall assign any and all right, title and interest it has in or to any of the Seller IP, including any Seller Trademarks, and transfer any and all tangible embodiments thereof, to Seller or a designee specified by a Seller at or prior to the Closing; provided, that neither Transferred Company shall be obligated to assign pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right this Section 6.21(a) any rights expressly granted to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliatesit under any Ancillary Document.
(b) As promptly Buyer, for itself and its Subsidiaries, acknowledges and agrees that, (i) as practicable between the parties hereto, Seller or its Subsidiaries own or have the exclusive right to use and display any and all of the Seller Trademarks and except as otherwise expressly provided in this Section 6.21 or in any Ancillary Document, neither Buyer nor any of its Subsidiaries shall, as of the Closing, have any rights in or to the Seller Trademarks and (ii) neither Buyer nor any of its Subsidiaries (including, after the Relevant Closing, Buyer the Transferred Companies) shall contest the ownership or validity of any rights of Seller or its Subsidiaries in or to the Seller Trademarks that exist as of the Closing.
(c) Except as expressly provided in this Section 6.21 or otherwise in this Agreement or any Ancillary Document, it is expressly agreed that, after the Closing, no member of Seller Group will have any right, title or interest (whether express or implied) in, to or under the Trademarks listed in Seller Schedule 6.21(c) (collectively, the “Company Trademarks”). Prior to the Closing, Seller shall, and shall cause its Affiliates and Subsidiaries (including the Transferred Entities (and Permitted Designees and their respective Affiliates) Companies), to change all signage containing the Seller Marks, either by covering take commercially reasonable actions that are necessary or removing such signageadvisable, including any signage affixed to any real property the payment of Buyerfees or the filing of documents, its Affiliatesfor the purposes of obtaining, maintaining, or renewing any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but rights in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalTrademarks.
(d) As promptly as practicable after Buyer acknowledges and agrees that on or before the Relevant Closing, Sapphire shall, Seller or its designee will transfer and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed migrate to any real property devices or media at a location or locations designated by Seller or its designee all copies and versions of Sellers any Seller Owned Software that reside on any of the Transferred Companies’ servers, computers, equipment or their Affiliates. As soon as is reasonably practicable following storage media.
(e) During the Relevant Closing, but in no event later than two (2) months following period from the Relevant date of this Agreement until the Closing Date, Sapphire shallSeller shall provide commercially reasonable assistance, access and shall cause its Affiliates to, discontinue all information reasonably requested by Buyer to plan and prepare for discontinuing use of Seller Trademarks in the Transferred Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvalaccordance with the Transitional Trademark License Agreement.
Appears in 2 contracts
Samples: Stock Purchase Agreement (At&t Inc.), Stock Purchase Agreement (Frontier Communications Corp)
Intellectual Property Matters. (a) Buyer and its Affiliates (and Permitted Designees and their respective Affiliates) have, and after the Relevant Closing, the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except Except as expressly set forth in this Section 5.087.6(a), no interest in or right to use the name “EMCORE” or any derivation thereof or any other Trademarks of Seller other than the Trademarks listed on Schedule 2.1(b) of the Seller Disclosure Schedule (the “Retained Marks”), is being transferred or licensed to Purchaser pursuant to the transactions contemplated by this Agreement. Seller hereby grants to Purchaser a limited, worldwide, non-exclusive, non-transferable, non-sublicensable (except to Purchaser’s distributors, resellers and sales agents), royalty-free license to use any materials bearing Retained Marks and to sell, transfer and ship any products or related materials bearing Retained Marks only to the extent: (i) requested to do so by Seller, (ii) displayed on the hardcopy (non-electronic) form or the softcopy electronic form of such materials delivered to Purchaser at the Closing, or (iii) required under Assigned Contracts with customers. The foregoing license shall expire upon the earliest occurrence of (A) Purchaser having qualified the use of its Trademarks with each customer, (B) the end of life of the applicable Product, and none (C) nine (9) months after the Closing Date. The foregoing license is subject to Seller’s standard written Trademark usage guidelines, a copy of Sellers which has been provided to Purchaser. Seller may terminate the foregoing license upon Purchaser’s material non-compliance with the Trademark usage guidelines and failure to cure such non-compliance within ten (10) Business Days or such longer period as may be agreed upon by the Parties. Upon the expiration or termination of the foregoing license, all materials bearing any Retained Xxxx in the possession of Purchaser, any of any of its subsidiaries or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliatesagents shall be promptly destroyed.
(b) As promptly as practicable after Purchaser acknowledges that certain of the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective AffiliatesPatents comprising Registered IP identified on Schedule 5.13(a) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials Disclosure Schedule that incorporate are marked with an asterisk (*) (the Seller Marks, whether any “Acquired Patents”) are subject to the terms of the foregoing materials are held Intellectual Property Agreement, dated as of February 22, 2008, by Buyer, its Affiliates or and between Seller and Intel Corporation (the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates“Intel Agreement”). Notwithstanding Purchaser acknowledges that the foregoing, nothing in this Acquired Patents are encumbered by the license granted to Intel under Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates3.3(b) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees Intel Agreement and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing understands that it will be acquiring the Seller Marks, provided that Acquired Patents subject to such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Lawlicense.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 2 contracts
Samples: Asset Purchase Agreement (Neophotonics Corp), Asset Purchase Agreement (Emcore Corp)
Intellectual Property Matters. (a) Buyer Peabody and its Affiliates hereby unconditionally grant to the JV Entities as of the Closing a non-exclusive, royalty-free, perpetual, irrevocable, fully paid-up license (with the right to grant sublicenses) to use the Peabody Retained IP (other than the Peabody Retained Marks) as it exists as of the Closing; provided, however, that the Parties shall cause the JV Entities not to sublicense or disclose any confidential Peabody Retained IP to any Person unless such Person is subject to a customary obligation of confidentiality. Each of Peabody and Permitted Designees and their respective its Affiliates) have, on the one hand, and after the Relevant ClosingJV Entities, on the Transferred Entities other hand, may modify or improve the Peabody Retained IP licensed pursuant to this Section 6.20(a), and the Person making such modifications or improvements shall have, no own all right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08, title and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliatestherein.
(b) As promptly Arch and its Affiliates hereby unconditionally grant to the JV Entities as practicable after of the Relevant Closing a non-exclusive, royalty-free, perpetual, irrevocable, fully paid-up license (with the right to grant sublicenses) to use the Arch Retained IP (other than the Arch Retained Marks) as it exists as of the Closing; provided, Buyer shallhowever, and that the Parties shall cause its Affiliates and the Transferred JV Entities (and Permitted Designees and their respective Affiliates) not to change all signage containing the Seller Marks, either by covering sublicense or removing such signage, including disclose any signage affixed confidential Arch Retained IP to any real property Person unless such Person is subject to a customary obligation of Buyer, confidentiality. Each of Arch and its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following on the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shallone hand, and shall cause its Affiliates the JV Entities, on the other hand, may modify or improve the Arch Retained IP licensed pursuant to this Section 6.20(b), and the Transferred Entities (Person making such modifications or improvements shall own all right, title and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Lawinterest therein.
(c) As From and after the Closing, except as expressly provided in this Section 6.20(c), the Parties shall cause the JV Entities not to use the Peabody Retained Marks or the Arch Retained Marks alone or together with other words, logos, symbols or designs in any form, variation or manner in connection with any business that the JV Entities may thereafter conduct. The JV Entities shall use commercially reasonable efforts to remove and cease use of all Peabody Retained Marks or Arch Retained Marks, including removing or replacing all logos and signage on tangible items included in the Contributed Assets, as promptly as practicable, reasonably practicable but in any event no event later ninety (90) days following than the Relevant date that is six months after the Closing Date; provided, Buyer shallhowever, and shall cause its Affiliates that during such six-month period, the JV Entities may continue to use any tangible items included in the Contributed Assets, including the existing signage and the Transferred Entities existing stock of letterhead, labels, promotional materials and other documents and materials, that contain the Peabody Retained Marks and the Arch Retained Marks in a manner consistent with (and Permitted Designees for a purpose no different from) the use of such Peabody Retained Marks or Arch Retained Marks by Peabody or Arch, as the case may be, and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed Affiliates prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalClosing.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 2 contracts
Samples: Implementation Agreement (Arch Coal Inc), Implementation Agreement (Peabody Energy Corp)
Intellectual Property Matters. (a) Buyer and its Affiliates (and Permitted Designees and their respective Affiliates) have, and after the Relevant Closing, the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except Except as expressly set forth in this Section 5.087.9, and none of Sellers no interest in or right to use the name “EMCORE” or any derivation thereof or any other Trademarks of their Affiliates have Seller other than the Trademarks listed on Schedule 2.1(d) of the Seller Disclosure Schedule (the “Retained Marks”), is being transferred or licensed to Purchaser pursuant to the Transaction Documents assigned transactions contemplated by this Agreement. Seller hereby grants to Purchaser a limited, worldwide, non-exclusive, non-transferable, non-sublicensable, royalty-free license to use any materials bearing Retained Marks and to sell, transfer and ship any products or licensed such rightrelated materials bearing Retained Marks only to the extent: (a) requested to do so by Seller, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliates.
(b) As promptly as practicable displayed on the hardcopy (non-electronic) form or the softcopy electronic form of such materials delivered to Purchaser at the Closing or (c) required under Assigned Contracts with customers. The foregoing license shall expire upon the earliest occurrence of (i) Purchaser having qualified the use of its Trademarks with each customer, (ii) the end of life of the applicable product, and (iii) six (6) months after the Relevant ClosingClosing Date. The foregoing license is subject to Seller’s standard Trademark usage guidelines, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) a copy of which has been provided to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates)Purchaser. As soon as is reasonably practicable following the Relevant Closing, but in no event later than Within six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any expiration of the foregoing license, all materials are held by Buyerbearing any Retained Xxxx in the possession of Purchaser, any of its Affiliates subsidiaries or the Transferred Entities (or Permitted Designees and any of their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates)agents shall be promptly destroyed. Notwithstanding the foregoing, nothing anything in this Section 5.08 shall prohibit Buyer or 7.9 to the contrary, Purchaser and its Affiliates shall have the right (or Permitted Designees and their respective AffiliatesA) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, to retain records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Retained Marks to the extent required by applicable Lawused in the Business or related to the Purchased Assets; (B) when advisable or necessary, to refer to the historical relationship between the Business and Purchaser and its Affiliates, on the one hand, and Seller and its Affiliates, on the other hand (whether in documents or correspondence with third parties concerning Purchased Assets, regulatory matters, or otherwise); and (C) to indicate, when advisable or necessary, the Business’s historical name(s), regardless of whether such name(s) include any of the Retained Marks.
(cb) As promptly as practicablePromptly after the date hereof, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and Seller shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary use commercially reasonable efforts to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which correct the ownership or chain of title discrepancies or errors identified in the operation footnotes in Schedule 5.15(a) with the object of the Transferred Entities’ assets correcting any such discrepancies or the character of its activities is such as to require it to be licensed errors on or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalClosing.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Intellectual Property Matters. (a) Buyer Except as provided in the Transition Services Agreement and its Affiliates License Agreement, Sellers shall cease, within thirty (30) calendar days after the Closing Date, all use of the "Medscape" xxxx and Permitted Designees and their respective Affiliates) havename, and after any xxxx or name that includes the Relevant Closingterm "Medscape" or is confusingly similar thereto, the Transferred Entities shall haveincluding without limitation any such use as a trademark, no rightservice xxxx, titlecorporate name, interesttrade name, license or domain name, or in any other right whatsoever in the Seller Marksadvertising, except as expressly set forth in this Section 5.08publications, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such rightletterhead, titleinvoices, interest business cards or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliatesmaterials.
(b) Parent shall propose at the next shareholder meeting of Parent a change in its corporate name such that the name "Medscape," or any name confusingly similar thereto, is not included in Parent's corporate name, and shall use its commercially reasonable efforts to promote the adoption of such proposal by its shareholders.
(c) Except as provided in the Transition Services Agreement and License Agreement, Parent shall, within thirty (30) days after the Closing Date, cause its subsidiaries to change their corporate names, as applicable, such that the name "Medscape," or any name confusingly similar thereto, is not included in such subsidiary's corporate name.
(d) Except as provided in the Transition Services Agreement and License Agreement, Parent shall within thirty (30) days after the Closing Date cease, and shall cause its subsidiaries to cease, any and all use of the "Medscape" xxxx and name, and any xxxx or name that includes the term "Medscape" or is confusingly similar thereto, including without limitation any such use as a trademark, service xxxx, corporate name, trade name, or domain name, or in any advertising, publications, letterhead, invoices, business cards or other materials; provided, however, that Parent may continue to use its current corporate name only until such time as its shareholders adopt the proposal referred to in subsection (b) above, and as soon as is practicable thereafter shall cease all use of its current corporate name.
(e) Parent shall not, and shall cause its subsidiaries not to, seek to register any corporate name, trade name, service xxxx, trademark or domain name that includes or is confusingly similar to the "Medscape" name and xxxx. Parent agrees that it will never, and it will cause its subsidiaries to never, directly or indirectly challenge the validity or ownership of the "Medscape" name and xxxx or any registration or application for registration thereof.
(f) Sellers shall not (and shall not permit their subsidiaries to) directly or indirectly register or acquire any registration to any domain name in any country worldwide that includes the words "Medscape" or that is confusingly similar to any domain name or trademark transferred to Purchaser pursuant to this Agreement.
(g) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities Closing (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in any event no event later than six thirty (630) months following the Relevant Closing Datedays after Closing), unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and Sellers shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer provide Purchaser or its Affiliates (or Permitted Designees designated counsel with all files for such trademark and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner service xxxx applications and registrations as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded maintained in the ordinary regular course of business. Each Seller hereby makes, or (iii) using constitutes and appoints Purchaser as its true and lawful attorney-in-fact to execute and deliver for and on behalf of such Seller all assignments and other instruments and documents, and to do any and all such other acts, as may be necessary to effectuate the Seller Marks transfer to Subsidiary of each of the extent required by applicable Lawtrademarks, service marks and domain names included in the Acquired Intellectual Property, and any applications and registrations therefor.
(ch) As promptly as practicableNotwithstanding anything to the contrary in this Agreement, but in no event later ninety (90) days following the Relevant obligations under this Section 7.03 shall survive the Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalindefinitely.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Samples: Asset Purchase Agreement (Medicalogic/Medscape Inc)
Intellectual Property Matters. (a) Buyer Siemens hereby agrees on behalf of itself and its Affiliates applicable affiliates to comply with the applicable provisions of the pre-existing cross-license agreements identified in Section 6.22(a) of the Company Disclosure Schedule (the "Cross-Licenses") to provide Parent and Permitted Designees its affiliates, Sub, Company and their respective Affiliates) have, Company Subsidiaries with continuing benefits and rights from such Cross-Licenses after the Relevant Closing to the extent available under such Cross-Licenses. Siemens shall notify Parent of all obligations that a Cross-License may require Parent or the Company to undertake before Parent or Company receives the continuing benefits or rights under such Cross-License. Parent acknowledges that Siemens and its affiliates shall have no responsibility for Parent and its affiliates, Sub, and, following the Closing, the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08, Company and none of Sellers or Company Subsidiaries' failure to meet any of their Affiliates have pursuant to the Transaction Documents assigned or licensed applicable obligations under such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective AffiliatesCross-Licenses.
(b) As promptly as practicable after the Relevant ClosingSiemens hereby agrees that it will not, Buyer shallnor will its affiliates, assert any infringement or misappropriation claims against Parent, Sub, Company and shall cause its Affiliates and the Transferred Entities (and Permitted Designees Company Subsidiaries and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only affiliates to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authoritiesthat Parent, Buyer shallSub, Company and shall cause its Affiliates and the Transferred Entities (and Permitted Designees Company Subsidiaries and their respective Affiliatesaffiliates use any Intellectual Property owned by Siemens and its affiliates (other than the trademarks, service marks and other source identifiers) to, discontinue all use that exists as of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications Closing in connection with the administration manufacture, use and sale of the product and service lines in the Business that is conducted as of the Closing. Siemens hereby agrees that it will not, nor will its affiliates, assert any infringement or with Governmental Authoritiesmisappropriation claims against the customers of Parent, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees Sub, Company and Company Subsidiaries and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks affiliates to the extent required that such customers use any such Intellectual Property owned by applicable LawSiemens and its affiliates (other than the trademarks, service marks and other source identifiers) that exists as of the Closing in connection with such customers' use of such product and service lines that are sold directly or indirectly by the Parent, Sub, Company and the Company Subsidiaries and their affiliates in the Business that is conducted as of the Closing. The non-assert by Siemens and its affiliates in this Section 6.22(b) is non-transferable, whether by assignment, change of control or otherwise, by Parent, Sub, Company, Company Subsidiaries and such customers.
(c) As promptly Parent, Sub, Company and Company Subsidiaries hereby agree that they will not assert any infringement or misappropriation claims against Siemens and its affiliates to the extent that Siemens and its affiliates use any Company Intellectual Property (other than the trademarks, service marks and other source identifiers) that exists as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings Closing in connection with the applicable Governmental Authority product and service lines in the businesses of each jurisdiction in which the ownership or the operation Siemens and its affiliates that are conducted as of the Transferred Entities’ assets Closing, other than the product and service lines of the Business conducted as of the Closing. Parent, Sub, Company and Company Subsidiaries hereby agree that they will not assert any infringement or misappropriation claims against the character customers of Siemens and its activities affiliates to the extent that such customers use any Company Intellectual Property (other than the trademarks, service marks and other source identifiers) that exists as of the Closing in connection with product or service lines sold directly or indirectly by Siemens and its affiliates in the businesses of Siemens and its affiliates that are conducted as of the Closing, other than the product and service lines of the Business conducted as of the Closing. The non-assert by Parent, Sub, Company and Company Subsidiaries in this Section 6.22(c) is non-transferable, whether by assignment, change of control or otherwise, by Siemens and its affiliates and such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalcustomers.
(d) As promptly as practicable after During the Relevant period from the date of this Agreement and continuing until the earlier of the termination of this Agreement or the Closing, Sapphire shallin the event that Siemens and its affiliates enter into any new patent cross-licenses with a third party that may impact the Patents included in the Company Registered Intellectual Property, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed subject to any real property of Sellers confidentiality or their Affiliates. As soon as is reasonably practicable following the Relevant Closingother restrictions, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and Siemens shall cause its Affiliates to, discontinue all use notify Parent of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt identity of such approval, shall file third party and reasonably describe any impact on such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvalPatents.
Appears in 1 contract
Intellectual Property Matters. (a) Except to the extent permitted in accordance with this Section 6.12 or the Intellectual Property License Agreement, (i) Buyer and its Affiliates shall not use or display any of the Trademarks used or held for use in connection with the Retained Business, including but not limited to any Trademarks containing the element “Del Frisco’s” (the “Seller Marks”), and (ii) subject to Section 6.12(b) (and Permitted Designees other than incidental use in connection with the continued ownership of the North Carolina Shares and their respective Affiliates) have, the Delaware Shares prior to the North Carolina Closing and after the Relevant Delaware Closing, respectively), Seller and the Retained Subsidiaries shall not use or display any of the Trademarks constituting Transferred Entities shall haveBusiness Intellectual Property, no rightincluding the Trademarks listed on Schedule 4.13(a) (the “Business Marks” and, title, interest, license or any other right whatsoever in together with the Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliates“Marks”).
(b) As For a period of six (6) months following the Initial Closing Date, Seller and its Affiliates shall have the right to (i) maintain signage (including but not limited to signs and banners on buildings, vehicles and digital platforms) bearing any Business Marks that exists as of the Initial Closing in substantially the same manner such signage was used in the Retained Business prior to the Initial Closing and (ii) continue to use business cards, stationery, and similar materials bearing the Business Marks that exist as of the Initial Closing in substantially the same manner such materials were used in the Retained Business prior to the Initial Closing; provided, however, that subject to Section 6.08(a) above, as promptly as reasonably practicable after the Relevant Initial Closing, but in no event after the end of such six (6) month period, Seller shall, and shall cause its Affiliates to, cease and discontinue any use of the Business Marks.
(c) For a period of six (6) months following the Initial Closing Date, Buyer and its Affiliates operating the Business shall have the right to (i) maintain signage (including signs on buildings and vehicles) bearing any Seller Marks that exists as of the Initial Closing in substantially the same manner such signage was used in the Business prior to the Initial Closing, and (ii) continue to use business cards, stationery, and similar materials bearing the Seller Marks that exist as of the Initial Closing in substantially the same manner such materials were used in the Business prior to the Initial Closing; provided, however, that as promptly as reasonably practicable after the Initial Closing, but in no event after the end of such six (6) month period, Buyer shall, and shall cause its Affiliates to cease and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including discontinue any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks.
