Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way. (b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public. (c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain. (d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same. (e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor. (f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings. (g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect. (h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution. (i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10. (j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office. (k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office. (l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 8 contracts
Samples: Credit Agreement (Babcock & Wilcox Enterprises, Inc.), Credit Agreement (Babcock & Wilcox Enterprises, Inc.), Credit Agreement (Babcock & Wilcox Enterprises, Inc.)
Intellectual Property. (a) Not less frequently than quarterly (as of the last day of each calendar quarter), each Grantor shall provide the Agent written notification of any change to Schedule 6 and the short-form intellectual property agreements and assignments as described in this Section 5.7 and other documents that the Agent reasonably requests with respect thereto.
(b) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) (A) continue to use each owned Trademark material included in the Material Intellectual Property to its businessmaintain such Trademark in full force and effect with respect to each class of goods for which such Trademark is currently used, free from any claim of abandonment for non-use, (iiB) maintain commercially reasonable at least substantially the same standards of quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark as are currently maintained, (iiiC) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law to the extent necessary to maintain such Trademark, (D) not adopt or use any xxxx which other Trademark that is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, Agent shall obtain a perfected security interest in such xxxx other Trademark pursuant to this Agreement and an Intellectual Property Security Agreement, (subject to the qualifications set forth in Section 4.7) and (ivii) not (and not permit any licensee or sublicensee thereof to) knowingly do any act or knowingly omit to do any act whereby (w) such Trademark (or any goodwill associated therewith) may become invalidated be invalidated, impaired or impaired abandoned in any way.
, (bx) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business included in the Material Intellectual Property may become forfeitedinvalidated, impaired, abandoned or dedicated to the public, (y) any portion of the registered Copyrights included in the Material Intellectual Property may become invalidated, impaired, abandoned or dedicated to the public domain or (z) any Trade Secret that is Material Intellectual Property may become publicly available or otherwise unprotectable.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects has actual knowledge that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, will be abandoned or dedicated to the public, or of any material adverse determination or development regarding the validity or enforceability or such Grantor’s ownership of, interest in, right to use, register, own or maintain any Material Intellectual Property (including the institution of, or any such determination or development in, any proceeding in relating to the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal foregoing in any country) regarding Applicable IP Office). Unless no longer deemed Material Intellectual Property in such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the reasonable business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Officejudgment, such Grantor shall report such filing take all actions that are necessary or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted reasonably requested by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registrationregistration or recordation) and to maintain each registration of and recordation for Material Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued owned by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedingssuch Grantor.
(gd) Such Grantor (either itself shall not knowingly do any act or through licensees)knowingly omit to do any act to infringe, subject misappropriate, dilute, violate or otherwise impair the Intellectual Property of any other Person to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless extent such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof act could not reasonably be expected to have result in a Material Adverse Effect.
(h) . In the event that that, after the date hereof, any Material Intellectual Property material owned by such Grantor, to its business the knowledge of such Grantor is or has been infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions action as such Grantor shall it reasonably deem deems appropriate under the circumstances in response thereto, including, if appropriate in the exercise of its reasonable business judgment, promptly bringing suit and recovering all damages therefor.
(e) Such Grantor shall execute and deliver to protect the Agent in form and substance reasonably acceptable to the Agent and suitable for (i) filing in the Applicable IP Office the short-form intellectual property security agreements in the form attached hereto as Annex 3 for all U.S. registered Copyrights, U.S. registered Trademarks and U.S. issued Patents and IP Licenses of such Intellectual Property Grantor and (ii) if such Intellectual Property is of material economic value, promptly notify recording with the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing DateInternet domain name registrar, a part duly executed form of the Intellectual Property Collateral assignment for all Internet Domain Names of such Grantor (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently together with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted appropriate supporting documentation as may be requested by the Administrative Agent in its sole discretionAgent), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 6 contracts
Samples: First Lien Guaranty and Security Agreement (GSE Holding, Inc.), Second Lien Guaranty and Security Agreement (GSE Holding, Inc.), First Lien Credit Agreement (GSE Holding, Inc.)
Intellectual Property. Each Obligor hereby covenants and agrees as follows:
(a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) it shall not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by the Intellectual Property which such Grantor and Obligor determines in its reasonable business judgment is material to its the business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights Obligor may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows lapse, or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeitedabandoned, abandoned or dedicated to the public, or unenforceable, or which would adversely affect the validity, grant, or enforceability of the security interest granted therein;
(b) it shall not, with respect to any Trademarks which such Obligor determines in its reasonable business judgment are material to the business of such Obligor, cease the use of any of such Trademarks or fail to maintain the level of the quality of products sold and services rendered under any such Trademark at a level which such Obligor determines in its reasonable business judgment to be appropriate to maintain the value of such Trademarks, and each Obligor shall take all steps reasonably necessary to ensure that licensees of such Trademarks use such consistent standards of quality;
(c) it shall promptly notify the Collateral Agent if it knows or has reason to know that any item of the Intellectual Property that in its reasonable business judgment is material to the business of any Obligor may become (a) abandoned or dedicated to the public or placed in the public domain, (b) invalid or unenforceable, or (c) subject to any material adverse determination or development (including the institution of, of proceedings) in any action or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office Office, any state registry, any foreign counterpart of the foregoing, or any court court, other than in the ordinary course of prosecuting and/or maintaining the applications or tribunal in any country) regarding registrations of such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.Property;
(ed) After such Grantor, either by itself or through any agent, employee, licensee or designee, it shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded take all reasonable steps in the United States Patent and Trademark office or Office, the United States Copyright Office, as applicableany state registry or any foreign counterpart of the foregoing, to pursue any application and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in maintain any Copyrightregistration of each Trademark, Patent, Trademark or other Intellectual Property of and Copyright owned by any Obligor that such Grantor.
(f) Such Grantor, subject to the exercise of Obligor determines in its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property judgment is material to its business, including business which is now or shall become included in the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.Intellectual Property Collateral;
(ge) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and event that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event it has knowledge that any Intellectual Property material owned by or exclusively licensed to its business any Obligor is infringed, misappropriated misappropriated, or diluted by a third party, such Grantor Obligor shall, except as it determines otherwise in its reasonable business judgment, promptly take all reasonable actions to stop such infringement, misappropriation, or dilution and protect its rights in such Intellectual Property including, but not limited to, the initiation of a suit for injunctive relief and to recover damages;
(f) it shall promptly (but in no event more than thirty (30) days after any Obligor obtains knowledge thereof) report to the Collateral Agent (i) take the filing by or on behalf of such actions as such Grantor shall reasonably deem appropriate under the circumstances Obligor of any application to protect such register any Intellectual Property with the United States Patent and Trademark Office, the United States Copyright Office, or any state registry or foreign counterpart of the foregoing and (ii) if such the registration of any Intellectual Property is of material economic valueowned by such Obligor by any such office, in each case by executing and delivering to the Collateral Agent a completed Pledge Supplement, together with all supplements to Annexes thereto;
(g) it shall, promptly notify upon the Administrative reasonable request of the Collateral Agent, execute and deliver to the Collateral Agent after it learns thereof and xxx for infringementany document required to acknowledge, misappropriation confirm, register, record, or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership perfect the Collateral Agent’s interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, whether now owned or hereafter acquired by or on behalf of such Obligor, including, without limitation, intellectual property security agreements in the form of Exhibit C hereto;
(iiih) provide written notice thereof prior it shall hereafter use commercially reasonable efforts so as not to permit the inclusion in any contract to which it hereafter becomes a party of any provision that could or concurrently with might in any way materially impair or prevent the delivery creation of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 a security interest in, or the Fiscal Year ending assignment of, such Obligor’s rights and interests in any property included within the definitions of any Intellectual Property acquired under such contracts;
(or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (vi) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable all steps reasonably necessary to protect the secrecy of all trade secrets or confidential information material to its businessTrade Secrets, including including, without limitation, entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents; and
(j) it shall continue to collect, at its own expense, all amounts due or to become due to such Obligor in respect of the Intellectual Property Collateral or any portion thereof. In connection with such collections, each Obligor may take (and, while an Event of Default exists at the Collateral Agent’s reasonable direction, shall take) such action as such Obligor or the Collateral Agent may deem reasonably necessary or advisable to enforce collection of such amounts. Notwithstanding the foregoing, while an Event of Default exists the Collateral Agent shall have the right at any time, to notify, or require any Obligor to notify, any obligors with respect to any such amounts of the existence of the security interest created hereby.
Appears in 6 contracts
Samples: Senior Secured Revolving Credit Agreement (FS Investment CORP), Senior Secured Term Loan Credit Agreement (Medley Capital Corp), Senior Secured Revolving Credit Agreement (Medley Capital Corp)
Intellectual Property. (a) Such Grantor (To Borrower’s Knowledge, IP Owner either itself owns or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue has valid enforceable right to use each owned Trademark material to its businessall Intellectual Property, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take including all Intellectual Property set forth on the IP Schedule, necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit current conduct of CPLV Tenant’s business and the operation of the Secured PartiesProperty (collectively, shall obtain a perfected security interest the “CPLV Intellectual Property”). To Borrower’s Knowledge, IP Owner is duly qualified under applicable law in such xxxx each jurisdiction in which it is required to be qualified pursuant to this Agreement and an applicable Legal Requirements in order to act as a licensor or licensee of the aforementioned CPLV Intellectual Property Security Agreement, and (iv) not (sublicensor under the applicable IP Licenses. Attached hereto as Schedule 4.1.44 hereof is a complete and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to accurate list of the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (registrations and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material pending applications for CPLV Intellectual Property owned by such Grantor may become forfeitedCPLV Tenant, abandoned anywhere in the world, and all material IP Licenses necessary for the current conduct of CPLV Tenant’s business and the operation of the Property, including exclusive IP Licenses to which CPLV Tenant is an exclusive licensee (the “IP Schedule”). There are no actions or dedicated to the publicproceedings pending against Mortgage Borrower, or to Borrower’s Knowledge, pending against IP Owner or threatened by or against Mortgage Borrower or IP Owner: (x) alleging the infringement, dilution, misappropriation, or other violation of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material CPLV Intellectual Property or such Grantor’s (y) seeking to limit, cancel, or question the validity or enforceability of any IP Collateral (including, without limitation, the right to register proceeds therefrom and the right to bring an action at law or in equity for any infringement, dilution, or violation of such CPLV Intellectual Property and to collect all damages, settlements, and proceeds relating to such CPLV Intellectual Property), or IP Owner’s rights or interests therein, or use thereof. To Borrower’s Knowledge, no Person has interfered with, infringed upon, diluted, misappropriated, or otherwise come into conflict with any CPLV Intellectual Property of IP Owner other than to the extent the same would not reasonably be expected to have a Material Adverse Effect. To Borrower’s Knowledge, neither the CPLV Intellectual Property owned by IP Owner nor IP Owner’s use of any CPLV Intellectual Property is subject to any outstanding injunction, judgment, order, decree, ruling, or charge. To Borrower’s Knowledge, IP Owner has made all filings and recordations necessary to own adequately effect, reflect, and maintain the same.
(e) After such Grantorprotect IP Owner’s ownership in, either by itself right to use, or through any agent, employee, licensee its license of CPLV Intellectual Property used or designee, shall file an application held for the registration use, ownership, management, leasing, renovation, financing, development, operation and maintenance of the Property by CPLV Tenant. To Borrower’s Knowledge, (x) all Intellectual Property set forth on the IP Schedule is subsisting, unexpired, has not been abandoned in any applicable jurisdiction, (y) is valid and enforceable and (z) the use of the IP Collateral in the manner in which it is currently used or intended to be used does not infringe, dilute, misappropriate, or otherwise violate the rights of any Intellectual Property that is Person in any material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Officerespect, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion)other than, in each casecase of (x) through (z), immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account extent the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could same would not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 5 contracts
Samples: Loan Amendment (Vici Properties Inc.), Loan Amendment (Vici Properties Inc.), Mezzanine Loan Agreement (Vici Properties Inc.)
Intellectual Property. (a) Except in any respect that would not materially impair the right, power, authority and ability of any Grantor to use its intellectual property as necessary or convenient for the profitable conduct of their businesses and would not reasonably be expected to have a Material Adverse Effect:
(i) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (iA) continue to use each owned material Trademark material on each and every trademark class of goods in the ordinary course of business in order to its businessmaintain such Trademark in full force free from any claim of abandonment for non-use in any class of goods for which registration was obtained, (iiB) maintain commercially reasonable in the ordinary course of business the quality of products and services offered under such Trademarks Trademark and take all necessary steps to ensure that all licensed users of such Trademarks comply with Trademark maintain as in the past such Grantor’s quality control requirements and maintain reasonable quality, (iiiC) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law, (D) not adopt or use any xxxx mxxx which is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured PartiesCreditors, shall obtain a perfected security interest in such xxxx mxxx pursuant to this Agreement and an the Intellectual Property Security Agreement, and (ivE) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(bii) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not do any act, or omit to do any act, whereby any material Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(ciii) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) (A) will employ each material Copyright and (B) will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall will not (either itself or through licensees) do any act whereby any material portion of such the Copyrights may fall into the public domain.
(div) Such Grantor shall notify the Administrative Agent promptly if it knows (either itself or suspects through licensees) will not do any act that knowingly uses any application or registration relating to any Material material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to infringe the public, or intellectual property rights of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the sameother Person.
(ev) After such Grantor, Such Grantor (either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor licensees) will use proper statutory notice in connection with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt use of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, material Patent, Trademark or other and Copyright included in the Intellectual Property of such GrantorProperty.
(fvi) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take all reasonable and necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark PTO, the Copyright Office or the United States Copyright Officeany similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of material Intellectual Property material to its businessProperty, including including, without limitation, the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office PTO and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue reissue, and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(gvii) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, Property or abandon any application or any right to file an application for any letters patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse EffectEffect and, in which case, such Grantor shall give prompt notice of any such abandonment to the Agent in accordance herewith.
(hviii) In the event that any material Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (iA) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (iiB) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx sxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(iix) Such Grantor will do all things that are necessary and proper within such Grantor’s power and control to keep each license of Intellectual Property held by such Grantor as licensee or licensor in full force and effect except to the extent that (A) such Grantor has reasonably determined that the failure to keep any such license in full force and effect could not be reasonably expected to have a Material Adverse Effect or (B) any such license would expire by its terms or is terminable at will by a Person other than Grantor.
(x) In the event that such Grantor shall create any nonexclusive license in any Trademark, Copyright, Patent or other Intellectual Property or General Intangible, in each case owned by or licensed to such Grantor (whether pursuant to a local marketing agreement, time broadcasting agreement or otherwise) and such license is (x) for a duration of more than eighteen (18) months, (y) not terminable at the option of such Grantor and (z) not by its terms expressly subject and subordinate to the Security Interest, then, and in any such event, such license shall constitute a Disposition of the licensed property. In the event such Grantor creates any license in Trademark, Copyright, Patent, other Intellectual Property or General Intangible owned by or licensed to such Grantor that does not meet the requirements of the immediately preceding sentence, such license shall not constitute a Disposition of such Trademark, Copyright, Patent, other Intellectual Property or General Intangible.
(xi) Such Grantor shall maintain all of its rights to its domain names in full force and effect, other than any, the loss of which could not reasonably be expected to result in a Material Adverse Effect.
(b) Such Grantor will notify the Agent immediately if it knows, or has reason to know, that any registration relating to any material Intellectual Property has been or could reasonably be expected to be forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including, without limitation, the institution of, or any such determination or development in, any proceeding in the PTO, the Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(c) Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property with the PTO, the Copyright Office or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall report such filing to the Agent within five Business Days after the last day of the fiscal quarter in which such filing occurs. Upon request of the Agent, such Grantor shall execute and deliver, and have recorded, any and all agreements, instruments, documents, and papers as the Agent may request to evidence the Secured Creditors’ Security Interest in any Copyright, Patent, Trademark or other Intellectual Property and the goodwill and general intangibles of such Grantor relating thereto or represented thereby.
(d) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property Intellectual Property which is not, as of the Closing Date, not now a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 3 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide it shall give prompt (and, in any event within twenty (20) days after the date of such acquisition) written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtainedaccordance herewith, and (viv) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent promptly (and, in any event within twenty (20) days after the date of such acquisition) with an amended Schedule 3.9(aPerfection Certificate and amended schedules to the applicable Intellectual Property Security Agreement reflecting the acquisition of such After-Acquired Intellectual Property. Such Grantor authorizes the Agent to modify this Agreement by amending the Perfection Certificate and to modify the schedules to the applicable Intellectual Property Security Agreement if such Grantor fails to provide the Agent with satisfactory amended schedules hereto or thereto within the time period required hereunder (and will cooperate with the Agent in effecting any such amendment) to include any After-Acquired Intellectual Property which becomes part of the Intellectual Property Collateral under this Section, and take to record any such modified agreement with the actions specified in clauses (j) and (k) of Section 4.10PTO, the Copyright Office, or any other applicable Governmental Authority.
(je) Such Grantor assumes all responsibility and liability arising from the use of the Intellectual Property and hereby indemnifies and holds the Secured Creditors harmless from and against any claim, suit, loss, damage or expense (including reasonable attorneys’ fees arising out of any alleged defect in any product manufactured, promoted or sold by such Grantor (or any affiliate or subsidiary thereof) in connection with such Intellectual Property or out of the manufacture, promotion, labeling, sale or advertisement of any such product by such Grantor (or any affiliate or subsidiary thereof), except for any claim, suit, loss, damage or expense arising solely from the gross negligence or willful misconduct of a Secured Creditor as finally determined by a court of competent jurisdiction.
(f) Such Grantor agrees to execute an one or more applicable Intellectual Property Security Agreement Agreements with respect to its Intellectual Property in order to record the security interest Security Interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties Creditors with the United States Patent and Trademark Office and PTO, the United States Copyright Office, and any other applicable Governmental Authority.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 5 contracts
Samples: Guarantee and Collateral Agreement (PNG Ventures Inc), Guarantee and Collateral Agreement (Earth Biofuels Inc), Guarantee and Collateral Agreement (PNG Ventures Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (i) continue to use each owned material Trademark material on each and every trademark class of goods applicable to its businesscurrent line as reflected in its current catalogs, brochures and price lists in order to maintain such Trademark in full force free from any claim of abandonment for non-use, (ii) maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law, (iv) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not do any act, or omit to do any act, whereby any material Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) (i) will employ each material Copyright and (ii) will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall will not (either itself or through licensees) do any act whereby any material portion of such the Copyrights may fall into the public domain.
(d) Such Grantor shall (either itself or through licensees) will not do any act that knowingly uses any material Intellectual Property to infringe the intellectual property rights of any other Person.
(e) Such Grantor will notify the Administrative Agent promptly and the Lenders immediately if it knows knows, or suspects has reason to know, that any application or registration relating to any Material material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(ef) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with within five Business Days after the delivery last day of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent fiscal quarter in its sole discretion), in each case, immediately following the date of which such filing or receipt of registrationoccurs. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Administrative Agent’s and the Secured Parties’ security interest in any Copyright, Patent, Patent or Trademark or other Intellectual Property and the goodwill and general intangibles of such GrantorGrantor relating thereto or represented thereby.
(fg) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take all reasonable and necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application relating to any material Intellectual Property (and to obtain the relevant registration) and to maintain each registration of the material Intellectual Property material to its businessProperty, including the payment of required fees and taxesincluding, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Officewithout limitation, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any material Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 5 contracts
Samples: Guarantee and Collateral Agreement (Sba Communications Corp), Guarantee and Collateral Agreement (Sba Communications Corp), Guarantee and Collateral Agreement (Sba Communications Corp)
Intellectual Property. (a) Such Subject to Section 4.04(c), with respect to each item of Intellectual Property Collateral owned by each Grantor, such Grantor (either itself or through licensees) shallagrees to take, in the exercise of at its reasonable business judgmentexpense, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain all commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualitysteps, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agentincluding, for the ratable benefit of the Secured Partiesas applicable, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office and any other Governmental Authority located in the United States, to (i) maintain the validity and enforceability of such Intellectual Property Collateral and maintain such Intellectual Property Collateral in full force and effect, and (ii) pursue the registration and maintenance of each Patent, Trademark, and Copyright registration and application for registration, as applicable, now or any court or tribunal hereafter included in any country) regarding such Intellectual Property Collateral of such Grantor’s ownership of, or except in each case to the validity of, extent failure to do any such of the foregoing would not reasonably be expected to result in a Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the sameAdverse Effect.
(eb) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material Subject to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright OfficeSection 4.04(c), such Grantor shall report such filing or receipt of a registration (and shall use commercially reasonable efforts to cause all its licensees to), as and to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion)extent appropriate, in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its ’s reasonable business judgment, taking into account (i) (1) continue to use each Trademark included in the Secured Parties’ interests Intellectual Property Collateral in order to maintain such Trademark in full force and effect with respect to each class of goods for which such Trademark is currently used, free from any claim of abandonment for non-use, (2) maintain at least the same standards of quality of products and services offered under such Trademark as are currently maintained, (3) use such Trademark with the appropriate notice of registration and all other notices and legends required by Law, (4) not adopt or use any other Trademark that is confusingly similar or a colorable imitation of such Trademark unless the Collateral Agent shall obtain a security interest in such other Trademark pursuant to this AgreementAgreement to the extent required herein and (ii) not do any act or omit to do any act whereby (w) such Trademark (or any goodwill associated therewith) may become destroyed, shall take reasonable and necessary stepsinvalidated, including impaired or harmed in any proceeding before way, (x) any Patent included in the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material Collateral may become forfeited, misused, unenforceable, abandoned or dedicated to its businessthe public or (y) any portion of the Copyrights included in the Intellectual Property Collateral may become invalidated or fall into the public domain, including except in each case to the payment extent failure to do any of required fees and taxes, the filing of responses foregoing would not reasonably be expected to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation result in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedingsa Material Adverse Effect.
(gc) Such No Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, Property Collateral unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property Collateral is no longer desirable or economically practicable in the conduct of such Grantor’s business and business, except to the extent that such discontinuance or abandonment would not reasonably be expected to result in a Material Adverse Effect.
(d) In the loss thereof could not event that any Grantor becomes aware after the date hereof that any item of its material Intellectual Property Collateral is being infringed or misappropriated by a third party in any way that would reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) promptly notify the Collateral Agent and take such actions actions, at its expense, as such Grantor shall reasonably deem deems reasonable and appropriate under the circumstances to protect or enforce such Intellectual Property and (ii) Collateral, including, if such Intellectual Property is of material economic valueGrantor deems it necessary, promptly notify the Administrative Agent after it learns thereof suing for infringement or misappropriation and xxx for infringement, misappropriation an injunction against such infringement or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilutionmisappropriation.
(ie) Such With respect to its United States Registered Intellectual Property owned by such Grantor agrees thatin its own name on the date hereof, should and the Exclusive IP Agreements to which it obtain an ownership interest in any item of intellectual property which is not, a party as of the Closing Datedate hereof, a part each Grantor shall execute or otherwise authenticate an agreement, in substantially the form of the Intellectual Property Security Agreements, as applicable, for recording the Security Interest granted hereunder to the Collateral Agent in such United States Registered Intellectual Property and Exclusive IP Agreements with the United States Copyright Office (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and if in the case form of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(aExhibit 2-A) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and (if in the United States Copyright Officeform of Exhibit 2-B or Exhibit 2-C).
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 5 contracts
Samples: Abl Security Agreement, Abl Security Agreement (Tribune Publishing Co), Term Loan Credit Agreement (Tribune Publishing Co)
Intellectual Property. (a) Within 60 days after any change to Schedule 6 for such Grantor, such Grantor shall provide the Collateral Agent notification thereof and the short-form intellectual property agreements and assignments as described in this Section 5.6 and other documents that the Administrative Agent reasonably requests with respect thereto.
(b) Such Grantor shall (either itself or through licensees) shalland shall exercise commercially reasonable efforts to cause all of its licensees to), to the extent the applicable Intellectual Property remains, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, reasonable
(i1) continue to use each owned Trademark material included in the Material Intellectual Property in order to its businessmaintain such Trademark in full force and effect with respect to each class of goods for which such Trademark is currently used, free from any claim of abandonment for non-use, (ii2) maintain commercially reasonable at least the same standards of quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark as are currently maintained, (iii3) use such Trademark, where commercially practicable, with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law, and (4) not adopt or use any xxxx which other Trademark that is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, Collateral Agent shall obtain a perfected security interest in such xxxx other Trademark pursuant to this Agreement and an Intellectual Property Security Agreement, ; and (ivii) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such (w) any Trademark included in the Material Intellectual Property (or any goodwill associated therewith) may become invalidated destroyed, invalidated, impaired or impaired harmed in any way.
, (bx) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business included in the Material Intellectual Property may become forfeited, misused, unenforceable, abandoned or dedicated to the public, (y) any Copyrights included in the Material Intellectual Property may become invalidated, otherwise impaired or fall into the public domain, or (z) any Trade Secret that is Material Intellectual Property may be disclosed to an unauthorized third party or become publicly available or otherwise unprotectable.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Collateral Agent promptly immediately if it knows knows, or suspects has reason to know, that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, misused, unenforceable, abandoned or dedicated to the public, or of any adverse determination or development regarding the validity or enforceability or such Grantor’s ownership of, interest in, right to use, register, own or maintain any Material Intellectual Property (including the institution of, or any such determination or development in, any proceeding in relating to the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal foregoing in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Applicable IP Office, such ). Such Grantor shall report such filing take all actions that are necessary or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted reasonably requested by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registrationregistration or recordation) and to maintain each registration of and recordation included in the Material Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedingsProperty.
(gd) Such Grantor (either itself shall not do any act or through licensees)omit to do any act to infringe, subject to the exercise of its reasonable business judgmentmisappropriate, taking into account the Secured Parties’ interests under this Agreementdilute, shall not, without the prior written consent of the Administrative Agent, discontinue use of violate or otherwise abandon impair the Intellectual Property of any of its registered Owned Intellectual Propertyother Person, or abandon any application or any right to file an application except for any patent, trademark, such action or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could omission as would not reasonably be expected to have a Material Adverse Effect.
(h) . In the event that any Material Intellectual Property material to its business of such Grantor is or has been infringed, misappropriated misappropriated, violated, diluted or diluted otherwise impaired by a third party, such Grantor shall (i) take such actions action, if any, as such Grantor shall it reasonably deem deems appropriate under the circumstances in response thereto, including promptly bringing suit and recovering all damages therefor.
(e) Such Grantor shall execute and deliver to protect the Collateral Agent in form and substance reasonably acceptable to the Administrative Agent and suitable for (i) filing in the Applicable IP Office the short-form intellectual property security agreements in the form attached hereto as Annex 3 for all Copyrights, Trademarks, Patents and IP Licenses of such Intellectual Property Grantor, and (ii) if such Intellectual Property is requested by the Collateral Agent at the direction of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringementduring the continuation of an Event of Default, misappropriation or dilution, to seek injunctive relief where recording with the appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing DateInternet domain name registrar, a part duly executed form of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions assignment for all Internet Domain Names of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion)Grantor, in each case, following together with appropriate supporting documentation as may be requested by the date on which such ownership is obtained, and (v) promptly after the Administrative Collateral Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 5 contracts
Samples: Credit Agreement (Francesca's Holdings CORP), Credit Agreement (Francesca's Holdings CORP), Credit Agreement (Francesca's Holdings CORP)
Intellectual Property. The Executive agrees that all the Intellectual Property (as defined below) will be considered “works made for hire” as that term is defined in Section 101 of the Copyright Act (17 U.S.C. § 101) and that all right, title and interest in such Intellectual Property will be the sole and exclusive property of the Company and its affiliates. To the extent that any of the Intellectual Property may not by law be considered a work made for hire, or to the extent that, notwithstanding the foregoing, the Executive retains any interest in the Intellectual Property, the Executive hereby irrevocably assigns and transfers to the Company and its affiliates any and all right, title, or interest that the Executive may now or in the future have in the Intellectual Property under patent, copyright, trade secret, trademark or other law, in perpetuity or for the longest period otherwise permitted by law, without the necessity of further consideration. The Company and its affiliates will be entitled to obtain and hold in its own name all copyrights, patents, trade secrets, trademarks and other similar registrations with respect to such Intellectual Property. The Executive further agrees to execute any and all documents and provide any further cooperation or assistance reasonably required by the Company, at the Company’s expense, to perfect, maintain or otherwise protect its rights in the Intellectual Property. If the Company or its affiliates, as applicable, are unable after reasonable efforts to secure the Executive’s signature, cooperation or assistance in accordance with the preceding sentence, whether because of the Executive’s incapacity or any other reason whatsoever, the Executive hereby designates and appoints the Company, the appropriate affiliate, or their respective designee as the Executive’s agent and attorney-in-fact, to act on his behalf, to execute and file documents and to do all other lawfully permitted acts necessary or desirable to perfect, maintain or otherwise protect the Company’s or its affiliates’ rights in the Intellectual Property. The Executive acknowledges and agrees that such appointment is coupled with an interest and is therefore irrevocable. For purposes of this Agreement, “Intellectual Property” means (a) Such Grantor all inventions (either itself whether patentable or through licenseesunpatentable and whether or not reduced to practice), all improvements thereto, and all patents and patent applications claiming such inventions, (b) shallall trademarks, service marks, trade dress, logos, trade names, fictitious names, brand names, brand marks and corporate names, together with all translations, adaptations, derivations, and combinations thereof and including all goodwill associated therewith, and all applications, registrations, and renewals in connection therewith, (c) all copyrightable works, all copyrights, and all applications, registrations, and renewals in connection therewith, (d) all mask works and all applications, registrations, and renewals in connection therewith, (e) all trade secrets (including research and development, know-how, formulas, compositions, manufacturing and production processes and techniques, methodologies, technical data, designs, drawings and specifications), (f) all computer software (including data, source and object codes and related documentation), (g) all other proprietary rights, (h) all copies and tangible embodiments thereof (in whatever form or medium), or (i) similar intangible personal property which have been or are developed or created in whole or in part by the Executive (1) at any time and at any place while the Executive is employed by Company and which, in the exercise case of any or all of the foregoing, are related to and used in connection with the business of the Company or its affiliates, or (2) as a result of tasks assigned to the Executive by the Company or its affiliates. For purposes of this Agreement, “Proprietary Information” means any and all proprietary information developed or acquired by the Company or any of its reasonable subsidiaries or affiliates that has not been specifically authorized to be disclosed. Such Proprietary Information shall include, but shall not be limited to, the following items and information relating to the following items: (a) all intellectual property and confidential or proprietary knowledge, information or rights of the Company (including, without limitation, the Intellectual Property, trade secrets, books and records, know-how, inventions, discoveries, processes and systems, as well as any data and records pertaining thereto), (b) computer codes and instructions, processing systems and techniques, inputs and outputs (regardless of the media on which stored or located) and hardware and software configurations, designs, architecture and interfaces, (c) business judgmentresearch, taking into account studies, procedures and costs, (d) financial data, (e) distribution methods, (f) marketing data, methods, plans and efforts, (g) the Secured Partiesidentities of actual and prospective customers and suppliers, (h) the terms of contracts and agreements with, the needs and requirements of, and the Company’s or its affiliates’ interests under this Agreementcourse of dealing with, actual or prospective customers and suppliers, (i) continue to use each owned Trademark material to its businesspersonnel information, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) customer and vendor credit information, and (k) information received from third parties subject to obligations of Section 4.10.
(j) Such Grantor agrees non-disclosure or non-use. Failure by the Company or its affiliates to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit xxxx any of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright OfficeProprietary Information as confidential or proprietary shall not affect its status as Proprietary Information.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 5 contracts
Samples: Employment Agreement (Igi Laboratories, Inc), Employment Agreement (Igi Laboratories, Inc), Employment Agreement (Igi Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue Not do any act or omit to do any act whereby any material Copyright may become invalidated and (A) not do any act, or omit to do any act, whereby any material Copyright may become injected into the public domain; (B) notify the Secured Party immediately if it knows that any material Copyright may become injected into the public domain or of any materially adverse determination or development (including, without limitation, the institution of, or any such determination or development in, any court or tribunal in the United States or any other country) regarding a Grantor’s ownership of any such Copyright or its validity; (C) take all necessary steps as it shall deem appropriate under the circumstances, to maintain and pursue each application (and to obtain the relevant registration) of each material Copyright owned by a Grantor and to maintain each registration of each material Copyright owned by a Grantor including, without limitation, filing of applications for renewal where necessary; and (D) promptly notify the Secured Party of any material infringement, misappropriation, dilution or impairment of any Copyright of a Grantor of which it becomes aware and take such actions as it shall reasonably deem appropriate under the circumstances to protect such Copyright, including, where appropriate, the bringing of suit for infringement, dilution or impairment or seeking injunctive relief and seeking to recover any and all damages for such infringement, misappropriation, dilution or impairment.
(ii) Not make any assignment or agreement in conflict with the security interest in the Copyrights of each Grantor hereunder.
(A) Continue to use each owned material Trademark material on each and every trademark class of goods applicable to its businesscurrent line as reflected in its current catalogs, brochures and price lists in order to maintain such Trademark in full force free from any claim of abandonment for non-use, (iiB) maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iiiC) employ such Trademark with the appropriate notice of registration, if applicable, (D) not adopt or use any xxxx which that is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured PartiesParty, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivE) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any such Trademark may become invalidated or impaired in any wayinvalidated.
(biv) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not Not do any act, or omit to do any act, whereby any material Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the publicdedicated.
(cv) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account Notify the Secured Parties’ interests under this Agreement, shall not (Party and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly Secured Parties immediately if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor material Patent or Trademark may become forfeited, abandoned or dedicated to the publicdedicated, or of any materially adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office USPTO or any court or tribunal in any country) regarding such Grantor’s Grantor ownership of, of any Patent or the validity of, any such Material Intellectual Property Trademark or such Grantor’s its right to register the same or to own keep and maintain the same.
(evi) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and Take all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark Office USPTO, or the United States Copyright Officeany similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property each material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright OfficeTrademark, the including, without limitation, filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(gvii) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account Promptly notify the Secured Parties’ interests under this Agreement, shall not, without Party and the prior written consent of the Administrative Agent, discontinue use of Secured Parties after it learns that any material Patent or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable Trademark included in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business Collateral is infringed, misappropriated misappropriated, diluted or diluted impaired by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property party and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation misappropriation, dilution or dilutionimpairment, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation misappropriation, dilution or dilutionimpairment, or to take such other actions as it shall reasonably deem appropriate under the circumstances to protect such Patent or Trademark.