(d) Notwithstanding anything to the contrary in this Section 6.12, following the Initial Closing Date, (i) Seller shall not be in breach of this Section 6.12 by reason of (A) the sale or distribution of any gift cards bearing the Business Marks andthat have been printed or are in production as of the Initial Closing Date, at Buyeror (B) the appearance of the Business Marks on any historical memorabilia or digital platforms (including, but not limited to, those found on Seller’s sole cost social media accounts) retained by Seller and expenseits Affiliates (including, remove all Seller Marks from websitesduring the Rewards Reimbursement Period, marketing digital platforms in respect of the RARE Rewards loyalty program); and promotional materials, invoices, business cards, schedules, displays(ii) neither Party shall be in breach of this Section 6.12 by reason of (A) the use of existing stocks of office supplies, stationery, technical guidelines and other supplies and similar materials that incorporate bearing the Seller Marks, whether any Marks of the foregoing other Party to exhaust such stocks and the use of manuals, handbooks, guidelines and similar materials bearing the Marks of the other Party that exist as of the Initial Closing, in each case, for internal purposes only, (B) the appearance of the Marks of the other Party in print or digital location services or other directories or in or on any third party’s publications (in each case, in whatever format or medium) distributed, posted or ordered to be printed in the ordinary course of business prior to the Initial Closing Date, and that are held generally available to the public, or any other similar uses by Buyer, any such third party over which such first Party and its Affiliates or have no control, (C) the Transferred Entities (or Permitted Designees and their respective Affiliates) or under use of the control Marks of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks other Party in a non-trademark manner as is reasonably necessary for the sole purpose of conveying to customers or the general public the historical reference in communications in connection with origins and relationships of their businesses, (D) the administration use of the Business Marks on materials where the right to revoke the license or with Governmental Authoritiespermission does not exist or cannot be effected by the applicable Party through 35 the exercise of commercially reasonable effort (such as websites controlled by third parties, (ii) retaining client references or using for Buyer’s case studies, or its Affiliates’ (shared billboards or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of businessshared structures), or (iiiE) using the Seller use of the Marks of the other Party to the extent required by under applicable LawLaw or pursuant to recorded documents.
(ce) As promptly At least one (1) Business Day prior to the Initial Closing, Seller and each Purchased Subsidiary shall execute an Intellectual Property Quitclaim Assignment in favor of Seller in the form attached as practicableExhibit G hereto in respect of the Shared Recipes, but certain menu item names (as set forth on Schedule A-1 in no event later ninety (90to the Intellectual Property License Agreement) days following the Relevant Closing Dateand all other Intellectual Property Rights, Buyer shall, and shall cause its Affiliates and other than the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalBusiness Intellectual Property.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Samples: Asset and Equity Purchase Agreement
Intellectual Property Matters. (a) Seller is not conveying ownership rights or granting Buyer and or any of its Affiliates (including the Company after the Closing) a license to use the “Southern Fire” name or any variation thereof, or any other name, registered or unregistered trademarks, industrial designs or other identifying elements of Seller or any of its Affiliates (the “Retained Marks”). Buyer acknowledges and Permitted Designees agrees that neither it nor any of its Affiliates shall acquire any goodwill, rights or other benefits arising from the use of any Retained Mark and that all such goodwill, rights and benefits shall accrue exclusively to Seller and its Affiliates. Except as expressly provided in this Section 6.10, Buyer, the Company and their respective AffiliatesAffiliates may not in any way: (i) have, and after the Relevant ClosingClosing Effective Time, identify, or suggest, any affiliation between either Buyer or the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers Company or any of their respective Affiliates have pursuant to on the Transaction Documents assigned one hand, and Seller or licensed such right, title, interest or other right to Buyer, any of its Affiliates on the other hand; or (ii) use the Transferred Entities or to Permitted Designees and their respective AffiliatesRetained Marks.
(b) As promptly soon as practicable after following the Relevant Closing, Buyer shall, and shall cause the Company to take all such actions (including making filings, obtaining approvals and amending its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliatescertificate of incorporation) as shall be necessary to change all signage containing its name to a new name that does not include the Seller Marks, either by covering “Southern Fire” name or removing such signage, including any signage affixed to any real property of Buyer, its Affiliatesvariation thereof, or any Transferred Entity other name of Seller or any of its Affiliates (or of Permitted Designees and their respective Affiliatesthe “New Name”). As soon as is reasonably practicable In furtherance of the foregoing, not later than thirty (30) days following the Relevant ClosingClosing Date, but in no event Buyer shall change its corporate name to the New Name at the OCI. Not later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause the Company to update its Affiliates and Insurance Licenses to reflect the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue New Name in all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable LawAuthorized States.
(c) As promptly as practicableNotwithstanding the foregoing, but the Company may use the “Southern Fire” name or any variation thereof (i) until the date that is one (1) month after the Closing Date in no event later ninety (90) days following connection with filings submitted to the Relevant Closing Date, Buyer shallOCI, and shall cause its Affiliates and (ii) until the Transferred Entities date that is six (and Permitted Designees and their respective Affiliates6) to, at Buyer’s sole cost and expense, file any documentation necessary months after the Closing Date in connection with filings submitted to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction Authorities in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalall other Authorized States.
(d) As promptly as practicable Promptly after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including in any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable event not later than thirty (30) days following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and Buyer shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at SapphireCompany to be associated with Buyer’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvalexisting NAIC Group Code number.
Appears in 1 contract
Samples: Stock Purchase Agreement
Intellectual Property Matters. The Exhibitor represents and warrants to AEA that no materials used in or in connection with its exhibit infringe the trademarks, copyrights (aincluding, without limitation, copyrights in music and other materials used or broadcast by Exhibitor) Buyer and its Affiliates (and Permitted Designees and their respective Affiliates) have, and after the Relevant Closing, the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right intellectual property rights of any third party. The Exhibitor agrees to Buyerimmediately notify AEA of any information of which Exhibitor becomes aware regarding actual or alleged infringement of any third party’s trademarks, copyrights or other intellectual property rights. The Exhibitor agrees to indemnify, defend and hold AEA, officers, directors, employees, agents, successors and assigns harmless from and against all losses, damages and costs (including attorneys’ fees) arising out of or related to claims of infringement by Exhibitor, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliates.
(b) As promptly as practicable after the Relevant Closingemployees, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliatesagents, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use contractors of the Seller Marks andtrademarks, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines copyrights and other supplies and similar materials that incorporate the Seller Marks, whether intellectual property rights of any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates)third party. Notwithstanding the foregoing, nothing AEA, its officers, directors, employees, agents, and each of them, shall not be liable for and expressly disclaims all liability for infringement or alleged infringement of the trademarks, copyrights or other intellectual property of any third party arising out of the actions of any Exhibitors. The terms of this provision shall survive the termination or expiration of this Contract. AEA’s, Evaluation 2023, and Event logo are registered trademarks owned by the AEA. Participation by Exhibitor in the Event does not entitle Exhibitor to use such names or logos, except that Exhibitor may reference the Event and use the Event logo with reference to Exhibitor’s participation as an exhibitor at the Evaluation 2023. Participation in the Event does not imply endorsement or approval by AEA of any product, service or participant and none shall be claimed by any participant. Set-up of exhibits begins in the Facility at 10:00 AM, October 11October , 20233. If an exhibit is not set- up by 45:00 PM, October 11, 2023, AEA reserves the right to cancel such space, to re-assign such space to another Exhibitor, or to make such other use of the space as deemed necessary or appropriate. AEA reserves the right to set-up the exhibit or remove the freight from the booth at the Exhibitor’s expense. AEA reserves the right to modify move-in/Show Hours/move-out, in which case all Exhibitors will be notified prior to the effective date of such changes. No refund will be made to the original contracting Exhibitor with respect to AEA’s election of any rights under this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using 13. Exhibits are to be kept intact until the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration closing of the Business or with Governmental AuthoritiesExhibit Hall on October 13, (ii) retaining or using for Buyer’s or 2023. No part of an exhibit shall be removed during the Show Hours without special permission from AEA. Should Exhibitor begin dismantling its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing booth before the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names close of the Transferred Entities Exhibit Hall may lose part or all of its priority points and may entirely lose the privilege of exhibiting at future AEA events. All freight must be removed from Facility by 7:00 pm, October 13, 2023. If exhibits are not removed by this time, AEA reserves tthe right to remove exhibits and charge the words “Xxxxxx Xxxxxx Xxxxxx,” expense to Exhibitor and AEA shall have no liability for any derivation, adaptation, combination loss or translation thereof, including damage to Exhibitor’s exhibit property caused by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to removal. Exhibitor will be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two provided (2) months following complimentary Exhibitor only badges per (1) Showcase purchased which include access to the Relevant Closing Dateexhibit hall only. Exhibitor badges allow access to the Exhibit Hall during the move- in, Sapphire shallShow Hours, and shall cause move-out: Event attendees do not have access to the Exhibit Hall until October 1111, 2023. Should Exhibitor give its Affiliates to, discontinue all use of badges to an Event attendee in order for the Business Trademarks andattendee to gain access to the Exhibit Hall prior to this time may, at Sapphirethe sole discretion of AEA, lose part or all of its company’s sole cost priority points, and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate may entirely lose the Business Trademarks, whether privilege of exhibiting in future AEA events. AEA reserves the right to give an Exhibit Hall Pass to any of Exhibitor or Event attendee in order to grant them access to the foregoing materials are held by Sapphire or its Affiliates or Exhibit Hall at any time. Children under the control age of Sapphire 16 are not permitted in the Exhibit Hall at any time. Any attendees or its Affiliates. If exhibitors arriving with children under the approval age of (16) will be denied access to the Exhibit Hall with such children without any Governmental Authority is needed prior to Sapphire exceptions or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvalrefunds.
Appears in 1 contract
Samples: Exhibition and Sponsorship Agreement
Intellectual Property Matters. Except as otherwise set forth in the SPAR Disclosure Letter:
(a) Buyer and The SPAR Disclosure Letter sets forth all patents, trademarks, trade names, service marks, copyrights, software, material trade secrets or material know-how owned or used in any material respect by any SPAR Marketing Company in the conduct of its Affiliates business (and Permitted Designees and their respective Affiliates) havethe "SPAR Intellectual Property"), excluding, however, all readily commercially available software programs licensed to a SPAR Marketing Company (for example, without limitation, Windows, Windows NT, MS Word, MS Excel, and after MS Explorer) ("Commercial Software"), which Commercial Software need not be set forth on such schedule. All of the Relevant SPAR Intellectual Property is (or will be as of the Effective Time) owned by or licensed to STM or one of the SPAR Marketing Companies free and clear of any liens (except insofar as a license or the restrictions thereunder may constitute a lien, and except for the SPAR Trademark Licenses and the Business Manager Agreement). At or before the Closing, (i) SIT and SMS will enter into non-exclusive perpetual royalty free licenses with STM respecting their use of the Transferred Entities shall have, no right, title, interest, license name "SPAR" and certain other trademarks and related rights owned or any other right whatsoever to be owned by STM (the "SPAR Trademark Licenses") such agreement to be substantially in the Seller Marks, except form attached as expressly set forth in this Section 5.08Exhibit C hereto, and none of Sellers or any of their Affiliates have pursuant (ii) SMF, SMS and SIT will enter into a Software Ownership Agreement with respect to the Transaction Documents assigned or licensed Internet job scheduling software (called "Business Manager") jointly developed and owned by them, such right, title, interest or other right agreement to Buyer, its Affiliates or be substantially in the Transferred Entities or to Permitted Designees and their respective Affiliatesform attached as Exhibit D hereto (the "Business Manager Agreement").
(b) As promptly as practicable after the Relevant ClosingThere are no ongoing royalty, Buyer shallcommission or similar arrangements, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marksno licenses, either by covering sublicenses or removing such signageagreements from any SPAR Marketing Company as a licensor, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only pertaining to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all current use of the Seller Marks andSPAR Intellectual Property, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or except as may be applicable under the control of BuyerCommercial Software, its Affiliates or the Transferred Entities (or Permitted Designees SPAR Trademark Licenses and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable LawManager Agreement.
(c) As promptly as practicableNo SPAR Marketing Company infringes upon or unlawfully or wrongfully uses any patent, but in no event later ninety (90) days following trademark, trade name, service mark, xxpyright or trade secret owned or claimed by any other person or entity. No action, suit, proceeding or investigation has been instituted or, to the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names knowledge of the Transferred Entities SPAR Marketing Companies, overtly threatened relating to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any, patent, trademark, trade name, service mark, xxpyright or trade secret formerly or currently used by any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation SPAR Marketing Company. None of the Transferred Entities’ assets SPAR Intellectual Property is subject to any outstanding order, decree or judgment. No SPAR Marketing Company has agreed to indemnify any person or entity for or against any infringement of or by the character of its activities is such as to require it SPAR Intellectual Property. Except for (i) the SPAR Intellectual Property licensed or to be licensed to SMS and SIT by STM, (ii) the common ownership of the software reflected in the Business Manager Agreement, and (iii) the ownership of and director and officer positions in the SPAR Marketing Companies, SGI, SMS, SIT, STM and the SPAR Parties, no present or qualified in such jurisdiction. If the approval former employee of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shallSPAR Marketing Company, and shall cause its Affiliates no person or entity other than SGI, SMS, SIT, STM and the Transferred Entities SPAR Parties (and Permitted Designees the SPAR Principals solely as the officers and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Dateshareholders thereof), and upon receipt of such approvaldirectly or indirectly owns or has any proprietary, shall file such documentation as promptly as practicablefinancial or other interest in, but in no event later than ninety (90) days following receipt of such approvalwhole or in part, any SPAR Intellectual Property.
(d) As promptly as practicable after All SPAR Intellectual Property in the Relevant Closing, Sapphire shall, form of computer software that is utilized by any SPAR Marketing Company in the operation of its business is capable of processing date data between and shall cause within the twentieth and twenty-first centuries or can be rendered capable of processing such data prior to the date necessary to avoid disruption of its Affiliates to, change all signage containing business by utilizing the Business Trademarks, either by covering employees of one or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use more of the Business Trademarks and, at Sapphire’s sole cost SPAR Marketing Companies in the normal course of business and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any by expenditure of not more than $100,000 in excess of the foregoing materials are held by Sapphire or its Affiliates or under cost of software purchased for reasons other than the control failure of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior existing software to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt be capable of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvalprocessing.
Appears in 1 contract
Samples: Agreement and Plan of Merger (Pia Merchandising Services Inc)
Intellectual Property Matters. (a) After the Closing, Buyer shall promptly, and in any event prior to the end of the Transition Period, complete the revision of all Packaging Materials existing as of the date hereof relating to the Product and/or used in the Business and not used in the sale of Products prior to the end of the Transition Period so as to not include any references to any Marks owned by or licensed to Seller or any of its Affiliates (and Permitted Designees and their respective Affiliatesexcluding the Marks set forth on Section 2.01(a) have, and after of the Relevant ClosingSeller Disclosure Schedule, the Transferred Entities shall have, no right, title, interest, license “Seller Marks”) or any other right whatsoever in references to Seller’s or its Affiliates’ customer service address or phone number. Buyer shall not order any new Packaging Materials including references to the Seller Marks, except to the extent necessary to sell the Existing Inventory during the Transition Period. Without limiting the foregoing, in no event shall Buyer use any Seller Marks in any manner or for any purpose different from the use of such Seller Marks in connection with the Business during the 90-day period immediately preceding the Closing. Except as expressly set forth in this Section 5.08Section 5.03(a), from and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliates.
(b) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) not have any right to change all signage containing use any of the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees . Any and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all by Buyer following the Closing until the complete phase-out of the Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held as contemplated by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliatesthis Section 5.03(a) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using inure to the sole and exclusive benefit of the Seller Marks in and its Affiliates and (ii) be subject to Seller’s and its Affiliates’ quality control guidelines and procedures.
(b) Effective as of and only upon the Closing, subject to the terms and conditions of this Agreement, Seller and its Subsidiaries hereby grant to Buyer a limited, non-trademark manner as exclusive, perpetual, irrevocable, non-sublicensable and, except to the extent this Agreement is reasonably necessary for historical reference in communications permitted to be assigned by Buyer pursuant to Section 8.04, non-assignable, royalty-free, fully paid up, worldwide license, but solely in connection with the administration formulation, manufacture, packaging, promotion, distribution, marketing, and sale of the Business or with Governmental AuthoritiesProduct in the Territory, to use, reproduce, create derivative works of, distribute, make, have made, sale, offer for sale and import all Intellectual Property Rights (iiother than any Marks) retaining or using for Buyer’s that are owned and licensable by Seller or its Affiliates’ Subsidiaries as of the Closing Date (without consent of or Permitted Designees and their respective Affiliates’payment due to a third party or to Seller or any Subsidiary thereof) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly used in connection with the formulation, manufacture, packaging, promotion, distribution, marketing, and sale of the Product in the Territory as practicable, but in no event later ninety (90) days following of the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Intellectual Property Matters. (a) Buyer For a period of up to six (6) months after the Closing Date, (i) the Seller shall provide to Purchaser the necessary information and execute or have executed and deliver such assignments, transfers, Consents and other documents and instruments as may be reasonably required to permit Purchaser at its expense to effect and perfect the transfer of the registrations of the Registered Intellectual Property included in the Transferred Intellectual Property and (ii) the Seller will reasonably cooperate with Purchaser in filing appropriate documents to cancel all “registered user” filings worldwide that are in favor of the Seller or its Affiliates if requested by Purchaser and required by the local patent, trademark, or copyright office to record the change of ownership of the Transferred Intellectual Property. After such period, the Seller shall have no further obligation hereunder.
(b) The Seller hereby grants to Purchaser and its Affiliates, on behalf of itself and the other applicable members of the Seller Group, permission to use the Trademarks owned by any member of the Seller Group and used in the Business as of the Closing Date (other than the Trademarks included in the Transferred Intellectual Property) except as set forth on Section 7.11(b) of the Disclosure Letter, solely to the extent that such Trademark appears on any Transferred Asset conveyed pursuant hereto (collectively, the “Seller Trademarked Items”) until the earlier of (i) the depletion of such Seller Trademarked Items or (ii) six (6) months from the Closing Date (the “Expiration Period”). When the Expiration Period expires, Purchaser is responsible for the destruction and disposal of any remaining Seller Trademarked Items bearing the name or trademark of any member of the Seller Group then in Purchaser’s possession or returned to Purchaser after the Expiration Period. Purchaser hereby agrees to indemnify the Seller Indemnitees from and against any and all Losses incurred or suffered in connection with or resulting from, such permitted use of Seller Trademarked Items in this Section 7.11(b). After the Closing Date, the Seller and its Affiliates (and Permitted Designees and their respective Affiliates) haveshall have no obligation to maintain or renew any Patents, and after the Relevant ClosingTrademarks, Copyrights or domain names in the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller MarksIntellectual Property.
(c) Purchaser covenants that, except as expressly set forth in Section 7.11(b), none of Purchaser or any of its Affiliates shall use the names, marks, domain names and logos set forth on Section 7.11(c) of the Disclosure Letter (the “Retained Marks”) or any name(s) similar thereto (or any derivations therefrom in any language) alone or together with other words, or logos, slogans, symbols or designs in any form, variation or manner in connection with any business that Purchaser or its Affiliates may thereafter conduct; provided, that nothing in this Section 7.11(c) shall prevent Purchaser from making any use of a Retained Xxxx (i) that would constitute “fair use” under applicable Laws; or (ii) in reference to the historical or factual relationship between and among Purchaser and its Affiliates, the Business and the Seller Group, in each case solely to the extent such use could not reasonably be construed as an indicator of source or endorsement by Purchaser or any of its Affiliates.
(d) The Seller covenants that after the Closing Date it will not, and shall cause the other members of the Seller Group not to, use any of the Trademarks included in the Transferred Intellectual Property or any name(s) similar thereto (or any derivations therefrom in any language) alone or together with other words, or logos, slogans, symbols or designs in any form, variation or manner in connection with any business that the Seller Group may thereafter conduct; provided, that nothing in this Section 7.11(d) shall prevent a member of the Seller Group from making any use of a Trademark included in the Transferred Intellectual Property (i) that would constitute “fair use” under applicable Laws; or (ii) in reference to the historical or factual relationship between and among Purchaser and its Affiliates, the Business and the Seller Group, in each case solely to the extent such use could not reasonably be construed as an indicator of source or endorsement by Purchaser or any of its Affiliates.