(iviii) Such Grantor agrees that, should it obtain an ownership Not make any assignment or agreement in conflict with the security interest in any item the Patents or Trademarks of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10Grantor hereunder.
(jix) Such Grantor agrees Grants to execute an Intellectual Property Security Agreement with respect the Secured Party a royalty free license to its use such Grantor’s Intellectual Property in order to record connection with the security interest granted herein to the Administrative Agent for the ratable benefit enforcement of the Secured Parties with Party’s rights hereunder, but only to the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such extent any license or agreement granting such Grantor agrees to execute an rights in such Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of do not prohibit such use by the Secured Parties with Party. Notwithstanding the United States foregoing, the Grantors may, in their reasonable business judgment, fail to maintain, pursue, preserve or protect any Copyright, Patent and or Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information which is not material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documentstheir businesses.
Appears in 4 contracts
Samples: Security Agreement (Air T Inc), Security Agreement, Security Agreement (Air T Inc)
Intellectual Property. (ai) Such The Grantor (either itself or through licenseesits licensees or its sublicensees) shallwill, for each Trademark used in the exercise conduct of its reasonable business judgment, taking into account the Secured Parties’ interests under this AgreementGrantor’s business, (i) continue to use each owned maintain such Trademark material to its businessin full force free from any claim of abandonment or invalidity for non-use, (ii) maintain commercially reasonable the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) not adopt display such Trademark with notice of U.S. or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless non-U.S. registration to the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant extent necessary to this Agreement establish and an Intellectual Property Security Agreementpreserve its rights under applicable law, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act knowingly use or knowingly omit to do any act whereby permit the use of such Trademark may become invalidated or impaired in violation of any waythird party rights.
(bii) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such The Grantor shall notify the Administrative Collateral Agent promptly if it knows or suspects has reason to know that any application or registration relating to any Material Intellectual Property owned by such Grantor material to the conduct of its business may become forfeitedabandoned, abandoned lost or dedicated to the public, or of any final materially adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in similar office of any country) regarding such the Grantor’s ownership ofof any Intellectual Property, or the validity of, any such Material Intellectual Property or such Grantor’s its right to register the same same, or its right to own keep and maintain the same.
(eiii) After such GrantorIn the event that the Grantor (i) files an application or registration for any Intellectual Property with the United States Patent and Trademark Office, United States Copyright Office or any office or agency in any political subdivision of the United States or in any other country or any political subdivision thereof, either by itself or through any agent, employee, licensee or designeedesignee or (ii) obtains rights to or develop any new Intellectual Property or any reissue, shall file an application for the registration division, continuation, renewal, extension or continuation-in-part of any existing Intellectual Property that is material Property, whether pursuant to any license or otherwise; the provisions of Section 2 hereof shall automatically apply thereto and the Grantor shall give to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright OfficeCollateral Agent prompt notice thereof, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion)and, in each case, immediately following the date of such filing or receipt of registration. Upon upon request of the Administrative Collateral Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, deliver any and all agreements, instruments, documents, documents and papers as the Administrative Collateral Agent may reasonably request to evidence the Secured Parties’ Collateral Agent’s security interest in any Copyrightsuch Intellectual Property, Patentand Grantor hereby appoints the Collateral Agent as its attorney-in-fact to execute and file such writings for the foregoing purposes, Trademark or other Intellectual Property all acts of such Grantorattorney being hereby ratified and confirmed; such power, being coupled with an interest, is irrevocable.
(fiv) Such Grantor, subject to The Grantor will take all necessary steps that are consistent with the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including practice in any proceeding before the United States Patent and Trademark Office, United States Copyright Office or any office or agency in any political subdivision of the United States Copyright Officeor in any other country or any political subdivision thereof, to maintain and pursue each application relating to the Intellectual Property of the Grantor (and to obtain the relevant grant or registration) and to maintain each issued Patent and each registration of Intellectual Property material the Trademarks and Copyrights that is used in the conduct of the Grantor’s business as conducted or proposed to its businessbe conducted, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing timely filings of applications for renewal or extensionrenewal, the filing of affidavits of use and use, affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue incontestability and renewal applications or extensions, the payment of maintenance fees, and the participation in interferenceand, reexaminationif consistent with good business judgment, to initiate opposition, cancellation, infringement interference and misappropriation proceedingscancellation proceedings against third parties.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(hv) In the event that the Grantor has reason to believe that any Collateral consisting of Intellectual Property material to its used in the conduct of the Grantor’s business is has been infringed, misappropriated or diluted by a third party, such the Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic valueconsistent with good business judgment, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate dilution and to recover any and all damages for such infringement, misappropriation or dilution, and take such other actions as are appropriate under the circumstances to protect such Collateral and promptly shall notify the Collateral Agent of the initiation of such suit.
(ivi) Such Grantor agrees that, should it obtain Upon and during the continuance of an ownership interest in any item Event of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”)Default, (i) the provisions of Section 2.1 Grantor shall automatically apply thereto, not abandon or otherwise permit any Intellectual Property to become invalid and (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith Grantor shall use commercially reasonable efforts to obtain all requisite consents or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted approvals by the Administrative licensor of each License that constitutes Collateral owned by the Grantor to effect the assignment of all the Grantor’s right, title and interest thereunder to the Collateral Agent in or its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10designee.
(jvii) Such The Grantor agrees shall execute, authenticate and deliver any and all assignments, agreements, instruments, documents and papers as the Collateral Agent may reasonably request to evidence the Collateral Agent’s security interest hereunder in such Intellectual Property and the General Intangibles of the Grantor relating thereto or represented thereby, the Grantor hereby appoints the Collateral Agent as its attorney-in-fact to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent and file such writings for the ratable benefit foregoing purposes, all acts of the Secured Parties such attorney being hereby ratified and confirmed; such power, being coupled with the United States Patent and Trademark Office and the United States Copyright Officean interest, is irrevocable.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 4 contracts
Samples: Financing Agreement (Imperial Holdings, LLC), Financing Agreement (Imperial Holdings, LLC), Financing Agreement (Imperial Holdings, LLC)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue Schedule 5 lists all Intellectual Property of such Grantor for which registrations have issued and/or applications for registration or issuance have been filed by such Grantor as of the date hereof, separately identifying that owned by such Grantor and that licensed to use each owned Trademark material to its business, such Grantor; (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take Schedule 5(a) lists all necessary steps to ensure that all licensed users Significant Intellectual Property of such Trademarks comply with Grantor for which registrations have issued and/or applications for registration or issuance have been filed by such Grantor as of the date hereof, separately identifying that owned by such Grantor and that licensed to such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor On the date hereof, (either itself or through licensees), subject i) to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion knowledge of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Grantor, all Significant Intellectual Property owned by such Grantor may become forfeited, abandoned that has been registered in or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor filed with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any is valid, subsisting, unexpired and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply theretoenforceable, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the no Significant Intellectual Property Collateral, owned by such Grantor has been adjudged invalid or has been adjudged abandoned and; (iii) provide written notice thereof prior to or concurrently with the delivery knowledge of such Grantor, the Compliance Certificate required by Section 6.01(c) use of its Significant Intellectual Property in the Credit Agreement for business of such Grantor does not infringe the earlier to occur intellectual property rights of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10any other Person.
(jc) Such Grantor agrees to execute an Except as set forth in Schedule 5(a), on the date hereof, none of the Significant Intellectual Property Security Agreement with respect owned by such Grantor is the subject of any licensing or franchise agreement pursuant to its Intellectual Property in order to record which such Grantor is the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Officelicensor or franchisor.
(kd) Such Grantor agrees to execute an No holding, decision or judgment has been rendered by any Governmental Authority that would limit, cancel or question the validity of, or such Grantor's rights in, any Significant Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright OfficeProperty.
(le) Such Except as set forth on Schedule 5(a), no action or proceeding seeking to limit, cancel or question the validity of any Significant Intellectual Property owned by such Grantor shall take commercially reasonable steps or such Grantor's ownership interest therein is on the date hereof pending and, to protect the secrecy knowledge of all trade secrets such Grantor, no action or confidential information material proceeding seeking to its businesslimit, including entering into confidentiality agreements with employees and labeling and restricting access cancel or question the validity of any Intellectual Property is threatened. Except as set forth on Schedule 5(a), there are no claims, judgments or settlements to secret information and documentsbe paid by such Grantor relating to the Significant Intellectual Property.
Appears in 4 contracts
Samples: Pledge and Security Agreement (Foamex Capital Corp), Pledge and Security Agreement (Foamex Capital Corp), Pledge and Security Agreement (Foamex L P)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (i) continue to use each owned material Trademark in order to maintain such material to its businessTrademark in full force free from any claim of abandonment for non-use, (ii) maintain commercially reasonable as in the past the quality of products and services offered under each such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualitymaterial Trademark, (iii) use each such material Trademark with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law, (iv) not adopt or use any xxxx which is confusingly similar or a colorable imitation of any such Trademarks material Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain obtain, to the extent available, a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivv) not (and not knowingly permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any such material Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not do any act, or omit to do any act, whereby any material Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any such material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall will not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall (either itself or through licensees) will not do any act that knowingly uses any material Intellectual Property to infringe the intellectual property rights of any other Person.
(e) Such Grantor will notify the Administrative Agent promptly if it knows knows, or suspects has reason to know, that any application or registration relating to any Material material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any material adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(ef) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor Patent or Trademark with the United States U.S. Patent and Trademark Office or any similar office or agency in any other country or political subdivision thereof, such Grantor shall report (i) the United States initial application to and (ii) the corresponding grant, if any, of the Patent or Trademark from the U.S. Patent and Trademark Office to the Administrative Agent, each within 45 days after the last day of the fiscal quarter in which such filing or grant, as applicable, occurs. Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Copyright with the U.S. Copyright Office, such Grantor shall report such the filing or receipt of a registration the initial application to the Administrative Agent not less than 14 days prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registrationfiling. Upon request of the Administrative Agent, other than in respect of intent-to-use trademark or service xxxx applications, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent may reasonably request to evidence the Administrative Agent’s and the other Secured Parties’ security interest in any Copyright, Patent, Patent or Trademark or other Intellectual Property and the goodwill and general intangibles of such GrantorGrantor relating thereto or represented thereby.
(fg) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take all reasonable and necessary steps, including including, without limitation, in any proceeding before the United States U.S. Patent and Trademark Office, the U.S. Copyright Office or the United States Copyright Officeany similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each material application (and to obtain the relevant registration) and to maintain each registration of the material U.S. Intellectual Property material to its businessProperty, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any material Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilutionProperty.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 4 contracts
Samples: Credit Agreement (Sprinklr, Inc.), Guarantee and Collateral Agreement, Credit Agreement (Organogenesis Holdings Inc.)
Intellectual Property. (a) Such it is the sole and exclusive owner of the entire right, title, and interest in and to all Intellectual Property of such Grantor that is listed on Schedule 5.2(II) (either itself as such Schedule may be amended or through licenseessupplemented from time to time), and owns or (assuming that any licensor that is the counterparty to any Patent Licenses, Trademark Licenses, Trade Secret Licenses and Copyright Licenses has all rights necessary to grant such license, and limited to the term of such license) shallhas the valid right to use, all Material Intellectual Property, free and clear of all Liens, claims and licenses, except for Permitted Liens, licenses in the ordinary course of business, the licenses set forth on Schedule 5.2(II) (as such Schedule may be amended or supplemented from time to time) and restrictions where such use would otherwise be a Regulatory Exception;
(b) all Material Intellectual Property owned by such Grantor is subsisting and has not been adjudged invalid or unenforceable, in whole or in part, nor, in the exercise case of its Patents, is any of the Intellectual Property the subject of a reexamination proceeding, and with respect to Patents, Copyrights and Trademarks owned by such Grantor for which registration has been obtained by it or an application is pending and, which in Grantor’s reasonable business judgment, taking into account has decided to maintain in subsistence, has performed all acts and has paid all renewal, maintenance, and other fees and taxes required to maintain each and every such registration and application of Copyrights, Patents and Trademarks of such Grantor constituting Material Intellectual Property in full force and effect;
(c) no holding, decision, ruling, or judgment adversely affecting the Secured Parties’ interests under this Agreementvalidity, enforceability or scope of any Material Intellectual Property of a Grantor or a Grantor’s right to own or use such Material Intellectual Property has been rendered in any action or proceeding before any court or administrative authority challenging the validity, enforceability, or scope of, or such Grantor’s right to register, own or use, any Material Intellectual Property of such Grantor, and to such Grantor’s knowledge no such action or proceeding is pending or threatened;
(d) all registrations, issuances and applications for Copyrights, Patents and Trademarks of such Grantor are standing in the name of such Grantor, and none of the Trademarks, Patents, Copyrights or Trade Secrets owned by such Grantor that constitute Material Intellectual Property has been exclusively licensed by such Grantor to any third party, except as disclosed in Schedule 5.2(II) (as such Schedule may be amended or supplemented from time to time), and all exclusive Copyright Licenses constituting Material Intellectual Property in respect of registered Copyrights have been properly recorded in the U.S. Copyright Office or, where appropriate, any foreign counterpart, except that (A) computer software and other Trade Secrets may be withheld from said registration where: (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such in Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreementsuch item should be protected as a Trade Secret; and (ii) Grantor promptly discloses said decision in writing to Collateral Agent, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.and (B) no registration is required if it would be a Regulatory Exception;
(ce) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of all Copyrights owned by such Grantor that constitute Material Intellectual Property have been registered with the United States Copyright Office or, where appropriate, any foreign counterpart except that Copyrights in computer software and material to its other Trade Secrets have not been registered where: (i) in Grantor’s reasonable business may become invalidated judgment, such item should be protected as a Trade Secret; or otherwise impaired. Such Grantor shall not (either itself or through licenseesii) do any act whereby any material portion of such Copyrights may fall into the public domain.registration would create a Regulatory Exception;
(df) Such such Grantor shall notify has not made a previous assignment, sale, transfer of ownership rights, exclusive license, or similar arrangement constituting a present or future assignment, sale, transfer of ownership rights, exclusive license or similar arrangement of any Material Intellectual Property that has not been terminated or released, other than in connection with Material Intellectual Property developed under a Government Contract;
(g) such Grantor has been using appropriate statutory notice of registration in connection with its use of registered Trademarks and proper marking practices in connection with its use of Patents, and appropriate notice of copyright in connection with the Administrative Agent promptly if it knows publication of Copyrights that in each case constitute Material Intellectual Property;
(h) such Grantor has taken commercially reasonable steps to protect the confidentiality of its Trade Secrets constituting Material Intellectual Property;
(i) such Grantor has in place contractual obligations regarding the nature and quality of all products sold and all services rendered under or suspects in connection with all Trademarks Licenses in which such Grantor is the licensor;
(j) no claim has been made in writing that any application or registration relating to remains unresolved that the use of any Material Intellectual Property owned by such Grantor may become forfeitedinfringes, abandoned misappropriates, dilutes or dedicated to otherwise violates the public, or asserted rights of any adverse determination (including the institution ofother Person, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property no written demand that is material to the business of such Grantor with the United States Patent and Trademark Office enter into a license or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuationco-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could existence agreement has been made but not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.resolved;
(k) Such Grantor agrees to execute an such Grantor’s knowledge, no Person is infringing, misappropriating, diluting or otherwise violating any rights in any Material Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.owned by such Grantor; and
(l) Such no settlement or consents, covenants not to xxx, co-existence agreements, non-assertion assurances, or releases have been entered into by such Grantor shall take commercially reasonable steps or bind such Grantor in a manner that is reasonably likely to protect the secrecy of all trade secrets materially and adversely affect such Grantor’s rights to own, license or confidential information material to use any Material Intellectual Property as currently used in its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 4 contracts
Samples: Second Lien Pledge and Security Agreement (Alion Science & Technology Corp), First Lien Pledge and Security Agreement (Alion Science & Technology Corp), First Lien Credit and Guaranty Agreement (Alion Science & Technology Corp)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (i) continue to use each owned material Trademark material on each and every trademark class of goods applicable to its businesscurrent line as reflected in its current catalogs, brochures and price lists in order to maintain such Trademark in full force free from any claim of abandonment for non-use, (ii) maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Governmental Requirements, (iv) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not do any act, or omit to do any act, whereby any material Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) (i) will employ each material Copyright and (ii) will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall will not (either itself or through licensees) do any act whereby any material portion of such the Copyrights may fall into the public domain.
(d) Such Grantor shall (either itself or through licensees) will not do any act that knowingly uses any material Intellectual Property to infringe the intellectual property rights of any other Person.
(e) Such Grantor will notify the Administrative Agent promptly and the Lenders immediately if it knows knows, or suspects has reason to know, that any application or registration relating to any Material material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(ef) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with within five Business Days after the delivery last day of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent fiscal quarter in its sole discretion), in each case, immediately following the date of which such filing or receipt of registrationoccurs. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured PartiesAdministrative Agent’s and the Lenders’ security interest in any Copyright, Patent, Patent or Trademark or other Intellectual Property and the goodwill and General Intangibles of such GrantorGrantor relating thereto or represented thereby.
(fg) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take all reasonable and necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of the material Intellectual Property material to its businessProperty, including the payment of required fees and taxesincluding, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Officewithout limitation, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any material Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 4 contracts
Samples: Guaranty and Collateral Agreement (ABC Funding, Inc), Guaranty and Collateral Agreement (Petro Resources Corp), Second Lien Guaranty and Collateral Agreement (ABC Funding, Inc)
Intellectual Property. (7.1. The Parties hereby recognize and agree that all rights in XYO reside with Perpetual and that Perpetual has valuable rights in and to XYO. Nothing in this Agreement shall be construed as granting Master Licensee any ownership rights in and to XYO. The Parties agree that any enhancements, improvements, modifications to XYO, or inventions related to XYO, during the course of this Agreement or following termination shall belong to Perpetual and be deemed to form part of XYO as defined herein. Master Licensee hereby irrevocably assigns to Perpetual any and all rights which it may hereafter acquire in and related to XYO. For greater certainty:
a) Such Grantor (either itself or through licensees) Master Licensee shall, at Perpetual’s request and expense, apply for letters patent either in Master Licensee’s name or otherwise as Perpetual shall direct, and Master Licensee agrees to assign and does assign to Perpetual all of Master Licensee’s right, title and interest in and to such enhancements, improvements, modifications to XYO, or inventions related to XYO, all of the foregoing without royalty or any other consideration to Master Licensee, other than as specifically provided for in this Agreement.
b) Master Licensee agrees that should any right, title or interest in or to any enhancements, improvements, modifications to XYO, or inventions related to XYO, become vested in Master Licensee by operation of law or otherwise, Master Licensee shall hold the same in trust from Perpetual and at the request of Perpetual shall immediately and unconditionally assign any such right, title or interest to Perpetual.
c) Master Licensee further agrees with Perpetual to execute and deliver such further and other documents and do and perform and cause to be done and performed such further or other acts and things as may be necessary or desirable in the exercise opinion of its reasonable business judgment, taking into account the Secured Parties’ interests under Perpetual to give full effect to this Agreement, (i) continue including without limiting the generality of the foregoing, such documents, acts and things as may in the opinion of Perpetual be necessary or desirable to use each owned Trademark material obtain and maintain patents, copyrights and/or industrial designs in respect of enhancements, improvements, modifications to its businessXYO, (ii) maintain commercially reasonable quality of products or inventions related to XYO, and services offered under such Trademarks to vest the entire right, title and take all necessary steps interest in and to ensure that all licensed users patents, copyrights and/or industrial designs in respect of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any wayPerpetual.
(b) Such Grantor (either itself or through licensees)7.2. Perpetual may, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), but shall not be obliged to, take all reasonably necessary steps to protect XYO by way of patent protection in each case, immediately following the date of such filing or receipt of registration. Upon request any part of the Administrative Agentworldwide market in which such protection has not yet been obtained, including but not limited to patent applications specifically describing the application of XYO to the Products. All costs associated with obtaining such Grantor shall execute and deliverpatent protection, and all maintenance fees payable in respect thereof, shall be borne by Perpetual. Should Perpetual choose not to pursue such patent protection, then Master Licensee shall have recorded the option, with the specific written consent of Perpetual, of pursuing this same patent protection and shall pay all costs associated with obtaining such patent protection and all maintenance fees payable thereon. Master Licensee must name Perpetual on any such patent and patent application and shall grant Perpetual a royalty-free right to use the said patent and patent application.
7.3. Master Licensee shall not directly or indirectly contest ownership or validity of any aspect of XYO, either during the term of this Agreement or at any time thereafter, nor shall it voluntarily assist in any action taken by any third party, an object of which action is to contest said ownership or validity.
7.4. Master Licensee shall adhere to any reasonable quality standards that may be set by Perpetual from time to time and of which Master Licensee has notice relating to the United States Patent and Trademark office or use of XYO.
7.5. Notwithstanding any other provision of this Agreement, Master Licensee shall be solely responsible for the United States Copyright Office, as applicable, observance of any and all agreementsstandards of quality, instrumentssafety and effectiveness that may be set by law from time to time by any government or government agency relating to the manufacture of embodiments incorporating XYO, documentsincluding but not limited to regulations relating to the designation and markings of trademarks and patents on the Products.
7.6. If either Master Licensee or Perpetual shall have knowledge that XYO is being infringed, such knowledge shall be promptly conveyed to the other Party. Perpetual may, but shall not be obliged to, enter suit to prevent infringement or further infringement and papers to prosecute the suit. Master Licensee agrees to provide such reasonable assistance as may be required by Perpetual for the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property purpose of such Grantor.
(f) Such Grantorsuit and may, subject at its own expense, be represented by counsel of its own choosing. Subject to the exercise terms of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration an order of Intellectual Property material to its business, including the payment a court of required fees and taxescompetent jurisdiction, the filing costs of responses to office actions issued the suit (other than the costs of Master Licensee's own counsel) shall be borne by the United States Patent Perpetual and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject Perpetual shall be solely entitled to the exercise recovery of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of any damages or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) settlement monies. In the event that Perpetual refuses to prosecute the suit or to continue the prosecution of the suit to judgment or settlement, then Master Licensee may, upon the giving of notice to Perpetual, bear the costs of prosecuting or continuing the suit, as the case may be, and shall be entitled to retain all damages or settlement monies recovered as a result of the suit.
7.7. Notice of the license granted herein may be filed in any Intellectual Property Patent Office by either Party hereto, in respect of any of the XYO Patents. Said Notice shall have the form required by the laws of the jurisdiction in which it is being filed, and shall be executed by the Parties upon the request of either Party.
7.8. Master Licensee agrees that it shall not disclose to any third party any Confidential Information of Perpetual except as is necessary for Master Licensee to exercise any right under this Agreement or with the written consent of Perpetual. In the event of such permitted disclosure, Master Licensee shall make said disclosure conditional on the recipient's acceptance of the terms of a confidentiality agreement, the terms of which to be acceptable to Perpetual, not to disclose any Confidential Information of Perpetual to any other party.
7.9. Master Licensee agrees not to use XYO, as defined herein, in conjunction with any automatic balancing device or technology, for any purpose outside the term and terms of this Agreement. For greater certainty, this restriction applies to all devices identical to, similar to, or in competition with any aspect of XYO, without regard to ownership or patentability of such devices or technology.
7.10. If Master Licensee desires to carry out any action, whether written or oral, relating to or referring to XYO or any material marked confidential by Perpetual then Master Licensee agrees to seek Perpetual’s approval and to promptly make full disclosure in writing to Perpetual providing full details of such desired action before such action is to be carried out. In particular, but without limiting the generality of the foregoing, Master Licensee shall not make any patent applications relating to or referring to XYO or any material marked confidential by Perpetual without the specific written consent of Perpetual, which consent shall be granted at the sole discretion of Perpetual.
7.11. Master Licensee agrees that Perpetual may be irreparably injured by a breach of this Agreement by Master Licensee, which breach may not be adequately compensated for by damages, and Perpetual shall be entitled to equitable relief, including injunctive relief and specific performance, without the need to prove irreparable harm and without the necessity of posting a bond in the event of breach of any provisions of this Agreement. Such remedies shall not be deemed to be exclusive remedies for breach of this Agreement, but shall be in addition to all other remedies available at law.
7.12. In the event of breach of this Agreement by Master Licensee, Master Licensee agrees to pay Perpetual’s actual costs and expenses in enforcing the terms of this Agreement including, without limitation, any court costs, fees between a solicitor and the solicitor’s own client, and all disbursements. In the event of breach of section 7.9 of this Agreement by Master Licensee, Master Licensee agrees to immediately assign to Perpetual Master Licensee’s rights, interest, and benefits derived from Master Licensee’s actions as defined in section 7.9. This assignment shall not be deemed to be an exclusive remedy for the said breach of this Agreement, but shall be in addition to all other remedies available at law.
7.13. If, during the term of this Agreement, Master Licensee develops or invents any improvements to XYO, it shall promptly make full disclosure in writing to Perpetual and assign its rights in said improvements to Perpetual. In return for the assignment of rights to Perpetual, Perpetual agrees to grant a royalty-free license to Master Licensee for the use of said improvements, to manufacture and use in the Products.
7.14. Master Licensee recognizes that in order to take full advantage of the benefits afforded by the use of XYO, some modification to its business existing or future products may be required and/or necessary. Failure to correctly implement such modifications may have an adverse effect on the functioning of XYO and dramatically affect the performance of XYO.
7.15. Master Licensee agrees to provide its best efforts in cooperating with Perpetual to incorporate XYO into the Products. Specifically, Master Licensee agrees to provide Perpetual with all information, access to personnel, and components required by Perpetual in a timely manner, as well as including Perpetual in design, manufacturing, and planning discussions. Master Licensee understands that Perpetual is infringedprimarily a licensor and not primarily a manufacturer of products, misappropriated or diluted and therefore, it is essential that Master Licensee cooperate with Perpetual by a third partyproviding the said information, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate access, components, and discussions in order for XYO to be successfully optimized and implemented into Master Licensee’s Products under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is terms of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilutionthis Agreement.
(i) Such Grantor agrees that7.16. The parties mutually agree that all promises, should it obtain an ownership interest conduct, and statements made in any item the course of intellectual property which is notreaching this Agreement, as including the fact of Agreement, are confidential and will not be disclosed voluntarily to the extent permitted by law, and without the specific written consent of both parties. Without limiting the generality of the Closing Dateforegoing, the specific information contained within section 6.1 of this Agreement shall be kept confidential.
7.17. The Parties acknowledge and agree that they have entered into a part of the Intellectual Property Collateral Nondisclosure and Noncircumvention Agreement (the “After-Acquired Intellectual PropertyNDA”)) that governs the disclosure of Confidential Information as defined in the NDA, (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Propertywhich definition is enlarged by this Agreement, and in that this Agreement supersedes without nullifying the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10NDA.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 4 contracts
Samples: Exclusive Master License Agreement (Perpetual Industries Inc.), Exclusive Master License Agreement (Perpetual Industries Inc.), Exclusive Master License Agreement (Perpetual Industries Inc.)
Intellectual Property. (a) Such Upon the occurrence and during the continuance of an Event of Default, at the request of the Collateral Agent, each Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to will use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products efforts to obtain all consents and services offered under such Trademarks and take all approvals necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, appropriate for the ratable assignment to or for the benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Collateral Agent of any Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit held by such Grantor in order to do any act whereby such Trademark may become invalidated or impaired in any wayenforce the security interests granted hereunder.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Each Grantor shall notify the Administrative Collateral Agent promptly in writing if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by Patent, Trademark or Copyright (now or hereafter existing) included in the Collateral and material to the conduct of such Grantor Grantor’s business may in such Grantor’s reasonable business judgment become forfeited, abandoned or dedicated to the public, or of any material adverse determination or development (including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark OfficeUSPTO, the United States Copyright Office or any court or tribunal (other than routine office actions in any countrythe ordinary course)) regarding such Grantor’s ownership of, or the validity of, of any such Material Intellectual Property material registered or such Grantor’s applied for Patent, Trademark or Copyright, its right to register the same same, or to own keep and maintain the same.
(ec) After such In the event that any Grantor, either by itself directly or through any agent, employee, licensee or designee, shall file (i) files an application for the registration of (or otherwise becomes the owner of) any Intellectual Property that is material to the business of such Grantor Patent, Trademark or Copyright with the USPTO or the Copyright Office, (ii) acquires any United States Patent and Trademark Office applications for or registrations of any Patent, Trademark, or Copyright, or (iii) obtains an exclusive license to one or more Copyrights registered with the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or will, concurrently with the any delivery of the Compliance Certificate required by information pursuant to Section 6.01(c4.03(a) of the Credit Agreement for Indenture, provide the earlier Collateral Agent written notice thereof, and any such Intellectual Property shall automatically constitute Collateral and shall be subject to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted security interest created by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registrationthis Security Agreement. Upon request of the Administrative Collateral Agent, such Grantor shall promptly execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, deliver any and all agreements, instruments, documents, and papers security agreements or other instruments as the Administrative Collateral Agent may reasonably request to evidence the Secured Parties’ Collateral Agent’s security interest in any Copyright, Patent, Trademark or other such Intellectual Property and the General Intangibles of such GrantorGrantor relating thereto or represented thereby.
(fd) Such Grantor, subject Except to the exercise of its reasonable business judgmentextent permitted by Section 4.5(f) below, taking into account the Secured Parties’ interests under this Agreement, each Grantor shall take reasonable and necessary stepsall actions reasonably necessary, including in any proceeding before or otherwise reasonably requested by the United States Patent and Trademark Office or the United States Copyright OfficeCollateral Agent, to maintain and pursue each application (and application, to obtain the relevant registration) registration and to maintain each the registration of Intellectual Property each of the Patents, Trademarks and Copyrights (now or hereafter existing) in each case that is material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business, including the filing of applications for renewal, affidavits of use, affidavits of non-contestability and, if consistent with good business judgment, to initiate opposition, interference and that the loss thereof could not reasonably be expected to have a Material Adverse Effectcancellation proceedings against third parties.
(he) In the event that any Intellectual Property material to its business is infringedEach Grantor shall, misappropriated or diluted by a third party, upon such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic valueobtaining knowledge thereof, promptly notify the Administrative Collateral Agent after it learns thereof in writing and xxx shall, if consistent with good business judgment, promptly sue for any material infringement, misappropriation or dilutiondilution of any Patent, to seek injunctive relief where appropriate Trademark or Copyright and to recover any and all damages for such infringement, misappropriation or dilution, or shall take such other actions as are appropriate under the circumstances in its reasonable business judgment to protect such Patent, Trademark or Copyright unless it shall reasonably determine that such Patent, Trademark or Copyright is not material to the conduct of the business of the Company and its Subsidiaries (taken as a whole).
(if) Such Nothing in this Security Agreement shall prevent any Grantor agrees that, should it obtain an ownership interest in from taking any item action with respect to any of intellectual property which is not, as of the Closing Date, a part of the its Intellectual Property Collateral (to the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time extent permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10Indenture.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 4 contracts
Samples: Pledge and Security Agreement (Coty Inc.), Pledge and Security Agreement (Coty Inc.), Pledge and Security Agreement (Coty Inc.)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue Without limiting any rights of the Collateral Agent under the Loan Documents, for the purpose of enabling the Collateral Agent to exercise rights and remedies under Section 6, solely during such time as the Collateral Agent shall be lawfully entitled to exercise such rights and remedies, and at no other time or for no other purpose, each Grantor hereby grants to the Collateral Agent, to the extent permitted by law, an irrevocable, non-exclusive license (exercisable without payment of royalty or other compensation to such Grantor) to use, assign, license, sublicense or otherwise exploit any of the Intellectual Property now owned or hereafter acquired or created by such Grantor, wherever the same may be located; provided, however, that nothing in this Section 6.4 shall require a Grantor to grant any license that is prohibited by any rule of law, statute or regulation or is prohibited by, or constitutes a breach or default under or results in the termination of or gives rise to any right of acceleration, modification or cancellation under any contract, license, agreement, instrument or other document evidencing, giving rise to a right to use each owned Trademark material or theretofore granted with respect to its businesssuch property; provided, further, that such licenses to be granted hereunder with respect to Trademarks shall be subject to the maintenance of quality standards with respect to the goods and services on which such Trademarks are used sufficient to preserve the validity of such Trademarks.
(ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps Notwithstanding anything contained herein to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualitythe contrary, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), but subject to the exercise provisions of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) 7.5 of the Credit Agreement for that limit the earlier rights of the Grantors to occur dispose of either their property but subject to the Fiscal Quarter ending June 30 Collateral Agent’s exercise of its rights and remedies under Section 6, the Grantors will be permitted to exploit, use, enjoy, protect, license, sublicense, assign, sell, dispose of or take other actions with respect to the Fiscal Year ending (or such longer period Intellectual Property in the ordinary course of the business of the Grantors. In furtherance of the foregoing, so long as no Event of Default shall have occurred and be continuing, the Collateral Agent shall from time permitted by to time, upon the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agentrespective Grantor (through the Borrower), execute and deliver any instruments, certificates or other documents, in the form so requested, that such Grantor (through the Borrower) shall execute have certified are appropriate in its judgment to allow it to take any action permitted above (including relinquishment of the license provided pursuant to clause (i) immediately above as to any specific Intellectual Property). Further, upon the payment in full in cash of all of the Obligations (other than contingent or indemnification obligations not then asserted or due) and deliver, cancellation or termination of all Commitments and have recorded in Letters of Credit (that are not cash collateralized or backstopped to the United States Patent and Trademark office reasonable satisfaction of the Issuing Lender or the United States Copyright Officepurchasing Lender, as applicable, in respect thereof) or earlier expiration of this Agreement or release of the Collateral, the license granted pursuant to clause (i) immediately above shall terminate and become null and void. Notwithstanding the foregoing, the exercise of rights and remedies under Section 6 by the Collateral Agent shall not terminate the rights of the holders of any and all agreements, instruments, documents, and papers as licenses or sublicenses theretofore granted by the Administrative Agent may request to evidence Grantors in accordance with the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property first sentence of such Grantorthis clause (ii).
(fiii) Such Grantor, subject to If at any time the exercise of its reasonable business judgment, taking into account Trademarks within the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in Collateral contain any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes“intent-to-use” applications, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, Collateral Agent shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon refrain from exercising any of its registered Owned Intellectual Propertyrights under Section 6, solely to the extent such exercise would invalidate or cause a Grantor to abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effectapplications.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 4 contracts
Samples: First Lien Guarantee and Collateral Agreement (PGA Holdings, Inc.), First Lien Credit Agreement (PGA Holdings, Inc.), First Lien Guarantee and Collateral Agreement (PGA Holdings, Inc.)
Intellectual Property. (a) Such Except as permitted in the Credit Agreement:
(i) With respect to each material Trademark owned by such Grantor, such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will take all reasonably necessary steps to (i) continue to use each owned such Trademark material consistent with its current use of such Trademark or as otherwise determined by such Grantor, in its reasonable business judgment, in connection with such Grantor’s businesses or goods and services offered by such Grantor, in order to its businessmaintain such Trademark in full force free from any valid claim of abandonment for non-use, (ii) maintain commercially reasonable the quality of products and services offered under such Trademarks Trademark and take all reasonably necessary steps to ensure that all licensed users of such Trademarks comply with Trademark maintain such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreementall material respects, and (iviii) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way, except in the ordinary course of business consistent with such Grantor’s past conduct and pursuant to the exercise of its reasonable business judgment.
(bii) Such Grantor (either itself or through licensees)) will not forfeit, subject abandon or dedicate to the public any material Patent, except in the ordinary course of business consistent with such Grantor’s past conduct and pursuant to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(ciii) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not (and shall will not permit any licensee or sublicensee thereof to) do by any act or knowingly omit omission, forfeit, abandon, or dedicate to do any act whereby the public any material portion of Copyrights Copyright owned by such Grantor Grantor, except in the ordinary course of business, consistent with such Grantor’s past conduct and material pursuant to the exercise of its reasonable business may become invalidated or otherwise impaired. judgment.
(iv) Such Grantor shall not (either itself or through licensees) will not do any act whereby that knowingly uses any material portion Intellectual Property to knowingly infringe the intellectual property rights of such Copyrights may fall into the public domainany other Person.
(dv) To the extent such Grantor has reasonably determined that it is commercially practicable to do so, such Grantor (either itself or through licensees) will use any proper statutory notice necessary or appropriate in connection with the use of each material Patent, Trademark and Copyright owned by such Grantor.
(vi) Such Grantor shall will notify the Administrative Agent and the Lenders promptly if it knows or suspects has reason to believe that any application or registration relating to any Material Intellectual Property owned by material Patent, Trademark or Copyright of such Grantor has been or may imminently become forfeited, abandoned or dedicated to the public, or of any material adverse determination or development (including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any material Patent, Trademark or Copyright owned by such Material Intellectual Property Grantor or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(fvii) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take all reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or group of countries or any political subdivision of any of the foregoing, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property the material to its businessPatents, Trademarks and Copyrights owned by such Grantor, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue reissue, and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(gviii) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not, without the prior written consent of the Administrative Agent, such consent not to be unreasonably withheld or delayed, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any letters patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse EffectEffect and, such Grantor shall give prompt notice of any such abandonment of (i) material Intellectual Property or (ii) registered or issued Intellectual Property or pending applications therefore to the Administrative Agent in accordance herewith.
(hix) In the event that any material Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx and, following consultation with the Administrative Agent, shall take such actions as it deems reasonable, which may include suing for infringement, misappropriation or dilution, to seek seeking injunctive relief where appropriate and seeking to recover any and all damages for such infringement, misappropriation or dilution.
(x) Such Grantor shall take all steps reasonably necessary to protect the secrecy of all material Trade Secrets of such Grantor.
(b) After the date hereof, whenever such Grantor (i) shall acquire any registered, issued or applied for Patent, Trademark or Copyright or (ii) either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Patent, Trademark or Copyright owned by such Grantor with the United States Patent and Trademark Office, the United States Copyright Office or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall report such acquisition or filing to the Administrative Agent within 90 days after the last day of the fiscal year in which such acquisition or filing occurs. Such Grantor agrees that the provisions of Section 3 shall automatically apply to such Intellectual Property.
(c) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to certain of its Intellectual Property in substantially the form of Annex III in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and or the United States Copyright Office.
Office and (kii) Such Grantor agrees to execute an provide to the Administrative Agent, within 90 days after the last day of the fiscal year in which any Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property registered in order such offices is acquired or registered by such Grantor, all documents necessary to record the security interest granted herein to of the Administrative Agent for in such Intellectual Property with such offices.
(d) Upon the ratable benefit reasonable request of the Secured Parties with Administrative Agent, such Grantor shall execute and deliver, and use its commercially reasonable efforts to cause to be filed, registered or recorded, any and all agreements, instruments, documents, and papers which the Administrative Agent may reasonably request to evidence, register, record or perfect the Administrative Agent’s security interest in any registered, issued or applied for Copyright, Patent or Trademark and the goodwill and general intangibles of such Grantor relating thereto or represented thereby, in any office anywhere in the world in which filing, registration or recording may be necessary or appropriate, except that (so long as no Default has occurred and is continuing) the Administrative Agent shall not request such filing, registration or recording in any office in any jurisdiction outside of the United States Patent and Trademark Office and in which the United States Copyright OfficeGroup Members had, during the preceding 12-month period, net sales constituting less than 15% of the consolidated worldwide net sales of the Group Members.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 4 contracts
Samples: Guarantee and Collateral Agreement (Adesa California, LLC), Credit Agreement (Auto Disposal of Memphis, Inc.), Credit Agreement (Carbuyco, LLC)
Intellectual Property. 1. Brainlab shall maintain such title to, and interest in, all intellectual property and the intellectual property rights therein which it may have and all improvements and developments authored, invented (a) Such Grantor (either itself as invented is determined under the patent laws of the United States), otherwise made, created or through licensees) shallgenerated by Brainlab related to the Brainlab Technology or otherwise solely developed by Brainlab and the intellectual property rights therein. Nothing in this Agreement shall be deemed to grant to SurgiVision any right, in the exercise of its reasonable business judgmenttitle or license to any such intellectual property, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, except for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx licenses expressly granted pursuant to this Agreement. Co-Development and Distribution Agreement between SurgiVision, Inc. and an Intellectual Property Security AgreementBrainlab Aktiengesellschaft CONFIDENTIAL
2. SurgiVision shall maintain such title to, and interest in, all intellectual property and the intellectual property rights therein which it may have and all improvements and developments authored, invented (iv) not (as invented is determined under the patent laws of the United States), otherwise made, created or generated by SurgiVision related to the SurgiVision Technology or otherwise solely developed by SurgiVision and not permit the intellectual property rights therein. Nothing in this Agreement shall be deemed to grant to Brainlab any licensee right, title or sublicensee thereof to) do license to any act or knowingly omit such intellectual property, except for the licenses expressly granted pursuant to do any act whereby such Trademark may become invalidated or impaired in any waythis Agreement.
(b) Such Grantor (either itself or through licensees)3. As among the Parties, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is notauthored, invented (as invented is determined under the patent laws of the United States), otherwise made, created or generated by the Parties jointly, shall be owned jointly and equally by such Parties and may be exploited by each of the joint owners, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case may be, without a duty to account.
4. Each of trademarks, the goodwill of the business connected therewith or symbolized thereby, Brainlab and SurgiVision shall automatically become part of the Intellectual Property Collateral, (iii) promptly provide written notice thereof prior to the other, of any allegations of which they or concurrently with their Affiliates become aware that the delivery activities of either Party undertaken in the performance of this Agreement or otherwise relating to the collaboration established by this Agreement infringes upon any patent or other intellectual property right of any other Person. The Parties shall thereupon promptly confer and work together collaboratively and in good faith to determine what steps are to be taken in response to such allegations.
5. SurgiVision hereby grants to Brainlab a non-exclusive, non-transferable, non-sublicensable license in the Therapeutic Delivery Field of Use to use, during the Term, such intellectual property owned or controlled by SurgiVision only as may be required for Brainlab to market the Products in the Territory pursuant to the terms of this Agreement or to otherwise perform its obligations under this Agreement. SurgiVision hereby grants to Brainlab a non-exclusive, non-transferable, non-sublicensable license in the MR Guided Stereotactic Placement Field of Use to use, during the Term, such intellectual property owned or controlled by SurgiVision only as may be required for the marketing of the Compliance Certificate required by Section 6.01(c) of Products in the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein Territory pursuant to the Administrative Agent for the ratable benefit terms of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Officethis Agreement.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 4 contracts
Samples: Co Development and Distribution Agreement, Co Development and Distribution Agreement (Mri Interventions, Inc.), Co Development and Distribution Agreement (Mri Interventions, Inc.)
Intellectual Property. (a) Such Except as could not reasonably be expected to have a Material Adverse Effect, each Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) will continue to use each registered Trademark (owned by such Grantor) and Trademark material for which an application (owned by such Grantor) is pending, to its businessthe extent reasonably necessary to maintain such Trademark in full force free from any claim of abandonment for non-use, (ii) will maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users Trademark at a level substantially consistent with the quality of such Trademarks comply with such Grantor’s quality control requirements products and maintain reasonable qualityservices as of the date hereof, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) will not (and will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may could reasonably be expected to become invalidated or impaired in any way.
, (biv) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall will not do any act, or knowingly omit to do any act, whereby any issued Patent owned by such Grantor material would reasonably be expected to its business may become forfeited, abandoned or dedicated to the public.
, (cv) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights registered Copyright owned by such Grantor and material or Copyright for which an application is pending (owned by such Grantor) could reasonably be expected to its business may become invalidated or otherwise impaired. Such Grantor shall impaired and (vi) will not (either itself or through licensees) do any act whereby any material portion of such the Copyrights may fall into the public domain.
(db) Such Each Grantor shall will notify the Administrative Collateral Agent promptly if it knows knows, or suspects has reason to know, that any application or registration relating to any Material material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material material Intellectual Property owned by such Grantor or such Grantor’s right to register the same or to own and maintain the same.
(ec) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall report such filing or receipt of a registration to the Administrative Collateral Agent prior to or concurrently with within five (5) Business Days after the delivery last day of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent fiscal quarter in its sole discretion), in each case, immediately following the date of which such filing or receipt of registrationoccurs. Upon request of the Administrative Collateral Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Collateral Agent may reasonably request to evidence the Secured Parties’ security interest in any material Copyright, Patent, Patent or Trademark or other Intellectual Property and the goodwill and General Intangibles of such GrantorGrantor relating thereto or represented thereby.
(fd) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Each Grantor will take all reasonable and necessary steps, including at such Grantor’s sole cost and expense, including, without limitation, in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of the material Intellectual Property material to its businessProperty, including the payment of required fees and taxesincluding, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Officewithout limitation, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(he) In the event that any material Intellectual Property material to its business owned by a Grantor is infringed, misappropriated or diluted by a third party, such the applicable Grantor shall (i) at such Grantor’s sole cost and expense, take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Collateral Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for of such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 4 contracts
Samples: First Lien Collateral Agreement (Global Geophysical Services Inc), Second Lien Collateral Agreement (Global Geophysical Services Inc), Second Lien Collateral Agreement (Global Geophysical Services Inc)
Intellectual Property. (ai) Such Solely for the purpose of enabling the Collateral Agent to exercise its rights and remedies under Section 6.7 at such time as the Collateral Agent shall be lawfully entitled to exercise such rights and remedies, and for no other purpose, each Grantor hereby grants to the Collateral Agent, to the extent such Grantor has the right to do so, subject to pre-existing rights and licenses, a non-exclusive license (either itself exercisable without payment of royalty or through licensees) shallother compensation to such Grantor), subject, in the exercise case of its reasonable business judgmentTrademarks, taking into account to sufficient rights to quality control and inspection in favor of such Grantor to avoid the Secured Parties’ interests risk of invalidation of said Trademarks, to use, license or sublicense any of the Intellectual Property constituting Collateral now owned or hereafter acquired by such Grantor, wherever the same may be located, provided that nothing in this Section 6.4 shall require any Grantor to grant any license that is prohibited by any non-waivable Requirement of Law, or is prohibited by, or constitutes a breach or default under this Agreementor would result in the termination of or give rise to any right of acceleration, (i) continue modification or cancellation under, any contract, license, agreement, instrument or other document giving rise to a right to use each owned Trademark material with respect to its business, such property.
(ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps Notwithstanding anything contained herein to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualitythe contrary, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), but subject to the exercise provisions of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) 7.5 of the Credit Agreement for that limit the earlier rights of the Grantors to occur dispose of either their property, notwithstanding the Fiscal Quarter ending June 30 foregoing but subject to the Collateral Agent’s exercise of its rights and remedies under Section 6, the Grantors will be permitted to exploit, use, enjoy, protect, license, sublicense, assign, sell, dispose of or take other actions with respect to the Fiscal Year ending (or such longer period Intellectual Property in the ordinary course of the business of the Grantors. In furtherance of the foregoing, so long as no Event of Default shall have occurred and be continuing, the Collateral Agent shall from time permitted by to time, upon the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agentrespective Grantor, execute and deliver any instruments, certificates or other documents, in the form so requested, that such Grantor shall execute have certified are appropriate in its judgment to allow it to take any action permitted above (including relinquishment of the license provided pursuant to clause (i) immediately above as to any specific Intellectual Property). Further, upon the payment in full in cash of all of the Obligations (other than Borrower Hedge Agreement Obligations, Borrower Cash Management Obligations and deliver, contingent or indemnification obligations not then due) and have recorded in cancellation or termination of all Commitments and Letters of Credit (that are not cash collateralized or back-stopped by the United States Patent and Trademark office Borrower to the reasonable satisfaction of the Issuing Bank or the United States Copyright Officepurchasing Lender, as applicable, any and all agreementsin respect thereof) or earlier expiration of this Agreement or release of the Collateral, instruments, documents, and papers as the Administrative Collateral Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject shall promptly grant back to the exercise of its reasonable business judgment, taking into account Grantors the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, license granted pursuant to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall clause (i) take such actions as such Grantor immediately above. The exercise of rights and remedies under Section 6 by the Collateral Agent shall reasonably deem appropriate under not terminate the circumstances to protect such Intellectual Property and rights of the holders of any licenses or sublicenses theretofore granted by the Grantors in accordance with the first sentence of this clause (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution).
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Guarantee and Collateral Agreement, Guarantee and Collateral Agreement (Engility Holdings, Inc.), First Lien Guarantee and Collateral Agreement (Engility Holdings, Inc.)
Intellectual Property. (a) Such Except to the extent any Grantor reasonably determines that any Intellectual Property is no longer used or useful in its business, such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (i) continue to use commercially each owned material Trademark material in order to its businessmaintain such Trademark in full force free from any claim of abandonment for non-use, (ii) maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law, (iv) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Collateral Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not do any act, or omit to do any act, whereby any material Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) (i) will employ each material Copyright and (ii) will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall will not (either itself or through licensees) do any act whereby any material portion of such the Copyrights may fall into the public domain.
(d) Such Grantor shall (either itself or through licensees) will not do any act that knowingly uses any material Intellectual Property to infringe the intellectual property rights of any other Person.
(e) Such Grantor will notify the Administrative Collateral Agent promptly if it knows knows, or suspects has reason to know, that any application or registration relating to any Material material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any final or non-appealable adverse determination or development (including the institution ofincluding, or any such determination inwithout limitation, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(ef) After Substantially concurrently with each delivery of the Borrower’s annual and quarterly financial statements under the Credit Agreement, the Borrower shall deliver to the Collateral Agent a certificate of a Financial Officer identifying all applications for registration of any Intellectual Property filed during the previous fiscal quarter by such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or Office, the United States Copyright Office, such Grantor shall report such filing Office or receipt of a registration to the Administrative Agent prior to any similar office or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 agency in any other country or the Fiscal Year ending any political subdivision thereof (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon and upon request of the Administrative Collateral Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Collateral Agent may request to evidence the Secured Parties’ Collateral Agent’s security interest in any Copyright, Patent, Patent or Trademark or other Intellectual Property and the goodwill and general intangibles of such GrantorGrantor relating thereto or represented thereby).
(fg) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take all reasonable and necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of the material Intellectual Property material to its businessProperty, including the payment of required fees and taxesincluding, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Officewithout limitation, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any material Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Collateral Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive appropriate relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Credit Agreement (DEX ONE Corp), Credit Agreement (DEX ONE Corp), Credit Agreement (DEX ONE Corp)
Intellectual Property. (a) Such Grantor (either itself Part 2.9(a)(i) of the Company Disclosure Schedule sets forth, with respect to each Proprietary Asset owned by the Acquired Corporations and registered with any Governmental Body or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreementfor which an application has been filed with any Governmental Body, (i) continue to use each owned Trademark material to its businessa brief description of such Proprietary Asset, and (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit names of the Secured Partiesjurisdictions covered by the applicable registration or application. Part 2.9(a)(ii) of the Company Disclosure Schedule identifies and provides a brief description of all other Proprietary Assets owned by the Acquired Corporations that are material to the business of the Acquired Corporations. Part 2.9(a)(iii) of the Company Disclosure Schedule identifies any Acquired Company Contract containing any ongoing royalty or payment obligations in excess of $10,000 with respect to, shall obtain a perfected security interest each Proprietary Asset that is licensed or otherwise made available to the Acquired Corporations by any Person and is material to the business of the Acquired Corporations (except for any Proprietary Asset that is licensed to the Acquired Corporations under any third party software license generally available to the public), and identifies the Contract under which such Proprietary Asset is being licensed or otherwise made available to such Acquired Corporation. The Acquired Corporations have good, valid and marketable title to all of the Acquired Corporation Proprietary Assets identified in such xxxx pursuant to this Agreement Parts 2.9(a)(i) and an Intellectual Property Security Agreement2.9(a)(ii) of the Company Disclosure Schedule, free and clear of all Encumbrances, except for (i) any lien for current taxes not yet due and payable, and (ivii) minor liens that have arisen in the ordinary course of business and that do not (and not permit any licensee individually or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, aggregate) materially detract from the United States Copyright Office value of the assets subject thereto or any court or tribunal in any country) regarding such Grantor’s ownership of, or materially impair the validity of, any such Material Intellectual Property or such Grantor’s operations of either of the Acquired Corporations. The Acquired Corporations have a valid right to register use, license and otherwise exploit all Proprietary Assets identified in Part 2.9(a)(iii) of the same or to own and maintain Company Disclosure Schedule. None of the same.
(e) After such Grantor, either by itself or through Acquired Corporations has developed jointly with any agent, employee, licensee or designee, shall file an application for the registration of other Person any Intellectual Property Acquired Corporation Proprietary Asset that is material to the business of the Acquired Corporations with respect to which such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(cother Person has any rights. Except as set forth in Part 2.9(a)(v) of the Credit Company Disclosure Schedule, there is no Acquired Corporation Contract (with the exception of end user license agreements in the form previously delivered by the Company to Parent) pursuant to which any Person has any right (whether or not currently exercisable) to use, license or otherwise exploit any Acquired Corporation Proprietary Asset.
(b) The Acquired Corporations have taken reasonable measures and precautions to protect and maintain the confidentiality, secrecy and value of all material Acquired Corporation Proprietary Assets (except Acquired Corporation Proprietary Assets whose value would be unimpaired by disclosure). Without limiting the generality of the foregoing, (i) all current and former employees of the Acquired Corporations who are or were involved in, or who have contributed to, the creation or development of any material Acquired Corporation Proprietary Asset have executed and delivered to the Acquired Corporations an agreement that is substantially identical to the form of Confidential Information and Invention Assignment Agreement for previously delivered by the earlier Company to occur Parent, and (ii) all current and former consultants and independent contractors to the Acquired Corporations who are or were involved in, or who have contributed to, the creation or development of any material Acquired Corporation Proprietary Asset have executed and delivered to the Company an agreement that is substantially identical to the form of Consultant Confidential Information and Invention Assignment Agreement previously delivered to Parent. No current or former employee, officer, director, stockholder, consultant or independent contractor has any right, claim or interest in or with respect to any Acquired Corporation Proprietary Asset.
(c) To the Knowledge of the Company: (i) all patents, trademarks, service marks and copyrights held by any of the Acquired Corporations are valid, enforceable and subsisting; (ii) none of the Acquired Corporation Proprietary Assets and no Proprietary Asset that has been substantially developed by any of the Acquired Corporations (either by itself or with any other Person) infringes, misappropriates or conflicts with any Proprietary Asset owned or used by any other Person; (iii) none of the Fiscal Quarter ending June 30 products that are or have been designed, created, substantially developed, assembled, manufactured or sold by any of the Acquired Corporations is infringing, misappropriating or making any unlawful or unauthorized use of any Proprietary Asset owned or used by any other Person, and none of such products has at any time infringed, misappropriated or made any unlawful or unauthorized use of, and none of the Acquired Corporations has received any notice or other communication (in writing or otherwise) of any actual, alleged, possible or potential infringement, misappropriation or unlawful or unauthorized use of, any Proprietary Asset owned or used by any other Person; (iv) no other Person is infringing, misappropriating or making any unlawful or unauthorized use of, and no Proprietary Asset owned or used by any other Person infringes or conflicts with, any material Acquired Corporation Proprietary Asset.
(d) The Acquired Corporation Proprietary Assets constitute all the Proprietary Assets necessary to enable the Acquired Corporations to conduct their business in the manner in which such business has been and is being conducted. None of the Acquired Corporations has (i) licensed any of the material Acquired Corporation Proprietary Assets to any Person on an exclusive basis, or (ii) entered into any covenant not to compete or Contract limiting its ability to exploit fully any material Acquired Corporation Proprietary Assets or to transact business in any market or geographical area or with any Person.
(e) Except as set forth in Part 2.9(e)(i) of the Company Disclosure Schedule, none of the Acquired Corporations has disclosed or delivered to any Person, or permitted the disclosure or delivery to any escrow agent or other Person, of any Acquired Corporation Source Code. No event has occurred, and no circumstance or condition exists, that (with or without notice or lapse of time) will, or could reasonably be expected to, result in the disclosure or delivery to any Person of any Acquired Corporation Source Code. There is no contract pursuant to which the Company has deposited or is required to deposit with an escrowholder or any other Person any Acquired Corporation Source Code, and the execution of this Agreement or the Fiscal Year ending (or such longer period consummation of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request any of the Administrative Agent, such Grantor shall execute and deliver, and have recorded transactions contemplated hereby will not result in the United States Patent and Trademark office release or the United States Copyright Office, as applicable, disclosure of any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such GrantorAcquired Corporation Source Code.
(f) Such GrantorExcept with respect to demonstration or trial copies, subject no product, system, program or software module (i) designed or developed or (ii) to the exercise Knowledge of its reasonable business judgmentCompany, taking into account sold, licensed or otherwise made available by any of the Secured Parties’ interests under this AgreementAcquired Corporations to any Person contains any "back door," "time bomb," "Trojan horse," "worm," "drop dead device," "virus" or other software routines or hardware components designed to permit unauthorized access or to disable or erase software, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office hardware or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, data without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effectuser.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Agreement and Plan of Merger and Reorganization (LJL Biosystems Inc), Agreement and Plan of Merger and Reorganization (Molecular Devices Corp), Merger Agreement (Molecular Devices Corp)
Intellectual Property. Each Grantor agrees that:
(a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) it shall not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and the Intellectual Property which is material to its the business of Grantor or which is of material value may lapse, or become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeitedabandoned, abandoned or dedicated to the public, or unenforceable, or which would adversely affect the validity, grant, or enforceability of the security interest granted therein;
(b) it shall not, with respect to any Trademarks, cease the use of any of such Trademarks, other than in the ordinary course of business, and each Grantor shall take all steps necessary to ensure that licensees of such Trademarks maintain the level of the quality of products sold and services rendered under any of such Trademark at a level at least substantially consistent with the quality of such products and services as of the date hereof;
(c) it shall, within 30 days of the creation or acquisition or exclusive license of any copyrightable work which is material to the business of Grantor, apply to register the Copyright and, in the case of an exclusive IP License, record such license to such Copyright, in the United States Copyright Office;
(d) it shall (i) within 30 days of Grantor or any of its agents, employees, designees or licensees, filing, in the name of or for the benefit of Grantor, an application for the registration of any Patent or Trademark with the United States Patent and Trademark Office or any foreign counterpart or (ii) within 14 days of such Grantor receiving, as owner or exclusive licensee, a Copyright registration with the United States Copyright Office or any foreign counterpart, notify the Collateral Agent and upon request of the Collateral Agent, promptly execute and deliver documents as the Collateral Agent may reasonably request to evidence the Collateral Agent’s security interest in such Collateral;
(e) it shall promptly notify the Collateral Agent if it knows or has reason to know that any item of Intellectual Property may become (i) abandoned or dedicated to the public or placed in the public domain, (ii) invalid or unenforceable, (iii) subject to any adverse determination or development (including the institution of, of proceedings) in any action or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office Office, any state registry, any foreign counterpart of the foregoing, or any court or tribunal in (iv) be the subject of any country) regarding such Grantor’s ownership of, reversion or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.termination rights;
(ef) After such Grantor, either by itself or through any agent, employee, licensee or designee, it shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded take all commercially reasonable steps in the United States Patent and Trademark office or Office, the United States Copyright Office, as applicableany state registry or any foreign counterpart of the foregoing, to pursue any application and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in maintain any Copyrightregistration of each Trademark, Patent, Trademark and Copyright owned by any Grantor which is now or other shall become included in the Intellectual Property of such Grantor.
(f) Such GrantorProperty, subject to the Grantor’s exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.;
(g) Such Grantor (either itself it shall not permit the inclusion in any contract to which it hereafter becomes a party of any provision that could or through licensees), subject to might in any way materially impair or prevent the exercise creation of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Propertya security interest in, or abandon any application or any right to file an application for any patentthe assignment of, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business rights and that interests in any property included within the loss thereof could not reasonably be expected to have a Material Adverse Effect.definitions of any Intellectual Property acquired under such contracts;
(h) In in the event that any material Intellectual Property material owned by or exclusively licensed to its business any Grantor is infringed, misappropriated misappropriated, or diluted by a third party, such Grantor shall (i) promptly take all commercially reasonable actions to stop such actions as such Grantor shall reasonably deem appropriate under the circumstances to infringement, misappropriation, or dilution and protect its rights in such Intellectual Property and (ii) if such Intellectual Property is including, but not limited to, the initiation of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx a suit for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.damages;
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable all steps reasonably necessary to protect the secrecy of all trade secrets or confidential information material to its businessTrade Secrets, including including, without limitation, entering into confidentiality agreements with employees and consultants and labeling and restricting access to secret information and documents;
(j) it shall use proper statutory notice in connection with its use of any of the Intellectual Property; and
(k) it shall continue to collect, at its own expense, all amounts due or to become due to such Grantor in respect of Intellectual Property or any portion thereof. In connection with such collections, each Grantor may take (and, at the Collateral Agent’s reasonable direction, shall take) such action as such Grantor or the Collateral Agent may deem reasonably necessary or advisable to enforce collection of such amounts. Notwithstanding the foregoing, the Collateral Agent shall have the right at any time, to notify, or require any Grantor to notify, any obligors with respect to any such amounts of the existence of the security interest created hereby.
Appears in 3 contracts
Samples: Guarantee and Collateral Agreement (SFX Entertainment, INC), Credit Agreement (SFX Entertainment, INC), Guarantee and Collateral Agreement (SFX Entertainment, INC)
Intellectual Property. (a) Such Anything contained herein to the contrary notwithstanding, upon the occurrence and during the continuation of an Event of Default, which Event of Default was not cured within seven (7) days as of the delivery of a written notice from the Collateral Agent:
(i) the Collateral Agent shall have the right (but not the obligation) to bring suit or otherwise commence any action or proceeding in the name of the Grantor, the Collateral Agent or otherwise, in the Collateral Agent's sole discretion, to enforce any Intellectual Property, in which event such Grantor (either itself or through licensees) shall, at the request of the Collateral Agent, do any and all lawful acts and execute any and all documents required by the Collateral Agent in aid of such enforcement and such Grantor shall promptly, upon demand, reimburse and indemnify the Collateral Agent as provided in the Transaction Documents in connection with the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests rights under this AgreementSection, (i) continue and, to the extent that the Collateral Agent shall elect not to bring suit to enforce any Intellectual Property as provided in this Section, the Grantor agrees to use each owned Trademark material all reasonable measures, whether by action, suit, proceeding or otherwise, to its businessprevent the infringement of any of the Intellectual Property by others and for that purpose agrees to diligently maintain any action, suit or proceeding against any Person so infringing as shall be necessary to prevent such infringement;
(ii) maintain commercially reasonable quality upon written demand from the Collateral Agent, the Grantor shall grant, assign, convey or otherwise transfer to the Collateral Agent all of such Grantor's right, title and interest in and to the Intellectual Property and shall execute and deliver to the Collateral Agent such documents as are necessary or appropriate to carry out the intent and purposes of this Agreement;
(iii) the Grantor agrees that such an assignment and/or recording shall be applied to reduce the Secured Obligations outstanding only to the extent that the Collateral Agent receives cash proceeds or the equivalent in respect of the sale of, or other realization upon, the Intellectual Property;
(iv) within five (5) business days after written notice from the Collateral Agent, the Grantor shall make available to the Collateral Agent, to the extent within such Grantor's power and authority, such personnel in such Grantor's employ on the date of such Event of Default as the Collateral Agent may reasonably designate, by name, title or job responsibility, to permit such Grantor to continue, directly or indirectly, to produce, advertise and sell the products and services offered sold or delivered by such Grantor under or in connection with the Trademarks, Trademark Licenses, such Trademarks persons to be available to perform their prior functions on the Collateral Agent's behalf and take all necessary steps to ensure that all licensed users be compensated by the Collateral Agent at such Grantor's expense on a per diem, pro-rata basis consistent with the salary and benefit structure applicable to each as of the date of such Trademarks comply Event of Default;
(v) the Collateral Agent shall have the right to notify, or require the Grantor to notify, any obligors with respect to amounts due or to become due to such Grantor in respect of the Intellectual Property, of the existence of the security interest created herein, to direct such obligors to make payment of all such amounts directly to the Collateral Agent, and, upon such notification and at the expense of such Grantor’s quality control requirements , to enforce collection of any such amounts and maintain reasonable qualityto adjust, settle or compromise the amount or payment thereof, in the same manner and to the same extent as such Grantor might have done;
(iiivi) not adopt all amounts and proceeds (including checks and other instruments) received by the Grantor in respect of amounts due to such Grantor in respect of the Collateral or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, portion thereof shall be received in trust for the ratable benefit of the Secured PartiesCollateral Agent hereunder, shall obtain a perfected security interest be segregated from other funds of such Grantor and shall be forthwith paid over or delivered to the Collateral Agent in such xxxx pursuant the same form as so received (with any necessary endorsement) to this Agreement be held as cash Collateral and an Intellectual Property Security Agreement, applied then or at any time against the Secured Obligations then due and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.owing; and
(b) Such the Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Collateral Agent, discontinue use adjust, settle or compromise the amount or payment of any such amount or otherwise abandon release wholly or partly any of its registered Owned Intellectual Property, obligor with respect thereto or abandon allow any application credit or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall discount thereon. If (i) take such actions as such Grantor an Event of Default shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is have occurred and, by reason of material economic valuecure, promptly notify the Administrative Agent after it learns thereof and xxx for infringementwaiver, misappropriation modification, amendment or dilutionotherwise, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply theretono longer be continuing, (ii) no other Event of Default shall have occurred and be continuing, (iii) an assignment or other transfer to the Collateral Agent of any rights, title and interests in and to the Intellectual Property shall have been previously made other than in accordance with Section 4 of this Agreement, and (iv) the Secured Obligations shall not have become immediately due and payable according to the Credit Agreement, upon the written request of the Grantor, the Collateral Agent shall promptly execute and deliver to such Grantor, at such Grantor's sole cost and expense, such assignments or other transfer as may be necessary to reassign to such Grantor any such After-Acquired Intellectual Propertyrights, title and interests as may have been assigned to the Collateral Agent as aforesaid, subject to any disposition thereof that may have been made by the Collateral Agent (in such event, the Collateral Agent shall deliver to the Grantor all of the funds or the equivalent, paid to Collateral Agent in consideration for any such disposition); provided, after giving effect to such reassignment, the Collateral Agent's security interest granted pursuant hereto, as well as all other rights and remedies of the Collateral Agent granted hereunder, shall continue to be in full force and effect; and provided further, the rights, title and interests so reassigned shall be free and clear of any Liens granted by or on behalf of the Collateral Agent and the Collateral Agents. Solely for the purpose of enabling the Collateral Agent to exercise rights and remedies under this Section 6 and at such time as the Collateral Agent shall be lawfully entitled to exercise such rights and remedies, the Grantor hereby grants to the Collateral Agent, to the extent it has the right to do so, an irrevocable, nonexclusive license (exercisable without payment of royalty or other compensation to such Grantor), subject, in the case of trademarksTrademarks, to sufficient rights to quality control and inspection in favor of such Grantor to avoid the goodwill risk of the business connected therewith invalidation of said Trademarks, to use, operate under, license, or symbolized thereby, shall automatically become part of the sublicense any Intellectual Property Collateral, (iii) provide written notice thereof prior to now owned or concurrently with the delivery of the Compliance Certificate required hereafter acquired by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtainedGrantor, and (v) promptly after wherever the Administrative Agent’s requestsame may be located, it shall provide such license to terminate upon termination of this Agreement and the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified payment in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit full of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright OfficeObligations.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Loan Agreement (Wintegra Inc), Loan Agreement (Wintegra Inc), Loan Agreement (Wintegra Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in Without limiting any rights of the exercise of its reasonable business judgment, taking into account Collateral Agent under the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative AgentLoan Documents, for the ratable benefit purpose of enabling the Secured PartiesCollateral Agent to exercise its rights and remedies under this Section 6, solely during such time as the Collateral Agent shall obtain a perfected security interest in be lawfully entitled to exercise such xxxx pursuant rights and remedies, and at no other time or for no other purpose, each Grantor hereby grants to this Agreement and the Collateral Agent, to the extent permitted by Law, an irrevocable, non-exclusive IP License (exercisable without payment of royalty or other compensation to such Grantor) under the Intellectual Property Security Agreementnow owned or hereafter acquired or created by such Grantor, wherever the same may be located; provided, that nothing in this Section 6.4 shall require a Grantor to grant any IP License that is prohibited by any Law or is prohibited by, or constitutes a breach or default under or results in the termination of or gives rise to any right of acceleration, modification or cancellation under any Contractual Obligation with respect to such Property; provided, further, that such IP Licenses to be granted hereunder with respect to Trademarks shall be subject to the maintenance of quality standards with respect to the goods and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit services on which such Trademarks are used sufficient to do any act whereby preserve the validity of such Trademark may become invalidated or impaired in any wayTrademarks.