(e) The Seller hereby grants to Purchaser and its Affiliates, on behalf of itself and the other applicable members of the Seller Group, effective as of the Closing Date, a non-exclusive, perpetual, irrevocable, non-sublicensable (except as set forth in this Section 5.087.11(e)), worldwide, royalty-free and fully paid up license to use, reproduce, create derivative works of, modify, distribute, make, have made, sell, offer for sale, import or otherwise commercially exploit products and services, and none of Sellers carry out processes, that incorporate any Intellectual Property (other than Trademarks or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such rightdomain names, title, interest or and other right to Buyer, its Affiliates or than the Transferred Entities or to Permitted Designees and their respective Affiliates.
(b) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates Intellectual Property and the Transferred Entities (and Permitted Designees and their respective AffiliatesLicensed Intellectual Property) to change all signage containing the Seller Marks, either owned or licensable by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use member of the Seller Marks and, at Buyer’s sole cost Group and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate used in the Seller Marks, whether any Business as of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities Closing Date (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer including Purchaser’s or its Affiliates permitted successor’s natural extensions or evolutions thereof) (or Permitted Designees and their respective Affiliates) from (i) using collectively, the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications “Licensed Retained IP”), solely in connection with the administration operation of the Business (including Purchaser’s or its permitted successor’s natural extensions and evolutions thereof), in the same or a substantially similar manner as used in the Business prior to the Closing Date. Notwithstanding anything to the contrary in Section 11.08, Purchaser and its Affiliates may (i) assign such license in whole or in part in connection with a merger, consolidation, or sale of all, or substantially all, of the Business or any material portion of the assets of the Business (and will provide Purchaser with Governmental Authoritiesreasonable notice in writing of such assignment), and (ii) retaining assume such license in bankruptcy. At all times from and after the Closing, Purchaser agrees that, on behalf of itself and its Affiliates, each member of the Purchaser Group will: (a) use commercially reasonable measures to protect the confidentiality of any Trade Secrets within the Licensed Retained IP and to prevent the unauthorized disclosure of any such Trade Secrets and (b) not permit the disclosure of any such Trade Secrets to any Person that is not subject to a written and enforceable confidentiality or using non-disclosure obligation. Purchaser and its Affiliates may sublicense such license to its and their toll manufacturers and suppliers in connection with their providing services to the Business; provided, however, that the covenants and obligations in this Section 7.11(e) with respect to Trade Secrets included in the Licensed Retained IP shall apply to such sublicenses. The Seller hereby covenants not to bring any claim, suit or proceeding asserting any Licensed Retained IP against (x) any member of the Purchaser Group’s vendors, consultants and contractors, to the extent such Person has used such Licensed Retained IP solely in connection with its providing services to the Business and Seller has been notified in writing of the same, or (y) any member of the Purchaser Group’s distributors, customers and end-users, to the extent such Person has used such Licensed Retained IP solely in connection with the distribution, licensing, offering and sale by the Purchaser Group of the current and future products and services of the Business and Seller has been notified in writing of the same. Any license under Licensed Retained IP in effect as of the Closing Date and granted by any member of the Seller Group pursuant to a Transferred Contract to its vendors, consultants, contractors, toll manufacturers and suppliers (solely in connection with their providing services to the Business) or to its distributors, customers and end-users (solely in connection with the distribution, licensing, offering and sale of the current and future products and services of the Business) may remain in effect for Buyerthe then-current duration of such license as of the Closing Date; provided, however, that the covenants and obligations in this Section 7.11(e) with respect to Trade Secrets included in the Licensed Retained IP shall apply to such pre-existing arrangements.
(f) Purchaser hereby grants to each member of the Seller Group, on behalf of itself and its Affiliates, effective as of the Closing Date, a non-exclusive, perpetual, irrevocable, non-sublicensable (except as set forth in this Section 7.11(f)), worldwide, royalty-free and fully paid up license to use, reproduce, create derivative works of, modify, distribute, make, have made, sell, offer for sale, import or otherwise commercially exploit products and services, and carry out processes, that incorporate (i) any Transferred Intellectual Property (other than Trademarks or domain names) owned by any member of the Seller Group and used by the Seller Group for the Retained Businesses as of the Closing Date (collectively, such Transferred Intellectual Property and the Patents referenced in the following subclause (ii), the “Licensed-Back IP”) and (ii) to the extent not included in the preceding subclause (i), any of the Patents set forth on Section 7.11(f) of the Disclosure Letter, in each case solely in connection with Seller Parent’s and its Subsidiaries’ operation of the Retained Businesses (including each member of Seller Group’s or its Affiliates’ (permitted successor’s natural extensions and evolutions thereof), in the same or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing a substantially similar manner as used by the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks Group prior to the extent required by applicable Law.
(cClosing Date or, with respect to the Patents set forth on Section 7.11(f) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivationDisclosure Letter, adaptation, combination or translation thereof, including by making filings in connection with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets Retained Businesses (including each member of Seller Group’s or its permitted successor’s natural extensions and evolutions thereof) in any manner that does not interfere or compete with the character Business. Notwithstanding anything to the contrary in Section 11.08, each member of its activities is the Seller Group may (i) assign such as to require it to be licensed license in whole or qualified in such jurisdiction. If the approval part in connection with a merger, consolidation, or sale of all, or substantially all, of any Governmental Authority is needed prior to Buyer business or its Affiliates (or Permitted Designees or their respective Affiliates) filing any material portion of the assets of any business using such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities Intellectual Property (and Permitted Designees and their respective Affiliates) to, use will provide Purchaser with reasonable best efforts to obtain notice in writing of such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Dateassignment), and upon receipt (ii) assume such license in bankruptcy. At all times from and after the Closing, the Seller agrees that, on behalf of itself and its Affiliates, each member of the Seller Group will: (a) use commercially reasonable measures to protect the confidentiality of any Trade Secrets within the Licensed-Back IP and to prevent the unauthorized disclosure of any such Trade Secrets and (b) not permit the disclosure of any such Trade Secrets to any Person that is not subject to a written and enforceable confidentiality or non-disclosure obligation. Each member of the Seller Group may sublicense such license to its toll manufacturers and suppliers in connection with their providing services to the Retained Businesses; provided, however, that the covenants and obligations in this Section 7.11(f) with respect to Trade Secrets included in the Licensed-Back IP shall apply to such sublicenses. Purchaser hereby covenants not to bring any claim, suit or proceeding asserting any Licensed-Back IP against (x) any member of the Seller Group’s vendors, consultants and contractors, to the extent such Person has used such Licensed-Back IP solely in connection with its providing services to the Retained Businesses and Purchaser has been notified in writing of the same, or (y) any member of the Seller Group’s distributors, customers and end-users, to the extent such Person has used such Licensed-Back IP solely in connection with the distribution, licensing, offering and sale by the Seller Group of the current and future products and services of the Retained Businesses and Purchaser has been notified in writing of the same. Any license under Licensed-Back IP in effect as of the Closing Date and granted by any member of the Seller Group to its vendors, consultants, contractors, toll manufacturers and suppliers (solely in connection with their providing services to the Retained Businesses) or to its distributors, customers and end-users (solely in connection with the distribution, licensing, offering and sale by the Seller Group of the current and future products and services of the Retained Businesses) may remain in effect for the then-current duration of such approval, shall file such documentation license as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date; provided, Sapphire shallhowever, that the covenants and obligations in this Section 7.11(f) with respect to Trade Secrets included in the Licensed-Back IP shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior apply to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvalpre-existing arrangements.
Appears in 1 contract
Samples: Purchase and Sale Agreement (Ashland Global Holdings Inc)
Intellectual Property Matters. (a) Buyer As used herein "CITATION SOFTWARE" shall include (i) all proprietary software and its Affiliates related software system(s), including but not limited to all algorithms, flow charts, logic diagrams and listings which pertain to CITATION's proprietary system of computer programs, either in source or binary form (including both software and Permitted Designees firmware), specifications and their respective Affiliatesother materials (including, but not limited to techniques, concepts and know-how implicit therein) haverelating to said computer programs, including documentation, confidential supporting documentation, escrow agreements, and after other printed descriptive documents provided to or for the Relevant Closinguse of the customers of CITATION, the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08otherwise used by CITATION for commercial purposes, and none of Sellers or any of their Affiliates have pursuant to (ii) all software listed under the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliatesheading "CITATION Software" in SCHEDULE 3.23.
(b) As promptly as practicable after CITATION is the Relevant Closingsole owner of the CITATION Software, Buyer shallfree and clear of any liens, encumbrances, licenses, transfer agreements, infringements, enforceable claims, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marksdomestic or foreign government regulations, either by covering or removing such signageexcept as set forth in SCHEDULE 3.23, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks heading "Exceptions to the extent required by applicable LawTitle."
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names All of the Transferred Entities to remove CITATION Software was conceived and developed by CITATION, except as set forth in SCHEDULE 3.23 under the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalheading "Third Party Developed Software."
(d) As promptly as practicable after Neither the Relevant ClosingCITATION Software nor any significant part thereof is in the public domain. The CITATION Software is in all material respects proprietary to CITATION. CITATION has the full right, Sapphire shallpower, and shall cause its Affiliates toauthority to disclose the CITATION Software to MEDASYS. The CITATION Software disclosed to MEDASYS hereunder does not infringe any patent, change all signage containing the Business Trademarkscopyright, either by covering trademark, development, ownership, or removing such signage, including any signage affixed to other proprietary right of any real property of Sellers other person or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in entity.
(e) There are no event later than two (2) months following the Relevant Closing Date, Sapphire shallasserted, and shall cause its Affiliates toCITATION is unaware of any unasserted, discontinue all claim or demand against CITATION regarding the CITATION Software, which could or would in any way impede or interfere with the commercial use of the Business Trademarks andCITATION Software upon completion of the transactions contemplated herein, at Sapphire’s except as set forth in SCHEDULE 3.23 under the heading "Claims."
(f) CITATION has the full and sole cost right to disclose the CITATION Software to MEDASYS and expenseto transfer title of CITATION Software.
(g) CITATION and each of the CITATION Subsidiaries has met all regulatory requirements to sell its software commercially to customers in each market where it sells such software, remove except as set forth in SCHEDULE 3.23 under the heading "Missing Regulatory Requirements."
(h) SCHEDULE 3.23 sets forth a complete and correct list of all Business Trademarks from websitespatents, marketing and promotional materialstrademarks, invoicestrade names, business cards, schedules, displays, stationery, technical guidelines and other supplies intellectual property rights of CITATION and similar materials the CITATION Subsidiaries. CITATION and the CITATION Subsidiaries own or have the exclusive right to use pursuant to license, sublicense, agreement, or permission all intellectual property rights necessary for the operation of their respective businesses as presently conducted. CITATION and the CITATION Subsidiaries have not interfered with, infringed upon, misappropriated, or otherwise come into conflict with any intellectual property rights of third parties, and CITATION has not received any written notice alleging any such interference, infringement, misappropriation, or violation (including any such claim that incorporate CITATION and the Business Trademarks, whether CITATION Subsidiaries must license or refrain from using any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval intellectual property rights of any Governmental Authority is needed prior to Sapphire third party). To the knowledge of CITATION, no third party has interfered with, infringed upon, misappropriated, or otherwise come into conflict with any intellectual property rights of its Affiliates filing any such documentation to effectuate CITATION and the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and CITATION Subsidiaries in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvalconnection with their respective businesses or operations.
Appears in 1 contract
Samples: Agreement and Plan of Reorganization (Citation Computer Systems Inc)
Intellectual Property Matters. The Parties acknowledge that there may be SCI Lease Collateral and Operating Subsidiaries Lease Collateral that contains the word “Station” or the phrase “Station Casinos” (athe “Station Marks”). Except as otherwise provided in Annex 1 and unless otherwise subsequently agreed to by the Parties, (i) Buyer PropCo is not being transferred any ownership interests in the Station Marks but only a temporary license to use such Station Marks and (ii) PropCo agrees to discontinue the use of the name “Station” or “Station Casinos” at the conclusion of the Interim License Period (as defined below) pursuant to the time frames and otherwise as provided in Annex 1. SCI acknowledges that the Station Marks and other non-exclusive marks not transferred to PropCo or its Designee may be temporarily used in respect of the Leased Hotels for a period (the “Interim License Period”) commencing at the onset of the Transition Period and continuing until the later of (i) the date on which SCI is no longer providing Transition Services under this Compromise and (ii) the date of termination for such license set forth in Annex 1 to this Compromise. In connection with such limited use, SCI hereby grants to each of PropCo and its Affiliates Designees a non-transferable, temporary, irrevocable, royalty-free and non-exclusive license (and Permitted Designees PropCo acknowledges such temporary use and their respective Affiliatessuch temporary license) haveto use the Station Marks and other non-exclusive marks described in Annex 1, which license, (i) shall concurrently terminate upon expiration of permission to use the Station Marks and other non-exclusive marks as provided in Annex 1, (ii) shall not confer upon PropCo or its Designee any other or additional rights or interests in such Station Marks or other non- exclusive marks and (iii) shall be subject to reasonable quality control provisions consistent with SCI’s current standards. PropCo acknowledges that, except for the foregoing license to use Station Marks and other non-exclusive marks provided herein, the sale to PropCo or its Designee pursuant to this Compromise of such goods as SCI Lease Collateral and Operating Subsidiaries Lease Collateral or otherwise that incorporate any Station Marks or non-exclusive marks shall not transfer to PropCo or its Designee any rights in the Station Marks or non-exclusive marks so incorporated, or otherwise. The Parties acknowledge that PropCo is not licensing back to SCI or SCI’s other affiliates any rights to use any of the exclusive marks to be transferred to PropCo pursuant to Annex 1, and SCI covenants, notwithstanding any retention of ownership of the Station Marks, from and after the Relevant Closingconclusion of the Transition Period, SCI will not to use, and not allow its other subsidiaries and affiliates, to use the Transferred Entities shall havenames “Red Rock,” “Sunset”, no right, title, interest, license “Palace” and/or “Boulder” as an enterprise brand or trademark or trade name in connection with the operation of any other right whatsoever in the Seller Markscasinos or similar operations, except as expressly otherwise permitted on Annex 1. The Parties further acknowledge that some of the trademarks and other intellectual property to be sold to PropCo or its Designees hereunder may currently be subject to a lien in favor of the Prepetition Lenders. Each of the Parties hereto shall cooperate and use commercially reasonable efforts to obtain all Bankruptcy Court orders and approvals with respect to any such sale and SCI agrees not to oppose any motions to approve such sale except on the grounds that such proposed sale is inconsistent with the terms set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective AffiliatesCompromise.
(b) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Samples: Master Lease Compromise Agreement
Intellectual Property Matters. (a) Buyer and its Affiliates (and Permitted Designees and their respective Affiliates) have, and after the Relevant Closing, the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliates.
(b) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety ten (9010) days following Business Days after the Relevant Closing Date), Buyer shall cause each of the Purchased Entities to amend its organizational documents, and upon receipt of such approvalany trade names, D/B/As or the like, to change its corporate names and trade names to corporate names and trade names that do not include any Excluded Names or any Trademark confusingly similar thereto. Following the Closing, Buyer shall file such documentation as promptly as practicable, but in cause the Purchased Entities to (i) no event later than ninety three (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (23) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all cease to make any use of or to authorize any third party to make any use of any Excluded Names or any Trademarks confusingly similar thereto (except as permitted by this Section 6.5(a)) and (ii) no later than twelve (12) months following the Business Trademarks andClosing Date, at Sapphire’s sole cost to remove, strike over, or otherwise obliterate all Excluded Names from all existing assets and expenseother existing materials of the Purchased Entities, remove all Business Trademarks from websites, marketing and promotional materials, invoicesincluding any vehicles, business cards, schedules, stationery, packaging materials, displays, stationerysigns, technical guidelines promotional materials, manuals, forms, websites, email, computer software and other supplies materials and similar systems (provided that following the three (3) month anniversary of the Closing Date, Buyer shall not create any new assets or materials that incorporate using the Business Trademarks, whether Excluded Names (except as permitted by this Section 6.5(a)). Any use by the Purchased Entities of any of the foregoing Excluded Names as permitted in this Section 6.5 is subject to their use of the Excluded Names in a form and manner, and with standards of quality, of that in effect for the Excluded Names as of the Closing Date. Notwithstanding anything to the contrary in this Section 6.5(a), Buyer shall not be in violation of this Section 6.5(a) by reason of: (x) the appearance of the Excluded Names in or on any written materials or assets of the Purchased Entities or the Business that are held by Sapphire used for internal purposes only (provided that Buyer uses commercially reasonable efforts to remove such appearances of the Excluded Names); (y) the appearance of the Excluded Names in or its on any third party’s publications, marketing materials, brochures, instruction sheets, equipment or products that the Sellers or any of their Affiliates distributed in the ordinary course of business consistent with past practice or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed pursuant to a Contract prior to Sapphire the Closing, and that generally are in the public domain, or any other similar uses by any such third party over which Buyer and the Purchased Entities have no control; or (z) the non-prominent use by Buyer or any of its Affiliates filing any such documentation of the Excluded Names in an accurate and non-trademark manner solely for purposes of conveying to effectuate customers or the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable general public that ownership of the Purchased Entities or the Business has changed.
(including filing for such approval as promptly as practicable and in no event later than b) During the two (2) months year period following the Relevant Closing Date, if (i) Buyer identifies in writing to the Sellers any Intellectual Property (excluding Trademarks) owned by the Sellers and their Affiliates that was used in and necessary for the conduct of the Business as of the Closing and was not included in the Purchased Assets, owned by the Purchased Entities or provided to the Purchased Entities under the Transition Services Agreement, or (ii) the Sellers identify in writing to Buyer any Intellectual Property (excluding Trademarks) included in the Purchased Assets or owned by the Purchased Entities that was used in and necessary for the conduct of the Excluded Businesses as of the Closing, then the Party receiving such notice shall use commercially reasonable efforts to grant to the other Party a perpetual, royalty-free, sublicenseable license to use such Intellectual Property in the conduct of the Business (with respect to Buyer, if Buyer so requests such license) or the Excluded Businesses (with respect to the Sellers, if the Sellers so request such license). Notwithstanding anything to the contrary, Buyer and upon receipt the Sellers agree that, unless otherwise required by applicable Law, (x) the rights under any license with respect to any Intellectual Property described in clause (i) of this Section 6.5(b) shall be treated as a Purchased Asset under this Agreement, (y) the Purchased Asset relating to any license described in clause (ii) of this Section 6.5(b) shall be treated as having been purchased by Buyer and sold by the applicable Seller on the Closing Date subject to such approval, license and (z) neither any Party nor any of its Affiliates shall file such documentation as promptly as practicable, but take any position inconsistent with the treatment described in no event later than two (2) months following receipt of such approvalthis sentence.
Appears in 1 contract
Intellectual Property Matters. (a) Buyer Purchaser hereby covenants and its Affiliates (and Permitted Designees and their respective Affiliates) have, and after the Relevant Closing, the Transferred Entities agrees that it shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except use commercially reasonable efforts to as expressly set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliates.