(b) Such Grantor (either itself or through licensees)Notwithstanding anything contained herein to the contrary, but subject to the provisions of Section 6.04 of the Credit Agreement that limit the rights of the Grantors to dispose of their Property and subject to the Collateral Agent’s exercise of its reasonable business judgment, taking into account the Secured Parties’ interests rights and remedies under this AgreementSection 6, the Grantors will be permitted to exploit, use, enjoy, protect, license, sublicense, assign, sell, dispose of or take other actions with respect to their Intellectual Property in the ordinary course of the business of the Grantors. The Grantors (or their licensees) shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion Intellectual Property that is necessary for the operations of Copyrights owned by such Grantor and material to its Grantor’s business may become invalidated or otherwise impaired. Such In furtherance of the foregoing, so long as no Event of Default shall have occurred and be continuing, the Collateral Agent shall from time to time, upon the request of the respective Grantor, execute and deliver any instruments, certificates or other documents, in the form so requested, that such Grantor shall have certified are appropriate in its judgment to allow it to take any action permitted above (including relinquishment of the IP License provided pursuant to paragraph (a) above as to any specific Intellectual Property). Further, upon the payment in full in cash of all of the Obligations (other than contingent or indemnification obligations not then asserted or due) or earlier expiration of this Agreement or release of the Collateral, the IP License granted pursuant to paragraph (either itself a) above shall terminate and become null and void. Notwithstanding the foregoing, the exercise of rights and remedies under this Section 6 by the Collateral Agent shall not terminate the rights of the holders of any licenses or through licensees) do any act whereby any material portion sublicenses theretofore granted by the Grantors in accordance with the first sentence of such Copyrights may fall into the public domainthis paragraph (b).
(dc) Such Grantor If at any time the Trademarks within the Collateral contain any “intent-to-use” applications, the Collateral Agent shall notify the Administrative Agent promptly if it knows or suspects that refrain from exercising any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeitedof its rights under this Section 6, abandoned or dedicated solely to the public, or of any adverse determination (including extent such exercise would impair the institution of, or any ability to obtain a registration from such determination in, any proceeding in the United States Patent and “intent-to-use” Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership ofapplication, or the validity of, or enforceability of any registration that issues from any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such cause a Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effectapplications.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Guarantee and Collateral Agreement (SFX Entertainment, INC), Credit Agreement (SFX Entertainment, INC), Guarantee and Collateral Agreement (SFX Entertainment, INC)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (i) continue to use each owned Trademark that is material to the operation of the business of the Company and its businessSubsidiaries taken as a whole on each and every trademark class of goods applicable to its current line as reflected in its current catalogs, brochures and price lists in order to maintain such Trademark in full force free from any claim of abandonment for non-use, (ii) maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Law, (iv) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any waymaterial respect.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not do any act, or omit to do any act, whereby any Patent owned by such Grantor that is material to the operation of the business of the Company and its business Subsidiaries taken as a whole may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject ) (i) will employ each Copyright that is material to the exercise operation of the business of the Company and its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Subsidiaries taken as a whole and (ii) will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights owned by such Grantor and that is material to the operation of the business of the Company and its business Subsidiaries taken as a whole may become invalidated or otherwise impaired. Such Grantor shall will not (either itself or through licensees) do any act whereby any material portion of such the Copyrights that is material to the operation of the business of the Company and its Subsidiaries taken as a whole may fall into the public domain.
(d) Such Grantor shall (either itself or through licensees) will not do any act that knowingly uses any Intellectual Property that is material to the operation of the business of the Company and its Subsidiaries taken as a whole to infringe the intellectual property rights of any other Person.
(e) Such Grantor will notify the Administrative Agent promptly immediately if it knows knows, or suspects has reason to know, that any application or registration relating to any Material Intellectual Property owned by such Grantor that is material to the operation of the business of the Company and its Subsidiaries taken as a whole may become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(ef) After In the event such Grantor, either by itself or through any agent, employee, licensee or designee, shall in any fiscal year file an application for the registration of any Intellectual Property that is material to the business operation of such Grantor the Company and its Subsidiaries taken as a whole with the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with at the time of delivery of the Compliance Certificate required by annual financial statements with respect to such fiscal year pursuant to Section 6.01(c6.01(a) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registrationAgreement. Upon reasonable request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent may reasonably request to evidence the Secured PartiesAdministrative Agent’s and the Lenders’ security interest in any such Copyright, Patent, Patent or Trademark or other Intellectual Property and the goodwill and general intangibles of such GrantorGrantor relating thereto or represented thereby.
(fg) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take all reasonable and necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of the Intellectual Property that is material to the operation of the business of the Company and its businessSubsidiaries taken as a whole, including the payment of required fees and taxesincluding, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Officewithout limitation, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property that is material to the operation of the business of the Company and its business Subsidiaries taken as a whole is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees thatNotwithstanding anything to the contrary in this Agreement, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) subject to the provisions of Section 2.1 the Credit Agreement, nothing shall automatically apply thereto, (ii) prevent any such After-Acquired Intellectual Property, and Grantor in the case ordinary course of trademarksbusiness from abandoning, the goodwill ceasing to use or otherwise impairing or disposing of the business connected therewith or symbolized thereby, shall automatically become part of the any Intellectual Property Collateralif such Grantor reasonably believes that doing so is in its business interests. For the avoidance of doubt, (iii) provide written notice thereof prior to nothing in this Section 5.8 shall prohibit a sale, transfer or concurrently disposition of any Intellectual Property made in accordance with the delivery of the Compliance Certificate required by Section 6.01(c) Sections 7.04 or 7.05 of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10Agreement.
(j) Such No Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property shall, and the Grantors in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and aggregate shall not, make filings in the United States Copyright OfficeOffice or the United States Trademark Office to perfect any security interest in all or substantially all of the Copyright Licenses held by the Grantors in the aggregate or all or substantially all of the Trademark Licenses held by the Grantors in the aggregate (other than to perfect the security interest in such Copyright Licenses and Trademark Licenses securing the Obligations).
(k) Such Upon and during the continuance of an Event of Default, each Grantor agrees shall use all commercially reasonable efforts to execute an Intellectual Property Security Agreement with respect obtain all requisite consents or approvals under each Copyright License, Patent License and Trademark License reasonably requested by the Administrative Agent to its After-Acquired Intellectual Property in order to record effect the security assignment of all such Grantor’s right, title and interest granted herein thereunder to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Officeor its designee.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Credit Agreement (Readers Digest Association Inc), Guarantee and Collateral Agreement (Readers Digest Association Inc), Guarantee and Collateral Agreement (Readers Digest Association Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (i) continue to use each owned Trademark that is material to its businessGrantor’s then current business in order to maintain such Trademark in full force free from any claim of abandonment for non-use, (ii) maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) use such Trademark with the notices and legends required by applicable Requirements of Law, (iv) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any material way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not do any act, or omit to do any act, whereby any Patent owned by such Grantor that is material to its Grantor’s then current business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights owned by such Grantor and that is material to its Grantor’s then current business may become invalidated or otherwise impaired. Such Grantor shall will not (either itself or through licensees) do any act whereby any material portion of such Copyrights that is material to Grantor’s then current business may fall into the public domain.
(d) Such Grantor shall (either itself or through licensees) will not do any act that knowingly uses any material Intellectual Property to infringe the Intellectual Property rights of any other Person.
(e) Such Grantor will notify the Administrative Agent promptly in accordance with Section 5.7 immediately if it knows knows, or suspects has reason to know, that any application or registration relating to any Material Intellectual Property owned by such Grantor that is material to Grantor’s then current business may become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any adversarial proceeding with a third party in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property that is material to Grantor’s then current business or such Grantor’s right to register the same or to own and maintain the same.
(ef) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file files an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with within 15 Business Days after the delivery last day of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent fiscal quarter in its sole discretion), in each case, immediately following the date of which such filing or receipt of registrationoccurs. Upon request of the Administrative Agent, such Such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent may reasonably request to evidence the Secured Parties’ security interest in any Copyright, Patent, Patent or Trademark or other Intellectual Property and the goodwill and general intangibles of such GrantorGrantor relating thereto or represented thereby.
(fg) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take all reasonable and necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of the Intellectual Property that is material to its Grantor’s then current business, including the payment of required fees and taxesincluding, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Officewithout limitation, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property that is material to its Grantor’s then current business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilutionProperty.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Second Lien Guarantee and Collateral Agreement (New World Restaurant Group Inc), Guarantee and Collateral Agreement (New World Restaurant Group Inc), Guarantee and Collateral Agreement (Einstein Noah Restaurant Group Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in For the exercise term of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue Client hereby grants to use each owned Trademark material to its businessPatheon a non-exclusive, (ii) maintain commercially reasonable quality paid-up, royalty-free, non-transferable license of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such GrantorClient’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit which Patheon must use in order to do any act whereby such Trademark may become invalidated or impaired in any wayperform the Manufacturing Services.
(b) Such Grantor Patheon hereby grants to Client a perpetual, irrevocable, non-exclusive, paid-up, royalty-free, transferable license (either itself with the right to sublicense) to use the Patheon Intellectual Property used by Patheon to perform the Manufacturing Services to enable Client to manufacture or through licenseeshave manufactured the Product(s), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees)Subject to Section 13.1, subject to all Client Intellectual Property, including Product Inventions, will be the exercise exclusive property of its reasonable business judgmentClient, taking into account and all Patheon Intellectual Property will be the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion exclusive property of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domainPatheon.
(d) Such Grantor shall notify Neither party has, nor will it acquire, any interest in any of the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material other party’s Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated unless otherwise expressly agreed to the public, or of in writing. Neither party will use any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property of the other party, except as specifically authorized by the other party or such Grantor’s right to register as required for the same or to own and maintain the sameperformance of its obligations under this Agreement.
(e) After such GrantorEach party hereby acknowledges that it does not have, either and will not acquire any interest in any of the other party’s trademarks or trade names unless otherwise expressly agreed. Each party agrees not to use any trademarks or trade names of the other party, except as specifically authorized by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material other party in writing both as to the business of such Grantor with the United States Patent names or marks which may be used and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration as to the Administrative Agent prior manner and prominence of use. All goodwill in any trademarks will inure to or concurrently with the delivery benefit of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent trademark owner. Client, in its sole discretion), will determine the trademarks and trade names owned or licensed by Client to be used in each caseconnection with the Products, immediately following including without limitation, the date trademarks and trade names which will appear on the labels, packaging, and any promotional or other materials related to the Products. Patheon will use those trademarks and trade names notified by Client to Patheon for use in the labelling and packaging of the Products, and Patheon will use only such filing or receipt of registrationnotified trademarks and trade names for such purpose. Upon request expiration or termination of the Administrative Agentthis Agreement, such Grantor shall execute Patheon will immediately cease using all of Client’s trademarks and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantortrade names.
(f) Such GrantorEach party will be solely responsible for the costs of filing, subject to the exercise prosecution, and maintenance of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned own Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business including trademarks and that the loss thereof could not reasonably be expected to have a Material Adverse Effecttrademark applications and patents and patent applications.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Manufacturing Services Agreement (Evoke Pharma Inc), Manufacturing Services Agreement (Evoke Pharma Inc), Manufacturing Services Agreement (Evoke Pharma Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shallwill, in for each material U.S. and foreign Trademark necessary to the exercise normal conduct of its reasonable such Grantor’s business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned maintain such Trademark material to its businessin full force free from any adjudication of abandonment for non-use, (ii) maintain commercially reasonable quality use such Trademark with the appropriate notice of products registration and services offered under such Trademarks all other notices and take all necessary steps to ensure that all licensed users legends required by applicable Requirements of such Trademarks comply with such Grantor’s quality control requirements Law, and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may is reasonably likely to become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not do any act, or omit to do any act, whereby any material U.S. and foreign Patent owned by necessary to the normal conduct of such Grantor material to its Grantor’s business may become prematurely forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees)) will not, subject and will use its commercially reasonable efforts to the exercise of cause its reasonable business judgmentlicensees not to, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the U.S. and foreign Copyrights owned by necessary to the normal conduct of such Grantor and material to its Grantor’s business may become invalidated invalidated, impaired, or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall (either itself or through licensees) will not knowingly do any act or omit to do any act that uses any material Intellectual Property to infringe the intellectual property rights of any other Person.
(e) Such Grantor will notify the Administrative Agent promptly if it knows or suspects upon becoming aware that any application or registration relating to any Material U.S. Intellectual Property owned by material to the normal conduct of such Grantor Grantor’s business may imminently become forfeited, abandoned or dedicated to the public, or of any materially adverse determination (including the institution ofincluding, or without limitation, any such determination in, in any proceeding in the United States Patent and Trademark Office, Office or the United States Copyright Office or any court or tribunal in any countryOffice) regarding such Grantor’s ownership of, or the validity validity, enforceability or use of, any such Material Intellectual Property material to the normal conduct of such Grantor’s Business or such Grantor’s right to register the same or to own and maintain the same.
(ef) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall acquire, or file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with within five Business Days after the delivery last day of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 fiscal quarter in which such acquisition or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registrationoccurs. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent may reasonably request to evidence the Secured Parties’ Administrative Agent’s security interest in any Copyright, Patent, Patent or Trademark or other Intellectual Property and the goodwill and general intangibles of such GrantorGrantor relating thereto or represented thereby constituting Collateral pursuant to the terms of this Agreement.
(fg) Such Grantor, subject to the exercise of its Grantor will take all reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of the Intellectual Property material to its the normal conduct of such Grantor’s business, including the payment of required fees and taxesincluding, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Officewithout limitation, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any material U.S. Intellectual Property material to its business is infringed, misappropriated infringed or diluted violated by a third party, and such Grantor has knowledge of such infringement or violation, such Grantor shall exercise reasonable business judgment and (i) when applicable and necessary in such Grantor’s reasonable judgment, take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, and the infringement or violation is material, promptly notify the Administrative Agent after it learns thereof and if such Grantor deems it necessary in its reasonable business judgment, promptly xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation infringement or dilutionviolation.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Guarantee and Collateral Agreement (Triumph Group Inc), Guarantee and Collateral Agreement (Triumph Group Inc), Guarantee and Collateral Agreement (Triumph Group Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (i) continue to use each owned Trademark material to its businessbusiness in order to maintain such Trademark in full force free from any claim of abandonment for non-use, (ii) maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable law, (iv) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured PartiesLenders, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject ) (i) will employ each Copyright material to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall and (ii) will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of such Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall will not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall (either itself or through licensees) will not do any act that knowingly uses any Intellectual Property material to its business to infringe the intellectual property rights of any other Person.
(e) Such Grantor will notify the Administrative Agent promptly and the Lenders immediately if it knows knows, or suspects has reason to know, that any application or registration relating to any Material material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding regarding, such Grantor’s ownership of, or the validity of, any such Material material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(ef) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the next delivery of financial statements of the Compliance Certificate required by Company pursuant to Section 6.01(c) 10.1 of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registrationAgreement. Upon the request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured PartiesAdministrative Agent’s and the Lenders’ security interest in any Copyright, Patent, Patent or Trademark or other Intellectual Property and the goodwill and general intangibles of such GrantorGrantor relating thereto or represented thereby.
(fg) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take all reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, steps to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of all material Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued owned by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effectit.
(h) In the event that any material Intellectual Property material to its business is infringed, infringed upon or misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and and, to the extent, in its reasonable judgment, such Grantor determines it appropriate under the circumstances, xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Guaranty and Collateral Agreement (Sei Investments Co), Guaranty and Collateral Agreement (Multi Color Corp), Guaranty and Collateral Agreement (Option Care Inc/De)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue Not do any act or omit to do any act whereby any material Copyright may become invalidated and (A) not do any act, or omit to do any act, whereby any material Copyright may become injected into the public domain; (B) notify the Administrative Agent if any of the foregoing occurs; (C) take all necessary steps as it shall deem appropriate under the circumstances, to maintain and pursue each application (and to obtain the relevant registration) of each material Copyright owned by a Grantor and to maintain each registration of each material Copyright owned by a Grantor including, without limitation, filing of applications for renewal where necessary; and (D) promptly notify the Administrative Agent of any material infringement, misappropriation, dilution or impairment of any Copyright reasonably necessary to the business of a Grantor of which it becomes aware and take such actions as it shall reasonably deem appropriate under the circumstances to protect such Copyright, including, where appropriate, the bringing of suit for infringement, dilution or impairment or seeking injunctive relief and seeking to recover any and all damages for such infringement, misappropriation, dilution or impairment.
(ii) Not make any assignment or agreement in conflict with the security interest in the Copyrights of each Grantor hereunder (except as permitted by the Credit Agreement).
(A) Continue to use each owned Trademark material reasonably necessary for the conduct of business on each and every trademark class of goods applicable to its businesscurrent line as reflected in its current catalogs, brochures and price lists in order to maintain such Trademark in full force free from any claim of abandonment for non-use, (iiB) maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iiiC) employ such Trademark with the appropriate notice of registration, if applicable, (D) not adopt or use any xxxx which that is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivE) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any such Trademark may become invalidated or impaired in any wayinvalidated.
(biv) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not Not do any act, or omit to do any act, whereby any Patent owned by reasonably necessary for the conduct of the business of such Grantor material to its business may become forfeited, abandoned or dedicated to the publicdedicated.
(cv) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify Notify the Administrative Agent promptly and the Secured Parties immediately if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor material Patent or Trademark may become forfeited, abandoned or dedicated to the publicdedicated, or of any materially adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office USPTO or any court or tribunal in any country) regarding such Grantor’s Grantor ownership of, of any Patent or the validity of, any such Material Intellectual Property Trademark or such Grantor’s its right to register the same or to own keep and maintain the same.
(evi) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and Take all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its commercially reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark Office USPTO, or the United States Copyright Officeany similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States each Patent and Trademark Office and reasonably necessary for the United States Copyright Officeconduct of business, the including, without limitation, filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(gvii) Such Grantor (either itself or through licensees), subject to Promptly notify the exercise of its reasonable business judgment, taking into account Administrative Agent and the Secured Parties’ interests under this Agreement, shall not, without Parties after it learns that any Patent or Trademark included in the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application Collateral and reasonably necessary for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated misappropriated, diluted or diluted impaired by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property party and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation misappropriation, dilution or dilutionimpairment, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation misappropriation, dilution or dilutionimpairment, or to take such other actions as it shall reasonably deem appropriate under the circumstances to protect such Patent or Trademark.
(iviii) Such Grantor agrees that, should it obtain an ownership Not make any assignment or agreement in conflict with the security interest in any item the Patents or Trademarks of intellectual property which is not, each Grantor hereunder (except as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Credit Agreement).
(ix) Grants to the Administrative Agent a royalty free license to use such Grantor’s Intellectual Property in its sole discretion), in each case, following connection with the date on which such ownership is obtained, and (v) promptly after enforcement of the Administrative Agent’s requestrights hereunder, it shall provide but only to the extent any license or agreement granting such Grantor rights in such Intellectual Property do not prohibit such use by the Administrative Agent with an amended Schedule 3.9(a) and take Agent. Notwithstanding the actions specified foregoing, the Grantors may, in clauses (j) and (k) of Section 4.10their reasonable business judgment, fail to maintain, pursue, preserve or protect any Copyright, Patent or Trademark which is not necessary to their businesses.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Security and Pledge Agreement (Nuvasive Inc), Security and Pledge Agreement (Nuvasive Inc), Security and Pledge Agreement (Nuvasive Inc)
Intellectual Property. (a) Such Subject to Section 4.04(c), with respect to each item of Intellectual Property Collateral owned by each Grantor, such Grantor (either itself or through licensees) shallagrees to take, in the exercise of at its reasonable business judgmentexpense, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain all commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualitysteps, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agentincluding, for the ratable benefit of the Secured Partiesas applicable, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office and any other Governmental Authority located in the United States, to (i) maintain the validity and enforceability of such Intellectual Property Collateral and maintain such Intellectual Property Collateral in full force and effect, and (ii) pursue the registration and maintenance of each Patent, Trademark, and Copyright registration and application for registration, as applicable, now or any court or tribunal hereafter included in any country) regarding such Intellectual Property Collateral of such Grantor’s ownership of, or except in each case to the validity of, extent failure to do any such of the foregoing would not reasonably be expected to result in a Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the sameAdverse Effect.
(eb) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material Subject to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright OfficeSection 4.04(c), such Grantor shall report such filing or receipt of a registration (and shall use commercially reasonable efforts to cause all its licensees to), as and to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion)extent appropriate, in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its ’s reasonable business judgment, taking into account (i) (1) continue to use each Trademark included in the Secured Parties’ interests Intellectual Property Collateral in order to maintain such Trademark in full force and effect with respect to each class of goods for which such Trademark is currently used, free from any claim of abandonment for non-use, (2) maintain at least the same standards of quality of products and services offered under such Trademark as are currently maintained, (3) use such Trademark with the appropriate notice of registration and all other notices and legends required by Law, (4) not adopt or use any other Trademark that is confusingly similar or a colorable imitation of such Trademark unless the Collateral Agent shall obtain a security interest in such other Trademark pursuant to this AgreementAgreement to the extent required herein and (ii) not do any act or omit to do any act whereby (w) such Trademark (or any goodwill associated therewith) may become destroyed, shall take reasonable and necessary stepsinvalidated, including impaired or harmed in any proceeding before way, (x) any Patent included in the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material Collateral may become forfeited, misused, unenforceable, abandoned or dedicated to its businessthe public or (y) any portion of the Copyrights included in the Intellectual Property Collateral may become invalidated or fall into the public domain, including except in each case to the payment extent failure to do any of required fees and taxes, the filing of responses foregoing would not reasonably be expected to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation result in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedingsa Material Adverse Effect.
(gc) Such No Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, Property Collateral unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property Collateral is no longer desirable or economically practicable in the conduct of such Grantor’s business and business, except to the extent that such discontinuance or abandonment would not reasonably be expected to result in a Material Adverse Effect.
(d) In the loss thereof could not event that any Grantor becomes aware after the date hereof that any item of its material Intellectual Property Collateral is being infringed or misappropriated by a third party in any way that would reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) promptly notify the Collateral Agent and take such actions actions, at its expense, as such Grantor shall reasonably deem deems reasonable and appropriate under the circumstances to protect or enforce such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to including, if such Grantor deems it necessary, suing for infringement or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement misappropriation and for the earlier to occur of either the Fiscal Quarter ending June 30 an injunction against such infringement or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10misappropriation.
(je) Such With respect to its United States Registered Intellectual Property owned by such Grantor agrees in its own name on the date hereof, and the Exclusive IP Agreements to which it is a party as of the date hereof, each Grantor shall execute or otherwise authenticate an agreement, in substantially the form of the Grant of Security Interest in Copyrights, the Notice and Confirmation of Grant of Security Interest in Patents or the Notice and Confirmation of Grant of Security Interest in Trademarks set forth, respectively, in Exhibits 3-A, 3-B and 3-C hereto (collectively, the “Intellectual Property Security Agreement with respect Agreements”), as applicable, for recording the Security Interest granted hereunder to its the Collateral Agent in such United States Registered Intellectual Property and Exclusive IP Agreements with the United States Copyright Office (if in order to record the security interest granted herein to the Administrative Agent for the ratable benefit form of the Secured Parties with Exhibit 3-A) and the United States Patent and Trademark Office and (if in the United States Copyright Officeform of Exhibit 3-B or Exhibit 3-C).
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Security Agreement, Security Agreement (Tribune Media Co), Credit Agreement (Tribune Media Co)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Each Grantor shall notify the Administrative Agent promptly if it knows or suspects has reason to know that any application or registration relating to any Material Intellectual Property owned by such Grantor material Patent, Trademark or Copyright (now or hereafter existing) may become forfeited, abandoned or dedicated to the publicdedicated, or of any adverse determination or development (including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office, the Canadian Intellectual Property Office or any court or tribunal in any countrycourt) regarding such any Grantor’s ownership ofof any Patent, Trademark or the validity ofCopyright, any such Material Intellectual Property or such Grantor’s its right to register the same same, or to own keep and maintain the same.
(eb) After such If any Grantor, either by itself directly or through any agent, employee, licensee or designee, shall file files an application for the registration of any Intellectual Property that is material to the business of such Grantor Patent, Trademark or Copyright with the United States Patent and Trademark Office or Office, the United States Copyright Office, the Canadian Intellectual Property Office or any similar office or agency such Grantor shall report such filing or receipt of a registration to give the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion)written notice thereof on a quarterly basis, in each caseand, immediately following the date of such filing or receipt of registration. Upon upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, deliver any and all agreements, instruments, documents, and papers security agreements as the Administrative Agent may reasonably request to evidence the Secured Parties’ Administrative Agent’s first priority security interest in any Copyright, on such Patent, Trademark or other Intellectual Property Copyright, and the General Intangibles of such GrantorGrantor relating thereto or represented thereby.
(fc) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, Each Grantor shall take reasonable and all actions necessary steps, including in any proceeding before or requested by the United States Patent and Trademark Office or the United States Copyright Office, Administrative Agent to maintain and pursue each application (and application, to obtain the relevant registration) registration and to maintain each the registration of Intellectual Property each of the material to its businessPatents, Trademarks and Copyrights (now or hereafter existing), including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and use, affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue noncontestability and renewal applications or extensions, the payment of maintenance fees, opposition and the participation in interference, reexamination, opposition, cancellation, infringement interference and misappropriation cancellation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined reasonably determine that such use Patent, Trademark or the pursuit or maintenance of such Intellectual Property Copyright is no longer desirable in not material to the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effectbusiness.
(hd) In the event Each Grantor shall, unless it shall reasonably determine that any Intellectual Property such Patent, Trademark or Copyright is in no way material to the conduct of its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic valueoperations, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate dilution and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or take such longer period of time permitted by other actions as the Administrative Agent in its sole discretion)shall reasonably request under the circumstances to protect such Patent, in each case, following Trademark or Copyright. In the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such event that any Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit institutes suit because any of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Patents, Trademarks or Copyrights constituting Collateral is infringed upon, or misappropriated or diluted by a third party, such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements comply with employees and labeling and restricting access to secret information and documentsSection 4.8.
Appears in 3 contracts
Samples: Pledge and Security Agreement (Core-Mark Holding Company, Inc.), Pledge and Security Agreement (Core-Mark Holding Company, Inc.), Pledge and Security Agreement (Core-Mark Holding Company, Inc.)
Intellectual Property. (a) Such Each Grantor agrees that it will not do any act or omit to do any act (and will exercise commercially reasonable efforts to prevent its licensees and sub-licensees from doing any act or omitting to do any act) whereby any Patent or Industrial Design may become invalidated or dedicated to the public, and agrees that it shall continue to xxxx any products covered by a Patent or Industrial Design that is material to the conduct of such Grantor’s business with the relevant patent number as necessary and sufficient to establish and preserve its maximum rights under applicable patent laws.
(b) Each Grantor (either itself or through licenseesits licensees or its sublicensees) shallwill, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreementfor each Material Trademark, (i) continue to use each owned maintain such Material Trademark material to its businessin full force free from any claim of abandonment or invalidity for non-use, (ii) maintain commercially reasonable the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users Material Trademark including where applicable policing the use of such Material Trademarks comply with such Grantor’s quality control requirements by its licensees and maintain reasonable qualitysublicensees, (iii) not adopt display such Material Trademark with notice of Federal or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless foreign registration to the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant extent necessary and sufficient to this Agreement establish and an Intellectual Property Security Agreement, preserve its maximum rights under applicable law and (iv) not (and not permit any licensee or sublicensee thereof to) do any act knowingly use or knowingly omit to do permit the use of such Material Trademark in violation of any act whereby such Trademark may become invalidated or impaired in any waythird party rights.
(bc) Such Each Grantor (either itself or through licensees)its licensees or sublicensees) will, subject for each work covered by a Copyright material to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion conduct of such Copyrights may fall into Grantor’s business, continue to publish, reproduce, display, adopt and distribute the public domainwork with appropriate copyright notice as necessary and sufficient to establish and preserve its maximum rights under applicable copyright laws.
(d) Such Each Grantor shall notify the Administrative Agent promptly if it knows or suspects has reason to know that any application Material Trademark or registration relating any Patent, Copyright or Industrial Design material to any Material Intellectual Property owned by such Grantor the conduct of its business may become forfeitedabandoned, abandoned lost or dedicated to the public, or of any materially adverse determination or development (including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office, Canadian Intellectual Property Office, Canadian Industrial Design Office or any court or tribunal in similar office of any country) regarding such Grantor’s ownership ofof any Patent, Material Trademark, Copyright or Industrial Design material to the validity ofconduct of its business, any such Material Intellectual Property or such Grantor’s its right to register the same same, or its right to own keep and maintain the same.
(e) After such GrantorAt the time of delivery of quarterly financial statements with respect to each Fiscal Quarter pursuant to Section 6.01(b) of the Credit Agreement, either by itself or through each Grantor shall inform the Administrative Agent of any agent, employee, licensee or designee, shall file an application for the any Patent, Trademark, Industrial Design or Copyright (or any registration of any Intellectual Property that is material to the business of Patent, Trademark, Industrial Design or Copyright) such Grantor has filed with the United States Patent and Trademark Office or the Office, United States Copyright Office, Canadian Intellectual Property Office, Canadian Industrial Design Office or any office or agency in any political subdivision of the United States, Canada or in any other country or any political subdivision, province or territory thereof or any Copyright License for which such Grantor shall report such filing or receipt of a registration to has become the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion)licensee, in each case, immediately following the date of during such filing or receipt of registration. Upon Fiscal Quarter, and, upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, deliver any and all agreements, instruments, documents, documents and papers as the Administrative Agent may reasonably request to evidence the Secured Parties’ security interest Administrative Agent’s Security Interest in any Copyrightof the foregoing, Patentand each Grantor hereby appoints the Administrative Agent as its attorney-in-fact to execute and file such writings for the foregoing purposes, Trademark or other Intellectual Property all acts of such Grantorattorney being hereby ratified and confirmed; such power, being coupled with an interest, is irrevocable.
(f) Such Grantor, subject to Each Grantor will take all necessary steps that are consistent with the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including practice in any proceeding before the United States Patent and Trademark Office or the Office, United States Copyright Office, Canadian Intellectual Property Office, Canadian Industrial Design Office or any office or agency in any political subdivision of the United States, Canada or in any other country or any political subdivision, province or territory thereof, to maintain and pursue each application relating to Material Trademarks and each material application relating to the Patents and/or Copyrights and/or Industrial Designs (and to obtain the relevant grant or registration) and to maintain each issued Patent and each registration of Intellectual Property Copyrights and/or Industrial Designs that is material to its businessthe conduct of any Grantor’s business and each registration of Material Trademarks, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing timely filings of applications for renewal or extensionrenewal, the filing of affidavits of use and use, affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue incontestability and renewal applications or extensions, the payment of maintenance fees, and the participation in interferenceand, reexaminationif consistent with good business judgment, to initiate opposition, cancellation, infringement interference and misappropriation proceedingscancelation proceedings against third parties.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property Grantor has reason to believe that any Collateral consisting of a Patent, Industrial Design or Copyright material to its the conduct of any Grantor’s business or a Material Trademark has been or is likely to be infringed, misappropriated or diluted by a third party, such Grantor promptly shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and shall, if consistent with reasonable business judgment, promptly xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate dilution and to recover any and all damages for such infringement, misappropriation or dilution, and take such other actions as are appropriate under the circumstances to protect such Collateral. Each Grantor further agrees not to abandon any Material Trademark or any Patent, Industrial Design, Copyright or Copyright License that in such Grantor’s reasonable business judgment is material to the operation of such Grantor’s business without the prior written consent of the Administrative Agent.
(h) Upon and during the continuance of an Event of Default, each Grantor shall use its best efforts to obtain all requisite consents or approvals by the licensor of each Copyright License, Patent License, Industrial Design License or Material Trademark License under which such Grantor is a licensee to effect the assignment of all such Grantor’s right, title and interest thereunder to the Administrative Agent or its designee.
(i) Such Grantor agrees that, should it obtain an ownership interest in Without limiting the generality of any item of intellectual property which is not, as of the Closing Dateforegoing, a part of each Grantor hereby authorizes the Intellectual Property Collateral (the “After-Acquired Intellectual Property”)Administrative Agent, (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written with prompt notice thereof prior to the Grantors, to supplement this Agreement by supplementing Schedule 1 or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier adding additional schedules hereto to occur of either the Fiscal Quarter ending June 30 identify specifically any asset or the Fiscal Year ending (item that may constitute Copyrights, Copyright Licenses, Patents, Industrial Design or such longer period of time permitted Material Trademarks; provided that any Grantor shall, within 10 days after it has been notified by the Administrative Agent in its sole discretion)of the specific identification of such Collateral, in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide advise the Administrative Agent with an amended Schedule 3.9(a) in writing of any inaccuracy of the representations and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such warranties made by such Grantor agrees to execute an Intellectual Property Security Agreement hereunder with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Officesuch Collateral.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Credit Agreement (Zale Corp), Credit Agreement (Zale Corp), Security Agreement (Z Investment Holdings, LLC)
Intellectual Property. (a) Such On or before the last Business Day of each Fiscal Quarter, the Grantors shall provide Agent notification of any change to the Perfection Certificate with respect to Intellectual Property of any Grantor (either itself or through licensees) shall, in the exercise filing of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, applications for the ratable benefit registration of the Secured Partiesany Patent, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee Trademark or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned Copyright filed by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in with the United States Patent and Trademark Office, the United States Copyright Office or any court similar office or tribunal agency thereof and the short-form intellectual property agreements and assignments described in this Section and any other documents that Agent reasonably requests with respect thereto.
(b) Each Grantor shall (and shall cause all its Subsidiaries and licensees to) (i) preserve or renew all of its registered Intellectual Property, the non-preservation of which would reasonably be expected to have, either individually or in the aggregate, a Material Adverse Effect, (ii) conduct its business and affairs without infringement of or interference with any Intellectual Property of any other Person in any countrymaterial respect, (iii) comply in all material respects with the terms of its IP Licenses, (iv)(A) continue to use each owned Trademark included in the Material Intellectual Property in order to maintain such Trademark in full force and effect with respect to each class of Goods for which such Trademark is currently used, free from any claim of abandonment for non-use, (B) maintain at least the same standards of quality of products and services offered under such Trademark as are currently maintained, (C) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law, (D) not adopt or use any other Trademark that is confusingly similar or a colorable imitation of such Trademark unless Agent shall obtain a perfected security interest in such other Trademark pursuant to this Agreement and (v) not do any act or omit to do any act whereby (w) such Trademark (or any goodwill associated therewith) may become destroyed, invalidated, impaired or harmed in any way, (x) any Patent included in the Material Intellectual Property may become forfeited, misused, unenforceable, abandoned or dedicated to the public, (y) any portion of the Copyrights included in the Material Intellectual Property may become invalidated, otherwise impaired or fall into the public domain or (z) any Trade Secret that is Material Intellectual Property may become publicly available or otherwise unprotectable. Each Grantor shall take all actions, deliver all documents and provide all information necessary or reasonably requested by Agent to ensure any Internet Domain Name is registered.
(c) Each Grantor shall notify Agent immediately if it knows, or has reason to know, that any application or registration relating to any Material Intellectual Property may become forfeited, misused, unenforceable, abandoned or dedicated to the public, or of any adverse determination or development regarding the validity or enforceability or such Grantor’s ownership of, interest in, right to use, register, own or the validity of, maintain any such Material Intellectual Property (including the institution of, or any such Grantor’s right to register the same determination or to own and maintain the same.
(e) After such Grantordevelopment in, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material proceeding relating to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright foregoing in any Applicable IP Office, such ). Such Grantor shall report such filing take all actions that are necessary or receipt of a registration to the Administrative reasonably requested by Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registrationregistration or recordation) and to maintain each registration of and recordation included in the Material Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedingsProperty.
(gd) Such No Grantor (either itself shall knowingly do any act or through licensees)omit to do any act to infringe, subject to the exercise of its reasonable business judgmentmisappropriate, taking into account the Secured Parties’ interests under this Agreementdilute, shall not, without the prior written consent of the Administrative Agent, discontinue use of violate or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or impair the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) any other Person. In the event that any Material Intellectual Property material to its business of such Grantor is or has been infringed, misappropriated misappropriated, violated, diluted or diluted otherwise impaired by a third party, such Grantor shall (i) take such actions action as such Grantor shall it reasonably deem deems appropriate under the circumstances in response thereto, including promptly bringing suit and recovering all damages therefor.
(e) Each Grantor shall execute and deliver to protect Agent in form and substance reasonably acceptable to Agent and suitable for (i) filing in the Applicable IP Office the short-form intellectual property security agreements in the form attached hereto as Annex 3 for all Copyrights, Trademarks, Patents and IP Licenses of such Intellectual Property Grantor and (ii) if such Intellectual Property is of material economic value, promptly notify recording with the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing DateInternet domain name registrar, a part duly executed form of the Intellectual Property Collateral collateral assignment for all Internet Domain Names of such Grantor (the “After-Acquired Intellectual Property”together with appropriate supporting documentation as may be requested by Agent), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Guaranty and Security Agreement (Jakks Pacific Inc), Credit Agreement (Jakks Pacific Inc), Guaranty and Security Agreement (Jakks Pacific Inc)
Intellectual Property. (a) Such Solely for the purpose of enabling the Collateral Agent to exercise its rights and remedies under this Agreement at such time as the Collateral Agent shall be lawfully entitled to exercise such rights and remedies, and for no other purpose, each Grantor hereby grants to the Collateral Agent, to the extent such Grantor has the right to do so, subject to pre-existing rights and licenses, an irrevocable (either itself during such time as the Collateral Agent shall be lawfully entitled to exercise such rights and remedies), non‑exclusive license (exercisable without payment of royalty or through licensees) shallother compensation to such Grantor), subject in the exercise case of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue Trademarks to use each owned Trademark material sufficient rights to its business, (ii) maintain commercially reasonable quality of products control and services offered under such Trademarks and take all necessary steps to ensure that all licensed users inspection in favor of such Trademarks comply with Grantor to avoid the risk of invalidation of said Trademarks, to use, license or sublicense any Intellectual Property now owned or held or hereafter acquired or held by such Grantor, wherever the same may be located, and including in such license reasonable access to all media in which any of the licensed items may be recorded or stored and to all computer software and programs used for the compilation or printout thereof (to the extent permitted by and subject to any applicable underlying license agreements); provided that such non-exclusive license shall be subject to and shall not violate any agreement between a Grantor and a third party governing the applicable Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless Intellectual Property, or gives such third party any right of acceleration, modification or cancellation therein or would not be prohibited by any Requirement of Law of a Governmental Authority. The use of such license by the Administrative Collateral Agent may be exercised, at the option of the Collateral Agent, for solely upon the ratable benefit occurrence and during the continuation of an Event of Default; provided that any license, sublicense or other transaction entered into by the Secured Parties, Collateral Agent during the continuation of an Event of Default in accordance herewith shall obtain a perfected security interest in such xxxx pursuant to this Agreement and be binding upon the Grantors notwithstanding any subsequent cure of an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any wayEvent of Default.
(b) Such Grantor (either itself or through licensees)Notwithstanding anything contained herein to the contrary, but subject to the exercise provisions of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) 7.5 of the Credit Agreement for that limit the earlier rights of the Grantors to occur dispose of either their property and subject to the Fiscal Quarter ending June 30 Collateral Agent’s exercise of its rights and remedies under Section 6, the Grantors will be permitted to exploit, use, enjoy, protect, license, sublicense, assign, sell, dispose of or take other actions with respect to the Fiscal Year ending (or such longer period Intellectual Property. In furtherance of the foregoing, so long as no Event of Default shall have occurred and be continuing, the Collateral Agent shall from time permitted by to time, upon the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agentrespective Grantor (through the Borrower), execute and deliver any instruments, certificates or other documents, in the form so requested, that such Grantor (through the Borrower) shall execute and deliver, and have recorded certified are appropriate in its judgment to allow it to take any action permitted above (including relinquishment of the license provided pursuant to clause (a) immediately above as to any specific Intellectual Property) or to evidence any termination referred to in the United States Patent and Trademark office or the United States Copyright Officenext sentence. Further, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including upon the payment in full in cash of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties Obligations (other than Additional Obligations, Hedge Agreement Obligations, Cash Management Obligations and contingent or indemnification obligations not then due) and cancellation or termination of all Commitments and Letters of Credit (that are not Cash Collateralized) or earlier expiration of this Agreement or release of the Collateral, the license granted pursuant to clause (a) immediately above shall automatically terminate. The exercise of rights and remedies under Section 6 by the Collateral Agent shall not terminate the rights of the holders of any licenses or sublicenses theretofore granted by the Grantors in accordance with the United States Patent and Trademark Office and the United States Copyright Officefirst sentence of this clause (b).
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Asset Based Revolving Credit Agreement (Revlon Inc /De/), Abl Guarantee and Collateral Agreement (Revlon Inc /De/), Term Loan Guarantee and Collateral Agreement (Revlon Inc /De/)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue Solely for the purpose of enabling the Collateral Agent to use exercise its rights and remedies under Section 6.8 at such time as the Collateral Agent shall be lawfully entitled to exercise such rights and remedies, and for no other purpose, each Grantor hereby grants to the Collateral Agent, to the extent such Grantor has the right to do so, subject to pre-existing rights and licenses, a non-exclusive license (exercisable without payment of royalty or other compensation to such Grantor), subject in the case of Trademarks, to sufficient rights to quality control and inspection in favor of such Grantor to avoid the risk of invalidation of said Trademarks, to use, license or sublicense any of the Intellectual Property constituting Collateral now owned Trademark material to its businessor hereafter acquired by such Grantor, wherever the same may be located.
(ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps Notwithstanding anything contained herein to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualitythe contrary, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), but subject to the exercise provisions of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) 7.5 of the Credit Agreement for that limit the earlier rights of the Grantors to occur dispose of either their property, notwithstanding the Fiscal Quarter ending June 30 foregoing but subject to the Collateral Agent’s exercise of its rights and remedies under Section 6, the Grantors will be permitted to exploit, use, enjoy, protect, license, sublicense, assign, sell, dispose of or take other actions with respect to the Fiscal Year ending (or such longer period Intellectual Property in the ordinary course of the business of the Grantors. In furtherance of the foregoing, so long as no Event of Default shall have occurred and be continuing, the Collateral Agent shall from time permitted by to time, upon the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agentrespective Grantor (through the Borrower), execute and deliver any instruments, certificates or other documents, in the form so requested, that such Grantor (through the Borrower) shall execute have certified are appropriate in its judgment to allow it to take any action permitted above (including relinquishment of the license provided pursuant to clause (i) immediately above as to any specific Intellectual Property). Further, upon the payment in full in cash of all of the Obligations (other than Borrower Hedge Agreement Obligations, Borrower Cash Management Obligations and deliver, contingent or indemnification obligations not then due) and have recorded in cancellation or termination of all Commitments and Letters of Credit (that are not cash collateralized or back-stopped to the United States Patent and Trademark office reasonable satisfaction of the Issuing Lender or the United States Copyright Officepurchasing Lender, as applicable, any and all agreementsin respect thereof) or earlier expiration of this Agreement or release of the Collateral, instruments, documents, and papers as the Administrative Collateral Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject shall grant back to the exercise of its reasonable business judgment, taking into account Grantors the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, license granted pursuant to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall clause (i) take such actions as such Grantor immediately above. The exercise of rights and remedies under Section 6 by the Collateral Agent shall reasonably deem appropriate under not terminate the circumstances to protect such Intellectual Property and rights of the holders of any licenses or sublicenses theretofore granted by the Grantors in accordance with the first sentence of this clause (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution).
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Credit Agreement (Booz Allen Hamilton Holding Corp), Credit Agreement (Booz Allen Hamilton Holding Corp), Guarantee and Collateral Agreement (Booz Allen Hamilton Holding Corp)
Intellectual Property. (a) Such If Grantor, either by itself or through any agent, employee, licensee or designee shall file any applications or registrations with respect to any Intellectual Property with the United States Patent and Trademark Office and/or the United States Copyright Office, or any similar office or agency in any other country or any political subdivision thereof, Grantor shall notify Trustee thereof within thirty (30) days of filing such application or registration. Grantor shall execute and deliver to Trustee any document required or reasonably requested by Trustee to acknowledge, confirm, register, record, or perfect Trustee's security interest in any part of the Intellectual Property, whether now owned or hereafter acquired, and Grantor shall deliver an Officers' Certificate as to compliance with this Section 6.1(a); provided that Grantor shall not be obligated to make any present or future, direct or indirect filings of any kind to perfect such security interest in non-U.S. patents.
(b) Grantor shall not do any act or omit to do any act whereby any of the Intellectual Property which is material to the business of Grantor may lapse, or become abandoned, dedicated to the public, or unenforceable, or which would adversely affect the validity, grant, or enforceability of the security interest granted herein.
(c) With respect to any Trademarks which are material to its business, Grantor (i) shall maintain such Trademarks in full force free from any claim of abandonment or invalidity for non-use, (ii) shall not fail to maintain the level of the quality of products sold and services rendered under any of such Trademarks at a level at least substantially consistent with the quality of such products and services as of the date hereof, (iii) shall not fail to employ each material Trademark with the appropriate notice of registration, or (iv) shall not fail to do any act or knowingly omit to do any act (or permit a licensee or sublicensee to act or knowingly omit to act) whereby such Trademark may become invalidated. Grantor shall take all steps necessary to insure that licensees and sublicenses of such Trademarks use such consistent standards of quality.
(d) Grantor shall notify Trustee promptly if it knows (i) that any application or registration relating to any Intellectual Property which is material to the business of Grantor may become abandoned, dedicated or injected into the public domain, (ii) of any materially adverse determination or development (including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office or any court or tribunal in any country) regarding Grantor's ownership of any Patent or Trademark material to the business of Grantor or its right to register the same or to keep and maintain the same, and (iii) of any action Grantor is taking in respect of such event.
(e) Grantor shall take all reasonable and necessary steps, including, without limitation, in any proceeding before the United States Patent and Trademark Office, or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of the Patents and Trademarks material to the business of Grantor, including, without limitation, the filing of applications for renewal, affidavits of use and affidavits of incontestability and, as to Patents, the payment of maintenance fees, except where the failure to take any such action would not have, individually or in the aggregate, a Material Adverse Effect.
(f) Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue shall employ the appropriate notice of copyright for each published Work subject to use each owned Trademark material copyright protection to its business, the extent necessary to protect the Copyright relating to such Work and (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark any material Copyright may become invalidated invalidated, except where the failure to take such action would not have, individually or impaired in any waythe aggregate, a Material Adverse Effect.
(bg) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and take all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including as it shall deem appropriate under the circumstances, in any proceeding before the United States Patent and Trademark Office or the United States Copyright Officeaccordance with its reasonable business judgment, to maintain and pursue each application (and to obtain the relevant registration) and to maintain to the extent permitted by law each registration of Intellectual Property each material to its businessCopyright owned by Grantor including, including the payment of required fees and taxeswithout limitation, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effectwhere necessary.
(h) If Grantor shall obtain any rights to any new invention (whether or not patentable), Trade Secret, Trademark, Trademark License, Copyright, Copyright License, Patent or Patent License, then, to the extent that any item enumerated in this sentence would constitute Collateral, the provisions of this Security Agreement shall automatically apply thereto and any such item shall automatically constitute Collateral and shall be subject to the assignment, Lien and security interest created hereby without further action by any party. Grantor promptly shall (x) give to Trustee written notice of its acquisition of or entitlement to any of the rights set forth in the immediately preceding sentence and (y) confirm the attachment of the Lien and security interest created hereby to any of such rights by execution of an appropriate instrument delivered to Trustee, including an amendment to Schedules 4.16(a), 4.16(b) and/or 4.16(c) to include any such rights, and shall, if applicable, make such filings, registrations and recordings as are necessary or appropriate to perfect such security interests; provided that Grantor shall not be obligated to make any present or future, direct or indirect filings of any kind to perfect such security interests in any non-U.S. Intellectual Property.
(i) In the event that any Intellectual Property material owned by or exclusively licensed to its business Grantor is infringedinfringed upon, misappropriated misappropriated, or diluted by a third party, such Grantor shall (i) promptly take such all actions as such Grantor shall reasonably deem appropriate under the circumstances to protect its rights in such Intellectual Property including, but not limited to, the initiation of a suit for injunctive relief and (ii) if to recover damages. If such Intellectual Property is of material economic value, Grantor shall promptly notify the Administrative Agent Trustee after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to seek and recover any and all damages for such infringement, misappropriation or dilution.
(ij) Such Anything contained herein to the contrary notwithstanding, Trustee shall have the right (but not the obligation) to bring suit or otherwise commence any action or proceeding in the name of Grantor, Trustee or otherwise, in Trustee's reasonable discretion, to enforce any Intellectual Property, in which event Grantor shall, at the request of Trustee, do any and all lawful acts and execute any and all documents required by Trustee in aid of such enforcement and Grantor shall promptly, upon demand, reimburse and indemnify Trustee as provided in Section 9.1 hereof in connection with the exercise of its rights under this Section 6.1, and, to the extent that Trustee shall elect not to bring suit to enforce any Intellectual Property as provided in this Section 6.1, Grantor agrees thatto use all reasonable measures, should it obtain an ownership interest in whether by action, suit, proceeding or otherwise, to prevent the infringement of any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, by others and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor that purpose agrees to execute an Intellectual Property Security Agreement with respect diligently maintain any action, suit or proceeding against any Person so infringing as shall be necessary to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Officeprevent such infringement.
(k) Such Grantor agrees hereby grants to execute an Trustee a transferable and sublicensable non-exclusive worldwide license (exercisable without payment of royalty or other compensation by Trustee) to use, operate under, and make, have made, use, import and sell products or services embodying or made in accordance with any Intellectual Property Security Agreement with respect now or hereafter owned, licensed to, or otherwise acquired by Grantor ("Grantor Intellectual Property"), and/or to its After-Acquired reproduce, perform, display, distribute, and modify Grantor Intellectual Property effective upon the occurrence of an Event of Default. The foregoing license shall be irrevocable and perpetual. If the Obligations are repaid by Grantor in order the ordinary course and in any event prior to record a bankruptcy or insolvency proceeding involving Grantor and other than through the security interest granted herein to the Administrative Agent for the ratable benefit exercise by Grantor of the Secured Parties with the United States Patent any of its rights and Trademark Office remedies hereunder, then such license shall terminate and the United States Copyright Officehave no further force and effect.
(l) Such Grantor and Trustee may modify this Security Agreement, without the consent of Holders, by amending Schedules 4.16(a), 4.16(b) and/or 4.16(c) to include any future Intellectual Property of Grantor in accordance with Section 6.1(h) or to reflect any disposition of Intellectual Property made in compliance with the provisions of this Security Agreement and the Indenture.
(m) Except in the ordinary course of business consistent with prudent business practice, and as may otherwise be permitted by the Indenture, Grantor shall not, without the prior written consent of Trustee, abandon any registration of any Intellectual Property or any right to file an application with respect to Intellectual Property or any pending application with respect to Intellectual Property.
(n) Grantor shall not, without the consent of Trustee, license the Intellectual Property or any portion thereof, or amend or permit the amendment of any of the Licenses, in either case, in a manner that adversely affects the right to receive any material amount of payments thereunder, or, except as otherwise permitted under the Indenture, in any manner materially adverse to the interests of Trustee in the Intellectual Property.
(o) Subject to Section 6.1(n) but notwithstanding any other provision herein to the contrary, so long as no Event of Default shall have occurred and be continuing, Grantor shall be permitted to exploit, use, enjoy, protect, license, sublicense, assign, sell, dispose of or take commercially reasonable steps other actions with respect to protect the secrecy Intellectual Property in the ordinary course of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documentsthe business of Grantor.
Appears in 3 contracts
Samples: Security Agreement (New Cf&i Inc), Security Agreement (New Cf&i Inc), Security Agreement (New Cf&i Inc)
Intellectual Property. (a) Such Grantor Each Credit Party will and will cause each of its Subsidiaries to (either itself or through licenseesi) shallprotect, defend and maintain the validity and enforceability of its Intellectual Property material to its business in the exercise of its reasonable business judgment, taking into account ; (ii) promptly advise the Secured Parties’ interests under this Agreement, (i) continue Administrative Agent in writing of material infringements of which it is aware or any other event that could reasonably be expected to use each owned Trademark materially and adversely affect the value of its Intellectual Property material to its business, (ii) maintain commercially business in its reasonable quality of products business judgment; and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt allow any Intellectual Property material to the Credit Parties’ business to be abandoned, forfeited or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless dedicated to the public without the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way’s written consent.
(b) Such Grantor (either itself or through licensees), subject To the extent not already disclosed to the exercise of its reasonable business judgmentAdministrative Agent, taking into account the Secured Parties’ interests under this Agreementif any Credit Party (i) obtains any Patent, shall not do any actregistered Trademark, or omit to do any actregistered Copyright, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution ofregistered mask work, or any such determination inpending application for any of the foregoing, any proceeding whether as owner or licensee in each case except to the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership ofextent constituting Excluded Assets, or the validity of, (ii) applies for any such Material Intellectual Property Patent or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material Trademark in each case except to the business of such Grantor with extent constituting Excluded Assets, then the United States Patent and Trademark Office or the United States Copyright Office, such Grantor Borrower shall report such filing or receipt of a registration promptly (x) provide written notice thereof to the Administrative Agent prior to or concurrently on a quarterly basis (together with the delivery of the Compliance Certificate required by in accordance with Section 6.01(c8.01(d)) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending and (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor y) shall execute such intellectual property security agreements and deliver, other documents and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers take such other actions as the Administrative Agent may reasonably request to evidence the Secured Parties’ perfect and maintain a first priority perfected security interest in any Copyright, Patent, Trademark or other Intellectual Property favor of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including Administrative Agent in any proceeding before such Collateral registered or issued in the United States Patent and Trademark Office or (subject to Permitted Liens); provided, however, that the United States Copyright Office, foregoing does not apply to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material that is an Excluded Asset. If a Credit Party decides to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and register any Copyrights or mask works in the United States Copyright Office, the filing Borrower shall: (x) provide the Administrative Agent notice of such Credit Party’s registration of such Copyrights or mask works together with a copy of the application it intends to file with the United States Copyright Office (excluding exhibits thereto) on a quarterly basis (together with delivery of the Compliance Certificate in accordance with Section 8.01(d)); (y) execute an intellectual property security agreement and such other documents and take such other actions as the Administrative Agent may reasonably request to perfect and maintain a first priority perfected security interest in favor of the Administrative Agent in the Copyrights or mask works intended to be registered with the United States Copyright Office (subject to Permitted Liens); and (z) record such intellectual property security agreement with the United States Copyright Office. The Borrower shall provide to the Administrative Agent copies of all applications that it files for renewal Patents or extensionfor the registration of Trademarks, Copyrights or mask works on a quarterly basis (together with delivery of the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation Compliance Certificate in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedingsaccordance with Section 8.01(d)).
(gc) Such Grantor Each Credit Party will provide written notice to Administrative Agent within ten (either itself 10) days of any Credit Party entering or through licensees), subject becoming bound by any Restricted License (other than off the shelf software and services that are commercially available to the exercise public or open source licenses) in respect of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed(in its reasonable business judgment). The Borrower shall, misappropriated or diluted by a third partyand shall cause each Credit Party to, such Grantor shall (i) take such actions steps as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx reasonably requests to obtain the consent of, or waiver by, any person whose consent or waiver is necessary for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, Restricted License (other than Excluded Assets) to be deemed “Collateral” and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the have a security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Officein it.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Credit Agreement (Rubrik, Inc.), Credit Agreement (Rubrik, Inc.), Credit Agreement (Rubrik, Inc.)
Intellectual Property. (a) Such Solely for the purpose of enabling the Collateral Agent to exercise its rights and remedies under this Agreement at such time as the Collateral Agent shall be lawfully entitled to exercise such rights and remedies, and for no other purpose, each Grantor hereby grants to the Collateral Agent, to the extent such Grantor has the right to do so, subject to pre-existing rights and licenses, an irrevocable (either itself during such time as the Collateral Agent shall be lawfully entitled to exercise such rights and remedies), non-exclusive license (exercisable without payment of royalty or through licensees) shallother compensation to such Grantor), subject in the exercise case of its reasonable business judgmentTrademarks, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material sufficient rights to its business, (ii) maintain commercially reasonable quality of products control and services offered under such Trademarks and take all necessary steps to ensure that all licensed users inspection in favor of such Trademarks comply with Grantor to avoid the risk of invalidation of said Trademarks, to use, license or sublicense any of the Intellectual Property constituting Collateral now owned or hereafter acquired by such Grantor, wherever the same may be located, and including in such license reasonable access to all media in which any of the licensed items may be recorded or stored and to all computer software and programs used for the compilation or printout thereof, provided that such nonexclusive license does not violate the express terms of any agreement between a Grantor and a third party governing the applicable Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless Collateral consisting of Intellectual Property, or gives such third party any right of acceleration, modification or cancellation therein or would not be prohibited by any Requirement of Law of a Governmental Authority. The use of such license by the Administrative Collateral Agent may be exercised, at the option of the Collateral Agent, for solely upon the ratable benefit occurrence and during the continuation of an Event of Default; provided that any license, sublicense or other transaction entered into by the Secured Parties, Collateral Agent in accordance herewith shall obtain a perfected security interest in such xxxx pursuant to this Agreement and be binding upon the Grantors notwithstanding any subsequent cure of an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any wayEvent of Default.
(b) Such Grantor (either itself or through licensees)Notwithstanding anything contained herein to the contrary, but subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto4.16 of the Indenture that limit the rights of the Grantors to dispose of their property and subject to the Collateral Agent’s exercise of its rights and remedies under Section 6, (ii) any such After-Acquired the Grantors will be permitted to exploit, use, enjoy, protect, license, sublicense, assign, sell, dispose of or take other actions with respect to the Intellectual Property, and Property in the case of trademarks, the goodwill ordinary course of the business connected therewith or symbolized thereby, shall automatically become part of the Grantors. In furtherance of the foregoing, so long as no Event of Default shall have occurred and be continuing, the Collateral Agent shall from time to time, upon the request of the respective Grantor (through the Issuer), execute and deliver any instruments, certificates or other documents, in the form so requested, that such Grantor (through the Issuer) shall have certified are appropriate in its judgment to allow it to take any action permitted above (including relinquishment of the license provided pursuant to clause (a) immediately above as to any specific Intellectual Property Property). Further, upon the payment in full in cash of all of the Obligations or earlier expiration of this Agreement or release of the Collateral, the Collateral Agent shall grant back to the Grantors the license granted pursuant to clause (iiia) provide written notice thereof prior to immediately above. The exercise of rights and remedies under Section 6 by the Collateral Agent shall not terminate the rights of the holders of any licenses or concurrently sublicenses theretofore granted by the Grantors in accordance with the delivery first sentence of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending this clause (or such longer period of time permitted by the Administrative Agent in its sole discretionb), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Collateral Agreement (Scientific Games Corp), Collateral Agreement (Scientific Games Corp), Collateral Agreement (Scientific Games Corp)
Intellectual Property. (a) Such Anything contained herein to the contrary notwithstanding, in addition to the other rights and remedies provided herein, upon the occurrence and during the continuance of an Event of Default:
(i) the Collateral Trustee shall have the right (but not the obligation) to bring suit or otherwise commence any action or proceeding in the name of any Grantor, the Collateral Trustee or otherwise, in the Collateral Trustee’s sole discretion, to enforce any Intellectual Property rights of such Grantor, in which event such Grantor (either itself or through licensees) shall, at the request of the Collateral Trustee, do any and all lawful acts and execute any and all documents reasonably required by the Collateral Trustee in aid of such enforcement and such Grantor shall promptly, upon demand, reimburse and indemnify the Collateral Trustee as provided in Section 7.07 of the Indenture in connection with the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests rights under this AgreementSection 9.6, (i) continue and, to the extent that the Collateral Trustee shall elect not to bring suit to enforce any Intellectual Property rights as provided in this Section 9.6, each Grantor agrees to use each owned Trademark material all reasonable measures, whether by action, suit, proceeding or otherwise, to its businessprevent the infringement, misappropriation, dilution or other violation of any of such Grantor’s rights in the Intellectual Property by others and for that purpose agrees to diligently maintain any action, suit or proceeding against any Person so infringing, misappropriating, diluting or otherwise violating, as shall be necessary to prevent such infringement, misappropriation, dilution or other violation;
(ii) maintain commercially reasonable quality upon written demand from the Collateral Trustee, each Grantor shall grant, assign, convey or otherwise transfer to the Collateral Trustee or such Collateral Trustee’s designee all of such Grantor’s right, title and interest in and to any Intellectual Property and shall execute and deliver to the Collateral Trustee such documents as are necessary or appropriate to carry out the intent and purposes of this Agreement;
(iii) each Grantor agrees that such an assignment and/or recording shall be applied to reduce the Secured Obligations outstanding only to the extent that the Collateral Trustee (or any Secured Party) receives cash proceeds in respect of the sale of, or other realization upon, any such Intellectual Property;
(iv) within five (5) Business Days after written notice from the Collateral Trustee, each Grantor shall make available to the Collateral Trustee, to the extent within such Grantor’s power and authority, such personnel in such Grantor’s employ on the date of such Event of Default as the Collateral Trustee may reasonably designate, by name, title or job responsibility, to permit such Grantor to continue, directly or indirectly, to produce, advertise and sell the products and services offered sold or delivered by such Grantor under or in connection with any Trademarks or Trademark Licenses, such Trademarks persons to be available to perform their prior functions on the Collateral Trustee’s behalf and take all necessary steps to ensure that all licensed users of such Trademarks comply with be compensated by the Collateral Trustee at such Grantor’s quality control requirements expense on a per diem, pro rata basis consistent with the salary and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation benefit structure applicable to each as of the date of such Trademarks unless Event of Default; and
(v) the Administrative AgentCollateral Trustee shall have the right to notify, or require each Grantor to notify, any obligors with respect to amounts due or to become due to such Grantor in respect of the Intellectual Property of such Grantor, of the existence of the security interest created herein, to direct such obligors to make payment of all such amounts directly to the Collateral Trustee, and, upon such notification and at the expense of such Grantor, to enforce collection of any such amounts and to adjust, settle or compromise the amount or payment thereof, in the same manner and to the same extent as such Grantor might have done; it being understood and agreed that
(1) all amounts and proceeds (including checks and other instruments) received by such Grantor in respect of amounts due to such Grantor in respect of the Collateral or any portion thereof shall be received in trust for the ratable benefit of the Secured PartiesCollateral Trustee hereunder, shall obtain a perfected security interest be segregated from other funds of such Grantor and shall be forthwith paid over or delivered to the Collateral Trustee in the same form as so received (with any necessary endorsement) to be held as cash Collateral and applied as provided by Section 9.7 hereof; and
(2) such xxxx pursuant to this Agreement and an Intellectual Property Security AgreementGrantor shall not adjust, and (iv) not (and not permit settle or compromise the amount or payment of any licensee such amount or sublicensee thereof to) do release wholly or partly any act obligor with respect thereto or knowingly omit to do allow any act whereby such Trademark may become invalidated credit or impaired in any waydiscount thereon.
(b) Such Grantor If (either itself i) an Event of Default shall have occurred and, by reason of cure, waiver, modification, amendment or through licensees)otherwise, subject no longer be Continuing, (ii) no other Event of Default shall have occurred and be Continuing, (iii) an assignment or other transfer to the exercise Collateral Trustee of its reasonable business judgmentany rights, taking into account the Secured Parties’ title and interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (in and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor shall have been previously made and shall have become absolute and effective and (iv) the Secured Obligations shall not have become immediately due and payable, upon the written request of any Grantor.
(f) Such , the Collateral Trustee shall promptly execute and deliver to such Grantor, at such Grantor’s sole cost and expense, such assignments or other transfer as may be necessary to reassign to such Grantor any such rights, title and interests as may have been assigned to the Collateral Trustee as aforesaid, subject to any disposition thereof that may have been made by the exercise Collateral Trustee; provided, after giving effect to such reassignment, the Collateral Trustee’s security interest granted pursuant hereto, as well as all other rights and remedies of its reasonable business judgmentthe Collateral Trustee granted hereunder, taking into account shall continue to be in full force and effect; and provided further, the rights, title and interests so reassigned shall be free and clear of any other Liens granted by or on behalf of the Collateral Trustee and the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: First Lien Notes Pledge and Security Agreement (Ocwen Financial Corp), Indenture (Ocwen Financial Corp), Second Lien Notes Pledge and Security Agreement (Ocwen Financial Corp)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After Promptly after such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with (i) in the delivery case of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending any Copyrights, within five Business Days (or such longer period of time permitted by the Administrative Agent in its sole discretion)) after applying for a registration and again within five Business Days (or such longer period of time permitted by the Administrative Agent in its sole discretion) after receiving a registration and (ii) in the case of material Patents, Trademarks or other Intellectual Property, within five Business Days after the last day of the fiscal quarter in each case, immediately following the date of which such filing or receipt of registrationoccurs. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with in the delivery case of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending any Copyrights, within five Business Days (or such longer period of time permitted by the Administrative Agent in its sole discretion)) after obtaining such ownership, provide written notice thereof, (iv) in each casethe case of material Patents, following Trademarks or other Intellectual Property, within five Business Days after the date on last day of the fiscal quarter in which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Pledge and Security Agreement (Babcock & Wilcox Co), Pledge and Security Agreement (Babcock & Wilcox Co), Pledge and Security Agreement (McDermott International Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) Borrower and its Subsidiaries shall, in the exercise of its reasonable business judgmentat their sole expense, taking into account the Secured Parties’ interests under this Agreementprepare, execute, deliver and file any and all agreements, documents or instruments which are necessary or desirable to (i) continue use commercially reasonable efforts to use each owned Trademark material to its business, prosecute and maintain the Material Intellectual Property (including Patents therein); and (ii) maintain use commercially reasonable quality efforts to defend or assert such Material Intellectual Property against commercially significant infringement or interference by any other Persons, and against any claims of products and services offered under such Trademarks and take invalidity or unenforceability, in any jurisdiction (including by bringing any legal action for infringement or defending any counterclaim of invalidity or action of a Third Party for declaratory judgment of non-infringement or non-interference). Borrower shall keep the Lender informed of all necessary steps to ensure that all licensed users of such Trademarks comply actions and the Lender shall have the opportunity to participate and meaningfully consult with such Grantor’s quality control requirements Borrower with respect to the direction thereof and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit Borrower shall consider all of the Secured Parties, Lender’s comments in good faith. This subsection (a) shall obtain a perfected security interest in such xxxx pursuant apply only with respect to this Agreement and an Material Intellectual Property Security Agreementowned by Borrower or its Subsidiaries or, and (iv) not (and not permit to the extent that Borrower or any licensee Subsidiary has prosecution, maintenance and/or enforcement rights with respect thereto, licensed by Borrower or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any wayits Subsidiaries.
(b) Such Grantor Borrower and its Subsidiaries shall use commercially reasonable efforts to prosecute all pending Patent applications within the Material Intellectual Property for which it is an owner (either itself or through licensees), subject otherwise has rights to prosecute such Patents) consistent with standards in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the publicmedical device industry for similarly situated entities.
(c) Such Grantor (either itself or through licensees)Borrower shall, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall cause each Subsidiary to:
(i) take reasonable measures to protect the proprietary nature of Material Intellectual Property and to maintain in confidence all trade secrets and confidential information compromising a part thereof;
(ii) not permit disclose and use commercially reasonable efforts to prevent any licensee distribution or sublicensee thereof todisclosure by others (including their employees and contractors) do of any act item that contains or knowingly omit embodies Material Intellectual Property; and
(iii) take reasonable physical and electronic security measures to do prevent disclosure of any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated item that contains or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domainembodies Material Intellectual Property.
(d) Such Grantor Borrower and its Subsidiaries shall notify use commercially reasonable efforts to cause each individual associated with the Administrative Agent promptly if it knows or suspects that filing and prosecution of the Patents material to the conduct of the business of Borrower and its Subsidiaries to comply in all material respects with all applicable duties of candor and good faith in dealing with any application or registration relating Patent Office, including any duty to disclose to any Material Intellectual Property owned Patent Office all information known by such Grantor may become forfeitedindividual to be material to patentability of each such Patent, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any in those jurisdictions where such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the sameduties exist.