(b) As promptly as reasonably practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in any event no event later than ninety (90) days following (the Relevant Closing Date“Cut-Over Period”), revise sales and upon receipt product literature, packaging and labeling to (i) delete all references to the Seller Marks and (ii) delete all references to customer service address or phone number of such approvalSeller or any of its Affiliates; provided, shall file such documentation as promptly as practicablehowever, but in no event later than that, for a period of ninety (90) days following receipt from the end of the Cut-Over Period (the “Transitional Period”), Purchaser may continue to distribute sales and product literature, and market, distribute, import, export and sell any Product Inventory and any Products manufactured by Purchaser that use any of the Seller Marks, addresses or phone numbers to the extent that such sales and product literature and Product Inventory or Products exist on the Closing Date or are manufactured within the relevant Cut-Over Period substantially consistent with the past practices of Seller. Subject to Purchaser’s compliance with the terms and conditions set forth in this Section 5.11, effective upon the Closing Date, Seller, on behalf of itself and its applicable Affiliates, hereby grants to Purchaser a limited, non-exclusive, non-transferable, non-sublicensable (except Purchaser may grant sublicenses to any Affiliate of Purchaser, provided, that Purchaser notifies Seller in advance and in writing and Purchaser remains primarily liable and responsible for all acts and omissions of such approvalsublicensee), royalty-free, paid up right and license, during the Cut-Over Period and Transitional Period, to use the Seller Marks solely in connection with the manufacture, distribution, marketing and sale of the Products in the conduct of the Business in the ordinary course of business and substantially consistent with past practice of Seller prior to the Closing Date. In no event shall Purchaser use any Seller Marks, addresses or phone numbers after the Closing Date in any manner or for any purpose materially different from the use of such Seller Marks, addresses or phone numbers by the Business during the ninety (90)-day period preceding the Closing Date. As between the Parties, Seller is the sole and exclusive owner of all right, title and interest in and to the Seller Marks and all rights related thereto and goodwill associated therewith, and all uses of the Seller Marks and the goodwill arising therefrom shall inure solely to the benefit of Seller or such Affiliate of Seller. Any use by Purchaser or any of Purchaser’s sublicensees of any of the Seller Marks during the time periods referred to in this Section 5.11 shall be substantially consistent with the form and manner, and standards of quality, of those in effect by Seller and its applicable Affiliates with respect thereto during the ninety (90)-day period preceding the Closing Date. Seller and its applicable Affiliates shall have the right upon reasonable request, during the Transitional Period, to verify and exercise reasonable quality control with respect to Purchaser’s and Purchaser’s sublicensees’ use of the Seller Marks as provided in this Section 5.11, in a reasonable manner, during normal business hours and upon reasonable advance notice; provided, however, that such access does not unreasonably disrupt the normal operations of Purchaser or the Business.
(db) As promptly Except solely as practicable after set forth in this Section 5.11, during the Relevant ClosingTransitional Period, Sapphire shallfollowing the Closing Date, Purchaser shall cease, and shall cause its Affiliates toto cease, change all signage containing making any use (in any form or manner or for any purpose) of any Seller Marks, including, for the Business Trademarksavoidance of doubt, either by covering any Marks that contain or removing such signagecomprise any Seller Marks, including as part of any signage affixed to any real property company name, Internet domain name or social media handle (other than, for the avoidance of Sellers or their Affiliatesdoubt, the Transferred IP). As soon Except as is reasonably practicable following expressly provided in this Section 5.11, from and after the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shallPurchaser shall not, and shall cause each of its Affiliates toto not, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether hold itself out as having any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire affiliation with Seller or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvalAffiliates.
Appears in 1 contract
Intellectual Property Matters. (a) Buyer BB Brand Holdings hereby grants to Seller, commencing on the Closing Date and its Affiliates continuing in perpetuity (and Permitted Designees and their respective Affiliates) havethe “License Term”), and after a limited, revocable, non-exclusive, non-sublicensable, worldwide, fully paid-up license to use the Relevant Closing, BEBE Xxxxx xxxely in substantially the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the same manner that such BEBE Xxxxx xxxe used internally by Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant immediately prior to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, Closing Date; provided that Seller shall cease all uses of the BEBE Xxxxx xx its Affiliates or the Transferred Entities or to Permitted Designees current email and their respective Affiliates.
(b) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in a ticker on a securities exchange no event later than six (6) months following the Relevant Closing DateDate (the “BEBE Xxxxx Xxxense”). Seller shall not use the BEBE Xxxxx xx connection with (i) any other trademark or service mark in a manner that creates a combination mark, unless (and only ii) the commercial promotion of any business or commercial activity or sales of any products or (iii) any other trademark or service mark in a manner that creates a combination mark.
(b) BB Brand Holdings may terminate the BEBE Xxxxx Xxxense, without any obligation to the extent thatprovide notice, upon (i) a longer period is required breach by Seller of the terms contained in this Section 5.08(c) below or otherwise by relevant Governmental Authorities5.8, Buyer shallincluding, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) but not limited to, discontinue all Seller’s use of the BEBE Xxxxx xx a manner other than as provided herein or (ii) the initiation of a voluntary or involuntary proceeding under any bankruptcy, insolvency, liquidation or similar proceeding, or upon the appointment of a successor, trustee, sequestrate, administrator, liquidator, receiver or similar officer, with respect to Seller. Seller Marks andmay not sublicense its right under this Section 5.8 to any other Person without BB Brand Holdings prior written consent. BB Brand Holdings, at Buyer’s sole cost Buyer and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates)shall cooperate in good faith in order to ensure compliance with this Section 5.8. Notwithstanding the foregoing, nothing in BB Brand Holdings and Seller may terminate the BEBE Xxxxx Xxxense at any time upon mutual agreement. The license granted to Seller pursuant to this Section 5.08 shall prohibit Buyer 5.8 is provided “as-is” without representation or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval warranty of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalkind.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Samples: Membership Interest Purchase Agreement (B. Riley Financial, Inc.)
Intellectual Property Matters. (a) Buyer The parties hereby acknowledge and its Affiliates (and Permitted Designees and their respective Affiliates) have, agree that at and after the Relevant Closing, (i) Purchaser and the Transferred Entities Acquired Subsidiaries shall haveacquire all rights in and to and, no rightas applicable, title, interest, license own all Owned Intellectual Property and (ii) Sellers shall pass through to the Acquired Subsidiaries any licenses or other rights under any other Business Intellectual Property to the extent that Sellers have the contractual right whatsoever from third party licensors of such other Business Intellectual Property to do so. All Seller Intellectual Property used in the Business, including, without limitation, the Software set forth on Section 5.17 of the Seller MarksDisclosure Letter, except as shall be licensed from Lumen or its Affiliates to the Acquired Subsidiaries pursuant to this Section 5.17. Unless otherwise expressly set forth in this Section 5.08Agreement with respect to Seller Intellectual Property and any other Business Intellectual Property, and none of Sellers the parties agree that nothing in this Agreement shall be construed to grant any right, title or interest in or to, or any license under, any past, present or future Intellectual Property owned or controlled, in whole or in part, by Lumen or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliateslicensors.
(b) As promptly as practicable after the Relevant Closing, Buyer shallSellers shall grant, and shall cause its their Affiliates to grant, the Acquired Subsidiaries a limited, personal, irrevocable (except in the case of an uncured breach by the Acquired Subsidiaries), non-terminable (except in the case of an uncured breach by the Acquired Subsidiaries or a Defensive Termination), royalty-free, non-exclusive, non-sublicensable (except with respect to distributors, manufacturers, subcontractors, suppliers and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use vendors of the Seller Marks andAcquired Subsidiaries solely in connection with goods or services rendered to or for the Acquired Subsidiaries), at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities non-transferable (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing except as provided in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees 5.17(b)) license under the Seller Intellectual Property solely as it relates to the Business as conducted as of the Closing Date and their respective Affiliates) from natural extensions thereof, provided however, (i) using the Seller Marks in a non-trademark manner as foregoing license is reasonably necessary for historical reference in communications in connection with limited to the administration Acquired Subsidiaries’ conduct of the Business or with Governmental Authorities, and
(ii) retaining without any notice or using for Buyer’s or its Affiliates’ (or Permitted Designees further action by Sellers, the foregoing license shall be deemed immediately and their respective Affiliates’) internal business purposesautomatically terminated, records and other historical or archived documents containing or referencing the Seller Marksprospectively, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed respect to any real property of patents licensed by Sellers thereunder if Purchaser or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire Acquired Subsidiary makes a written claim or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire counterclaim against Lumen or any of its Affiliates filing any based on patent rights of Purchaser or such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable Acquired Subsidiary (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date“Defensive Termination”), except that such Defensive Termination will not occur if the claim made is a compulsory counterclaim made by Purchaser or such Acquired Subsidiary in a proceeding filed by Lumen or any of its Affiliates against Purchaser or such Acquired Subsidiary. Transfer of any Seller Intellectual Property by Lumen or any of its Affiliates shall be made subject to the license grant in this Section 5.17(b). Upon the merger of an Acquired Subsidiary (“Merged Subsidiary”) into another entity (“Surviving Entity”) in a manner such that the Merged Subsidiary no longer exists as a separate legal entity, the foregoing license provided in this Section 5.17(b) to such Merged Subsidiary shall transfer to the Surviving Entity solely as it relates to the Surviving Entity’s conduct of the Business and upon receipt of such approval, shall file such documentation so long as promptly as practicable, but in no event later than two (2) months following receipt of such approval.prior written notice is provided
Appears in 1 contract
Samples: Purchase Agreement
Intellectual Property Matters. The Parties acknowledge that there may be SCI Lease Collateral and Operating Subsidiaries Lease Collateral that contains the word “Station” or the phrase “Station Casinos” (athe “Station Marks”). Except as otherwise provided in Annex 1 and unless otherwise subsequently agreed to by the Parties, (i) Buyer PropCo is not being transferred any ownership interests in the Station Marks but only a temporary license to use such Station Marks and (ii) PropCo agrees to discontinue the use of the name “Station” or “Station Casinos” at the conclusion of the Interim License Period (as defined below) pursuant to the time frames and otherwise as provided in Annex 1. SCI acknowledges that the Station Marks and other non-exclusive marks not transferred to PropCo or its Designee may be temporarily used in respect of the Leased Hotels for a period (the “Interim License Period”) commencing at the onset of the Transition Period and continuing until the later of (i) the date on which SCI is no longer providing Transition Services under this Compromise and (ii) the date of termination for such license set forth in Annex 1 to this Compromise. In connection with such limited use, SCI hereby grants to each of PropCo and its Affiliates Designees a non-transferable, temporary, irrevocable, royalty-free and non-exclusive license (and Permitted Designees PropCo acknowledges such temporary use and their respective Affiliatessuch temporary license) haveto use the Station Marks and other non-exclusive marks described in Annex 1, which license, (i) shall concurrently terminate upon expiration of permission to use the Station Marks and other non-exclusive marks as provided in Annex 1, (ii) shall not confer upon PropCo or its Designee any other or additional rights or interests in such Station Marks or other non- exclusive marks and (iii) shall be subject to reasonable quality control provisions consistent with SCI’s current standards. PropCo acknowledges that, except for the foregoing license to use Station Marks and other non-exclusive marks provided herein, the sale to PropCo or its Designee pursuant to this Compromise of such goods as SCI Lease Collateral and Operating Subsidiaries Lease Collateral or otherwise that incorporate any Station Marks or non-exclusive marks shall not transfer to PropCo or its Designee any rights in the Station Marks or non-exclusive marks so incorporated, or otherwise. The Parties acknowledge that PropCo is not licensing back to SCI or SCI’s other affiliates any rights to use any of the exclusive marks to be transferred to PropCo pursuant to Annex 1, and SCI covenants, notwithstanding any retention of ownership of the Station Marks, from and after the Relevant Closingconclusion of the Transition Period, not to use, and not allow its other subsidiaries and affiliates, to use the Transferred Entities shall havenames “Red Rock,” “Sunset”, no right, title, interest, license “Palace” and/or “Boulder” as an enterprise brand or trademark or trade name in connection with the operation of any other right whatsoever in the Seller Markscasinos or similar operations, except as expressly otherwise permitted on Annex 1. The Parties further acknowledge that some of the trademarks and other intellectual property to be sold to PropCo or its Designees hereunder may currently be subject to a lien in favor of the Prepetition Lenders. Each of the Parties hereto shall cooperate and use commercially reasonable efforts to obtain all Bankruptcy Court orders and approvals with respect to any such sale and SCI agrees not to oppose any motions to approve such sale except on the grounds that such proposed sale is inconsistent with the terms set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective AffiliatesCompromise.
(b) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Samples: Master Lease Compromise Agreement
Intellectual Property Matters. (a) Buyer As used herein, the term "Intellectual Property Assets" includes:
(i) all material fictional business names, trading names, registered and its Affiliates (and Permitted Designees and their respective Affiliates) haveunregistered trademarks, service marks, and after the Relevant Closingapplications (collectively, the Transferred Entities shall have"Marks");
(ii) all material patents, no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08patent applications, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned inventions and discoveries that may be patentable owned by ReGen (collectively, "Patents");
(iii) all material registered copyrights in both published works and unpublished works, and all rights in mask works owned by ReGen (collectively, "Copyrights"); and
(iv) all material know-how, trade secrets, confidential information, customer lists, customer histories, product formulations, product information and specifications, software, technical information, data, process technology, plans, drawings, and blueprints (collectively, "Trade Secrets") owned, used, or licensed such right, title, interest by ReGen as licensee or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliateslicensor.
(b) As promptly ReGen represents as practicable after the Relevant Closing, Buyer shall, follows:
(i) Schedule 2.26(b) contains a complete and shall cause its Affiliates accurate list and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signagesummary description, including any signage affixed royalties paid or received by ReGen, of all material contracts relating to the Intellectual Property Assets to which ReGen is a party or by which ReGen is bound, except for any license implied by the sale of a product and perpetual, paid-up licenses for commonly available software programs with a value of less than $1,500 under which ReGen is the licensee. There are no outstanding, and to ReGen's knowledge no threatened, disputes or disagreements with respect to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, such agreement.
(ii) retaining The Intellectual Property Assets owned or using used by ReGen are all those necessary for Buyer’s or its Affiliates’ (or Permitted Designees the operation of ReGen's business as currently conducted. Except as set forth on Schedule 2.26(b), ReGen is the owner of all right, title, and their respective Affiliates’) internal business purposesinterest in and to each of the Intellectual Property Assets, records free and clear of all liens and, to ReGen's knowledge, other historical or archived documents containing or referencing adverse claims, and to ReGen's knowledge, ReGen has the Seller Marks, provided that such materials are rebranded in right to use without payment to a third party all of the ordinary course of business, or Intellectual Property Assets.
(iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly Except as practicable, but set forth in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing DateSchedule 2.26(b), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after all ReGen research employees who are currently employed or were employed during the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than past two (2) months following years have executed written contracts with ReGen that assign to ReGen all rights to any inventions, improvements, discoveries, or information relating to the Relevant Closing Datebusiness of ReGen. Except as set forth in Schedule 2.26(b) and to ReGen's knowledge, Sapphire shallno employee has entered into any contract that restricts or limits in any way the scope or type of work in which the employee may be engaged or requires the employee to transfer, and shall cause its Affiliates toassign, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and or disclose information concerning his or her work to anyone other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvalReGen.
Appears in 1 contract
Samples: Merger Agreement (Aros Corp)
Intellectual Property Matters. (a) Buyer The Seller and its Affiliates Subsidiaries shall retain (and Permitted Designees and their respective Affiliatesthe Purchaser or its Affiliates shall not acquire) haveany ownership of and, and after except to the Relevant extent provided herein or in the Ancillary Agreements, any other rights to any Seller Brands, whether or not used in the Business. At the Closing, the Transferred Entities Seller shall havegrant to the Purchaser and its Affiliates, no right, title, interest, license for a period from the Closing until the exhaustion of any Business Products (as Inventory or Fixed Assets) in existence as of the Closing or any packaging, labels, displays, promotional and other right whatsoever similar materials relating to the Business Products in existence at the Closing bearing the Seller MarksBrands, a non-exclusive, sub-licensable, non-assignable, irrevocable, worldwide, fully paid up, and royalty-free right and license to use the Seller Brands on such existing Business Products (as Inventory or Fixed Assets) and such existing packages, labels, displays, promotional and other similar materials relating to the Business Products as used in, held for use in or related to the Business at the Closing, and otherwise as the Seller Brands were used by the Seller or its Subsidiaries immediately prior to Closing in connection with the Business, for the sole purpose of operating the Business by the Purchaser and its Affiliates; provided, that, except as expressly required by Law (including displaying the manufacturer of a product), the Purchaser shall use its commercially reasonable efforts to, and to cause its Affiliates to, in a reasonably expeditious manner, remove or cover all Seller Brands on any Business Products held for rent or any packaging, labels, displays, promotional and other similar materials relating to such Business Products held for rent from time to time in connection with the Purchaser’s ordinary course service, maintenance and replacement activities, which removal or covering, with respect to framed Business Products held for rent, shall be completed within two (2) years after the Closing to the extent the same can be accomplished through a process of covering the Seller Brands or other method that is not unduly burdensome, and, with respect to other durable Business Products held for rent, shall be completed within their normal replacement cycle; provided, further, that the Purchaser shall not be required to take any action to remove or cover any Seller Brands on any Business Product in such a manner as would materially deface any Business Products or render the same commercially unmarketable. The foregoing license grants shall be made by the Seller and, to the extent applicable, its Subsidiaries, and the particular terms of such license grants shall be set forth in this Section 5.08a trademark license agreement with the Purchaser and, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliates.
(b) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyerextent applicable, its Affiliates, or any Transferred Entity in substantially the form attached hereto as Exhibit D (or of Permitted Designees and their respective Affiliatesthe “Seller Trademark License Agreement”). As soon as is reasonably practicable following after the Relevant Closing, but in no event later than six three-hundred sixty-five (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90365) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire the Purchaser shall, and shall cause its Affiliates to, change (i) cease to use and remove or cover all signage containing Seller Brands and as a trade name, corporate name or domain name from all materials except, with respect to the Seller Brands, in accordance with the Seller Trademark License Agreement and (ii) otherwise cease use of any Seller Brand for which the Purchaser has not been granted a license pursuant to the Seller Trademark License Agreement, including removing such Seller Brands from signs, billboards, telephone listings, stationery, office forms or other similar materials of the Business. Except as expressly provided in this Section 7.6 or in the Seller Trademark License Agreement, the Purchaser and its Affiliates shall have no right to use in any way the Seller Brands.
(b) In the event that there is any Intellectual Property of the Seller or its Subsidiaries as of the date hereof or as of the Closing (other than the Seller Brands, which are covered by the Seller Trademark License Agreement upon the terms set forth therein) that is not contained in the Business TrademarksOwned Intellectual Property and such Intellectual Property would be infringed by the manufacture, either by covering use, sale, offer for sale, lease, offer for lease, rent, offer for rent, importation, distribution, reproduction, creation of derivative works based on, performance or removing such signage, including any signage affixed to any real property display of Sellers or their Affiliates. As soon Business Products (as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use same exist as of the Business Trademarks andClosing) or packaging, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, scheduleslabels, displays, stationery, technical guidelines and promotional or other supplies and similar materials that incorporate relating to the Business Trademarks, whether any of or the foregoing materials are held Business Products by Sapphire the Purchaser or its Affiliates or under (“Additional Intellectual Property”), then, following the control Closing, the Seller hereby grants to the Purchaser and its Affiliates a non-exclusive, fully paid-up, transferable, royalty free, worldwide, perpetual, irrevocable license and right including the right to grant sublicenses to such Additional Intellectual Property. Such license and rights shall extend to all distributors and resellers of Sapphire or its Affiliates. If the approval Purchaser as well as all customers of any Governmental Authority is needed prior to Sapphire the Purchaser or any of its Affiliates filing Affiliates, or any such documentation to effectuate customers of any distributor or reseller of the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Intellectual Property Matters. (a) Buyer and its Affiliates (and Permitted Designees and their respective Affiliates) have, and after Except with respect to the Relevant Closing, the Transferred Entities shall have, no right, title, interest, license Company Intellectual Property Rights or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.085.07, the parties acknowledge and none of Sellers or agree that neither party grants any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest license or other right with respect to Buyerany of its Intellectual Property Rights to the other party under this Agreement, whether by implication, estoppel, exhaustion or otherwise, and each party retains and reserves all rights with respect to its Intellectual Property Rights not expressly granted under this Agreement.
(a) Buyer and, on and after the Closing, the Companies shall have no right, title or interest in or to the “Reckitt Benckiser” or “RB” names and trademarks, any stylized variations of the foregoing and logos and designs used in conjunction therewith, any variation or derivative of any of the foregoing, or any names, trademarks, logos or designs confusingly similar to any of the foregoing, and any other marks exclusively related to the Sellers’ businesses other than the Business (collectively, for the avoidance of doubt excluding the Company Intellectual Property Rights, the “XX Xxxxx”). Buyer hereby acknowledges and agrees that neither it nor any of its Affiliates (including, as of the Closing, the Companies) shall acquire any goodwill, rights or benefits arising from the Transferred Entities or XX Xxxxx and that all such goodwill, rights and benefits shall inure solely to Permitted Designees and their respective Affiliatesthe Sellers.