(e) After Borrower shall furnish the Lender from time to time upon Lender’s reasonable written request therefor reasonably detailed statements and schedules further identifying and describing the Intellectual Property and such Grantor, either by itself other materials evidencing or through any agent, employee, licensee or designee, shall file an application for the registration of reports pertaining to any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent Lender may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantorreasonably request.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Loan Agreement (Invuity, Inc.), Loan Agreement (Invuity, Inc.), Loan Agreement (Invuity, Inc.)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue In order to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply facilitate filings with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal each Grantor shall execute and deliver to Collateral Agent one or extensionmore Copyright Security Agreements, the filing of affidavits of use and affidavits of incontestabilityTrademark Security Agreements, the filing of divisionalor Patent Security Agreements, continuationor supplements thereto, continuation-in-partto further evidence Collateral Agent’s Lien on such Grantor’s Patents, reissue and renewal applications Trademarks, or extensions, the payment of maintenance feesCopyrights, and the participation General Intangibles of such Grantor relating thereto or represented thereby, including, commencing on the six-month anniversary hereof and each six-month anniversary hereafter documentation sufficient to perfect Collateral Agent’s Liens on such Intellectual Property or Intellectual Property License for all new Patents or Trademarks that are registered or the subject of pending applications for registrations, and of all exclusive Intellectual Property Licenses that are material to the conduct of such Grantor’s business, in interferenceeach case, reexaminationwhich were entered into, oppositionacquired, cancellationregistered, infringement or for which applications for registration were filed by any Grantor during the immediately preceding six-month period and misappropriation proceedingsany statement of use or amendment to allege use was filed with respect to intent-to-use trademark applications. In the case of such registrations or applications therefor, which were acquired by any Grantor, each such Grantor shall file the necessary documents with the appropriate Governmental Authority identifying the applicable Grantor as the owner (or as a co-owner thereof, if such is the case) of such Intellectual Property.
(gii) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Each Grantor shall have previously determined that such use or the pursuit or maintenance of such duty, with respect to all Intellectual Property owned by such Grantor (whether now existing or hereafter required) that is no longer desirable material to and necessary in the conduct of such Grantor’s business business, to take all reasonable and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances necessary measures to protect and diligently enforce and defend at such Grantor’s expense all of such Intellectual Property Property, including (A) to diligently enforce and (ii) if such Intellectual Property is of material economic valuedefend, including promptly notify the Administrative Agent after it learns thereof and xxx suing for infringement, misappropriation misappropriation, or dilution, to seek injunctive relief where appropriate dilution and to recover any and all damages for such infringement, misappropriation misappropriation, or dilution, and filing for opposition, interference, and cancellation against conflicting Intellectual Property rights of any Person, (B) to prosecute diligently any trademark application or service xxxx application that is part of the Trademarks pending as of the date hereof or hereafter until the termination of this Agreement, (C) to prosecute diligently any patent application that is part of the Patents pending as of the date hereof or hereafter until the termination of this Agreement, and (D) to take all reasonable and necessary action to preserve and maintain all of such Grantor’s Trademarks, Patents, Copyrights, Intellectual Property Licenses, and its rights therein, including paying all maintenance fees and filing of applications for renewal, affidavits of use, and affidavits of noncontestability. Each Grantor further agrees not to abandon any Intellectual Property or terminate any Intellectual Property License that is material to and necessary in the conduct of such Grantor’s business. Each Grantor hereby agrees to take the steps described in this Section 6(g)(ii) with respect to all new or acquired Intellectual Property to which it or any of its Subsidiaries is now or later becomes entitled that is material to and necessary in the conduct of such Grantor’s business.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with Each Grantor acknowledges and agrees that the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it Secured Parties shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement have no duties with respect to its any Intellectual Property in order to record or Intellectual Property Licenses of any Grantor. Without limiting the security interest granted herein to the Administrative Agent for the ratable benefit generality of this Section 6(g)(iii), each Grantor acknowledges and agrees that no member of the Secured Parties shall be under any obligation to take any steps necessary to preserve rights in the Collateral consisting of Intellectual Property or Intellectual Property Licenses against any other Person, but any member of the Secured Parties may do so at its option from and after the occurrence and during the continuance of an Event of Default, and all expenses incurred in connection therewith (including reasonable fees and expenses of attorneys, agents and other professionals) shall be for the sole account of Company.
(iv) Anything to the contrary in this Agreement notwithstanding, in no event shall any Grantor, either itself or through any agent, employee, licensee, or designee, file an application for the registration of any Copyright with the United States Patent Copyright Office or any similar office or agency in another country without giving Collateral Agent written notice thereof at least three (3) Business Days prior to such filing and Trademark complying with Section 6(g)(i). Upon receipt from the United States Copyright Office and of notice of registration of any Copyright, each Grantor shall promptly (but in no event later than three (3) Business Days following such receipt) notify Collateral Agent in writing of such registration by delivering, or causing to be delivered, to Collateral Agent, documentation sufficient to perfect Collateral Agent’s Liens on such Copyright. If any Grantor acquires from any Person any Copyright registered with the United States Copyright Office or an application to register any Copyright with the United States Copyright Office, such Grantor shall promptly (but in no event later than three (3) Business Days following such acquisition) notify Collateral Agent, in writing, of such acquisition and deliver, or cause to be delivered, to Collateral Agent, documentation sufficient to perfect Collateral Agent’s Liens on such Copyright. In the case of such Copyright registrations or applications therefor which were acquired by any Grantor, each such Grantor shall promptly (but in no event later than three (3) Business Days following such acquisition) file the necessary documents with the appropriate Governmental Authority identifying the applicable Grantor as the owner (or as a co-owner thereof, if such is the case) of such Copyrights.
(kv) Such Each Grantor agrees shall take reasonable steps to maintain the confidentiality of, and otherwise protect and enforce its rights in, the Intellectual Property that is material to and necessary in the conduct of such Grantor’s business, including, as applicable (A) protecting the secrecy and confidentiality of its confidential information and trade secrets by having and enforcing a policy requiring all current employees, consultants, licensees, vendors and contractors with access to such information to execute an Intellectual Property Security Agreement with respect appropriate confidentiality agreements; (B) taking actions reasonably necessary to its After-Acquired Intellectual Property in order to record ensure that no trade secret falls into the security interest granted herein to public domain; and (C) protecting the Administrative Agent for the ratable benefit secrecy and confidentiality of the Secured Parties source code of all software programs and applications of which it is the owner or licensee by having and enforcing a policy requiring any licensees (or sublicensees) of such source code to enter into license agreements with the United States Patent commercially reasonable use and Trademark Office and the United States Copyright Officenon-disclosure restrictions.
(lvi) Such No Grantor shall take enter into any Intellectual Property License to receive any license or rights in any Intellectual Property of any other Person unless such Grantor has used commercially reasonable steps efforts to protect permit the secrecy assignment of or grant of a security interest in such Intellectual Property License (and all trade secrets or confidential information material rights of Grantor thereunder) to its business, including entering into confidentiality agreements with employees the Collateral Agent (and labeling and restricting access to secret information and documentsany transferees of Collateral Agent).
Appears in 3 contracts
Samples: Security and Pledge Agreement (Horizon Lines, Inc.), Security and Pledge Agreement (Horizon Lines, Inc.), Security and Pledge Agreement (Horizon Lines, Inc.)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shallCustomer agrees that Xxxxxxx owns and retains all right, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products title and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant and to this Agreement and an Intellectual Property Security Agreement, and (iv) all of Granite’s owned or licensed intellectual property; including but not (and not permit any licensee or sublicensee thereof limited to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documentsderivative or collateral thereof (“Granite IP”), and papers as acknowledges that Granite IP and the Administrative Agent registration thereof are good, valid and enforceable in law and equity. Customer will not engage directly or indirectly in any activities which may request contest, dispute or otherwise impair the right, title and interest of Granite in and to evidence the Secured Parties’ security Granite IP. Granite shall own and retain all right, title and interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain all works, methods, processes, software, materials and know-how developed by Granite pursuant to or in connection with the relevant registration) Agreement (“Deliverables”). Granite retains all right, title and interest in and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringementof its software, misappropriation software development tools, know how, methodologies, processes, technologies or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest algorithms used in any item of intellectual property providing the Services which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all are based upon trade secrets or confidential or proprietary information material of Granite or otherwise owned or licensed by Granite, whether or not incorporated into any Deliverables. Except as otherwise provided for herein, upon expiration or termination of the Agreement for any reason, any licenses shall cease. Customer is expressly prohibited from improving or modifying any Granite IP. Any such improvements or modifications made to its businessGranite IP by or on behalf of Customer shall be a “work made for hire” and Customer shall assign all proprietary rights thereto, including entering into confidentiality agreements copyrights, patents and trade secrets, to Granite. Customer agrees to execute any documents reasonably requested by Xxxxxxx to secure and protect the proprietary rights and ownership thereof by Xxxxxxx. Except with employees the consent of Granite, Customer shall not use any Granite trademark(s) (whether registered or common law marks), including, but not limited to, in advertising or marketing and labeling shall not register any trademark(s) that is substantially similar to a trademark owned by Granite. Granite shall own and restricting access retain all right, title, and interest in and to secret information the web portal website and documentsall Granite documentation associated therewith and with the Services. To the extent, if any, provided by Granite as part of the Services, Customer agrees (a) not to reproduce, modify, translate, transform, decompile, reverse engineer, disassemble, or otherwise determine or attempt to determine the source code of any Granite or other third party software or permit or authorize any third party to do so; and (b) that Granite provides, and Customer accepts, such software “as is” with no express or implied warranties, including merchantability, title, non-infringement or fitness for particular use. For purposes of this Section 13.2, “Granite” shall include Granite and its Affiliates.
Appears in 3 contracts
Samples: General Terms of Service, General Terms and Conditions of Service, General Terms and Conditions of Service
Intellectual Property. (a) Such Grantor (either itself or through licenseeslicensees or sublicensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (i) continue to use maintain each owned material Trademark material to its businessin full force free from any meritorious claim of abandonment for non-use, (ii) maintain commercially reasonable and in a manner consistent with the quality of products goods and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of Trademark in the past; (ii) use such Trademarks comply with such Grantor’s quality control requirements the appropriate notice of registration and maintain reasonable qualityall other notices and legends required by applicable Requirements of Law, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, licensees or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(csublicensees) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights owned by such Grantor and material to its business may (i) become invalidated or otherwise impaired. Such Grantor shall not impaired or (either itself or through licenseesii) do any act whereby any material portion of such Copyrights may fall into the public domain.
(c) Such Grantor (either itself or through licensees or sublicensees) will not do any act that knowingly uses any Intellectual Property to Infringe the Intellectual Property rights of any other Person.
(d) Such Grantor shall will notify the Administrative Agent and the Lenders promptly if it knows knows, or suspects has reason to know, that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership ofrights in, or the validity validity, enforceability, ownership or use of, any such Material Intellectual Property or Property, including, without limitation such Grantor’s right to register the same or to own and maintain the same.
(e) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall (i) file an application for the registration of or (ii) acquire any applications or registrations for any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with within fifteen Business Days after the delivery last day of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent fiscal quarter in its sole discretion), in each case, immediately following the date of which such filing or receipt of registrationoccurs. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence evidence, record and perfect the Secured PartiesAdministrative Agent’s and the Lenders’ security interest in any Copyright, Patent, Trademark or other such Intellectual Property and the goodwill and general intangibles of such GrantorGrantor relating thereto or represented thereby.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take all reasonable and necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of the Intellectual Property material to its businessProperty, including the payment of required fees and taxesincluding, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Officewithout limitation, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue incontestability and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any material Intellectual Property material to its business is infringed, misappropriated or diluted Infringed by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances in its commercially reasonable business judgment to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx take such actions as Grantor shall deem appropriate under the circumstances in its commercially reasonable business judgment, which may include suing for infringementInfringement, misappropriation or dilution, to seek seeking injunctive relief where appropriate and to recover recovering any and all damages for such infringement, misappropriation or dilutionInfringement.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Guarantee and Collateral Agreement, Credit Agreement (MARRIOTT VACATIONS WORLDWIDE Corp), Guarantee and Collateral Agreement (MARRIOTT VACATIONS WORLDWIDE Corp)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (i) continue to use each owned material Trademark material on each and every trademark class of goods applicable to its businesscurrent line as reflected in its current catalogs, brochures and price lists in order to maintain such Trademark in full force free from any claim of abandonment for non-use, (ii) maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law, (iv) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured PartiesLenders, shall obtain a perfected security interest in such xxxx (to the extent a security interest in such xxxx xxx be perfected by filing under the applicable Uniform Commercial Code, or similar law in a foreign jurisdiction, or with the United States Patent and Trademark Office, or corresponding foreign office, and to the extent requested following a notice delivered by such Grantor pursuant to clause (f) below) pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not do any act, or omit to do any act, whereby any material Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) (i) will employ each material Copyright and (ii) will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall will not (either itself or through licensees) do any act whereby any material portion of such the Copyrights may fall into the public domain.
(d) Such Grantor shall (either itself or through licensees) will not do any act that knowingly uses any material Intellectual Property to infringe the intellectual property rights of any other Person.
(e) Such Grantor will notify the Administrative Agent and the Lenders promptly if it knows knows, or suspects has reason to know, that any application or registration relating to any Material material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material material Intellectual Property subject to such an application or registration or such Grantor’s right to register the same or to own and maintain the same.
(ef) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate compliance certificate required by to be delivered pursuant to Section 6.01(c6.2(b) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent fiscal quarter in its sole discretion), in each case, immediately following the date of which such filing or receipt of registrationoccurs. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured PartiesAdministrative Agent’s and the Lenders’ security interest in any Copyright, Patent, Patent or Trademark or other Intellectual Property and the goodwill (if applicable) and general intangibles of such GrantorGrantor relating thereto or represented thereby.
(fg) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take all reasonable and necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of the material registered Intellectual Property material to its businessProperty, including the payment of required fees and taxesincluding, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Officewithout limitation, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any material Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Credit Agreement (Tenneco Inc), Guarantee and Collateral Agreement (Tenneco Inc), Guarantee and Collateral Agreement (Tenneco Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (i) continue to use each owned material Trademark material on each and every trademark class of goods applicable to its businesscurrent line as reflected in its current catalogs, brochures and price lists in order to maintain such Trademark in full force free from any claim of abandonment for non-use, (ii) maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law, (iv) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured PartiesLenders, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not do any act, or omit to do any act, whereby any material Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall
(i) will employ each material Copyright and (ii) will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall will not (either itself or through licensees) do any act whereby any material portion of such the Copyrights may fall into the public domain.
(d) Such Grantor shall (either itself or through licensees) will not do any act that knowingly uses any material Intellectual Property to infringe the intellectual property rights of any other Person.
(e) Such Grantor will notify the Administrative Agent promptly and the Lenders immediately if it knows knows, or suspects has reason to know, that any application or registration relating to any Material material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s 's ownership of, or the validity of, any such Material material Intellectual Property or such Grantor’s 's right to register the same or to own and maintain the same.
(ef) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with within five Business Days after the delivery last day of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent fiscal quarter in its sole discretion), in each case, immediately following the date of which such filing or receipt of registrationoccurs. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ Administrative Agent's and the Lenders' security interest in any Copyright, Patent, Patent or Trademark or other Intellectual Property and the goodwill and general intangibles of such GrantorGrantor relating thereto or represented thereby.
(fg) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take all reasonable and necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of the material Intellectual Property material to its businessProperty, including the payment of required fees and taxesincluding, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Officewithout limitation, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any material Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Guarantee and Collateral Agreement (Sba Communications Corp), Credit Agreement (Powerhouse Technologies Inc /De), Credit Agreement (Big City Radio Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its subject to such Grantor’s reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, it shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) knowingly do any act or knowingly omit to do any act whereby any material portion registrations of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeitedlapses, abandoned or becomes abandoned, dedicated to the public, or unenforceable, which would adversely affect the validity, grant, or enforceability of the security interest granted therein;
(b) subject to such Grantor’s reasonable business judgment, it shall not, with respect to any Trademarks constituting Material Intellectual Property (including, without limitation, such Trademarks licensed pursuant to the Material Trademark License), cease the use of any of such Trademarks or fail to maintain the level of the quality of products sold and services rendered under any of such Trademark at a level at least substantially consistent with the quality of such products and services as of the date hereof;
(c) it shall notify the Collateral Agent, on a quarterly basis, if it knows that any item of currently registered Material Intellectual Property has become (i) abandoned or dedicated to the public or placed in the public domain, (ii) invalid or unenforceable or (iii) subject to any adverse determination (including the institution of, determinations in any action or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office Office, any state registry, any foreign counterpart of the foregoing, or any court or tribunal in any countrycourt;
(d) regarding subject to such Grantor’s ownership ofreasonable business judgment, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, it shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded take all steps in the United States Patent and Trademark office or Office, the United States Copyright Office, as applicableany state registry or any foreign counterpart of the foregoing, necessary to pursue any filed application and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in maintain any Copyrightregistration of each Trademark, Patent, and Copyright owned or exclusively licensed under the Material Trademark or other License (to the extent Grantor has the rights therein to do so) by such Grantor and that, in each case, constitutes Material Intellectual Property of Property;
(e) subject to such Grantor.
(f) Such Grantor, subject to the exercise of its ’s reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Material Intellectual Property material owned, or exclusively licensed under the Material Trademark License (to its business the extent Grantor has the rights therein to do so) by such Grantor is infringed, misappropriated misappropriated, or diluted by a third party, and if Grantor knows of such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, such Grantor shall promptly take reasonable actions to seek stop such infringement, misappropriation, or dilution or to otherwise protect its rights in such Material Intellectual Property including, but not limited to, the initiation of a suit for injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.damages;
(if) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any subject to such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the Grantor’s reasonable business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s requestjudgment, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially all reasonable steps under the circumstances to protect the secrecy of all trade secrets or confidential information material to its businessTrade Secrets which constitute Material Intellectual Property, including including, without limitation, entering into confidentiality agreements with employees and consultants and labeling and restricting access to secret information and documents; and
(g) Grantor shall use commercially reasonable efforts to continue to collect, at its own expense, all amounts due or to become due to such Grantor in respect of the Material Intellectual Property or any portion thereof. In connection with such collections, each Grantor may take (and, at the Collateral Agent’s reasonable direction, shall take) such action as such Grantor or the Collateral Agent may deem reasonably necessary or, in the Collateral Agent’s reasonable judgment, advisable to enforce collection of such amounts. Notwithstanding the foregoing, the Collateral Agent shall have the right at any time, to notify, or require any Grantor to notify, any obligors with respect to any such amounts of the existence of the security interest created hereby.
Appears in 3 contracts
Samples: Second Lien Credit and Guaranty Agreement (Bz Intermediate Holdings LLC), Pledge and Security Agreement (Boise Inc.), Pledge and Security Agreement (Boise Inc.)
Intellectual Property. (a) Such Grantor Each applicable Pledgor will, at its own expense, execute and deliver to the Administrative Agent on the Closing Date fully completed assignments in the forms of Exhibits A and B, as applicable, for recordation in the U.S. Copyright Office or the U.S. Patent and Trademark Office with regard to any Copyright Collateral, Patent Collateral or Trademark Collateral, as the case may be, described in Annex D, E or F hereto. In the event that after the date hereof any Pledgor shall acquire any registered Copyright, Patent or Trademark, or effect any registration of any Copyright, Patent or Trademark or file any application for registration thereof, whether within the United States or any other country or jurisdiction, such Pledgor shall promptly furnish written notice thereof to the Administrative Agent together with information sufficient to permit the Administrative Agent, upon its receipt of such notice, to (and each Pledgor hereby authorizes the Administrative Agent to) modify this Agreement, as appropriate, by amending Annexes D, E and F hereto or to add additional exhibits hereto to include any Copyright, Patent or Trademark that becomes part of the Collateral under this Agreement, and such Pledgor shall additionally, at its own expense, execute and deliver to the Administrative Agent, as promptly as possible (but in any event within 15 days) after the date of such acquisition, registration or application, as applicable, with regard to United States Patents, Trademarks and Copyrights, fully completed assignments in the forms of Exhibits A and B, as applicable, for recordation in the U.S. Copyright Office or the U.S. Patent and Trademark Office as more fully described hereinabove, together in all instances with any other agreements, instruments and documents that the Administrative Agent may reasonably request from time to time to further effect and confirm the assignment and security interest created by this Agreement in such Copyrights, Patents and Trademarks, and each Pledgor hereby appoints the Administrative Agent its attorney-in-fact to execute, deliver and record any and all such agreements, instruments and documents for the foregoing purposes, all acts of such attorney being hereby ratified and confirmed and such power, being coupled with an interest, shall be irrevocable for so long as this Agreement shall be in effect with respect to such Pledgor.
(b) Each Pledgor (either itself or through licenseesits licensees or its sublicensees) shallwill, in for each Trademark that is material to the exercise conduct of its reasonable business judgmentbusiness, taking into account the Secured Parties’ interests under this Agreement, use its best efforts to (i) continue to use each owned maintain such Trademark material to its businessin full force and effect, free from any claim of abandonment or invalidity for non-use, (ii) maintain commercially reasonable the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation display such Trademark with notice of such Trademarks unless federal registration to the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, extent required by applicable law and (iv) not (and not permit any licensee or sublicensee thereof to) do any act knowingly use or knowingly omit to do any act whereby permit the use of such Trademark may become invalidated or impaired in violation of any waythird-party rights.
(bc) Such Grantor Each Pledgor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do licensees or sublicensees) will refrain from committing any act, or omit to do omitting any act, whereby any Patent owned by such Grantor that is material to its the conduct of such Pledgor’s business may become forfeited, abandoned invalidated or dedicated to the public, and shall continue to xxxx any products covered by a Patent with the relevant patent number as required by applicable patent laws.
(cd) Such Grantor Each Pledgor (either itself or through licensees)its licensees or sublicensees) will, subject for each work covered by a Copyright that is material to the exercise conduct of its reasonable business judgmentor the failure to maintain would have, taking into account individually or in aggregate, a Material Adverse Effect, continue to publish, reproduce, display, adopt and distribute the Secured Parties’ interests work with appropriate copyright notice as required under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domainapplicable copyright laws.
(de) Such Grantor Each Pledgor shall notify the Administrative Agent promptly immediately if it knows or suspects has reason to know that any application Patent, Trademark or registration relating to any Material Intellectual Property owned by such Grantor Copyright may become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including the institution of, or any such determination or development in, any proceeding in the United States U.S. Patent and Trademark Office, the United States U.S. Copyright Office or any court or tribunal in any countrycourt) regarding such GrantorPledgor’s ownership ofof any Patent, Trademark or the validity ofCopyright, any such Material Intellectual Property or such Grantor’s its right to register the same same, or to own keep and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery extent that any of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier foregoing is likely to occur of either the Fiscal Quarter ending June 30 result in, individually or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Officeaggregate, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantora Material Adverse Effect.
(f) Such Grantor, subject to Each Pledgor will take all necessary steps that are consistent with the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including practice in any proceeding before the United States U.S. Patent and Trademark Office, U.S. Copyright Office or any office or agency in any political subdivision of the United States Copyright Officeor in any other country or any political subdivision thereof, to maintain and pursue each application relating to any Patents, Trademarks or Copyrights (and to obtain the relevant grant or registration) and to maintain each registration of Intellectual Property any Patents, Trademarks and Copyrights material to its the conduct of such Pledgor’s business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and use, affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue incontestability and renewal applications or extensions, the payment of maintenance fees, and the participation in interferenceand, reexaminationif consistent with sound business judgment, to initiate opposition, cancellation, infringement interference and misappropriation proceedingscancellation proceedings against third parties.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business Collateral consisting of a Patent, Trademark or Copyright is believed infringed, misappropriated or diluted by a third partyparty to the extent that such infringement, misappropriation or dilution is reasonably expected to cause, individually or in the aggregate, a Material Adverse Effect, such Grantor Pledgor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent promptly after it learns thereof and shall, if consistent with sound business judgment, promptly xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate dilution and to recover any and all damages for such infringement, misappropriation or dilution, and take such other actions as are appropriate under the circumstances to protect such Collateral.
(ih) Such Grantor agrees thatUpon the occurrence and during the continuance of any Event of Default, should it if required by the Required Lenders, each Pledgor shall use its reasonable best efforts to obtain an ownership interest in any item all requisite consents or approvals from the licensor of intellectual property which is not, as of each License included within the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Copyright Collateral, (iii) provide written notice thereof prior Patent Collateral or Trademark Collateral to or concurrently with effect the delivery assignment of the Compliance Certificate required by Section 6.01(c) all of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion)Pledgor’s right, in each case, following the date on which such ownership is obtained, title and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein thereunder to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Officeor its designee.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 3 contracts
Samples: Credit Agreement (Swisher Hygiene Inc.), Pledge and Security Agreement (Swisher Hygiene Inc.), Credit Agreement (Swisher Hygiene Inc.)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of will use its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products efforts to secure all consents and services offered under such Trademarks and take all approvals necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, appropriate for the ratable assignment to or benefit of the Secured Parties, shall obtain a perfected Note Collateral Agent of any material License held by such Grantor and to enforce the security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any wayinterests granted hereunder.
(b) Such Grantor (either itself or through licensees), subject shall deliver written notification to the exercise Note Collateral Agent promptly after a Responsible Officer of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects has actual knowledge that any application or registration relating to for any Material Intellectual Property material Patent, Trademark or Copyright hereafter owned by such Grantor may become forfeitedabandoned (except for Patents, abandoned Trademarks or dedicated to Copyrights expiring at the publicend of their statutory terms), or of any adverse determination (including the institution of, or any such determination in, in any proceeding (other than office actions issued in the United States Patent and Trademark Office, the United States Copyright Office ordinary course of prosecution of any patent application or application to register any court or tribunal in any countryother Intellectual Property) against such Grantor regarding such Grantor’s ownership ofof any material Patent, Trademark or the validity ofCopyright, any such Material Intellectual Property or such Grantor’s its right to register the same same, or to own keep and maintain the same, in each case, to the extent the same could reasonably be expected to have, individually or in the aggregate, a material adverse effect on the Grantors, taken as a whole.
(ec) After If such Grantor, either by itself directly or through any agent, employee, licensee or designee, shall file files an application for the registration of any Intellectual Property that is material to the business of such Grantor Patent, Trademark or Copyright with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to promptly give the Administrative Note Collateral Agent prior to or written notice thereof concurrently with the delivery of the a Compliance Certificate required under the Indenture, and shall execute and deliver any and all security agreements as the Note Collateral Agent may request in accordance with Section 3.10.
(d) Except as determined by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent Grantor in its sole discretionreasonable business judgment (exercised in good faith), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and take all agreements, instruments, documents, and papers as the Administrative Agent may request actions that are necessary to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each such application (and to obtain the relevant registration) and to maintain the validity and enforceability of each registration of Intellectual Property its material to its businessPatents, including the payment of required fees Trademarks and taxes, the filing of responses to office actions issued Copyrights thereafter owned by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedingssuch Grantor.
(ge) Such Grantor (either itself shall, unless it shall reasonably determine that such Patent, Trademark or through licensees)Copyright is not material to the conduct of its business or operations, subject to take all actions deemed appropriate under the circumstances in the exercise of its reasonable business judgmentjudgment (exercised in good faith) to protect such Patent, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of Trademark or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of Copyright hereafter owned by such Grantor’s business , including if appropriate under the circumstances bringing suit and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) recovering all damages therefor. In the event that such Grantor institutes suit because any Intellectual Property material to of its business Patents, Trademarks or Copyrights constituting Collateral is infringedinfringed upon, or misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilutioncomply with Section 4.8.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Pledge and Security Agreement (Westmoreland Energy LLC), Pledge and Security Agreement (WESTMORELAND COAL Co)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue If applicable, each Grantor shall, upon the Collateral Agent’s written request, duly execute and deliver the applicable Assignment for Security in the form attached hereto as Exhibit B. Each Grantor shall furnish to use each owned Trademark material the Collateral Agent from time to time upon its businessrequest statements and schedules further identifying and describing the Intellectual Property and Licenses and such other reports in connection with the Intellectual Property and Licenses as the Collateral Agent may reasonably request, (ii) maintain commercially all in reasonable quality detail and promptly upon request of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Collateral Agent, for following receipt by the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Collateral Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution ofsuch statements, schedules or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Officereports, such Grantor shall report such filing or receipt of a registration modify this Agreement by amending Schedule II hereto, as the case may be, to include any Intellectual Property and License, as the Administrative Agent prior to or concurrently with the delivery case may be, which becomes part of the Compliance Certificate required by Section 6.01(c) of the Credit Collateral under this Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor and shall execute and deliverauthenticate such documents and do such acts as shall be necessary or, and have recorded in the United States Patent judgment of the Collateral Agent, desirable to subject such Intellectual Property and Trademark office or Licenses to the United States Copyright Office, as applicable, any Lien and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in created by this Agreement. Notwithstanding anything herein to the contrary, upon the occurrence and during the continuance of an Event of Default, (A) such Grantor may not abandon or otherwise permit any Copyright, Patent, Trademark or other Intellectual Property necessary to the conduct of such Grantor.
(f) Such Grantor, subject ’s business to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, become invalid without the prior written consent of the Administrative Collateral Agent, discontinue use of or otherwise abandon and (B) if any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated misappropriated, diluted or diluted otherwise violated in any material respect by a third party, such Grantor shall (i) will take such actions reasonable action as such Grantor the Collateral Agent shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and Property.
(ii) if Upon request of the Collateral Agent, each Grantor shall execute, authenticate and deliver any and all assignments, agreements, instruments, documents and papers as the Collateral Agent may reasonably request to evidence the Collateral Agent’s security interest hereunder in such Intellectual Property is and the General Intangibles of material economic valuesuch Grantor relating thereto or represented thereby, promptly notify and such Grantor hereby appoints the Administrative Collateral Agent after it learns thereof its attorney-in-fact to execute and/or authenticate and xxx file all such writings for infringementthe foregoing purposes, misappropriation or dilutionall acts of such attorney being hereby ratified and confirmed, and such power (being coupled with an interest) shall be irrevocable until the complete conversion of all of the Company’s obligations under the Notes to seek injunctive relief where appropriate and to recover equity securities of the Company and/or indefeasible payment in full in cash of all obligations under the Notes (together with any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, matured indemnification obligations as of the Closing Datedate of such conversion and/or payment, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”but excluding any inchoate or unmatured contingent indemnification obligations), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Pledge and Security Agreement, Pledge and Security Agreement (Comscore, Inc.)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue Not do any act or omit to do any act whereby any material Copyright may become invalidated and (A) not do any act, or omit to do any act, whereby any material Copyright owned by such Grantor may become injected into the public domain; (B) notify the Administrative Agent promptly if it knows that any material Copyright owned by such Grantor may become injected into the public domain or of any materially adverse determination or development (including, without limitation, the institution of, or any such determination or development in, any court or tribunal in the United States or any other country) regarding such Grantor’s ownership of any such Copyright or its validity; (C) take all reasonably necessary steps as it shall deem appropriate under the circumstances, to maintain and pursue each application currently filed by such Grantor or filed by such Grantor in the future (and to obtain the relevant registration) for any material Copyright owned by such Grantor and to maintain each registration owned by such Grantor presently or in the future for any material Copyright owned by such Grantor including, without limitation, filing of applications for renewal where necessary; and (D) promptly notify the Administrative Agent of any material infringement, misappropriation, dilution or impairment of any Copyright owned by such Grantor of which it becomes aware and take such actions as it shall reasonably deem appropriate under the circumstances to protect such Copyright, including, where such Grantor deems to be appropriate, the bringing of suit for infringement, dilution or impairment or seeking injunctive relief and seeking to recover any and all damages for such infringement, misappropriation, dilution or impairment.
(ii) Not make any assignment or agreement in conflict with the security interest in the Copyrights of such Grantor hereunder (except as permitted by the Credit Agreement).
(iii) ((A) Continue to use each owned material Trademark material it currently owns and uses on each and every trademark class of goods applicable to its businesscurrent line as reflected in its current catalogs, brochures and price lists in order to maintain such Trademark in full force free from any claim of abandonment for non-use, (iiB) maintain commercially reasonable substantially the same level of quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark as currently maintained, (iiiC) employ such Trademark with the appropriate notice of registration, if applicable, (D) not adopt or use any xxxx which that is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx as required pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivE) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any such Trademark may become invalidated or impaired in any wayinvalidated.
(biv) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not Not do any act, or omit to do any act, whereby any material Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(dv) Such Grantor shall notify Notify the Administrative Agent and the Secured Parties promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property material Patent or Trademark owned by such Grantor may become forfeited, abandoned or dedicated to the publicpublic domain, or of any materially adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office USPTO or any court or tribunal in any country) regarding such Grantor’s ownership of, of any Patent or the validity of, any such Material Intellectual Property Trademark or such Grantor’s its right to register the same or to own keep and maintain the same.
(evi) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and Take all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and reasonably necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark Office USPTO, or the United States Copyright Officeany applicable similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application that is currently pending and any new applications that such Grantor may file in the future (and to obtain the relevant registration) and to maintain each registration of Intellectual Property each material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright OfficeTrademark, the including, without limitation, if/as applicable, filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(gvii) Such Grantor (either itself or through licensees), subject to Promptly notify the exercise of its reasonable business judgment, taking into account Administrative Agent and the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of Parties after it learns that any material Patent or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless Trademark owned by such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable included in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business Collateral is infringed, misappropriated misappropriated, diluted or diluted impaired by a third party, such Grantor shall (i) party and promptly take such other actions as such Grantor it shall deem reasonably deem appropriate under the circumstances to protect such Intellectual Property and Patent or Trademark.
(iiviii) if Not make any assignment or agreement in conflict with the security interest in the Patents or Trademarks of such Intellectual Property is of material economic value, promptly notify Grantor hereunder (except as permitted by the Credit Agreement).
(ix) Grant to the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, a royalty free irrevocable license to seek injunctive relief where appropriate and to recover any and all damages for use such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Grantor’s Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently connection with the delivery enforcement of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s requestrights hereunder after the occurrence of an Event of Default, it shall provide but only to the extent any license or agreement granting to such Grantor rights in such Intellectual Property does not prohibit such use by the Administrative Agent with an amended Schedule 3.9(a) and take Agent. Notwithstanding the actions specified foregoing, each of the Grantors may, in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees their reasonable business judgment, fail to execute an use, register, maintain, pursue, preserve, protect or enforce any Intellectual Property Security Agreement which is determined by them to not be material to their businesses and may take action or not take action with respect thereto as they determine in their respective reasonable business judgment to its Intellectual Property be worthwhile, necessary, advisable or in order to record the security interest granted herein to the Administrative Agent for the ratable benefit best interests of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Officesuch Grantor.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Security and Pledge Agreement (TopBuild Corp), Security and Pledge Agreement (TopBuild Corp)
Intellectual Property. (a) Upon the occurrence and during the continuance of an Event of Default, such Grantor will use its commercially reasonable efforts to secure all consents and approvals reasonably necessary or appropriate for the assignment to or benefit of the Collateral Agent of any Intellectual Property held by such Grantor that is material to the conduct of such Grantor’s business and to enforce the security interests granted hereunder.
(b) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (i) use commercially reasonable efforts to continue to use each owned Trademark that is material to its businessthe conduct of such Grantor’s business in order to maintain such Trademark free from any claim of abandonment or invalidity for non-use, (ii) maintain use commercially reasonable efforts to maintain as in the past the quality of all products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation such Trademark with all appropriate notices of such Trademarks unless registration and other legends to the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest extent necessary and sufficient to establish and preserve its rights under applicable laws in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreementall material respects, and (iv) not (and use commercially reasonable efforts to not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may could reasonably be expected to become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the publicinvalidated.
(c) Such Grantor (either itself or through licensees), subject will use commercially reasonable efforts to prosecute and maintain any Patent owned by such Grantor and material to the exercise conduct of its reasonable business judgmentsuch Grantor’s business, taking into account the Secured Parties’ interests under this Agreement, shall and to prevent any patent from becoming forfeit or abandoned.
(d) Such Grantor will not (and shall will use its commercially reasonable efforts to not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights material to the conduct of such Grantor’s business may become invalidated. Such Grantor will, for each Copyright owned by such Grantor and material to such Grantor’s business, use copyright notices as required under applicable copyright laws or as necessary to protect its business may become invalidated or otherwise impaired. rights in such material Copyrights.
(e) Such Grantor shall not (either itself or through licensees) will not knowingly do any act whereby that Infringes the Intellectual Property of any material portion of such Copyrights may fall into the public domainother Person.
(df) Such Grantor shall notify the Administrative Collateral Agent promptly if it knows or suspects has reason to know that any application or registration relating to any Material Intellectual Property (now or hereafter existing) owned by such Grantor and material to the conduct of such Grantor’s business may become forfeited, abandoned forfeited or dedicated to the publicabandoned, or of any final, unappealable, adverse determination regarding such Grantor’s rights in, or the validity, enforceability, ownership or continued use of such Grantor-owned Intellectual Property.
(g) Within 30 days after each fiscal quarter, the Borrower shall provide a list of any additional registrations and applications of Intellectual Property of all Grantors not previously disclosed to the Collateral Agent (including the institution of, or any such determination in, any proceeding in applications and registrations with the United States Patent and Trademark Office, the United States Copyright Office or any court comparable office or tribunal agency in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretionjurisdiction), in and each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded deliver an Intellectual Property Security Agreement substantially in the United States Patent form of Exhibit K hereto and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers such other documents as the Administrative Collateral Agent may reasonably request to evidence the Secured Parties’ Collateral Agent’s first priority security interest (or, at any time when the Intercreditor Agreement is in effect, a perfected security interest with the priority required pursuant thereto), subject to Liens permitted under Section 4.1(e), on future Patent, Trademark, Copyright, Licenses or other Intellectual Property, and the General Intangibles of such Grantor relating thereto or represented thereby; provided, that such Grantor shall not be required to take any actions to perfect the Collateral Agent’s security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantorlocated outside the United States or Canada.
(fh) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, Grantor shall take all commercially reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, actions to maintain and pursue each application (filed by or on behalf of such Grantor with respect to the registration or issuance of Patents, Trademarks or Copyrights, and to obtain the relevant registration) registration of and to maintain each the registration of Intellectual Property each such Patent, Trademark and Copyright (now or hereafter existing) material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business business, including the filing of applications for renewal, affidavits of use, affidavits of incontestability, and that the loss thereof could not reasonably be expected to have a Material Adverse Effectpayment of maintenance fees.
(hi) Such Grantor shall, unless it shall determine in its reasonable business judgment that such Patent, Trademark or Copyright is not material to the conduct of its business or operations, take such action as it reasonably deems appropriate to protect and/or assert any Patents, Trademarks or Copyrights owned by such Grantor and material to such Grantor’s business, which may include bringing suit for infringement, misappropriation or dilution of such Intellectual Property, the recovery of any and all damages for such infringement, misappropriation or dilution. In the event that such Grantor institutes suit because any Intellectual Property material to of its business Patents, Trademarks or Copyrights constituting Collateral is infringedinfringed upon, or misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of comply with Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.104.8.
(j) Such Nothing in this Agreement shall prevent any Grantor agrees to execute an Intellectual Property Security Agreement with respect to from discontinuing the use or maintenance of any Collateral consisting of a Patent, Trademark or Copyright, if (x) such Grantor so determines in its Intellectual Property in order to record good business judgment and (y) it is not prohibited by the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright OfficeIndenture.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Indenture (Edgen Group Inc.), Indenture (Edgen Murray II, L.P.)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality Upon the request of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant order to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor facilitate filings with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office PTO and the United States Copyright Office, the filing of applications for renewal each Grantor shall execute and deliver to Agent one or extensionmore Copyright Security Agreements, the filing of affidavits of use and affidavits of incontestabilityTrademark Security Agreements, the filing of divisionalor Patent Security Agreements to further evidence Agent’s Lien on such Grantor’s Patents, continuationTrademarks, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.Copyrights;
(gii) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Each Grantor shall have previously determined that such use or the pursuit or maintenance of such duty, with respect to Intellectual Property that is no longer desirable necessary in or material to the conduct of such Grantor’s business business, to protect and diligently enforce and defend at such Grantor’s expense such Intellectual Property, including (A) to diligently enforce and defend such Intellectual Property, as reasonably deemed appropriate by such Grantor, (B) to prosecute diligently any trademark application or service xxxx application that is part of the loss thereof Trademarks pending as of the date hereof or hereafter until the termination of this Agreement, as reasonably deemed appropriate by such Grantor, (C) to prosecute diligently any patent application that is part of the Patents pending as of the date hereof or hereafter until the termination of this Agreement, as reasonably deemed appropriate by such Grantor, and (D) to take all reasonable and necessary action to preserve and maintain all of such Grantor’s Trademarks, Patents, Copyrights, material Intellectual Property Licenses, and its rights therein, including paying all maintenance fees and filing of applications for renewal, affidavits of use, and affidavits of noncontestability, except, in each case, where the failure to do so could not reasonably be expected to have result in a Material Adverse Effect.
(h) In the event that . Each Grantor further agrees not to abandon any Intellectual Property or Intellectual Property License that is necessary in or material to its business is infringedthe conduct of such Grantor’s business, misappropriated except for abandonment or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such other dispositions of Intellectual Property and (ii) if such or Intellectual Property is of material economic valueLicense that are, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case good faith judgment of trademarkssuch Grantor, no longer economically or commercially practicable or necessary to maintain or useful in the goodwill conduct of the business connected therewith or symbolized thereby, shall automatically become part of the Loan Parties, taken as a whole. Each Grantor hereby agrees to take the steps described in this Section 7(g)(ii) with respect to all new or acquired Intellectual Property Collateral, to which it or any of its Subsidiaries is now or later becomes entitled that is necessary in or material to the conduct of such Grantor’s business;
(iii) provide written notice thereof prior Grantors acknowledge and agree that the Lender Group shall have no duties with respect to any Intellectual Property or concurrently with Intellectual Property Licenses of any Grantor. Without limiting the delivery generality of this Section 7(g)(iii), Grantors acknowledge and agree that no member of the Compliance Certificate Lender Group shall be under any obligation to take any steps necessary to preserve rights in the Collateral consisting of Intellectual Property or Intellectual Property Licenses against any other Person, but any member of the Lender Group may do so at its option from and after the occurrence and during the continuance of an Event of Default, and all expenses incurred in connection therewith (including reasonable fees and expenses of attorneys and other professionals) shall be Lender Group Expenses;
(iv) No later than the next Quarterly Reporting Date (or, if an Event of Default has occurred and is continuing, more frequently if requested by Agent) (but without duplication of any notice required by Section 6.01(c) 7(g)(v)), the Grantors shall provide Agent with a written report of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 all new Patents, Trademarks or Copyrights that are registered or the Fiscal Year ending (or such longer period subject of time permitted by the Administrative Agent in its sole discretion)pending applications for registrations, in each case, which were acquired, registered, or for which applications for registration were filed by any Grantor during the prior period. In the case of such registrations or applications therefor, which were acquired by any Grantor, each such Grantor shall file the necessary documents with the appropriate Governmental Authority identifying the applicable Grantor as the owner (or as a co-owner thereof, if such is the case) of such Intellectual Property. In each of the foregoing cases, the applicable Grantor shall promptly, following the date on which such ownership is obtainedrequest of Agent, cause to be prepared, executed, and delivered to Agent supplemental schedules to the applicable Loan Documents to identify such Patent, Trademark and Copyright registrations and applications therefor (with the exception of Trademark applications filed on an intent-to-use basis for which no statement of use or amendment to allege use has been filed) as being subject to the security interests created thereunder; and
(v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Each Grantor shall take commercially reasonable steps to maintain the confidentiality of, and otherwise protect and enforce its rights in, the secrecy of all trade secrets Intellectual Property that is necessary in or confidential information material to its the conduct of such Grantor’s business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.;
Appears in 2 contracts
Samples: Guaranty and Security Agreement, Guaranty and Security Agreement (Ciber Inc)
Intellectual Property. (a) Such Grantor (For the purpose of enabling the FMN Security Representatives to enforce any Lien held by either itself or through licensees) shallof them upon any of the First Mortgage Collateral and to the extent appropriate, in the good faith opinion of the FMN Security Representatives, to lease, sell, or otherwise dispose of any of the First Mortgage Collateral at such time as such FMN Security Representative shall be lawfully entitled to exercise of its reasonable business judgmentsuch rights and remedies, taking into account each Obligor grants to the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, FMN Security Representatives for the ratable benefit of the First Mortgage Secured Parties, shall obtain a perfected security interest nonexclusive license (exercisable without payment of royalty or other compensation to any Obligor) to use, license, or sublicense during the continuance of an Event of Default (as defined in the First Mortgage Notes Indenture) any Intellectual Property now or hereafter owned, or licensed from a third party for use, by any Obligor (except to the extent the terms of any of the licenses, sublicenses or agreements related to the foregoing Intellectual Property prohibit or do not permit such grant of license or do not empower the Obligor to grant such license to such FMN Security Representative), and wherever the same may be located, and including in such xxxx pursuant license access to this Agreement all media in which any of the licensed items may be recorded or stored and an Intellectual Property Security Agreementto all computer software and programs used for the compilation or printout thereof (such license, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any waythe “IP License”).
(b) Such Grantor (either itself or through licensees)The Agent hereby grants, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if extent that it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding has rights in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Revolving Intellectual Property Collateral (sufficient to make such grant, for the “After-Acquired Intellectual Property”)benefit of the First Mortgage Secured Parties, (i) the provisions right to the use of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the all Revolving Intellectual Property Collateral, (iii) provide written notice thereof prior to the extent necessary to permit the FMN Security Representatives and the First Mortgage Secured Parties to exercise their rights and remedies relating to the First Mortgage Collateral or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier appropriate to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtainedtheir exercise thereof, and (vii) promptly after agrees that its Liens in the Administrative Agent’s requestRevolving Intellectual Property Collateral shall be subject to the IP License. Furthermore, in connection with any foreclosure sale conducted in foreclosure of any Lien on the Revolving Intellectual Property Collateral, or any part thereof, the Agent agrees that (x) any notice required to be given by the Agent in connection with such foreclosure sale shall contain an acknowledgement that such Revolving Intellectual Property Collateral is subject to the IP License and (y) it shall provide the Administrative Agent with an amended Schedule 3.9(a) deliver a copy of this Section 5 to any purchaser at such foreclosure and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an inform such purchaser that such Revolving Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein Collateral is subject to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright OfficeIP License.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Access, Use and Intercreditor Agreement, Access, Use and Intercreditor Agreement (Constar International Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless Upon the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request order to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by facilitate filings with the United States Patent and Trademark Office and the United States Copyright Office, each Grantor shall execute and deliver to the filing of applications for renewal Administrative Agent one or extensionmore Intellectual Property Security Agreements to further evidence the Administrative Agent’s Lien on such Grantor’s Patents, the filing of affidavits of use and affidavits of incontestabilityTrademarks, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance feesCopyrights, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedingsGeneral Intangibles of such Grantor relating thereto or represented thereby.
(gii) Such Each Grantor (either itself shall promptly notify the Administrative Agent of any infringement, misappropriation, or through licensees)dilution of such Grantor’s Intellectual Property or if any application for or registration of any Patent, subject Trademark or Copyright with the United States Patent and Trademark Office or the United States Copyright Office has become abandoned or dedicated to the exercise public, or of any determination by a Governmental Authority (including the determination by the United States Patent and Trademark Office, the United States Copyright Office, or any court) abandoning such Grantor’s ownership of any such Patent, Trademark or Copyright, its reasonable business judgmentright to register the same, taking into account except, in each case, to the Secured Parties’ interests under this extent such abandonment or dedication to the public is permitted by Section 8.05(f)(ii) of the Credit Agreement, shall notor to keep and maintain the same, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor and shall have previously determined that such use or the pursuit or maintenance of such duty, with respect to Intellectual Property that is no longer desirable necessary in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringedbusiness, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect and diligently enforce and defend at such Grantor’s expense such Intellectual Property Property, including (A) to diligently enforce and (ii) if such Intellectual Property is of material economic valuedefend, including promptly notify the Administrative Agent after it learns thereof and xxx suing for infringement, misappropriation misappropriation, or dilution, to seek injunctive relief where appropriate dilution and to recover any and all damages for such infringement, misappropriation misappropriation, or dilution, and filing for opposition, interference, and cancellation against conflicting Intellectual Property rights of any Person, (B) to prosecute diligently any such trademark application or service mark application that is part of the Trademarks pending as of the date hereof or hereafter until the termination of this Agreement, (C) to prosecute diligently any such patent application that is part of the Patents pending as of the date hereof or hereafter until the termination of this Agreement, (D) to take all reasonable and necessary action to preserve and maintain all of such Grantor’s Trademarks, Trade Secrets, Patents, Copyrights, Licenses, and its rights therein, including paying all maintenance fees and filing of applications for renewal, affidavits of use, and affidavits of noncontestability, and (E) to require all employees, consultants, and contractors of each Grantor who were involved in the creation or development of such Intellectual Property to sign agreements containing assignment of Intellectual Property rights and obligations of confidentiality. Each Grantor further agrees not to abandon any Intellectual Property or Intellectual Property License that is necessary in the conduct of such Grantor’s business. Each Grantor hereby agrees to take the steps described in this Section 6(i)(ii) with respect to all new or acquired Intellectual Property to which it or any of its Subsidiaries is now or later becomes entitled that is necessary in the conduct of such Grantor’s business.
(iiii) Such Grantor agrees that, should it obtain an ownership interest in Grantors acknowledge and agree that the Secured Parties shall have no duties with respect to any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (or Licenses of any Grantor. Without limiting the “After-Acquired Intellectual Property”generality of this Section 6(i)(iii), (i) Grantors acknowledge and agree that no Secured Party shall be under any obligation to take any steps necessary to preserve rights in the provisions Collateral consisting of Section 2.1 shall automatically apply theretoIntellectual Property or Licenses against any other Person, (ii) but any such After-Acquired Intellectual PropertySecured Party may do so at its option from and after the occurrence and during the continuance of an Event of Default, and all expenses incurred in connection therewith (including reasonable and documented out-of-pocket fees and expenses of attorneys and other professionals) shall be for the case sole account of trademarks, Borrowers and shall be chargeable to the goodwill of the business connected therewith or symbolized thereby, Loan Account.
(iv) Each Grantor shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently promptly file an application with the delivery United States Copyright Office for any Copyright that has not been registered with the United States Copyright Office if such Copyright is necessary in connection with the conduct of such Grantor’s business. Any expenses incurred in connection with the Compliance Certificate required foregoing shall be borne by the Grantors.
(v) On each date on which financial statements are delivered by Borrowers pursuant to Section 6.01(c) 7.01 of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion)Agreement, in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it Grantor shall provide the Administrative Agent with an amended Schedule 3.9(a) a written report of all new Patents or Trademarks that are registered or the subject of pending applications for registrations, and take of all Licenses that are material to the actions specified conduct of such Grantor’s business, in clauses (j) each case, which were acquired, registered, or for which applications for registration were filed by any Grantor during the prior period and (k) any statement of Section 4.10.
(j) Such Grantor agrees use or amendment to execute an Intellectual Property Security Agreement allege use with respect to its intent-to-use trademark applications. In the case of such registrations or applications therefor which were acquired by any Grantor, each such Grantor shall file the necessary documents with the appropriate Governmental Authority identifying the applicable Grantor as the owner (or as a co-owner thereof, if such is the case) of such Intellectual Property in order Property. In each of the foregoing cases, the applicable Grantor shall promptly cause to record the security interest granted herein be prepared, executed, and delivered to the Administrative Agent on each date on which financial statements are delivered by Borrowers pursuant to Section 7.01 of the Credit Agreement supplemental schedules to the applicable Loan Documents to identify such Patent and Trademark registrations and applications therefor (with the exception of Trademark applications filed on an intent-to-use basis for which no statement of use or amendment to allege use has been filed) and Licenses as being subject to the security interests created thereunder.
(vi) Anything to the contrary in this Agreement notwithstanding, in no event shall any Grantor, either itself or through any agent, employee, licensee, or designee, file an application for the ratable benefit registration of the Secured Parties any Copyright with the United States Patent Copyright Office or any similar office or agency in another country without giving the Administrative Agent written notice thereof at least three (3) Business Days prior to such filing and Trademark complying with Section 6(i)(i). Upon receipt from the United States Copyright Office and of notice of registration of any Copyright, each Grantor shall promptly (but in no event later than five (5) Business Days following such receipt) notify (but without duplication of any notice required by Section 6(i)(v)) the Administrative Agent of such registration by delivering, or causing to be delivered, to the Administrative Agent, documentation sufficient for the Administrative Agent to perfect the Administrative Agent’s Liens on such Copyright. If any Grantor acquires from any Person any Copyright registered with the United States Copyright Office or an application to register any Copyright with the United States Copyright Office, such Grantor shall promptly (but in no event later than ten (10) Business Days following such acquisition) notify the Administrative Agent of such acquisition and deliver, or cause to be delivered, to the Administrative Agent, documentation sufficient for the Administrative Agent to perfect the Administrative Agent’s Liens on such Copyright. In the case of such Copyright registrations or applications therefor which were acquired by any Grantor, each such Grantor shall promptly (but in no event later than ten (10) Business Days following such acquisition) file the necessary documents with the appropriate Governmental Authority identifying the applicable Grantor as the owner (or as a co-owner thereof, if such is the case) of such Copyrights.
(kvii) Such Each Grantor agrees shall take reasonable steps to maintain the confidentiality of, and otherwise protect and enforce its rights in, and the validity or enforceability of, the Intellectual Property that is necessary in the conduct of such Grantor’s business, including, as applicable (A) maintaining and pursuing each such application for, and obtaining and maintain the registration of each such Patent, Trademark and Copyright (now or hereafter existing) (including, as applicable, by filing applications for renewal, affidavits of use, affidavits of noncontestibility and initiating opposition and interference and cancellation proceedings against third parties), (B) protecting the secrecy and confidentiality of such confidential information and trade secrets by having and enforcing a policy requiring all current employees, consultants, licensees, vendors and contractors with access to such information to execute an appropriate confidentiality agreements; (C) taking actions reasonably necessary to ensure that no such trade secret falls into the public domain; and (D) protecting the secrecy and confidentiality of the source code of all such software programs and applications of which it is the owner or licensee by having and enforcing a policy requiring any licensees (or sublicensees) of such source code to enter into license agreements with commercially reasonable use and non-disclosure restrictions.
(viii) No Grantor shall enter into any Intellectual Property Security Agreement with respect License to its After-Acquired receive any license or rights in any Intellectual Property in order of any other Person unless such Grantor has used commercially reasonable efforts to record permit the assignment of or grant of a security interest granted herein in such Intellectual Property License (and all rights of Grantor thereunder) to the Administrative Agent (and any transferees thereof). In addition, at any time when an Event of Default exists and is continuing, following the written request of the Administrative Agent, each Grantor will (i) use its commercially reasonable efforts to obtain all consents and approvals necessary for the ratable assignment for the benefit of the Secured Parties with Administrative Agent of any License held by such Grantor in the United States Patent to enable the Administrative Agent to lawfully enforce the security interests granted hereunder and Trademark Office and (ii) to the extent required pursuant to any material License in the United States Copyright Officeunder which such Grantor is the licensee, deliver to the licensor thereunder any notice of the grant of security interest hereunder or such other notices required to be delivered thereunder in order to permit the security interest created or permitted to be created hereunder pursuant to the terms of such License.
(lix) Such Without limiting any of the foregoing, if any Grantor shall take commercially reasonable steps at any time after the Closing Date, obtain any ownership or licensee rights in, to protect or under any additional Intellectual Property constituting Collateral, then the secrecy provisions of all trade secrets or confidential information material this Agreement shall automatically apply thereto and any such Intellectual Property shall automatically be deemed Collateral and shall be subject to its businessthe security interest created by this Agreement, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documentswithout further action by any party.
Appears in 2 contracts
Samples: Pledge and Security Agreement (Purple Innovation, Inc.), Pledge and Security Agreement (Purple Innovation, Inc.)
Intellectual Property. (a) Such At the time of delivery of each Officer’s Certificate under Section 3.13 of the Indenture, such Grantor shall notify the Collateral Agent of any change to Schedule B to the Disclosure Letter for such Grantor, and provide to the Collateral Agent the short-form intellectual property agreements and assignments as described in this Section 4.5.
(either itself b) Except as would not individually or through licensees) shall, in the exercise of aggregate have a Material Adverse Effect, such Grantor shall (and shall cause all its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, licensees to) (i)
(1) continue to use each owned Trademark material included in the Material Intellectual Property in order to its businessmaintain such Trademark in full force and effect with respect to each class of goods for which such Trademark is currently used, free from any claim of abandonment for non-use, (ii2) maintain commercially reasonable at least the same standards of quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark as are currently maintained, (iii3) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law, (4) not adopt or use any xxxx which other Trademark that is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, Collateral Agent shall obtain a perfected security interest in such xxxx other Trademark pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivii) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby (w) such Trademark (or any goodwill associated therewith) may become invalidated destroyed, invalidated, impaired or impaired harmed in any way.
, (bx) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business included in the Material Intellectual Property may become forfeited, misused, unenforceable, abandoned or dedicated to the public, (y) any portion of the Copyrights included in the Material Intellectual Property may become invalidated, otherwise impaired or fall into the public domain or (z) any Trade Secret that is Material Intellectual Property may become publicly available or otherwise unprotectable.
(c) Such Grantor (either itself or through licensees), subject to In the exercise event that any Material Intellectual Property of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated is or has been infringed, misappropriated, violated, diluted or otherwise impaired. Such impaired by a third party, such Grantor shall not (either itself or through licensees) do any act whereby any material portion of take such Copyrights may fall into action as it reasonably deems appropriate under the public domaincircumstances in response thereto.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated execute and deliver to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding Collateral Agent in form suitable for filing in the United States Patent and Trademark Office, Applicable IP Office the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded short-form intellectual property security agreements in the United States Patent form attached hereto as Exhibit III for all Copyrights, Trademarks, Patents and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property IP Licenses of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Security Agreement (Olympic-Cascade Publishing, Inc.), Security Agreement (Newsprint Ventures, Inc.)
Intellectual Property. Seller warrants that any materials, supplies or other goods furnished by Seller or its affiliates to Buyer will not infringe any United States or foreign patent, trademark, copyright, or mask work right by reason of their manufacture, use or sale, and will not misuse or misappropriate any trade secret. Seller shall (ai) Such Grantor indemnify, defend, and hold harmless Buyer, its agents, employees, successors and customers against all such claims, demands, losses, suits, damages, liabilities and expenses (either itself including reasonable attorneys' and lawyers' fees) arising out of any suit, claim or through licenseesaction for actual or alleged direct or contributory infringement of, or inducement to infringe, any United States or foreign patent, trademark, copyright, or mask work right by reason of the manufacture, use, or sale of the goods or services under the Purchase Order, including infringement arising out of compliance with specifications furnished by Buyer, or for actual or alleged misuse or misappropriation of a trade secret resulting directly or indirectly from Seller's actions; (ii) shallwaive any claim against Buyer under the Uniform Commercial Code or any foreign analogous code, law, regulation or otherwise, including any copyright or mask work right infringement or the like, including claims arising out of compliance with specifications furnished by Buyer; and (iii) grant to Buyer a worldwide, non-exclusive, royalty-free, irrevocable license to repair and have repaired, to reconstruct and have reconstructed, the goods ordered by this Purchase Order. In the event work performed by Seller under this Purchase Order results in any invention or work of authorship, whether patentable, copyrightable or not, regarding any engine, drive-train, or automotive component or assembly, or the manufacture or use thereof, Seller hereby assigns and shall assign to Buyer all right, title and interest to such invention or work of authorship and to any patents, copyrights or other intellectual property which Seller may obtain thereon. Seller will assist Xxxxx, at the request and expense of Xxxxx, in the exercise completion and execution of its reasonable business judgmentall documents necessary to obtain such patents, taking into account the Secured Parties’ interests under this Agreement, (i) continue copyrights or other intellectual property and to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products perfect and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantorrecord Xxxxx’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impairedownership thereof. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects Seller agrees that any application or registration relating such work of authorship which can be considered and construed to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to be a “work for hire” under the public, or provisions of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office Act or any court analogous foreign law or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the sameregulation.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Purchase Order, Purchase Order
Intellectual Property. (a) Such Grantor (either itself or through licensees) shallwill not, in without the exercise prior written consent of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Collateral Agent, for the ratable benefit discontinue use of the Secured Partiesany Material Intellectual Property, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such any Material Intellectual Property may lapse, become abandoned, cancelled, dedicated to the public, forfeited, or otherwise impaired, or abandon any application or any right to file an application for a Copyright, Patent, or Trademark may become invalidated or impaired in any wayconstituting Material Intellectual Property.
(b) Such Grantor (either itself or through licensees)shall take all reasonable steps, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, in any proceeding in before the United States Patent and Trademark Office, the United States Copyright Office Office, any state registry or any court foreign counterpart of the foregoing, to pursue any application and maintain any registration or tribunal in any country) regarding issuance of each Trademark, Patent, and Copyright owned by or exclusively licensed to such Grantor’s ownership of, or the validity of, any such Grantor and constituting Material Intellectual Property or such Grantor’s right to register the same or to own Property, including, but not limited to, those applications and maintain the sameregistrations listed on Schedule 5.
(ec) After such GrantorSuch Grantor agrees that, should it hereafter (i) obtain an ownership interest in any item of Intellectual Property, (ii) obtain an exclusive license to any Copyrights, (iii) (either by itself or through any agent, employee, licensee licensee, or designee, shall ) file an any application for the registration or issuance of any Intellectual Property that is material with the United States Patent and Trademark Office, the United States Copyright Office, or any similar office or agency in any other country or in any political subdivision of any of the foregoing, or (iv) should it file a Statement of Use or an Amendment to Allege Use with respect to any “intent-to-use” Trademark application (the items in clauses (i), (ii) (iii) and (iv), collectively, the “After-Acquired Intellectual Property”), then the provisions of Section 2 shall automatically apply thereto, and any such After-Acquired Intellectual Property shall automatically become part of the Collateral, and such Grantor shall give prompt (and, in any event within five (5) Business Days after the last day of the fiscal quarter in which such Grantor acquires such ownership interest) written notice thereof to the business Collateral Agent in accordance herewith, and shall provide the Collateral Agent promptly (and, in any event within five (5) Business Days after the last day of the fiscal quarter in which such Grantor acquires such ownership interest) with an amended Schedule 5 hereto and promptly take the actions specified in Section 4.10(d) with respect thereto.
(d) Such Grantor shall execute Intellectual Property Security Agreements with respect to the Intellectual Property included in the Collateral as of the date hereof, as well as any After-Acquired Intellectual Property, in substantially the form of Exhibits C-1, C-2 or C-3, as applicable, in order to record the security interest granted herein to the Collateral Agent for the benefit of the Secured Parties with the United States Patent and Trademark Office or the United States Copyright Office, as applicable, and such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall promptly execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all other agreements, instruments, documents, and papers as necessary or that the Administrative Collateral Agent may reasonably request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other such Intellectual Property of such Grantorwith any other applicable offices, agencies, or governmental authorities.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(le) Such Grantor shall take commercially reasonable all steps reasonably necessary to protect the secrecy of all trade secrets or confidential information material to its businessTrade Secrets constituting Material Intellectual Property, including including, without limitation, entering into confidentiality agreements with employees and consultants and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Indenture (Marti Technologies, Inc.), Pledge and Security Agreement (Marti Technologies, Inc.)
Intellectual Property. (a) Such Grantor will execute and deliver all consents and approvals necessary for the assignment to or benefit of the Collateral Agent of any Intellectual Property held by such Grantor to enforce the security interests granted hereunder, including such short-form security agreements as may be necessary or desirable to protect the interest of the Collateral Agent in respect of that portion of the Collateral consisting of Intellectual Property, and whenever any Grantor acquires, becomes the exclusive licensee of, or files an application for: (either itself i) Trademark or through licenseesPatent registration with the United States Patent and Trademark Office, such Grantor shall report such filing to the Collateral Agent within five (5) shallbusiness days after the last day of the fiscal quarter in which the filing occurs; and (b) any Copyright registration with the United States Copyright Office, such Grantor shall report such filing to the Collateral Agent within twenty (20) business days after the last day of the fiscal quarter in which the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, filing occurs.
(b) Such Grantor will (i) continue to use each owned Trademark that is material to its businessthe conduct of the Grantors’ business taken as a whole in order to maintain such Trademark in full force free from any claim of abandonment for non-use, (ii) maintain commercially reasonable the quality of all products and services offered under such Trademarks and take all necessary steps Trademark to ensure that all licensed users of such Trademarks comply with the extent required to preserve such Grantor’s quality control requirements and maintain reasonable qualityTrademark rights under applicable law, (iii) use each Trademark with all appropriate notices of registration and other legends required by applicable laws in all material respects (iv) not adopt or use any xxxx mxxx which is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Collateral Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx mxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivv) not (and use commercially reasonable efforts to not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may could reasonably be expected to become invalidated or impaired result in any wayother material loss of rights in such Trademarks.
(bc) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall will not do any act, or omit to do any act, whereby any Patent owned by such Grantor that is material to its business the conduct of the Grantors’ business, taken as a whole may become forfeited, abandoned or dedicated to the public.
(cd) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall will not (and shall will not permit authorize any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and Copyright that is material to its business the conduct of the Grantors’ business, taken as a whole may become invalidated or otherwise impairedinvalidated. Such Grantor shall will not (either itself or through licensees) do any act whereby any Copyright that is material portion to the conduct of such Copyrights the Grantors’ business, taken as a whole may fall into the public domain. Such Grantor will, for each work covered by a material Copyright, use copyright notices as required under the applicable copyright law.
(de) Such Grantor (either itself or through licensees) will not do any act that knowingly uses any Intellectual Property to Infringe the intellectual property rights of any other Person.
(f) Such Grantor shall notify the Administrative Collateral Agent promptly if it knows or suspects has reason to know that any application or registration relating to any Material Intellectual Property owned by such Grantor may (now or hereafter existing) that is material to the conduct of the Grantors’ business, taken as a whole is reasonably likely to become forfeited, abandoned or dedicated to the public, or of any material adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material material Intellectual Property or such owned by any Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor shall execute and deliver any and all security agreements as are necessary to evidence the Collateral Agent’s security interest in any Intellectual Property owned (either itself now or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent hereafter existing) by any of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse EffectGrantors.
(h) In Such Grantor shall take all actions necessary to maintain and pursue each of the event that any registrations of each of its Patents, Trademarks, Copyrights and other Intellectual Property material (now or hereafter existing) owned by Grantor, including the filing of applications for renewal, affidavits of use, affidavits of incontestability and opposition and interference and cancellation proceedings in any court or tribunal in the United States or any other country, unless such Patent, Trademark or Copyright is immaterial to its the conduct of the business is infringedof the Grantors, misappropriated or diluted by taken as a third party, such Grantor shall whole.
(i) Such Grantor shall promptly take such actions as such Grantor it shall reasonably deem appropriate under the circumstances to protect such Intellectual Property owned by Grantor, including by suing for Infringement and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover recovering any and all damages for such infringement, misappropriation or dilution.
(i) Such Infringement where appropriate. In the event that such Grantor agrees that, should it obtain an ownership interest in institutes suit because any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such constituting Collateral is Infringed, such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements comply with employees and labeling and restricting access to secret information and documentsSection 4.7.
Appears in 2 contracts
Samples: Credit Agreement (Stoneridge Inc), Credit Agreement (Stoneridge Inc)
Intellectual Property. (a) Such Upon the occurrence and during the continuance of an Event of Default, each Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to will use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products efforts to obtain all consents and services offered under such Trademarks and take all approvals necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, appropriate for the ratable assignment to or for the benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Notes Collateral Agent of any Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit License held by such Grantor in order to do any act whereby such Trademark may become invalidated or impaired in any wayenforce the security interests granted hereunder.
(b) Such Grantor (either itself or through licensees), subject Except to the exercise of extent such actions are not required, pursuant to Section 4.5(c) below, each Grantor shall in its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall judgment notify the Administrative Notes Collateral Agent promptly if it knows or suspects reasonably expects that any application or registration relating of any Patent, Trademark or Copyright (now or hereafter existing) included in the Collateral and material to any Material Intellectual Property owned by the conduct of such Grantor Grantor’s business may become forfeited, abandoned or dedicated to the public, or of any material adverse determination (including the institution ofregarding such Grantor’s ownership of any such registered Patent, Trademark or Copyright, or to keep and maintain the same.