(b) As promptly as practicable after Without limiting the Relevant Closinggenerality of Section 5.07(a) and Section 5.07(b), the Sellers grant a limited, non-exclusive, royalty-free right to Buyer shall, and shall cause its Affiliates and the Transferred Entities Companies for a period of one hundred eighty (and Permitted Designees and their respective Affiliates180) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable days following the Relevant Closing, Closing to use the XX Xxxxx and the Trademarks set forth in Section 5.07(c) of the Sellers Disclosure Schedule (collectively the “Licensed Marks”) but solely (1) in no event later than six (6) months following connection with the Relevant Companies’ internal use of the materials produced by the Companies prior to the Closing Date, unless provided that such materials were produced by the Companies for internal purposes (it being understood that Buyer and the Companies shall only utilize such materials to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shallthey existed immediately prior to the Closing Date), and shall cause its Affiliates (1) to allow Buyer and the Transferred Entities (Companies to distribute and Permitted Designees and their respective Affiliates) to, discontinue all use sell the inventories of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any finished products existing as of the foregoing materials Closing Date and packaged in packaging bearing the Licensed Marks as well as to produce, package, market, distribute and sell products bearing the Licensed Marks which are held identical to the products sold by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or Business under such Licensed Marks prior to the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates)Closing. Notwithstanding the foregoing, nothing in this Section 5.08 Buyer and the Companies shall prohibit Buyer or its Affiliates neither (or Permitted Designees and their respective Affiliates1) from (i) using the Seller use any Licensed Marks in a non-trademark any manner or for any purpose which in any way differs from the use of such Licensed Marks by the Sellers or the Companies immediately prior to the Closing Date nor (2) except as is reasonably necessary for historical reference in communications in connection with the administration of the Business provided under Section 5.07(c)(ii) above, manufacture or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of businessproduce, or (iii) using the Seller cause or permit any third party to manufacture or produce, any new materials incorporating any Licensed Marks to the extent required by applicable Lawin any manner.
(c) As promptly as practicablePromptly upon the expiration of the period set forth in Section 5.07(c), but the Companies shall (and Buyer shall cause the Companies to)
(1) cease any and all use of the XX Xxxxx and (1) destroy and dispose of all labels, packaging, and any other materials in no event later its possession or subject to its control, bearing any XX Xxxxx.
(d) Notwithstanding the foregoing, the parties acknowledge that this Agreement does not, and shall not, convey, transfer or assign any right, title or interest in any trademark, name or logo of any third party.
(a) To the extent available on the Sellers’ docketing or other internal systems, the Sellers shall use commercially reasonable efforts to provide to Buyer a list of all actions that must be taken by Buyer within ninety (90) days following the Relevant Closing Date with respect to each item of Registered IP Rights for the purposes of continuing the prosecution of, maintaining, perfecting or renewing any such Registered IP Rights; provided that with respect to any such actions that must be taken no later than thirty (30) days after the Closing Date, Buyer the Sellers shall use commercially reasonable efforts to provide such list as soon as practicable after the date hereof.
(b) As soon as reasonably practicable after the date hereof, the Sellers shall, and shall cause its their applicable Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, cooperate with the Buyer (at the Buyer’s expense) in preparing, obtaining and filing all documents (including assignment and name change forms) with the United States Patent and Trademark Office or other corresponding Governmental Authority, as necessary to record one of the Companies as, or correct the record such that one of the Companies is, the sole cost legal and expenserecord owner of the Intellectual Property Rights listed in Section 5.07(g)(i) of the Sellers Disclosure Schedule and any other Intellectual Property Rights which the parties reasonably identify as having similar issues, file any documentation including as necessary to change the names record owner’s name or otherwise correct the chain of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction title in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval respect of any Governmental Authority is needed such Intellectual Property Rights, provided, however, that in the event that the parties are not able to prepare, obtain or file any such documents prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentationthe Closing Date, Buyer shallthe parties will continue to use commercially reasonable efforts to do so as soon as reasonably practicable thereafter. Prior to the Closing Date, and the Sellers shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use commercially reasonable best efforts to obtain an absolute, unconditional and irrevocable release and termination of the Lien set forth in Section 5.07(g)(ii) of the Sellers Disclosure Schedule with respect to the Intellectual Property Rights listed on Section 5.07(g)(ii) of the Sellers Disclosure Schedules, and record such approval releases in the United States Patent and Trademark Office; provided however that in the event that the Sellers are not able to obtain such release and termination of such Lien prior to the Closing Date, the Sellers will continue to use commercially reasonable efforts to do so as promptly soon as reasonably practicable thereafter.
(c) Prior to the Closing Date or as soon as reasonably practicable thereafter, the Sellers shall use reasonable efforts to deliver or cause to be delivered to Buyer documentation containing information that is currently used in the development, production, packaging, marketing or distribution of the products of the Business to the extent such documentation is in the possession of a Seller or any of Sellers’ Affiliates but not in the possession of the Companies (including filing recipes, formulae and specifications for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Datepackaging), and upon receipt to the extent such delivery does not violate any obligations of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalSellers owed to any third party.
(d) As promptly soon as reasonably practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shallthe Sellers shall cooperate with the Buyer to deliver to Buyer all prosecution files and dockets, registration certificates and litigation files to the extent relating to the Registered IP Rights, in each case, solely to the extent such materials are in the possession of the Sellers and not already in the possession of the Companies.
(e) Effective from and after the Closing, Sellers hereby grant, and shall agree to cause its their applicable Affiliates toto grant, discontinue to the Companies a non-exclusive, worldwide, perpetual, irrevocable, fully paid-up, royalty-free, non-transferable (other than in connection with the sale of all use or a substantial portion of any of the Companies or their businesses), non-sublicensable (other than in connection with products and services of the Business Trademarks andand natural extensions thereof) license, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire Intellectual Property Rights owned by Sellers or any of its Sellers’ Affiliates filing as of the Closing (other than Trademarks and domain names) that are used by any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable Seller or any of Sellers’ Affiliates (including filing for the Companies) in the Business (including as such approval as promptly as practicable and in no event later than two (2) months following business evolved until the Relevant Closing Date) as of the Closing Date, to use, reproduce, create derivative works of, modify, distribute, make, have made, sell, offer for sale, import or otherwise commercially exploit products and services (and related promotional materials) solely in connection with the continued operation of the Business as conducted as of the Closing Date (and any natural extensions thereof), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Intellectual Property Matters. (a) Buyer hereby acknowledges and agrees that (i) neither Buyer nor its Affiliates are acquiring, and the Purchased Assets do not include any right, title or interest in or to, or right to use, any (A) Xxxxx Fargo Marks or (B) other Xxxxx Fargo Retained IP and (ii) prior to and following the Effective Time, none of Buyer or any of its Affiliates shall have any right, title or interest in or to, or right to use, and Buyer covenants that it and its Affiliates (and Permitted Designees and their respective Affiliates) haveincluding, and after the Relevant ClosingEffective Time, in its use of the Transferred Entities shall havePurchased Assets or otherwise) will not hereafter adopt, no rightuse, titleapply to register or register, interestor authorize others to adopt, license use, apply to register or register, any other right whatsoever in the Seller (A) Xxxxx Fargo Marks, except as expressly set forth in this Section 5.085.15(b) or (B) other Xxxxx Fargo Retained IP, and none of Sellers except as expressly set forth in the Transitional Services Agreement, in Section 5.15(f) or any of their Affiliates have pursuant to as otherwise agreed by the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliatesparties.
(b) As Buyer and its Affiliates may, solely in its or their use of the Purchased Assets, utilize materials and assets (including stationery, forms, business cards and other similar items) that bear the Xxxxx Fargo Marks as of the Closing Date for the periods set forth in this Section. Buyer shall, and shall cause its Affiliates to, remove, strike over, or otherwise obliterate all Xxxxx Fargo Marks from all such assets and materials, within thirty (30) days after, (i) with respect to customer-facing materials (such as statements, Software and interfaces to software), the date on which the Software platform used to service the products provided to such customers (or potential customers) is migrated to Buyer or its designee pursuant to the Transitional Services Agreement, (ii) with respect to other Purchased Assets, the date on which such Purchased Asset is transferred to Buyer or its designee, or (iii) such later date as may be consented to in writing by Seller (such consent shall not be unreasonably withheld, conditioned or delayed). Notwithstanding the foregoing, Buyer and its Affiliates may retain such assets and materials with Xxxxx Fargo Marks for internal, non-promotional archival purposes, to indicate the historic affiliation of the Business with Seller or otherwise to the extent required by applicable document retention policies. Any use by Buyer or any of its Affiliates under this Section 5.15(b) of any materials and assets that bear the Xxxxx Fargo Marks is subject to the use of such materials and assets in a form and manner, and with standards of quality, as in effect for such materials, assets and Xxxxx Fargo Marks as of the Closing Date. None of Buyer or any of its Affiliates shall use the Xxxxx Fargo Marks in a manner that may reflect negatively on the Xxxxx Fargo Marks or on Seller or its Affiliates. Seller may terminate the foregoing license, effective immediately, if Buyer or any of its Affiliates fails to promptly as practicable after comply with the Relevant Closingforegoing terms and conditions or any reasonable direction of Seller or one of its Affiliates in relation to the use of the Xxxxx Fargo Marks. Following the Effective Time, Buyer shall, and shall cause its Affiliates to, not hold itself out as having any affiliation with Seller or any of its Affiliates. Each of the parties hereto acknowledges and agrees that the remedy at Law for any breach of the requirements of this Section 5.15(b) would be inadequate and agrees and consents that without intending to limit any additional remedies that may be available, Seller and its Affiliates shall be entitled to specific performance of the terms hereof and immediate injunctive relief and other equitable relief, without the necessity of proving the inadequacy of money damages as a remedy, and the Transferred Entities parties hereto further hereby agree to waive any requirement for the securing or posting of bond or other undertaking, in any action which may be brought to enforce any of the provisions of this Section 5.15(b).
(c) Prior to using any materials and assets that bear the Xxxxx Fargo Marks as permitted under Section 5.15(b), Buyer and its Affiliates shall, at their sole cost and expense and in a form acceptable to Seller, notify customers of the Business (as of immediately prior to the Effective Time) of the consummation of the transactions contemplated by this Agreement.
(d) Buyer and its Affiliates shall indemnify and hold harmless Seller and its Affiliates for all Losses arising from or relating to the matters described in this Section 5.15, including the use by Buyer or any of its Affiliates of the Xxxxx Fargo Marks (and Permitted Designees materials and their respective Affiliatesassets that bear the Xxxxx Fargo Marks) pursuant to change all signage containing Section 5.15(b).
(e) Subject to the Seller Marksterms of this Section 5.15(e), either by covering or removing such signageBuyer hereby grants, including any signage affixed to any real property on behalf of Buyer, itself and its Affiliates, to Seller and its Affiliates, effective as of the Effective Time, a non-exclusive, fully paid-up, irrevocable, worldwide, perpetual right and license to use, reproduce, store, distribute, communicate, copy, modify, display, transmit and create derivative works of the Business IP (excluding any rights in Trademarks) for any and all purposes following the Effective Time. Seller and its Affiliates shall not have any rights to any enhancements, improvements or other modifications to the Business IP made by or on behalf of Buyer or its Affiliates after the Effective Time, and neither Buyer nor its Affiliates shall have any Transferred Entity rights to any enhancements, improvements or other modifications to the Business IP made by or on behalf of Seller or its Affiliates after the Effective Time. All use of the Business IP by or under authority of Seller or its Affiliates (or of Permitted Designees their successors and assigns) from and after the Effective Time shall be on an “AS IS, WHERE IS” basis, with all faults and all express and implied representations and warranties disclaimed, and at their respective Affiliates)sole risk. As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only The license to the extent thatBusiness IP granted under this Section 5.15(e) a longer period is required by Section 5.08(c) below shall be sublicensable to Third Party service providers of Seller or otherwise by relevant Governmental Authorities, Buyer shallits Affiliates, and shall cause be assignable and transferable to successors in interest to all or a portion of the businesses of Seller or its Affiliates, in each case without the prior written consent of Buyer.
(f) Subject to the terms of this Section 5.15(f), Seller hereby grants, on behalf of itself and its Affiliates, to Buyer and its Affiliates, effective as of the Effective Time, a non-exclusive, fully paid-up, irrevocable, worldwide, perpetual right and license to use, reproduce, store, distribute, communicate, copy, modify, display, transmit and create derivative works of, for any and all purposes, solely in connection with the Business, any Xxxxx Fargo Retained IP that is reasonably necessary for the conduct of the Business following the Effective Time and migration of any applicable Services under the Transitional Services Agreement; provided that such license shall not apply to any Xxxxx Fargo Retained IP that (i) is a Trademark, (ii) Seller or any of its Affiliates uses to provide services pursuant to the Transitional Services Agreement or (iii) during the twelve (12) months prior to the Effective Time, is only used in connection with the Business because it was used in connection with an Excluded Service (as such term is defined in the Transitional Services Agreement). Buyer and its Affiliates shall not have any rights to any enhancements, improvements or other modifications to such Xxxxx Fargo Retained IP made by or on behalf of Seller or its Affiliates after the Transferred Entities (Effective Time, and Permitted Designees and their respective Affiliates) toneither Seller nor its Affiliates shall have any rights to any enhancements, discontinue all improvements or other modifications to such Xxxxx Fargo Retained IP made by or on behalf of Buyer or its Affiliates after the Effective Time. All use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held such Xxxxx Fargo Retained IP by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control authority of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees their successors and their respective Affiliatesassigns) from (iand after the Effective Time shall be on an “AS IS, WHERE IS” basis, with all faults and all express and implied representations and warranties disclaimed, and at their sole risk. The license to the Xxxxx Fargo Retained IP granted under this Section 5.15(f) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration shall be sublicensable to Third Party service providers of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s Buyer or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates be assignable and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary transferable to change the names successors in interest to all or a portion of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority businesses of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and in each case without the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt prior written consent of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalSeller.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Intellectual Property Matters. Within sixty days of Closing, the Company and/or the Subsidiaries (i) shall file and/or record with the United States Patent and Trademark Office ("PTO") and each appropriate foreign governmental patent and trademark office and domain name registry, all change of name documents, assignments, and other documentation as necessary to ensure that the chain of title for all Intellectual Property is accurate and complete, including, but not limited to: (a) Buyer and its Affiliates (and Permitted Designees and their respective Affiliates) havethe filing of change of name documents for Intellectual Property that is currently in the name of Survivalink Corporation to reflect, as appropriate, the change of name from Surviva Link Corporation to SurVivaLink Corporation, and after from SurVivaLink Corporation to Survivalink Corporation; (ii) shall file with the Relevant ClosingPTO and, as necessary, with each appropriate foreign governmental patent and trademark office, a "Confirmation of Ownership, Assignment and Release" that (a) confirms that the Transferred Entities Company was and is the owner of the trademarks that were the subject of the April 28, 1992 Trademark Collateral Assignment and Security Agreement to which the Company and Cytocare, Inc. were parties, (b) releases the security interest granted to Cytocare, Inc. under said agreement, and (c) assigns to the Company any rights that Cytocare, Inc. might be deemed to have had in said trademarks; (iii) shall have, no right, title, interest, license or any other right whatsoever record in the Seller MarksPTO the assignments of United States Patent Numbers 6,083,246, except as expressly 6,366,809, and 5,909,138 to Survivalink Corporation and (iv) shall provide to the Purchasers evidence that is satisfactory to the Purchasers that the Company and/or Subsidiaries has complied with all of the obligations set forth in this Section 5.086.20. Upon compliance with the obligations of the preceding paragraph to the satisfaction of Purchasers, but not later than 60 days after the Closing, the Company 1) shall file and/or record, or cause to be filed and/or recorded, with the PTO and each appropriate foreign governmental patent and trademark office and domain name registry, the Notice of Grant of Security Interest in Trademarks, attached as Exhibit H hereto and 2) shall file and/or record, or cause to be filed and/or recorded, with the PTO, each appropriate foreign governmental patent and trademark office and domain name registry, and none any other relevant Governmental Authority the Notice of Sellers Grant of Security Interest in Patents, attached as attached as Exhibit I hereto and the Security Agreement, or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such rightSecurity Agreement alone (provided that if only the Security Agreement is filed at the PTO, titlea foreign governmental patent and trademark office, interest domain name registry, or other right to Buyerrelevant Governmental Authority in respect of Patents, its Affiliates or it shall be deemed the Transferred Entities or to Permitted Designees and their respective Affiliates.
(b) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property Notice of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective AffiliatesSecurity Interests in Patents hereunder). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only Failure to the extent that) a longer period is required by Section 5.08(c) below comply with any terms or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use condition of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 6.20 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration constitute an Event of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable LawDefault.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Samples: Senior Note and Warrant Purchase Agreement (Cardiac Science Inc)
Intellectual Property Matters. (a) Buyer and its Affiliates (and Permitted Designees and their respective Affiliates) have, and after the Relevant Closing, the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except Except as expressly otherwise set forth in this Section 5.085.9(a), and none of Sellers or neither Purchaser nor any of their its Affiliates shall use, or have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyeruse, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliates.
(b) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates)Marks following the Closing Date. As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety more than one hundred eighty (90180) days following after the Relevant Closing DateDate (the “Mark Transition Period”), Buyer shall, Purchaser shall and shall cause its Affiliates (including the NewCo Entities) to (i) cease using the Seller Marks and the Transferred Entities (and Permitted Designees and their respective Affiliatesii) to, at Buyer’s sole cost and expense, file complete all necessary actions to replace any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereofpublicly facing materials, including by making filings with signage, stationary and promotional materials that bear the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdictionSeller Marks. If the approval of any Governmental Authority is needed prior to Buyer Nothing shall restrict Purchaser or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and as of the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), including the NewCo Entities, from using or referencing the Seller Marks at any time after the Closing Date in (A) a non-trademark manner to describe or provide information regarding the history of the GES Business, (B) historical legal and upon receipt business documents and non-public facing historical office materials, (C) a manner that would constitute “fair use” under applicable Law or (D) as required by applicable Law. From and after the Closing, neither Purchaser nor any of such approvalits Affiliates shall challenge or assist any third party to challenge the validity, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt enforceability or ownership of such approvalany of the Seller Marks.
(db) As promptly as practicable At Purchaser’s request, for a period of one hundred and eighty (180) days after the Relevant ClosingClosing Date, Sapphire Seller shall, and shall cause its Affiliates to, change all signage containing maintain a statement and a link on Seller’s and its Affiliates’ primary website for the GES Business Trademarks(xxxxxxxx.xxx/xxxxxxxxxxx), either by covering or removing such signagein form and substance reasonably agreeable to each of Seller and Purchaser, including any signage affixed directing customers to any real property the primary post-Closing website for the GES Business.
(i) Seller, on behalf of Sellers or their itself and its Affiliates. As soon , hereby grants to the NewCo Entities, effective as is reasonably practicable of the Closing, a nonexclusive, fully paid-up, irrevocable, worldwide, perpetual, sub-licensable (as set forth in this Section 5.9(c)) and transferable (as set forth in this Section 5.9(c)) license to use, reproduce, store, distribute, copy, modify, display, transmit and create derivative works of the XXX Software, for use in the GES Business following the Relevant Closing.
(ii) Prior to the Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire Seller shall use reasonable best efforts to obtain such approval as promptly as practicable deliver to a NewCo Entity in a commercially reasonable format a copy of all (including filing A) source code for such approval as promptly as practicable the XXX Software and (B) related written documentation, in no event later than two the case of each of clause (2A) months and clause (B), to the extent then-existing. Notwithstanding anything to the contrary set forth herein, delivery of the foregoing shall not be a condition to the consummation of the Transactions.
(iii) None of the Newco Entities shall have any rights to any enhancements, improvements or other modifications (“Improvements”) to any XXX Software created or developed by or on behalf of Seller or its Affiliates after the Closing, and Seller and its Affiliates shall own all Improvements to the XXX Software created or developed by or on behalf of Seller or its Affiliates following the Relevant Closing Date)Closing. Neither Seller nor its Affiliates shall have any rights to any Improvements to the XXX Software created or developed by or on behalf of any of the Newco Entities after the Closing, and upon receipt the Newco Entities shall own all Improvements to the XXX Software created or developed by or on behalf of such approvalthe Newco Entities following the Closing.
(iv) All use of the XXX Software by or under authority of the Newco Entities and their respective Affiliates (or their permitted successors and assigns) from and after the Closing shall be on an “AS IS, WHERE IS” basis, with all faults and all express and implied representations and warranties disclaimed, and at their sole risk. Following the Closing, Seller and its Affiliates shall file such documentation have no obligation to, and shall not, provide any support, maintenance or other services with respect to the XXX Software, except as promptly may be expressly provided for in the Transition Services Agreement.
(v) The license to the XXX Software granted under this Section 5.9(c) shall be freely sublicensable, assignable and transferable without the prior written consent of Seller or any of its Affiliates; provided, that Purchaser shall ensure that the Newco Entities cause any sublicensee, assignee or transferee to agree that it is, and its sublicensees, transferees and assignees will be, bound by and subject to the restrictions contained in this Section 5.9(c) and by confidentiality restrictions at least as practicable, but protective of the XXX Software as those contained in no event later than two (2Section 5.3. The XXX Software shall not include any Trademarks. Nothing in this Section 5.9(c) months following receipt of such approvalshall limit Section 3.9.
Appears in 1 contract
Samples: Securities and Asset Purchase Agreement (S&P Global Inc.)
Intellectual Property Matters. (a) Buyer hereby acknowledges and agrees that neither Buyer nor its Affiliates (i) are acquiring, and the Purchased Assets do not include, any right, title or interest in or to, or right to use, any Intellectual Property owned by or licensed to Seller or any of its Affiliates (including the Discover Marks) and (ii) shall have any right, title or interest in or to, or right to use, and Buyer covenants that it and its Affiliates (and Permitted Designees and their respective Affiliates) haveincluding, and after the Relevant ClosingInitial Effective Time, in its or their use of the Transferred Entities shall havePurchased Assets or otherwise) will not hereafter adopt, no rightuse, titleapply to register or register, interestor authorize others to adopt, license use, apply to register or register, any other right whatsoever in the Intellectual Property owned by Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to its Affiliates, including the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective AffiliatesDiscover Marks.
(b) As Notwithstanding Section 5.11(a), Buyer, any of its permitted assignees that acquire title to the Assumed Loans, any Affiliate of Buyer that is a borrower in connection with the Financing, any issuer in any Securitization Transaction, and Servicer may, solely in connection with (i) notices provided to Borrowers pursuant to Section 5.12 and (ii) disclosures in disclosure documents for the Financing and Securitization Transactions that the Assumed Loans were previously originated, serviced and owned by Seller, utilize the name Discover and the Discover logo in the form and manner prescribed by Seller; provided that (x) each such use of a Discover Mark is subject to Seller’s prior written consent, which may be granted or denied in Seller’s sole discretion and (y) any permitted use of Discover Marks is subject to the use of such Discover Marks with the same standards of quality as in effect for such Discover Marks as of the date hereof. If Buyer fails to fully and promptly as practicable after comply with any of the Relevant Closingforegoing terms and conditions or any reasonable direction by Seller or its Affiliates in relation to the use of such Discover Marks, Seller may terminate the foregoing license on fifteen (15) days’ prior written notice to Buyer if such failure is not remedied to Seller’s sole satisfaction, acting reasonably and in good faith. Following the Effective Time, Buyer shallshall not, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the not to, hold itself or themselves out as having any affiliation with Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or and Servicer may at all times after the Transferred Entities (or Permitted Designees Closing Date retain and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a make non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration use of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, Discover Marks for their respective internal business purposes or (iii) using the Seller Marks to the extent required by applicable otherwise comply with Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Intellectual Property Matters. (a) Buyer and its Affiliates (and Permitted Designees and their respective Affiliates) have, and after Following the Relevant Closing, the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliates.
(b) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Final Closing Date, Buyer shallwill, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly soon as practicable, but in no event later than ninety (90) 120 days following receipt the Final Closing Date, cease to (a) make any use of any names or Trademarks that include the terms (i) “PHH “ or “PHH Corporation,” or any other Trademark used by any Seller or any of its Affiliates (including any Persons that have ceased to be Subsidiaries of any Seller), including those material families of Trademarks set forth on Section 4.12 of the PHH Disclosure Letter, and (ii) any names or Trademarks related thereto or containing or comprising the foregoing, including all contractions, abbreviations, derivations, translations or transliterations of these names and Trademarks or any names or Trademarks confusingly similar thereto, or likely to be confusingly similar thereto, or dilutive thereof (the “Marks”), and (b) hold themselves out as having any affiliation or association with the PHH Parties or any of its current or former Affiliates, provided, however, that PHH Parties hereby grant a limited, non-sublicenseable, non-transferable, fully paid-up, worldwide, royalty-free license to Buyer for the use of such approval.
Marks until the earlier of (dx) As promptly the date on which Buyer has ceased use of such Marks or (y) the date that is 120 days following the Final Closing Date. In furtherance thereof, as soon as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months 120 days following the Relevant Final Closing Date, Sapphire shallBuyer will remove, and shall cause its Affiliates tostrike over or otherwise obliterate all Marks from all Purchased Assets, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoicesincluding any vehicles, business cards, schedules, displays, stationery, technical guidelines packaging materials, promotional materials, manuals, forms, websites, email, computer software and other supplies materials and similar materials that incorporate the Business Trademarks, whether systems. Any temporary use by Buyer of any of the foregoing materials are held by Sapphire or Marks as permitted in this Section 4.12, from and after the Final Closing, is subject to its compliance with the quality control requirements and guidelines in effect for the Marks as of the Final Closing Date. Notwithstanding anything to the contrary in this Section 4.12 from and after the Closing, Buyer will not, and will cause each of its Affiliates not to, make statements or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire disseminate information suggesting that Buyer or any of its Affiliates filing any such documentation are affiliated with the PHH Parties with respect to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvalBusiness.
Appears in 1 contract
Samples: Asset Purchase Agreement (PHH Corp)
Intellectual Property Matters. Except as otherwise set forth in the SPAR Disclosure Letter:
(a) Buyer and The SPAR Disclosure Letter sets forth all patents, trademarks, trade names, service marks, copyrights, software, material trade secrets or material know-how owned or used in any material respect by any SPAR Marketing Company in the conduct of its Affiliates business (and Permitted Designees and their respective Affiliates) havethe "SPAR Intellectual Property"), excluding, however, all readily commercially available software programs licensed to a SPAR Marketing Company (for example, without limitation, Windows, Windows NT, MS Word, MS Excel, and after MS Explorer) ("Commercial Software"), which Commercial Software need not be set forth on such schedule. All of the Relevant SPAR Intellectual Property is (or will be as of the Effective Time) owned by or licensed to STM or one of the SPAR Marketing Companies free and clear of any liens (except insofar as a license or the restrictions thereunder may constitute a lien, and except for the SPAR Trademark Licenses and the Business Manager Agreement). At or before the Closing, (i) SIT and SMS will enter into non-exclusive perpetual royalty free licenses with STM respecting their use of the Transferred Entities shall have, no right, title, interest, license name "SPAR" and certain other trademarks and related rights owned or any other right whatsoever to be owned by STM (the "SPAR Trademark Licenses") such agreement to be substantially in the Seller Marks, except form attached as expressly set forth in this Section 5.08Exhibit C hereto, and none of Sellers or any of their Affiliates have pursuant (ii) SMF, SMS and SIT will enter into a Software Ownership Agreement with respect to the Transaction Documents assigned or licensed Internet job scheduling software (called "Business Manager") jointly developed and owned by them, such right, title, interest or other right agreement to Buyer, its Affiliates or be substantially in the Transferred Entities or to Permitted Designees and their respective Affiliatesform attached as Exhibit D hereto (the "Business Manager Agreement").
(b) As promptly as practicable after the Relevant ClosingThere are no ongoing royalty, Buyer shallcommission or similar arrangements, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marksno licenses, either by covering sublicenses or removing such signageagreements from any SPAR Marketing Company as a licensor, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only pertaining to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all current use of the Seller Marks andSPAR Intellectual Property, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or except as may be applicable under the control of BuyerCommercial Software, its Affiliates or the Transferred Entities (or Permitted Designees SPAR Trademark Licenses and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable LawManager Agreement.
(c) As promptly as practicableNo SPAR Marketing Company infringes upon or unlawfully or wrongfully uses any patent, but in no event later ninety (90) days following trademark, trade name, service mxxx, copyright or trade secret owned or claimed by any other person or entity. No action, suit, proceeding or investigation has been instituted or, to the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names knowledge of the Transferred Entities SPAR Marketing Companies, overtly threatened relating to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any, patent, trademark, trade name, service mxxx, copyright or trade secret formerly or currently used by any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation SPAR Marketing Company. None of the Transferred Entities’ assets SPAR Intellectual Property is subject to any outstanding order, decree or judgment. No SPAR Marketing Company has agreed to indemnify any person or entity for or against any infringement of or by the character of its activities is such as to require it SPAR Intellectual Property. Except for (i) the SPAR Intellectual Property licensed or to be licensed to SMS and SIT by STM, (ii) the common ownership of the software reflected in the Business Manager Agreement, and (iii) the ownership of and director and officer positions in the SPAR Marketing Companies, SGI, SMS, SIT, STM and the SPAR Parties, no present or qualified in such jurisdiction. If the approval former employee of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shallSPAR Marketing Company, and shall cause its Affiliates no person or entity other than SGI, SMS, SIT, STM and the Transferred Entities SPAR Parties (and Permitted Designees the SPAR Principals solely as the officers and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Dateshareholders thereof), and upon receipt of such approvaldirectly or indirectly owns or has any proprietary, shall file such documentation as promptly as practicablefinancial or other interest in, but in no event later than ninety (90) days following receipt of such approvalwhole or in part, any SPAR Intellectual Property.
(d) As promptly as practicable after All SPAR Intellectual Property in the Relevant Closing, Sapphire shall, form of computer software that is utilized by any SPAR Marketing Company in the operation of its business is capable of processing date data between and shall cause within the twentieth and twenty-first centuries or can be rendered capable of processing such data prior to the date necessary to avoid disruption of its Affiliates to, change all signage containing business by utilizing the Business Trademarks, either by covering employees of one or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use more of the Business Trademarks and, at Sapphire’s sole cost SPAR Marketing Companies in the normal course of business and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any by expenditure of not more than $100,000 in excess of the foregoing materials are held by Sapphire or its Affiliates or under cost of software purchased for reasons other than the control failure of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior existing software to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt be capable of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvalprocessing.
Appears in 1 contract
Intellectual Property Matters. The Parties acknowledge that there may be SCI Lease Collateral and Operating Subsidiaries Lease Collateral that contains the word “Station” or the phrase “Station Casinos” (athe “Station Marks”). Except as otherwise provided in Annex 1 and unless otherwise subsequently agreed to by the Parties, (i) Buyer PropCo is not being transferred any ownership interests in the Station Marks but only a temporary license to use such Station Marks and (ii) PropCo agrees to discontinue the use of the name “Station” or “Station Casinos” at the conclusion of the Interim License Period (as defined below) pursuant to the time frames and otherwise as provided in Annex 1. SCI acknowledges that the Station Marks and other non-exclusive marks not transferred to PropCo or its Designee may be temporarily used in respect of the Leased Hotels for a period (the “Interim License Period”) commencing at the onset of the Transition Period and continuing until the later of (i) the date on which SCI is no longer providing Transition Services under this Compromise and (ii) the date of termination for such license set forth in Annex 1 to this Compromise. In connection with such limited use, SCI hereby grants to each of PropCo and its Affiliates Designees a non-transferable, temporary, irrevocable, royalty-free and non-exclusive license (and Permitted Designees PropCo acknowledges such temporary use and their respective Affiliatessuch temporary license) haveto use the Station Marks and other non-exclusive marks described in Annex 1, which license, (i) shall concurrently terminate upon expiration of permission to use the Station Marks and other non-exclusive marks as provided in Annex 1, (ii) shall not confer upon PropCo or its Designee any other or additional rights or interests in such Station Marks or other non-exclusive marks and (iii) shall be subject to reasonable quality control provisions consistent with SCI’s current standards. PropCo acknowledges that, except for the foregoing license to use Station Marks and other non-exclusive marks provided herein, the sale to PropCo or its Designee pursuant to this Compromise of such goods as SCI Lease Collateral and Operating Subsidiaries Lease Collateral or otherwise that incorporate any Station Marks or non-exclusive marks shall not transfer to PropCo or its Designee any rights in the Station Marks or non-exclusive marks so incorporated, or otherwise. The Parties acknowledge that PropCo is not licensing back to SCI or SCI’s other affiliates any rights to use any of the exclusive marks to be transferred to PropCo pursuant to Annex 1, and SCI covenants, notwithstanding any retention of ownership of the Station Marks, from and after the Relevant Closingconclusion of the Transition Period, SCI will not use, and not allow its other subsidiaries and affiliates, to use the Transferred Entities shall havenames “Red Rock,” “Sunset”, no right, title, interest, license “Palace” and/or “Boulder” as an enterprise brand or trademark or trade name in connection with the operation of any other right whatsoever in the Seller Markscasinos or similar operations, except as expressly otherwise permitted on Annex 1. The Parties further acknowledge that some of the trademarks and other intellectual property to be sold to PropCo or its Designees hereunder may currently be subject to a lien in favor of the Prepetition Lenders. Each of the Parties hereto shall cooperate and use commercially reasonable efforts to obtain all Bankruptcy Court orders and approvals with respect to any such sale and SCI agrees not to oppose any motions to approve such sale except on the grounds that such proposed sale is inconsistent with the terms set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective AffiliatesCompromise.
(b) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Samples: Restructuring Support Agreement (Station Casinos Inc)
Intellectual Property Matters. (a) Buyer and its Affiliates (and Permitted Designees and their respective Affiliates) have, and after the Relevant Closing, the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective AffiliatesEntities.
(b) As promptly as practicable practicable, after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates)Entity. As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliatesin each case except as set forth in the Xxxxxx Re Transitional Trademark Agreement). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit the Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for the Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “word Xxxxxx Xxxxxx Xxxxxx,” and or any derivation, adaptation, combination or translation thereofthereof (except as set forth in the Xxxxxx Re Transitional Trademark Agreement), including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks and Licensed Xxxxxx Re Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and Licensed Xxxxxx Re Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks and Licensed Xxxxxx Re Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks and Licensed Xxxxxx Re Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval. Each Party covenants that neither it nor any of its Affiliates will use the Licensed Xxxxxx Re Trademarks, or any composite marks that are variations of the Licensed Xxxxxx Re Trademarks that include the elements “WILLIS” and “REINSURANCE” or the elements “WILLIS” and “RE” , in any form for any purpose except for the limited time period and purposes described herein and in the Xxxxxx Re Transitional Trademark License Agreement and as expressly set forth below. Notwithstanding the foregoing, nothing in this Section 5.08(d) shall prohibit either Party from (i) using the Licensed Xxxxxx Re Trademarks or such variations thereof in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Businesses or Retained Businesses, as applicable, or with Governmental Authorities, (ii) retaining or using for its or its Affiliates’ internal business purposes, records and other historical or archived documents containing or referencing the Licensed Xxxxxx Re Trademarks or such variations thereof, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Licensed Xxxxxx Re Trademarks or such variations thereof to the extent required by applicable Law. In addition, for the avoidance of doubt, nothing is this Section 5.08(d) shall preclude Sellers and their Affiliates from using the Licensed Xxxxxx Re Trademarks as required to perform their obligations under the Transition Services Agreement, or restrict Sellers and their Affiliates from using any other Trademarks, including any other Trademarks that include the “Xxxxxx” element.
Appears in 1 contract
Samples: Security and Asset Purchase Agreement (Willis Towers Watson PLC)
Intellectual Property Matters. (a) Buyer and its Affiliates (and Permitted Designees and their respective Affiliates) haveExcept as set forth below, and after the Relevant Closing, Purchaser, its Subsidiaries and the Transferred Entities Purchased Companies shall have, have no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyeruse the JCI Marks. Within one hundred and eighty (180) days following the Closing (the “Transition Period”), its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliates.
(b) As promptly as practicable after the Relevant Closing, Buyer Purchaser shall, and shall cause its Affiliates and respective Subsidiaries (including, after the Transferred Entities (and Permitted Designees and their respective AffiliatesClosing, the Purchased Subsidiaries) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6x) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue cease all use of the Seller JCI Marks, (y) take necessary actions to replace materials, including signage, stationery and promotional materials in any media (including digital and electronic) that bear the JCI Marks andand (z) cause each of its Affiliates whose corporate, at Buyer’s sole cost and expensetrade or other names include the JCI Marks, as applicable, to change its name to remove all Seller such JCI Marks from websitessuch name. Seller, marketing on behalf of itself and promotional materialsits Subsidiaries, invoiceshereby grants to Purchaser and the Purchased Subsidiaries a non-exclusive, business cardsnon-assignable license (which may be sublicensed only to their Affiliates and vendors, schedules, displays, stationery, technical guidelines distributors and other supplies service providers solely in connection with the operation of such sublicensing parties’ business, and similar materials that incorporate not for the Seller Marksindependent use of such sublicensee) during the Transition Period to use the JCI Marks solely in a manner consistent with past practice and customary “phase out” use. Notwithstanding anything to the contrary in this Agreement, whether any of the foregoing materials are held by Buyer, nothing shall restrict or limit Purchaser or its Affiliates or the Transferred Entities (Purchased Non-Consolidated Ventures from using or Permitted Designees and their respective Affiliates) or under referencing the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller JCI Marks in a non-trademark manner as is reasonably necessary for to factually describe or provide information regarding the historical reference in communications in connection with the administration relationship of the Business to Seller and its Affiliates or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided otherwise in a manner that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by would constitute “fair use” under applicable Law.
(cb) As promptly Effective as practicableof the Closing Date:
(i) Seller, but on behalf of itself and its Subsidiaries as of the Closing Date (other than the Purchased Subsidiaries) hereby grants to Purchaser and the Purchased Subsidiaries a non-exclusive, worldwide, perpetual, irrevocable, fully paid-up, royalty-free, non-transferable (except as set forth in no event later ninety this Section 5.9) and non-sublicensable (90except as set forth in this Section 5.9) days license under all Intellectual Property (other than Trademarks) that (x) is owned by Seller and the above Subsidiaries as of immediately following the Relevant Closing and (y) has been used in the Business as of the Closing Date or at any time during the twelve (12) month period prior to the Closing Date (the “Seller Licensed IP”), in each case, to use, reproduce, create derivative works of, modify, distribute, make, have made, sell, offer for sale, import or otherwise commercially exploit products and services solely in connection with the current and future operation of the Business or any reasonable evolutions or expansions thereof.
(ii) Purchaser, on behalf of itself and its Subsidiaries as of the Closing Date (including the Purchased Subsidiaries), hereby grants to Seller and its Subsidiaries a non-exclusive, worldwide, perpetual, irrevocable, fully paid-up, royalty-free, non-transferable (except as set forth in this Section 5.9) and non-sublicensable (except as set forth in this Section 5.9) license under the Owned Intellectual Property (other than Trademarks) that has been used by Seller or its Subsidiaries in the operation of any of their existing businesses (other than the Business) as of the Closing Date or at any time during the twelve (12) month period prior to the Closing Date, Buyer shallin each case, to use, reproduce, create derivative works of, modify, distribute, make, have made, sell, offer for sale, import or otherwise commercially exploit products and shall cause its services solely in connection with the current and future operation of their existing businesses or any reasonable evolutions or expansions thereof (other than the Business).
(iii) The above licenses may be sublicensed by the licensed parties to (x) their Affiliates and the Transferred Entities (and Permitted Designees and y) their respective Affiliates) tovendors, at Buyer’s sole cost service providers, distributors, retailers, customers and expenseend-users, file any documentation necessary as applicable, in each case with respect to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates Business (or Permitted Designees existing businesses or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and reasonable evolutions or expansions thereof (other than the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing DateBusiness), and upon receipt as applicable), but, with respect to clause (y) not with respect to other products or services of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalthird parties.
(div) As promptly The parties hereto intend and agree that, for purposes of Section 365(n) of the U.S. Bankruptcy Code (and any amendment thereto) and any equivalent Law in any foreign jurisdiction, each of the above licenses will be treated as practicable after a license to intellectual property (as defined in Section 101(35A) of the Relevant ClosingU.S. Bankruptcy Code).
(v) The above licenses are intended to run with the Intellectual Property subject thereto. Each licensing party may and must transfer this license, Sapphire shallin whole or in part, to the acquirer of any Intellectual Property owned by a party and subject thereto, and such acquirer shall cause assume its Affiliates toobligations in writing or by operation of law. Any such acquirer is deemed automatically bound by such license, change all signage containing regardless of whether such acquirer executes such written assumption. Further, each licensed party may transfer the license granted to such party, in whole or in part, to (i) an Affiliate or successor via merger that engages in the Business Trademarksor Seller’s or its Subsidiaries’ existing businesses or any reasonable evolutions or expansions thereof (other than the Business), either as applicable, as part of an internal reorganization or (ii) the acquirer of one or more businesses or business lines of such party covered by covering such license (or removing the entities owning the same), provided that, after any such signageacquisition, including any signage affixed the above licenses shall apply only to the party’s transferred businesses and not to any real property unrelated businesses of Sellers or their Affiliatesany such acquirer. As soon as is reasonably practicable following All other transfers of this license require the Relevant Closing, but prior written consent of the other party in no event later than two (2) months following the Relevant Closing Date, Sapphire shallits sole discretion, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvalvoid ab initio without same.
Appears in 1 contract
Samples: Stock and Asset Purchase Agreement (Johnson Controls International PLC)
Intellectual Property Matters. (a) Buyer hereby acknowledges and its Affiliates (and Permitted Designees and their respective Affiliates) have, and after the Relevant Closing, the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marksagrees that, except as expressly set forth in this Section 5.08Agreement or the Ancillary Agreements
(i) neither Buyer nor its Affiliates are acquiring, and the Purchased Assets do not include any right, title or interest in or to, or right to use, any (A) Seller Marks or (B) Seller Retained IP and (ii) prior to and following the Closing, none of Sellers Buyer or any of their its Affiliates shall have pursuant to the Transaction Documents assigned or licensed such any right, titletitle or interest in or to, interest or other right to Buyeruse, and Buyer covenants that, except as expressly set forth in this Agreement or any Ancillary Agreements, it and its Affiliates (including, after the Closing, in its use of the Purchased Assets or the Transferred Entities otherwise) will not hereafter adopt, use, apply to register or register, or authorize others to Permitted Designees and their respective Affiliatesadopt, use, apply to register or register, any Seller Marks or Seller Retained IP.
(b) Seller hereby acknowledges and agrees that, except as expressly set forth in this Agreement or the Ancillary Agreements, following the Closing, none of Seller or any of its Affiliates shall have any right, title or interest in or to, or right to use, and Seller covenants that, except as expressly set forth in this Agreement or any Ancillary Agreements, it and its 50213729.30 Affiliates will not hereafter adopt, use, apply to register or register, or authorize others to adopt, use, apply to register or register, any Business Owned IP, expressly including all Trademarks included therein.
(c) Except as otherwise set forth in this Agreement or an Ancillary Agreement, Seller and its Affiliates may, in its or their operation of the Excluded Business, utilize materials and assets (including stationery, forms and business cards) that bear the registered Trademarks in the Business Owned IP (the “Buyer Marks”) for up to one hundred and eighty (180) calendar days following the Closing Date. As promptly soon as practicable after following the Relevant Closing, but in no event later than one hundred and eighty (180) calendar days following the Closing Date, except as otherwise set forth in this Agreement or an Ancillary Agreement, Seller shall, and shall cause its Affiliates to, remove, strike over, or otherwise obliterate any Buyer Marks from all assets and materials owned or used by Seller or its Affiliates. Any use by Seller or any of its Affiliates under this Section 5.14(c) of any materials and assets that bear the Buyer Marks is subject to the use of such materials and assets in a form and manner, and with standards of quality, as in effect for such materials, assets and Buyer Marks as of the Closing Date, and all goodwill arising therefrom shall inure to the benefit of Buyer and its Affiliates. None of Seller or any of its Affiliates shall use the Buyer Marks in a manner that would reasonably be expected to reflect negatively on the Buyer Marks or on Buyer or its Affiliates or contest the ownership or validity of the Buyer Marks; provided that notwithstanding the foregoing, (i) Seller’s use of Buyer Marks in a manner substantially consistent with the use of the Buyer Marks by Seller or its Affiliates prior to the Closing Date, (ii) any event which originated prior to the Closing Date which becomes public following the Closing Date, and (iii) any negative publicity arising from Buyer’s or its Affiliates’ breach of any of this Agreement or any Ancillary Agreement shall, in each case, not be deemed to negatively reflect on the Buyer Marks or on Buyer or its Affiliates. Except for historical references permitted pursuant to Section 5.14(e), following the Effective Time, Seller shall, and shall cause its Affiliates to, not hold itself out as having any affiliation with Buyer or any of its Affiliates. Each of the parties hereto acknowledges and agrees that the remedy at Law for any breach of the requirements of this Section 5.14(c) would be inadequate and agrees and consents that without intending to limit any additional remedies that may be available, Buyer and its Affiliates shall be entitled to specific performance of the terms hereof and immediate injunctive relief and other equitable relief, without the necessity of proving the inadequacy of money damages as a remedy, and the parties hereto further hereby agree to waive any requirement for the securing or posting of bond or other undertaking, in any action which may be brought to enforce any of the provisions of this Section 5.14(c). To the extent Seller or its Affiliates is granted a license to any Buyer Mark pursuant to the terms of an Ancillary Agreement, the terms of such license within such Ancillary Agreement shall control over the terms of this Section 5.14. Notwithstanding anything to the contrary herein, for the avoidance of doubt, Seller and its applicable Affiliates shall be permitted to administer their Policies as of the Closing Date notwithstanding that such Policies contain any Buyer Marks, including referring to such Policies nominally in communications to the applicable policyholders, for so long as such Policies are required to bear the Buyer Marks by applicable Law.
(d) Except as otherwise set forth in this Agreement or an Ancillary Agreement, Buyer and its Affiliates may, solely in its or their operation of the Business and use of the Purchased Assets, utilize materials and assets (including stationery, forms and business 50213729.30 cards) that bear the Seller Marks that are used in the Business as of the Closing Date for up to one hundred and eighty (180) calendar days following the Closing Date, unless and solely to the extent a longer period of use is required under applicable Law, in which case, Buyer and its Affiliates shall use commercially reasonable efforts to make all necessary filings with all relevant Governmental Entities such that Buyer and its Affiliates are no longer required to use the Seller Marks and Buyer and its Affiliates may continue to use such Seller Marks until such necessary filings have been accepted by such Governmental Entities such that Buyer and its Affiliates are no longer required to use the Seller Marks. As soon as practicable following the Closing, but in no event later than one hundred and eighty (180) calendar days following the Closing Date, except as otherwise set forth in this Agreement or an Ancillary Agreement, Buyer shall, and shall cause its Affiliates to, remove, strike over, or otherwise obliterate any Seller Marks that are listed on Section 5.14(d) of the Seller Disclosure Letter from all assets and materials owned or used by Buyer or its Affiliates, unless and solely to the Transferred extent a longer period of use is required under applicable Law, in which case, Buyer and its Affiliates shall use commercially reasonable efforts to make all necessary filings with all relevant Governmental Entities (such that Buyer and Permitted Designees its Affiliates are no longer required to use the Seller Marks and their respective Affiliates) Buyer and its Affiliates may continue to change all signage containing use such Seller Marks until such necessary filings have been accepted by such Governmental Entities such that Buyer and its Affiliates are no longer required to use the Seller Marks, either . Any use by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, Buyer or any Transferred Entity (or of Permitted Designees its Affiliates under this Section 5.14(d) of any materials and their respective Affiliates). As soon assets that bear the Seller Marks is subject to the use of such materials and assets in a form and manner, and with standards of quality, as is reasonably practicable following in effect for such materials, assets and Seller Marks as of the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only all goodwill arising therefrom shall inure to the extent thatbenefit of Seller and its Affiliates. None of Buyer or any of its Affiliates shall use the Seller Marks in a manner that would reasonably be expected to reflect negatively on the Seller Marks or on Seller or its Affiliates or contest the ownership or validity of the Seller Marks; provided that notwithstanding the foregoing, (i) Buyer’s use of Seller Marks in a longer period is required manner substantially consistent with the use of the Seller Marks by Seller or its Affiliates prior to the Closing Date, (ii) any event which originated prior to the Closing Date which becomes public following the Closing Date, and (iii) any negative publicity arising from Seller’s or its Affiliates’ breach of any of this Agreement or any Ancillary Agreement shall, in each case, not be deemed to negatively reflect on the Seller Marks or on Seller or its Affiliates. Except for historical references permitted pursuant to Section 5.08(c) below or otherwise by relevant Governmental Authorities5.14(e), following the Effective Time, Buyer shall, and shall cause its Affiliates to, not hold itself out as having any affiliation with Seller or any of its Affiliates. Each of the parties hereto acknowledges and agrees that the remedy at Law for any breach of the requirements of this Section 5.14(d) would be inadequate and agrees and consents that without intending to limit any additional remedies that may be available, Seller and its Affiliates shall be entitled to specific performance of the terms hereof and immediate injunctive relief and other equitable relief, without the necessity of proving the inadequacy of money damages as a remedy, and the Transferred Entities (and Permitted Designees and their respective Affiliates) toparties hereto further hereby agree to waive any requirement for the securing or posting of bond or other undertaking, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether in any action which may be brought to enforce any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control provisions of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliatesthis Section 5.14(d). Notwithstanding To the foregoing, nothing in this Section 5.08 shall prohibit extent Buyer or its Affiliates (or Permitted Designees is granted a license to any Seller Mark pursuant to the terms of an Ancillary Agreement, the terms of such license within such Ancillary Agreement shall control over the terms of this Section 5.14. Notwithstanding anything to the contrary herein, for the avoidance of doubt, Buyer and their respective Affiliates) from (i) using its applicable Affiliates shall be permitted to administer the In-Scope Policies as of the Closing Date in accordance with the Ancillary 50213729.30 Agreements notwithstanding that such In-Scope Policies contain any Seller Marks, including referring to such In-Scope Policies nominally in communications to the applicable policyholders, for so long as such In-Scope Policies are required to bear the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(ce) As promptly Nothing in this Section 5.14 shall preclude either party or their Affiliates from making, at any time, any reference to the Seller Marks or the Business Owned IP, as practicableapplicable, but (i) in no event later ninety internal or archived historical, Tax, employment or similar records or in connection with offering memoranda, prospectuses, registration statements or similar documents circulated to prospective investors or financing sources (90ii) days following as otherwise reasonably necessary or appropriate to describe the Relevant Closing Date, Buyer shall, historical relationship of Seller and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the Business or as otherwise required by applicable Governmental Authority Law, or (iii) as permitted by the principles of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, fair use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalunder applicable Law.
(df) As promptly as practicable after the Relevant Closing, Sapphire shall, Buyer and shall cause its Affiliates to, change shall indemnify and hold harmless Seller and its Affiliates for all signage containing Losses arising from or relating to the Business Trademarks, either by covering or removing such signagematters described in this Section 5.14, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire Buyer or any of its Affiliates filing any such documentation of the Seller Marks (and materials and assets that bear the Seller Marks) pursuant to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing DateSection 5.14(d), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Samples: Master Transaction Agreement (Arch Capital Group Ltd.)
Intellectual Property Matters. (a) Buyer Section 3.18(a) of the Disclosure Schedules contains a true and its Affiliates complete list of all (i) issuances, registrations and Permitted Designees applications for registration or patent of Intellectual Property, (ii) material unregistered Marks, (iii) Software (other than mass-marketed software with a replacement cost and/or annual license fee of less than $25,000), in each case used or held for use by the Systems, indicating for each whether such item is owned or licensed by the Seller. Except for the Excluded Marks and their respective Affiliatesas otherwise set forth on Section 3.18(a) have, and after of the Relevant ClosingDisclosure Schedules, the Transferred Entities shall haveIntellectual Property constitutes all Intellectual Property necessary for or used in the conduct of the business of the Systems. The Seller owns, no free and clear of all Encumbrances, all right, titletitle and interest in, interestto and under, or has the right to use pursuant to a license set forth on Section 3.15 of the Disclosure Schedules, the Transferred Intellectual Property. Each item of Transferred Intellectual Property is valid, subsisting and enforceable. The Seller has taken all action necessary, commercially reasonable or any other right whatsoever customary in the Seller Marks, except as expressly set forth in this Section 5.08, industry to maintain and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or protect the Transferred Entities or to Permitted Designees and their respective AffiliatesIntellectual Property.
(b) As promptly Except as practicable after set forth on Section 3.18(b) of the Relevant ClosingDisclosure Schedules, Buyer shall(i) to the Knowledge of the Seller, and shall cause its Affiliates the operation of the Business does not infringe upon, misappropriate or otherwise violate any Intellectual Property of any other Person and the Transferred Entities Seller has not received any notices regarding any of the foregoing (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed demands or offers to license any real property of BuyerIntellectual Property from any other Person), its Affiliates(ii) there is no Action that was made since the Acquisition Date, or any Transferred Entity (or to the Knowledge of Permitted Designees and their respective Affiliates). As soon as the Seller, from the date which is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only years prior to the extent that) a longer period date hereof until the Acquisition Date or is required by Section 5.08(c) below presently pending contesting the validity, use, ownership or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use enforceability of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by BuyerTransferred Intellectual Property, its Affiliates or and to the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration Knowledge of the Business or with Governmental AuthoritiesSeller, (ii) retaining or using no such Action is threatened nor is there any reasonable basis for Buyer’s or its Affiliates’ (or Permitted Designees any such Action, and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using to the Knowledge of the Seller, no Person is infringing, misappropriating or otherwise violating any Transferred Intellectual Property. Immediately after the Closing, all of the Transferred Intellectual Property shall be owned and available for use by the Buyer on terms and conditions identical to those under which the Seller Marks owned or used such Intellectual Property immediately prior to the extent required by applicable LawClosing.
(c) As promptly as practicableThe Seller owns all right, but title and interest in no event later ninety (90) days following and to all Intellectual Property developed by any present or former employee or independent contractor in the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names course of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination his or translation thereof, including by making filings her relationship with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval Seller, free of any Governmental Authority is needed prior to Buyer restrictions or its Affiliates (obligations on the use or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt ownership of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalIntellectual Property whatsoever.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Samples: Asset Purchase Agreement (Atlantic Broadband Finance, LLC)
Intellectual Property Matters. (a) Seller is not conveying ownership rights or granting Buyer and or any of its Affiliates (including the Company after the Closing) a license to use the “Aetna” name or any confusingly similar variation thereof, or any other name, registered or unregistered Trademarks, industrial designs or other indicators of source or origin owned by Seller or any of its Affiliates (the “Retained Marks”). Buyer acknowledges and Permitted Designees agrees that neither it nor any of its Affiliates shall acquire any goodwill, rights or other benefits arising from the use of any Retained Xxxx and that all such goodwill, rights and benefits shall accrue exclusively to Seller and its Affiliates. Except as expressly provided in this Section 6.10 or required by Applicable Law, Buyer, the Company and their respective AffiliatesAffiliates may not in any way: (i) have, and after the Relevant ClosingClosing Effective Time, identify, or suggest, any affiliation between either Buyer or the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers Company or any of their respective Affiliates have pursuant to on the Transaction Documents assigned one hand, and Seller or licensed such right, title, interest or other right to Buyer, any of its Affiliates on the other hand; or (ii) use the Transferred Entities or to Permitted Designees and their respective AffiliatesRetained Marks.
(b) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event Buyer shall cause the Company to take all such actions (including making filings, obtaining approvals and amending its certificate of incorporation) as shall be necessary to change its name to a new name that does not include Retained Marks (the “New Name”). In furtherance of the foregoing, not later than six thirty (630) months days following the Relevant Closing Date, unless (and only Buyer shall change its corporate name to the extent thatNew Name at the Office of the Secretary of State of Connecticut and the Connecticut Insurance Department. Not later than one hundred and twenty (120) a longer period days following the date the New Name is required approved by Section 5.08(c) below the last of the Office of the Secretary of State of Connecticut, the Connecticut Insurance Department and the Illinois Department of Insurance (in the event the Company is redomesticated from Connecticut to Illinois prior to or otherwise by relevant Governmental Authoritiesfollowing the Closing, such act, the “Redomestication”), Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue Company to make all use filings with any applicable Governmental Authorities in the Authorized States to change the corporate name of the Seller Marks and, at Buyer’s sole cost Company and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate update the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded Insurance Licenses in the ordinary course of businessAuthorized States, or (iii) using in each case, to reflect the Seller Marks to the extent required by applicable LawNew Name.
(c) As promptly as practicableNotwithstanding the foregoing, but the Company may use the Retained Marks solely in no event later ninety connection with (90i) days following filings submitted to Governmental Authorities in the Relevant Closing DateAuthorized States and (ii) the conduct of the Business in each Authorized State, Buyer shalluntil, and shall cause its Affiliates with respect to each such Authorized State, the corporate name of the Company has been changed and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalInsurance Licenses have been updated.
(d) As promptly as practicable Promptly after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including in any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable event not later than thirty (30) days following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and Buyer shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior Company to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing apply for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvala new NAIC Group Code number.
Appears in 1 contract
Samples: Stock Purchase Agreement
Intellectual Property Matters. (a) Buyer For clarity, from and its after Closing and except as expressly provided in Section 6.10(c), Sellers shall, and shall cause their Affiliates to, (i) cease any and Permitted Designees all use or other exploitation of any and all Seller Intellectual Property and (ii) keep strictly confidential and not disclose to any Person (nor use for any purpose) any Trade Secrets included in Seller Intellectual Property (including any source code for proprietary Software included in Seller Intellectual Property). For purposes of clarity, nothing in this Section 6.1 shall preclude any uses of the Seller Intellectual Property by Sellers or their respective Affiliates) haveAffiliates that are required or otherwise not prohibited under applicable Law, and after the Relevant Closing, the Transferred Entities shall have, no right, title, interest, license or including uses of references to any other right whatsoever Marks included in the Seller MarksIntellectual Property in historical, except as expressly set forth in this Section 5.08tax, regulatory and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliatessimilar records.
(b) As promptly as practicable At Closing, Sellers shall, to the extent permissible, assign and transfer to Purchaser all rights, title and interest in and to all Domain Names and Social Media included in the Acquired Assets.
(c) To the extent any Marks included in the Acquired Assets are reasonably required to be used in connection with the completion of the wind-down of Sellers’ estate, Purchaser hereby grants to each Seller and its Affiliates a limited, royalty-free, fully paid-up, worldwide, non-exclusive license to continue to use and display such Marks in substantially the same manner that such Marks were used at Closing until the completion of the wind-down of Sellers’ estate (the “Wind-Down End Date”) solely to the extent reasonably necessary for the wind-down of Sellers’ and their respective Affiliates’ remaining corporate operations.
(d) From and after the Relevant Closing, Buyer Sellers and its designees shall be permitted and entitled until the Wind-Down End Date to use and access the xxxxxxxxxx.xxx email domain as an email server (and to use an access the email addresses that incorporate xxxxxxxxxx.xxx) solely to the extent necessary for the wind-down of Seller’s estate. Purchaser shall, and shall cause its their Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost reasonably cooperate with and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications assist Sellers in connection with the administration of the Business or with Governmental Authorities, foregoing (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) toincluding, at Buyera Seller’s sole cost and expenserequest, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing forwarding email received for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Dateaddresses to other email addresses designated by Sellers), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Samples: Asset Purchase Agreement (LL Flooring Holdings, Inc.)
Intellectual Property Matters. (a) Buyer and its Affiliates (and Permitted Designees and their respective Affiliates) have, and after the Relevant Closing, the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliates.
(b) As promptly as practicable after the Relevant Closing, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety ten (9010) days following Business Days after the Relevant Closing Date), Buyer shall cause each of the Purchased Entities to amend its organizational documents, and upon receipt of such approvalany trade names, D/B/As or the like, to change its corporate names and trade names to corporate names and trade names that do not include any Excluded Names or any Trademark confusingly similar thereto. Following the Closing, Buyer shall file such documentation as promptly as practicable, but in cause the Purchased Entities to (i) no event later than ninety three (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (23) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all cease to make any use of or to authorize any third party to make any use of any Excluded Names or any Trademarks confusingly similar thereto (except as permitted by this Section 6.5(a)) and (ii) no later than twelve (12) months following the Business Trademarks andClosing Date, at Sapphire’s sole cost to remove, strike over, or otherwise obliterate all Excluded Names from all existing assets and expenseother existing materials of the Purchased Entities, remove all Business Trademarks from websites, marketing and promotional materials, invoicesincluding any vehicles, business cards, schedules, stationery, packaging materials, displays, stationerysigns, technical guidelines promotional materials, manuals, forms, websites, email, computer software and other supplies materials and similar systems (provided that following the three (3) month anniversary of the Closing Date, Buyer shall not create any new assets or materials that incorporate using the Business Trademarks, whether Excluded Names (except as permitted by this Section 6.5(a)). Any use by the Purchased Entities of any of the foregoing Excluded Names as permitted in this Section 6.5 is subject to their use of the Excluded Names in a form and manner, and with standards of quality, of that in effect for the Excluded Names as of the Closing Date. Notwithstanding anything to the contrary in this Section 6.5(a), Buyer shall not be in violation of this Section 6.5(a) by reason of: (x) the appearance of the Excluded Names in or on any written materials or assets of the Purchased Entities or the Business that are held by Sapphire used for internal purposes only (provided that Buyer uses commercially reasonable efforts to remove such appearances of the Excluded Names); (y) the appearance of the Excluded Names in or its on any third party’s publications, marketing materials, brochures, instruction sheets, equipment or products that the Sellers or any of their Affiliates 40 distributed in the ordinary course of business consistent with past practice or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed pursuant to a Contract prior to Sapphire the Closing, and that generally are in the public domain, or any other similar uses by any such third party over which Buyer and the Purchased Entities have no control; or (z) the non-prominent use by Buyer or any of its Affiliates filing any such documentation of the Excluded Names in an accurate and non-trademark manner solely for purposes of conveying to effectuate customers or the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable general public that ownership of the Purchased Entities or the Business has changed.
(including filing for such approval as promptly as practicable and in no event later than b) During the two (2) months year period following the Relevant Closing Date, if (i) Buyer identifies in writing to the Sellers any Intellectual Property (excluding Trademarks) owned by the Sellers and their Affiliates that was used in and necessary for the conduct of the Business as of the Closing and was not included in the Purchased Assets, owned by the Purchased Entities or provided to the Purchased Entities under the Transition Services Agreement, or (ii) the Sellers identify in writing to Buyer any Intellectual Property (excluding Trademarks) included in the Purchased Assets or owned by the Purchased Entities that was used in and necessary for the conduct of the Excluded Businesses as of the Closing, then the Party receiving such notice shall use commercially reasonable efforts to grant to the other Party a perpetual, royalty-free, sublicenseable license to use such Intellectual Property in the conduct of the Business (with respect to Buyer, if Buyer so requests such license) or the Excluded Businesses (with respect to the Sellers, if the Sellers so request such license). Notwithstanding anything to the contrary, Buyer and upon receipt the Sellers agree that, unless otherwise required by applicable Law, (x) the rights under any license with respect to any Intellectual Property described in clause (i) of this Section 6.5(b) shall be treated as a Purchased Asset under this Agreement, (y) the Purchased Asset relating to any license described in clause (ii) of this Section 6.5(b) shall be treated as having been purchased by Buyer and sold by the applicable Seller on the Closing Date subject to such approval, license and (z) neither any Party nor any of its Affiliates shall file such documentation as promptly as practicable, but take any position inconsistent with the treatment described in no event later than two (2) months following receipt of such approval.this sentence. Section 6.6
Appears in 1 contract
Samples: Purchase Agreement
Intellectual Property Matters. (a) Buyer For clarity, from and its after Closing and except as expressly provided in Section 6.10(c), Sellers shall, and shall cause their Affiliates to, (i) cease any and Permitted Designees all use or other exploitation of any and all Seller Intellectual Property and (ii) keep strictly confidential and not disclose to any Person (nor use for any purpose) any Trade Secrets included in Seller Intellectual Property (including any source code for proprietary Software included in Seller Intellectual Property). For purposes of clarity, nothing in this Section 6.1 shall preclude any uses of the Seller Intellectual Property by Sellers or their respective Affiliates) haveAffiliates that are required or otherwise not prohibited under applicable Law, and after the Relevant Closing, the Transferred Entities shall have, no right, title, interest, license or including uses of references to any other right whatsoever Marks included in the Seller MarksIntellectual Property in historical, except as expressly set forth in this Section 5.08tax, regulatory and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliatessimilar records.
(b) As promptly as practicable At Closing, Sellers shall, to the extent permissible, assign and transfer to Purchaser all rights, title and interest in and to all Domain Names and Social Media included in the Acquired Assets.
(c) To the extent any Marks included in the Acquired Assets are reasonably required to be used in connection with the completion of the wind-down of Sellers’ estate, Purchaser hereby grants to each Seller and its Affiliates a limited, royalty-free, fully paid-up, worldwide, non-exclusive license to continue to use and display such Marks in substantially the same manner that such Marks were used at Closing until the completion of the wind-down of Sellers’ estate (the “Wind-Down End Date”) solely to the extent reasonably necessary for the wind-down of Sellers’ and their respective Affiliates’ remaining corporate operations.
(d) From and after the Relevant Closing, Buyer Sellers and its designees shall be permitted and entitled until the Wind-Down End Date to use and access the llflooring.com email domain as an email server (and to use an access the email addresses that incorporate llflooring.com) solely to the extent necessary for the wind-down of Seller’s estate. Purchaser shall, and shall cause its their Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost reasonably cooperate with and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications assist Sellers in connection with the administration of the Business or with Governmental Authorities, foregoing (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Law.
(c) As promptly as practicable, but in no event later ninety (90) days following the Relevant Closing Date, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) toincluding, at Buyera Seller’s sole cost and expenserequest, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing forwarding email received for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Dateaddresses to other email addresses designated by Sellers), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approval.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approval.
Appears in 1 contract
Intellectual Property Matters. (a) Seller is not conveying ownership rights or granting Buyer and or any of its Affiliates (including the Company after the Closing) a license to use the “Unigard” name or any variation thereof, or any other name, registered or unregistered trademarks, industrial designs or other identifying elements of Seller or any of its Affiliates (the “Retained Marks”). Buyer acknowledges and Permitted Designees agrees that neither it nor any of its Affiliates shall acquire any goodwill, rights or other benefits arising from the use of any Retained Xxxx and that all such goodwill, rights and benefits shall accrue exclusively to Seller and its Affiliates. Except as expressly provided in this Section 6.10, Buyer, the Company and their respective AffiliatesAffiliates may not in any way: (i) have, and after the Relevant ClosingClosing Effective Time, identify, or suggest, any affiliation between either Buyer or the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers Company or any of their respective Affiliates have pursuant to on the Transaction Documents assigned one hand, and Seller or licensed such right, title, interest or other right to Buyer, any of its Affiliates on the other hand; or (ii) use the Transferred Entities or to Permitted Designees and their respective AffiliatesRetained Marks.
(b) As promptly soon as practicable after following the Relevant Closing, Buyer shall, and shall cause the Company to take all such actions (including making filings, obtaining approvals and amending its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliatescertificate of incorporation) as shall be necessary to change all signage containing its name to a new name that does not include the Seller Marks, either by covering “Unigard” name or removing such signage, including any signage affixed to any real property of Buyer, its Affiliatesvariation thereof, or any Transferred Entity other name of Seller or any of its Affiliates (or of Permitted Designees and their respective Affiliatesthe “New Name”). As soon as is reasonably practicable In furtherance of the foregoing, not later than thirty (30) days following the Relevant ClosingClosing Date, but in no event Buyer shall change its corporate name to the New Name at the OCI. Not later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause the Company to update its Affiliates and Insurance Licenses to reflect the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue New Name in all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using the Seller Marks in a non-trademark manner as is reasonably necessary for historical reference in communications in connection with the administration of the Business or with Governmental Authorities, (ii) retaining or using for Buyer’s or its Affiliates’ (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable LawAuthorized States.
(c) As promptly as practicableNotwithstanding the foregoing, but the Company may use the “Unigard” name or any variation thereof (i) until the date that is one (1) month after the Closing Date in no event later ninety (90) days following connection with filings submitted to the Relevant Closing Date, Buyer shallOCI, and shall cause its Affiliates and (ii) until the Transferred Entities date that is six (and Permitted Designees and their respective Affiliates6) to, at Buyer’s sole cost and expense, file any documentation necessary months after the Closing Date in connection with filings submitted to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction Authorities in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalall other Authorized States.
(d) As promptly as practicable Promptly after the Relevant Closing, Sapphire shall, and shall cause its Affiliates to, change all signage containing the Business Trademarks, either by covering or removing such signage, including in any signage affixed to any real property of Sellers or their Affiliates. As soon as is reasonably practicable event not later than thirty (30) days following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and Buyer shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at SapphireCompany to be associated with Buyer’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire or any of its Affiliates filing any such documentation to effectuate the foregoing, Sapphire shall use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than two (2) months following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than two (2) months following receipt of such approvalexisting NAIC Group Code number.
Appears in 1 contract
Samples: Stock Purchase Agreement
Intellectual Property Matters. (a) Buyer HDI and its Affiliates Subsidiaries own, are licensed or otherwise possess valid and legally enforceable rights to use all material items of Intellectual Property (as defined in Section 4.15(k)) used in or reasonably necessary to conduct the business of HDI and Permitted Designees and their respective Affiliates) have, and after its Subsidiaries as presently conducted (the Relevant Closing, the Transferred Entities shall have, no right, title, interest, license or any other right whatsoever in the Seller Marks, except as expressly set forth in this Section 5.08, and none of Sellers or any of their Affiliates have pursuant to the Transaction Documents assigned or licensed such right, title, interest or other right to Buyer, its Affiliates or the Transferred Entities or to Permitted Designees and their respective Affiliates“HDI Intellectual Property”).
(b) As promptly as practicable after The HDI Disclosure Letter sets forth an accurate and complete list of all of the Relevant ClosingHDI Intellectual Property that is owned by HDI or any of its Subsidiaries (collectively, Buyer shallthe “Owned Intellectual Property”). The HDI Disclosure Letter sets forth with respect to the Owned Intellectual Property an accurate and complete list (by name and owner, and shall cause its Affiliates where applicable, registration number and the Transferred Entities (jurisdiction of registration, application, certification and Permitted Designees and their respective Affiliatesfiling) to change all signage containing the Seller Marks, either by covering or removing such signage, including any signage affixed to any real property of Buyer, its Affiliates, or any Transferred Entity (or of Permitted Designees and their respective Affiliates). As soon as is reasonably practicable following the Relevant Closing, but in no event later than six (6) months following the Relevant Closing Date, unless (and only to the extent that) a longer period is required by Section 5.08(c) below or otherwise by relevant Governmental Authorities, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, discontinue all use of the Seller Marks and, at Buyer’s sole cost and expense, remove all Seller Marks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Seller Marks, whether any of the foregoing materials are held by Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates) or under the control of Buyer, its Affiliates or the Transferred Entities (or Permitted Designees and their respective Affiliates). Notwithstanding the foregoing, nothing in this Section 5.08 shall prohibit Buyer or its Affiliates (or Permitted Designees and their respective Affiliates) from (i) using all patents and patent applications, invention disclosures, registered and unregistered trademarks and service marks (including Internet domain names) and applications for the Seller Marks in a non-trademark manner as is reasonably necessary same, trade names, corporate names and copyright registrations and applications, indicating for historical reference in communications in connection with each, where applicable, the administration of the Business jurisdiction, registration number (or with Governmental Authorities, application number) and date issued (or date filed) and (ii) retaining or using for Buyer’s or its Affiliates’ all material computer software items (or Permitted Designees and their respective Affiliates’) internal business purposes, records and other historical or archived documents containing or referencing the Seller Marks, provided that such materials are rebranded in the ordinary course of business, or (iii) using the Seller Marks to the extent required by applicable Lawthan commercially-available software items).
(c) As promptly The HDI Disclosure Letter identifies all material licenses and other agreements under which HDI or any of its Subsidiaries have granted licenses or other rights in any of the Owned Intellectual Property to any person or entity, accurate and complete copies of which have been made available to Nipro. Except as practicableset forth in such licenses or other agreements, but HDI and its Subsidiaries are the sole and exclusive owners of all right, title and interest in no event later ninety (90) days following and to the Relevant Closing DateOwned Intellectual Property, Buyer shallincluding ownership of all pending and accrued causes of action for infringement and misappropriation and the sole and exclusive right to bring actions for infringement and misappropriation. Immediately after the Closing, the Surviving Corporation and its Subsidiaries will be the sole and exclusive owners of, will have valid title to, and shall cause will have the full right to use, license and transfer the Owned Intellectual Property in the same manner and on the same terms and conditions that HDI and its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, at Buyer’s sole cost and expense, file any documentation necessary to change the names of the Transferred Entities to remove the words “Xxxxxx Xxxxxx Xxxxxx,” and any derivation, adaptation, combination or translation thereof, including by making filings with the applicable Governmental Authority of each jurisdiction in which the ownership or the operation of the Transferred Entities’ assets or the character of its activities is such as to require it to be licensed or qualified in such jurisdiction. If the approval of any Governmental Authority is needed Subsidiaries had immediately prior to Buyer or its Affiliates (or Permitted Designees or their respective Affiliates) filing any such documentation, Buyer shall, and shall cause its Affiliates and the Transferred Entities (and Permitted Designees and their respective Affiliates) to, use reasonable best efforts to obtain such approval as promptly as practicable (including filing for such approval as promptly as practicable and in no event later than ninety (90) days following the Relevant Closing Date), and upon receipt of such approval, shall file such documentation as promptly as practicable, but in no event later than ninety (90) days following receipt of such approvalClosing.
(d) As promptly as practicable after the Relevant Closing, Sapphire shall, The HDI Disclosure Letter sets forth an accurate and shall cause its Affiliates to, change complete list of all signage containing the Business Trademarks, either by covering material agreements with any third party that grant licenses or removing such signage, including any signage affixed sublicenses to any real property of Sellers or their Affiliates. As soon as is reasonably practicable following the Relevant Closing, but in no event later than two (2) months following the Relevant Closing Date, Sapphire shall, and shall cause its Affiliates to, discontinue all use of the Business Trademarks and, at Sapphire’s sole cost and expense, remove all Business Trademarks from websites, marketing and promotional materials, invoices, business cards, schedules, displays, stationery, technical guidelines and other supplies and similar materials that incorporate the Business Trademarks, whether any of the foregoing materials are held by Sapphire or its Affiliates or under the control of Sapphire or its Affiliates. If the approval of any Governmental Authority is needed prior to Sapphire otherwise authorize HDI or any of its Affiliates filing Subsidiaries to use Intellectual Property (collectively, the “Third Party Intellectual Property”), including a list of the material Third Party Intellectual Property. Except as identified in the HDI Disclosure Letter, (i) HDI and its Subsidiaries have not granted any material sublicense or similar right with respect to any such documentation Third Party Intellectual Property, and (ii) no third party that has licensed Third Party Intellectual Property to effectuate HDI or any of its Subsidiaries has by contract ownership rights or license rights to improvements or derivative works made by or for HDI or any of its Subsidiaries based on such Third Party Intellectual Property.
(e) The Owned Intellectual Property is free of all material payment obligations and other Liens and is not subject to any material judgment, decree, order or other limitation or restriction on use or otherwise. No person or entity has any rights in any material item of Owned Intellectual Property that could cause any reversion or renewal of rights in favor of that person or entity or termination of any rights of HDI or its Subsidiaries in such Owned Intellectual Property. The HDI Disclosure Letter includes a description in reasonable detail of all claims, actions, suits, proceedings, judgments, decrees or orders pending or, to the foregoingknowledge of HDI, Sapphire shall threatened as of the date of this Agreement that prohibit or restrict HDI or any of its Subsidiaries from carrying on its business, or any portion of it, anywhere in the world or from any use reasonable best efforts of the HDI Intellectual Property. Except for matters that, individually or in the aggregate, have not had and would not reasonably be expected to obtain such approval as promptly as practicable have a HDI Material Adverse Effect, there is no pending or, to the knowledge of HDI, threatened claim, action, suit or proceeding, or any judgment, decree or order, that prohibits or restricts HDI or any of its Subsidiaries from using HDI Intellectual Property in its business, or any portion of it, anywhere in the world.
(including filing f) Except for such approval as promptly as practicable matters that, individually or in the aggregate, have not had and would not reasonably be expected to have a HDI Material Adverse Effect (i) all patents and registered and unregistered trademarks, service marks and copyrights included in the Owned Intellectual Property, to HDI’s knowledge, are valid and subsisting under applicable law, rules and regulation for those respective categories of Intellectual Property, (ii) to HDI’s knowledge, no event later than two has occurred or circumstance exists that could render any of the Owned Intellectual Property invalid or unenforceable, (2iii) months following to HDI’s knowledge, all necessary registration, maintenance and renewal fees in connection with each item of Owned Intellectual Property that are due and payable have been made and all necessary documents and certificates have been filed with the Relevant Closing Date)relevant patent, copyright, trademark or other authorities for purposes of maintaining such Owned Intellectual Property, (iv) there are no actions that must be taken within 90 days after the date of this Agreement for the purposes of maintaining, perfecting, preserving or renewing any Owned Intellectual Property, including the payment of any registration, maintenance, annuity or renewal fees or the filing of any documents, applications or certificates, and upon receipt (v) all patent, trademark, service xxxx and copyright applications with respect to the Owned Intellectual Property have been duly filed and maintained. HDI has made available to Nipro and its representatives all files requested by them with respect to patents, patent applications and invention disclosures, each as amended to date, included in the Owned Intellectual Property, all files with respect to trademark registrations and applications, each as amended to date, included in the Owned Intellectual Property and accurate and complete copies of all maintenance documents and all other written documentation evidencing ownership and prosecution of each such item.
(g) Neither HDI nor any of its Subsidiaries has agreed to indemnify, defend or otherwise hold harmless any other person or entity with respect to any losses, damages, fines or expenses resulting or arising from the HDI Intellectual Property.
(h) Except for matters that, individually or in the aggregate, have not had and would not reasonably be expected to have a HDI Material Adverse Effect, to the knowledge of HDI, no person or entity has used, disclosed, infringed or misappropriated any of the Owned Intellectual Property, other than authorized uses and disclosures in accordance with the licenses and other agreements described in the HDI Disclosure Letter. Neither HDI nor any of its Subsidiaries has commenced or threatened, or is presently contemplating commencing or threatening, any claim, action, suit or proceeding against any person or entity for infringement or misappropriation of the HDI Intellectual Property or breach of any license or other agreement relating to the HDI Intellectual Property.
(i) Except for matters that, individually or in the aggregate, have not had and would not reasonably be expected to have a HDI Material Adverse Effect, to HDI’s knowledge, neither the conduct of the businesses of HDI and its Subsidiaries nor their creation, use, license or other transfer of the HDI Intellectual Property infringe or misappropriate the Intellectual Property rights of any other person or entity or constitute unfair competition or trade practices under any law, rule or regulation. The HDI Disclosure Letter includes a description in reasonable detail of all claims, actions, suits or proceedings pending or, to the knowledge of HDI, threatened as of the date of this Agreement in which any person or entity alleges that HDI or any of its Subsidiaries or the HDI Intellectual Property has violated the Intellectual Property rights of any person or entity. Except for matters that, individually or in the aggregate, have not had and would not reasonably be expected to have a HDI Material Adverse Effect, neither HDI nor any of its Subsidiaries has received notice of any pending or threatened claim, action, suit or proceeding in which any person or entity alleges that HDI or any of its Subsidiaries or the HDI Intellectual Property has violated the Intellectual Property rights of any person or entity. Except for matters that, individually or in the aggregate, have not had and would not reasonably be expected to have a HDI Material Adverse Effect, there are no pending disputes between HDI or its Subsidiaries and any other person or entity relating to the HDI Intellectual Property.
(j) Except for matters that, individually or in the aggregate, have not had and would not reasonably be expected to have a HDI Material Adverse Effect (i) HDI and its Subsidiaries have taken all commercially reasonable steps necessary to protect, preserve and maintain the confidentiality of all material trade secrets and confidential business information included in the HDI Intellectual Property, (ii) all persons and entities who have received material trade secrets or other material confidential business information of HDI or its Subsidiaries have entered into written confidentiality agreements to protect the secret or confidential status of such approvalinformation, shall file and to the knowledge of HDI, no person or entity has defaulted under or breached any term of any such documentation as promptly as practicableagreement, but (iii) HDI and its Subsidiaries have taken all commercially reasonable steps necessary to comply with all duties to protect the confidentiality of information provided to HDI and its Subsidiaries by any other person or entity, (iv) in no event later than two each case in which HDI or any of its Subsidiaries has acquired any of the Owned Intellectual Property through or from any current or former employee, consultant, independent contractor or other person or entity, HDI and its Subsidiaries have obtained a valid and enforceable written assignment agreement sufficient to irrevocably transfer all rights, title and interest in that Intellectual Property to HDI and its Subsidiaries to the extent any such rights did not become the sole property of HDI and its Subsidiaries by operation of law and (2v) months following receipt to the knowledge of such approvalHDI, none of those current or former employees, consultants, independent contractors or other persons or entities has violated any of those agreements.
Appears in 1 contract