(c) In the event that any Grantor (other than a UK Grantor), either directly or through any agent or designee, files an application for the registration or issuance of (or otherwise becomes the owner of) any new material United States Patent, federal United States Trademark or United States Copyright with the USPTO or the Copyright Office, as applicable, to the extent that any of the foregoing constitute Collateral, such determination inGrantor will, concurrently with any proceeding delivery of financial statements pursuant to Section 4.03 of the Indenture, provide the Notes Collateral Agent written notice thereof, and such Grantor shall promptly execute, file and deliver to the Notes Collateral Agent the appropriate supplemental Intellectual Property Security Agreements to evidence the Notes Collateral Agent’s security interest in such material Patent, Trademark (other than any “intent-to-use” trademark applications filed in the United States Patent and Trademark Office, pursuant to Section 1(b) of the Xxxxxx Act, 15 U.S.C. Section 1051, prior to the accepted filing of a “Statement of Use” and issuance of a “Certificate of Registration” pursuant to Section 1(d) of the Xxxxxx Act or an accepted filing of an “Amendment to Allege Use”) whereby such intent-to-use trademark application is converted to a “use in commerce” application pursuant to Section 1(c) of the Xxxxxx Act or Copyright of such Grantor relating thereto or represented thereby, or subject to the Indenture, such other registered or applied for Intellectual Property constituting Collateral as is required under applicable law to protect, preserve, perfect or enforce the security interest of the Notes Collateral Agent and shall file such supplement with the USPTO or the US Copyright Office, as applicable.
(d) Except to the extent permitted by Section 4.5(e) below, each Grantor shall maintain each of the registered or issued United States Copyright Office Patents, United States federal Trademarks and United States Copyrights (now or any court hereafter existing) included in the Collateral, except in cases where (i) the failure to do so would not reasonably be expected to have, individually or tribunal in any countrythe aggregate, a Material Adverse Effect or (ii) regarding in the ordinary course of business consistent with past practice, such Grantor’s ownership ofGrantor reasonably decides to abandon, allow to lapse or expire, forfeit or dedicate to the validity of, public any such Material Intellectual Property Patents, Trademarks or such Grantor’s right to register the same or to own and maintain the sameCopyrights.
(e) After such GrantorNothing in this Security Agreement shall prevent any Grantor from, either by itself discontinuing the use or through maintenance of, abandoning, failing to pursue, selling, transferring allowing to lapse, expire or terminate putting into the public domain or otherwise disposing of, any agent, employee, licensee or designee, shall file an application for the registration of any its Collateral constituting Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time extent permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, Indenture if such Grantor shall execute and deliver, and have recorded determines in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined judgment that such use disposition, discontinuance, abandonment or the pursuit other action (or maintenance of such Intellectual Property non-action) is no longer desirable in the conduct of such Grantor’s its business and that the loss thereof could or otherwise would not reasonably be expected to have have, individually or in the aggregate, a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Pledge and Security Agreement (Cushman & Wakefield PLC), Pledge and Security Agreement (Cushman & Wakefield PLC)
Intellectual Property. Except as expressly permitted by the Credit Agreement:
(a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (i) continue to use each trademark (owned Trademark material by such Grantor), in order to its businessmaintain such trademark in full force and effect free from any claim of abandonment for non-use, (ii) maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualitytrademark, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation such trademark with the appropriate notice of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement registration and an Intellectual Property Security Agreementall other notices and legends required by Applicable Law, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark trademark (or any goodwill associated therewith) may become destroyed, harmed, invalidated or impaired in any way.
(b) Such Each Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not do any act, or omit to do any act, whereby any Patent patent owned by such Grantor material to its business may become unenforceable, invalidated, forfeited, abandoned or dedicated to the public.
(c) Such Each Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) (i) will employ each copyright owned by such Grantor and (ii) will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business copyrights may become invalidated or otherwise impaired. Such Grantor shall , and (iii) will not (either itself or through licensees) do any act whereby any material portion of such Copyrights copyrights may fall into the public domain.
(d) Each Grantor (either itself or through licensees) will not (and will not permit any licensee or sublicensee thereof to) do any act or omit to do any act whereby any trade secret may become unenforceable under any Applicable Law, except to the extent the failure to act could not reasonably be expected to materially adversely affect the business of such Grantor.
(e) Such Grantor shall (either itself or through licensees) will not do any act that uses or practices any Intellectual Property in a manner that would infringe, misappropriate, dilute, violate or otherwise impair, violate or infringe the intellectual property rights of any other Person (except that it will not be a breach of this covenant if such Grantor infringes, violates or impairs any patent rights of any other Person and such Grantor neither knowingly nor intentionally infringed such rights, and such infringement, violation or impairment does not have a material adverse effect on the business, financial condition, operations or assets of the Grantors or of such Grantors’ Subsidiaries and does not materially adversely affect the ability of the Grantors to perform their respective obligations under the Loan Documents.
(f) Such Grantor will notify the Administrative Agent promptly if it knows knows, or suspects has reason to know, that any application or registration relating to any Material Intellectual Property owned by such Grantor has been challenged or may become unenforceable, invalidated, forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any countrycountry but excluding standard communications in the ordinary course of prosecution that are not material or adverse to the business of such Grantor or any other Grantor, such as office actions and the like) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same, in each case, except with respect to Intellectual Property that such Grantor has no obligation to maintain, or may otherwise abandon, under this Agreement or the Credit Agreement to the extent such Intellectual Property is not material or such abandonment is not adverse to the business of such Grantor or any other Grantor.
(eg) After such Whenever a Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property with (or acquire any Intellectual Property that has been applied for registration with or is material to the business of such Grantor with registered with) the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall promptly, but in any event within fifteen Business Days thereof, report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registrationAgent. Upon the request of the Administrative Agent, within fifteen Business Days, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ Agent’s security interest in any CopyrightIntellectual Property, Patentincluding any copyright, Trademark patent or other Intellectual Property trademark and the goodwill and general intangibles of such GrantorGrantor relating thereto or represented thereby.
(fh) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take reasonable and all actions that are necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, reasonably requested by Agent to maintain and pursue each application (and to obtain the relevant registrationregistration or recordation) and to maintain each registration and recordation of all Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued owned by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedingsit.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(hi) In the event that any Intellectual Property material to its business is infringed, infringed upon or misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilutionthereof.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Guaranty and Security Agreement (Aerie Pharmaceuticals Inc), Guaranty and Security Agreement (Aerie Pharmaceuticals Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue For the purpose of enabling the Secured Parties to use exercise rights and remedies under Section 4.05 at such time as the Secured Parties shall be lawfully entitled to exercise such rights and remedies, and for no other purpose, each owned Trademark material Grantor hereby grants to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise extent assignable, an irrevocable, non-exclusive license (exercisable without payment of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, royalty or omit other compensation to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right ) to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance feesuse, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for assign, license or sublicense, any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (now owned or hereafter acquired by such Grantor, wherever the “After-Acquired Intellectual Property”)same may be located, (i) including in such license reasonable access to all media in which any of the provisions of Section 2.1 shall automatically apply thereto, licensed items may be recorded or stored and to all computer programs used for the compilation or printout thereof.
(ii) Notwithstanding anything contained herein to the contrary, but subject to any such After-Acquired provision of the Loan Documents that limits the rights of any Grantor to dispose of its property, other than during the continuance of an Event of Default that has not been waived in writing by the Majority Lenders in accordance with the Loan Agreement, the Grantors will be permitted to exploit, use, enjoy, protect, defend, enforce, license, sublicense, assign, sell, dispose of or take other actions with respect to the Intellectual Property, and Property in the case of trademarks, the goodwill ordinary course of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property CollateralGrantors. In furtherance of the foregoing, (iii) provide written notice thereof prior to or concurrently other than during the continuance of an Event of Default that has not been waived in writing by the Majority Lenders in accordance with the delivery Loan Agreement, the Secured Parties or Administrative Agent shall from time to time, upon the request of the Compliance Certificate required by Section 6.01(c) respective Grantor, execute and deliver any instruments, certificates or other documents, in the form so requested, that the Grantors shall have certified are appropriate in its judgment to allow it to take any action permitted above (including relinquishment of the Credit Agreement for license provided pursuant to Section 4.04(b)(i) as to any specific Intellectual Property). Further, upon the earlier to occur payment in full of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit all of the Secured Parties with Obligations (other than contingent indemnification obligations for which no claim has been made) or earlier expiration of this Agreement or release of the United States Patent Collateral, the license granted pursuant to Section 4.04(b)(i) shall be immediately released, void, and Trademark Office of no further force or effect. The exercise of rights and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of remedies under Section 4.05 by the Secured Parties shall not terminate the rights of the holders of any licenses, covenants not to xxx or sublicenses theretofore granted by the Grantors in accordance with the United States Patent and Trademark Office and the United States Copyright Officefirst sentence of this Section 4.04(b)(ii).
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Security Agreement, Security Agreement (T2 Biosystems, Inc.)
Intellectual Property. (a) Such Grantor (either itself Except for matters that, individually or through licensees) shall, in the exercise of its reasonable business judgmentaggregate, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products have not had and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could would not reasonably be expected to have a Valeant Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under to the circumstances Knowledge of Valeant, Valeant and each of the Valeant Subsidiaries owns, or is licensed to protect such use (in each case, free and clear of any Liens), all Intellectual Property used in or necessary for the conduct of its business as currently conducted, and (ii) if to its Knowledge all such Intellectual Property is valid, enforceable and subsisting; (ii) to the Knowledge of material economic valueValeant, promptly notify the Administrative Agent after it learns thereof use of any Intellectual Property by Valeant and xxx for infringementthe Valeant Subsidiaries does not infringe on or otherwise violate the rights of any Person and is in accordance with any applicable license pursuant to which Valeant or any Valeant Subsidiary acquired the right to use any Intellectual Property; (iii) to the Knowledge of Valeant, misappropriation no Person is challenging, infringing on or dilutionotherwise violating any right of Valeant or any of the Valeant Subsidiaries with respect to any Intellectual Property owned by or licensed to Valeant or any of the Valeant Subsidiaries; and (iv) to the Knowledge of Valeant, neither Valeant nor any of the Valeant Subsidiaries has received any written notice or otherwise has Knowledge of any pending claim, order or proceeding with respect to seek injunctive relief where appropriate any Intellectual Property used by Valeant and the Valeant Subsidiaries and to recover its Knowledge no Intellectual Property owned or licensed by Valeant or the Valeant Subsidiaries is being used or enforced in a manner that would reasonably be expected to result in the abandonment, cancellation or unenforceability of such Intellectual Property. This Section 4.16(a) constitutes the only representation and warranty of Valeant with respect to any and all damages for such infringement, misappropriation actual or dilutionalleged infringement or other violation of Intellectual Property of any other Person.
(ib) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office Valeant and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially Valeant Subsidiaries have taken reasonable steps to protect the secrecy confidentiality and value of all trade secrets or and any other confidential information material to its businessthat are owned, used or held by Valeant and the Valeant Subsidiaries in confidence, including entering into confidentiality agreements licenses and Contracts that require employees, licensees, contractors and other Persons with employees and labeling and restricting access to secret trade secrets or other confidential information to safeguard and documentsmaintain the secrecy and confidentiality of such trade secrets and confidential information. To the Knowledge of Valeant, such trade secrets and confidential information have not been used, disclosed to or discovered by any Person except pursuant to a valid non-disclosure, license or other appropriate Contract which has not been breached.
(c) To the Knowledge of Valeant, Valeant and the Valeant Subsidiaries are in compliance with all applicable Law, as well as their own policies, relating to privacy, data protection, and the collection and use of personal information collected, used, or held for use by Valeant or the Valeant Subsidiaries, and as of the date hereof no claims are pending or threatened in writing against Valeant or the Valeant Subsidiaries alleging a violation of any Person’s privacy or personal information.
(d) Except for matters that, individually or in the aggregate, have not had and would not reasonably be expected to have a Valeant Material Adverse Effect (it being agreed that for purposes of this Section 4.16(d), effects resulting from or arising in connection with the matters set forth in clause (iv) of the definition of the term “Material Adverse Effect” shall not be excluded in determining whether a Valeant Material Adverse Effect has occurred or would reasonably be expected to occur) and except as set forth in Section 4.16(d) of the Valeant Disclosure Letter, to the Knowledge of Valeant, the consummation of the transactions contemplated by this Agreement will not (i) result in the loss of, or otherwise adversely affect, any rights of Valeant or the Valeant Subsidiaries in any Intellectual Property, (ii) grant or require Valeant or the Valeant Subsidiaries to grant to any Person any rights with respect to any Intellectual Property of Valeant or the Valeant Subsidiaries, (iii) subject Valeant or any of the Valeant Subsidiaries to any increase in royalties or other payments in respect of any Intellectual Property, (iv) by the terms of any Contract to which Valeant or a Subsidiary of Valeant is a party, diminish any royalties or other payments Valeant or a Subsidiary of Valeant would otherwise be entitled to in respect of any Intellectual Property or (v) result in the breach or, by the terms of such Contract, termination of any agreement relating to the Intellectual Property of Valeant.
Appears in 2 contracts
Samples: Merger Agreement (Valeant Pharmaceuticals International), Merger Agreement (BIOVAIL Corp)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue Not do any act or knowingly omit to use do any act whereby any material Copyright may become invalidated and (A) not do any act, or knowingly omit to do any act, whereby any material Copyright may become injected into the public domain; (B) notify the Collateral Agent promptly if it knows that any material Copyright may become injected into the public domain or of any materially adverse determination or development (including the institution of, or any such determination or development in, any court or tribunal in the United States or any other country) regarding a Grantor’s ownership of any such material Copyright or its validity; (C) take all commercially reasonable steps as it shall deem appropriate under the circumstances, to maintain and pursue each application (and to obtain the relevant registration) of each material Copyright owned Trademark by a Grantor and to maintain each registration of each material Copyright owned by a Grantor including filing of applications for renewal where necessary; and (D) promptly notify the Collateral Agent of any infringement of any material Copyright of a Grantor of which it becomes aware and take such commercially reasonable actions as it shall reasonably deem appropriate under the circumstances to protect such material Copyright, including, where deemed appropriate by such Grantor in its businesscommercially reasonable discretion, the bringing of suit for infringement, seeking injunctive relief and seeking to recover any and all damages for such infringement;
(ii) Not make any assignment or agreement in conflict with the security interest in the Copyrights of each Grantor hereunder, except for Dispositions, Liens and licenses permitted under the Credit Agreement;
(iii) Continue to (A) use each material Trademark on each and every trademark class of goods applicable to its current line as reflected in its current catalogs, brochures and price lists in order to maintain commercially reasonable such material Trademark in full force free from any claim of abandonment for non-use, (B) maintain as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualitymaterial Trademark, (iiiC) employ such material Trademark with the appropriate notice of registration, if applicable, (D) not adopt or use any xxxx which that is confusingly similar or a colorable imitation of such Trademarks material Trademark unless the Administrative Collateral Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivE) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any such material Trademark may become invalidated or impaired invalidated, other than in each case, any way.such action in connection with any Disposition of a Trademark permitted under the Credit Agreement;
(biv) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not Not do any act, or omit to do any act, whereby any material Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public., except to the extent permitted under the Credit Agreement;
(cv) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall Promptly notify the Administrative Collateral Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor material Patent or Trademark may become forfeited, abandoned or dedicated to the public, or of any materially adverse determination or development (including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s Grantor ownership of, of any material Patent or the validity of, any such Material Intellectual Property Trademark or such Grantor’s its right to register the same or to own keep and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor except in connection with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of Disposition permitted under the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.;
Appears in 2 contracts
Samples: First Lien Credit Agreement (Trinet Group Inc), Second Lien Credit Agreement (Trinet Group Inc)
Intellectual Property. (a) Within 30 days after any change to Schedule 3.16 to the Credit Agreement for such Grantor, such Grantor shall provide Agent notification thereof and the short-form intellectual property agreements and assignments as described in this Section 5.6 and any other documents that Agent reasonably requests with respect thereto.
(b) Such Grantor shall (either itself or through licenseesand shall cause all its licensees to) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i)
(1) continue to use each owned Trademark material included in the Material Intellectual Property in order to its businessmaintain such Trademark in full force and effect with respect to each class of goods for which such Trademark is currently used, free from any claim of abandonment for non-use, (ii2) maintain commercially reasonable at least the same standards of quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark as are currently maintained, (iii3) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law, (4) not adopt or use any xxxx which other Trademark that is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, Agent shall obtain a perfected security interest in such xxxx other Trademark pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivii) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby (w) such Trademark (or any goodwill associated therewith) may become invalidated destroyed, invalidated, impaired or impaired harmed in any way.
, (bx) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business included in the Material Intellectual Property may become forfeited, misused, unenforceable, abandoned or dedicated to the public, (y) any portion of the Copyrights included in the Material Intellectual Property may become invalidated, otherwise impaired or fall into the public domain or (z) any Trade Secret that is Material Intellectual Property may become publicly available or otherwise unprotectable.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly immediately if it knows knows, or suspects has reason to know, that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, misused, unenforceable, abandoned or dedicated to the public, or of any adverse determination or development regarding the validity or enforceability or such Grantor's ownership of, interest in, right to use, register, own or maintain any Material Intellectual Property (including the institution of, or any such determination or development in, any proceeding in relating to the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal foregoing in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Applicable IP Office, such ). Such Grantor shall report such filing take all actions that are necessary or receipt of a registration to the Administrative reasonably requested by Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registrationregistration or recordation) and to maintain each registration of and recordation included in the Material Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedingsProperty.
(gd) Such Grantor (either itself shall not knowingly do any act or through licensees)omit to do any act to infringe, subject to the exercise of its reasonable business judgmentmisappropriate, taking into account the Secured Parties’ interests under this Agreementdilute, shall not, without the prior written consent of the Administrative Agent, discontinue use of violate or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or impair the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) any other Person. In the event that any Material Intellectual Property material to its business of such Grantor is or has been infringed, misappropriated misappropriated, violated, diluted or diluted otherwise impaired by a third party, such Grantor shall (i) take such actions action as such Grantor shall it reasonably deem deems appropriate under the circumstances in response thereto, including (if reasonably deemed appropriate by such Grantor) promptly bringing suit and recovering all damages therefor.
(e) Such Grantor shall execute and deliver to protect Agent in form and substance reasonably acceptable to Agent and suitable for (i) filing in the Applicable IP Office the short-form intellectual property security agreements in the form attached hereto as Annex 3 for all Copyrights, Trademarks, Patents and IP Licenses of such Intellectual Property Grantor and (ii) if such Intellectual Property is of material economic value, promptly notify recording with the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing DateInternet domain name registrar, a part duly executed form of the Intellectual Property Collateral assignment for all Internet Domain Names of such Grantor (the “After-Acquired Intellectual Property”together with appropriate supporting documentation as may be requested by Agent), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: u.s. Revolving Guaranty and Security Agreement (Real Industry, Inc.), u.s. Revolving Guaranty and Security Agreement (Real Industry, Inc.)
Intellectual Property. (a) Within 60 days after any change to Schedule 6 for such Grantor, such Grantor shall provide the Administrative Agent notification thereof and the short-form intellectual property agreements and assignments as described in this Section 5.7 and other documents that the Administrative Agent reasonably requests with respect thereto.
(b) Such Grantor shall (either itself or through licenseesand shall cause all its licensees to) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i)
(1) continue to use each owned Trademark material included in the Material Intellectual Property in order to its businessmaintain such Trademark in full force and effect with respect to each class of goods for which such Trademark is currently used, free from any claim of abandonment for non-use, (ii2) maintain commercially reasonable at least the same standards of quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark as are currently maintained, (iii3) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law, (4) not adopt or use any xxxx which other Trademark that is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, Agent shall obtain a perfected security interest in such xxxx other Trademark pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivii) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby (w) such Trademark (or any goodwill associated therewith) may become invalidated destroyed, invalidated, impaired or impaired harmed in any way.
, (bx) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business included in the Material Intellectual Property may become forfeited, misused, unenforceable, abandoned or dedicated to the public, (y) any portion of the Copyrights included in the Material Intellectual Property may become invalidated, otherwise impaired or fall into the public domain or (z) any Trade Secret that is Material Intellectual Property may become publicly available or otherwise unprotectable. Notwithstanding the foregoing, such Grantor shall be permitted to dispose of Intellectual Property pursuant to Section 8.4 of the Credit Agreement.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly immediately if it knows knows, or suspects has reason to know, that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, misused, unenforceable, abandoned or dedicated to the public, or of any adverse determination or development regarding the validity or enforceability or such Grantor’s ownership of, interest in, right to use, register, own or maintain any Material Intellectual Property (including the institution of, or any such determination or development in, any proceeding in relating to the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal foregoing in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Applicable IP Office, such ). Such Grantor shall report such filing take all actions that are necessary or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted reasonably requested by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registrationregistration or recordation) and to maintain each registration and recordation included in the Material Intellectual Property. Notwithstanding the foregoing, such Grantor shall be permitted to dispose of Intellectual Property material pursuant to its business, including Section 8.4 of the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedingsCredit Agreement.
(gd) Such Grantor (either itself shall not knowingly do any act or through licensees)omit to do any act to infringe, subject to the exercise of its reasonable business judgmentmisappropriate, taking into account the Secured Parties’ interests under this Agreementdilute, shall not, without the prior written consent of the Administrative Agent, discontinue use of violate or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or impair the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) any other Person. In the event that any Material Intellectual Property material to its business of such Grantor is or has been infringed, misappropriated misappropriated, violated, diluted or diluted otherwise impaired by a third party, such Grantor shall (i) take such actions action as such Grantor shall it reasonably deem deems appropriate under the circumstances in response thereto, including promptly bringing suit and recovering all damages therefor.
(e) Such Grantor shall execute and deliver to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof in form and xxx substance reasonably acceptable to the Administrative Agent and suitable for infringement, misappropriation filing in the Applicable IP Office or dilution, to seek injunctive relief where recording with the appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is notInternet domain name registrar, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”)applicable, (i) the provisions short-form intellectual property security agreements in the form attached hereto as Annex 3 for all Copyrights, Trademarks, Patents and IP Licenses of Section 2.1 shall automatically apply thereto, such Grantor and (ii) during the continuance of any such After-Acquired Intellectual PropertyEvent of Default, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after at the Administrative Agent’s request, it shall provide a duly executed form of assignment for all Internet Domain Names of such Grantor, in each case, together with appropriate supporting documentation as may be requested by the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10Agent.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Guaranty and Security Agreement (Princeton Review Inc), Guaranty and Security Agreement (Princeton Review Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shallIf and to the extent applicable under a Work Statement, in each Party acknowledges and agrees that the exercise performance of its reasonable business judgment, taking into account the Secured both of Parties’ interests under this Agreement, (i) continue activities contemplated hereunder is subject to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products the terms and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any wayconditions set forth on Appendix 2.
(b) Such Grantor (either itself or through licensees)As between the Parties, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under except as expressly provided in this Agreement, shall not do each Party will retain exclusive right, title and interest in and to its Background Technology and all Improvements thereto. Except as expressly provided in this Agreement, neither Party has, by virtue of this Agreement, any actright, title, or omit interest to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated in the other Party’s Background Technology. Each Party hereby assigns to the publicother Party, and agrees to assign to the other Party all of its right, title and interest in or to such other Party’s Background Technology.
(c) Such Grantor (either itself or through licensees)At Customer’s request, subject which shall be provided in writing by Customer, Gallus will assign to the exercise Customer any interest Gallus may have in any Product Invention; provided, that Customer requests such assignment, in writing, within one year of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit Gallus’s notification to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion Customer of such Copyrights may fall into Product Invention. If Customer requests in writing, Gallus will, at Customer’s expense, execute any and all applications, assignments or other instruments and give testimony which shall be necessary to apply for and obtain Patents with respect to a Product Invention and Customer shall compensate Gallus at its standard commercial rate for the public domaintime devoted to such activities and reimburse it for expenses incurred.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated Notwithstanding anything to the publiccontrary herein, or Gallus shall retain all rights in and to the Gallus Technology. To the extent that Customer retains any interest in such Gallus Technology, Customer hereby assigns to Gallus and agrees to assign to Gallus all of any adverse determination (including the institution ofCustomer’s right, or any such determination in, any proceeding title and interest in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the samesuch Gallus Technology.
(e) After such GrantorCustomer hereby grants to Gallus a non-exclusive, either by itself royalty-free license to use Customer’s Background Technology, Product Inventions and any other Technology provided to or through any agent, employee, licensee or designee, shall file an application made available to Gallus hereunder for the registration sole purpose of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Partiesperforming Gallus’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantorobligations hereunder.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material Background Technology of Gallus or Gallus Technology is incorporated into the Process hereunder, Gallus hereby grants to Customer a non-exclusive, worldwide, paid-up license to use such Background Technology or Gallus Technology solely to the extent necessary to practice the Process solely in connection with the development or manufacture of Product. The foregoing license shall only apply to such Background Technology of Gallus or Gallus Technology as is used by Gallus in its business is infringedperformance hereunder and incorporated into the Process, misappropriated and for which Customer cannot develop or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation acquire an alternative technology without substantial expense or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilutiondelay.
(ig) Such Grantor agrees thatNotwithstanding Sections 10 or 12, should it obtain an ownership interest in any item of intellectual property which is not, as Gallus reserves the right to utilize data generated during the course of the Closing DateProgram to support applications, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically assignments or other instruments necessary to apply thereto, (ii) any such After-Acquired Intellectual Property, for and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement obtain Patents with respect to its Intellectual Property Gallus Technology. Gallus shall notify Customer in order to record the security interest granted herein to the Administrative Agent for the ratable benefit advance of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Officeany such application.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Development and Manufacturing Services Agreement (Mabvax Therapeutics Holdings, Inc.), Development and Manufacturing Services Agreement (Mabvax Therapeutics Holdings, Inc.)
Intellectual Property. (a) Such Except as could not reasonably be expected to have a material adverse effect on the value of the Intellectual Property, taken as a whole, such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to will use each registered Trademark (owned by such Grantor) and Trademark material for which an application (owned by such Grantor) is pending, to its businessthe extent reasonably necessary to maintain such Trademark in full force free from any claim of abandonment for non-use, (ii) will maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users Trademark at a level substantially consistent with the quality of such Trademarks comply with such Grantor’s quality control requirements products and maintain reasonable qualityservices as of the date hereof, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) will not (and will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may could reasonably be expected to become invalidated or impaired in any way.
, (biv) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall will not do any act, or knowingly omit to do any act, whereby any issued Patent owned by such Grantor material would reasonably be expected to its business may become forfeited, abandoned or dedicated to the public.
, (cv) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights registered Copyright owned by such Grantor and material or Copyright for which an application is pending (owned by such Grantor) could reasonably be expected to its business may become invalidated or otherwise impaired. Such Grantor shall impaired and (vi) will not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(db) Such Grantor shall will notify the Administrative Agent and the Lenders promptly if it knows knows, or suspects has reason to know, that any application or registration relating to any Material material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material material 60010211_5 Intellectual Property owned by such Grantor or such Grantor’s right to register the same or to own and maintain the same.
(ec) After such Whenever any Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently in accordance with the delivery of the Compliance Certificate required by Section 6.01(c8.2(b) of the Credit Agreement for and shall be deemed to have provided a written supplement to Schedule 3.11 to the earlier Collateral Disclosure Letter at the time of delivery of a duly completed IP Reporting Certificate to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registrationAgent. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent may reasonably request to evidence the Secured Parties’ security interest of the Secured Parties in any material Copyright, Patent, Patent or Trademark or other Intellectual Property and the goodwill and General Intangibles of such GrantorGrantor relating thereto or represented thereby.
(fd) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take all reasonable and necessary steps, including at such Grantor’s sole cost and expense, including, without limitation, in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of the material Intellectual Property material to its businessProperty, including the payment of required fees and taxesincluding, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Officewithout limitation, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(he) In the event that any material Intellectual Property material to its business owned by a Grantor is infringed, misappropriated or diluted otherwise violated by a third party, such the applicable Grantor shall (i) at such Grantor’s sole cost and expense, take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for of such infringement, misappropriation or dilutionviolation.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Collateral Agreement (Realpage Inc), Collateral Agreement (Realpage Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (i) continue to use each material Trademark owned by such Grantor to the extent necessary to maintain such Trademark material to its businessin full force free from any claim of abandonment for non-use, (ii) maintain commercially reasonable as in the past substantially the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) use such Trademark with the appropriate notice of registration and all other notices and legends to the extent required by applicable Requirements of Law, (iv) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest (subject to the qualifications set forth in Section 4.2) in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not do any act, or omit to do any act, whereby any material Patent owned or exclusively licensed by such Grantor material to its business may become forfeited, abandoned or dedicated to the publicpublic (except as the result of the expiration of such Patent at the end of its statutory term).
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights owned by such Grantor and material to its business may become invalidated abandoned or otherwise impaired. Such Grantor shall will not (either itself or through licensees) do any act whereby any material portion of the Copyrights owned or exclusively licensed by such Copyrights Grantor may fall into the public domaindomain (except as a result of the expiration of such Copyright at the end of its statutory term).
(d) Such Grantor shall (either itself or through licensees) will not knowingly infringe, misappropriate or otherwise violate the intellectual property rights of any other Person.
(e) Such Grantor will notify the Administrative Agent promptly and the Lenders immediately if it knows knows, or suspects has reason to know, that any application or registration relating to any Material material Intellectual Property owned or exclusively licensed by such Grantor may become forfeited, abandoned or dedicated to the public, or of any materially adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court court, agency, office or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(ef) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall (i) acquire any registration or application for registration of any material Trademark or any material issued Patent or Patent application, (ii) become the exclusive licensee of any United States registration or application for registration of any material Trademark or any material United States issued Patent or Patent application, (iii) or file an application for the registration of any Intellectual Property that is material to the business of such Grantor Trademark or material Patent with the United States Patent and Trademark Office or the United States Copyright Officeany similar office or agency in any group of countries, other country or political subdivision thereof, such Grantor shall report such filing filing, licensing or receipt of a registration acquisition to the Administrative Agent prior to after such filing, licensing or concurrently with acquisition occurs at the same time as the delivery of the Compliance Certificate required by Section 6.01(ccertificate under subsection 7.2(b) of the Credit Agreement Agreement, but in no event shall such report be made more than ninety (90) days after the date on which such filing, licensing or acquisition occurs. Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall (i) acquire any registration or application for registration of any material Copyright, (ii) become the earlier exclusive licensee of any material United States Copyright registration, or (iii) file an application for any material Copyright with the United States Copyright Office or any similar office or agency in any group of countries, other country or political subdivision thereof, such Grantor shall report such filing, licensing or acquisition to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion)within (20) twenty Business Days of the acquisition, in each caselicensing or filing, immediately following the date of such filing or receipt of registrationas applicable, thereof. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent may reasonably request to evidence the Secured PartiesAdministrative Agent’s and the Lenders’ security interest in any Copyright, Patent, Trademark or other such Intellectual Property of such GrantorProperty.
(fg) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take all reasonable and necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property each of its material to its businessPatents, including the payment of required fees and taxesTrademarks, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Officeor Copyrights (now or hereafter existing), the including, without limitation, filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any material Intellectual Property material to its business owned or exclusively licensed by such Grantor is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and, where appropriate in Grantor’s reasonable business judgment and where Grantor has standing to do so, xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Guarantee and Collateral Agreement (Citadel Broadcasting Corp), Guarantee and Collateral Agreement (Citadel Broadcasting Corp)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue Each Grantor hereby grants to use each owned Trademark material to its businessthe Administrative Agent, (ii) maintain commercially reasonable quality with effect from the occurrence of products an Event of Default that is continuing and services offered under such Trademarks and take all necessary steps to ensure that all licensed users solely during the continuation of such Trademarks comply with Event of Default, solely to the extent assignable, not prohibited by applicable Law, not otherwise prohibited by the documentation governing such Intellectual Property and not giving rise to any liability to or obligations on such Grantor’s quality control requirements , a non-exclusive license (exercisable without payment of royalty or other compensation to such Grantor) to use, and maintain reasonable qualitythe right to assign, (iii) not adopt license or use sublicense, any xxxx which is confusingly similar of the Intellectual Property rights included in the Collateral now owned or a colorable imitation hereafter acquired by such Grantor, wherever the same may be located, solely for the purpose of such Trademarks unless enabling the Administrative Agent, for the ratable benefit of the Administrative Agent and the Secured Parties, shall obtain a perfected security interest in to exercise rights and remedies under Section 4.05 at such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify time as the Administrative Agent promptly if it knows or suspects shall be lawfully entitled to exercise such rights and remedies after the occurrence and during the continuation of an Event of Default, and for no other purpose; provided, that any application such license or registration relating sublicense granted by the Administrative Agent to any Material a third party shall include reasonable and customary terms and conditions necessary to preserve the existence, validity and value of the affected Intellectual Property owned by such Grantor may become forfeitedProperty, abandoned or dedicated including provisions requiring the continuing confidential handling of trade secrets, requiring the use of appropriate notices and prohibiting the use of false notices, quality control and inurement provisions with regard to the publicTrademarks, or patent designation provisions with regard to Patents, copyright notices and restrictions on decompilation and reverse engineering of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration copyrighted software. Such non-exclusive license to the Administrative Agent prior includes reasonable access to or concurrently with the delivery all media in which any of the Compliance Certificate required licensed items may be recorded or stored and to all computer programs used for the compilation or printout thereof.
(ii) Notwithstanding anything contained herein to the contrary, but subject to any provision of the Loan Documents that limits the rights of any Grantor to dispose of its property, unless an Event of Default has occurred and is continuing, Grantors will be permitted to exploit, use, enjoy, protect, defend, enforce, license, sublicense, assign, sell, dispose of or take other actions with respect to the Intellectual Property in the Ordinary Course of Business of Grantors. In furtherance of the foregoing, unless an Event of Default has occurred and is continuing, the Administrative Agent shall from time to time, upon the request of the respective Grantor, execute and deliver any instruments, certificates or other documents, in the form so requested, that such Grantor shall have certified are appropriate in its judgment to allow it to take any action permitted above (including relinquishment of the license provided pursuant to Section 4.04(b)(i) as to any specific Intellectual Property). Further, upon the payment in full of all of the Secured Obligations (other than contingent indemnification obligations for which no claim has been made or other obligations which, by Section 6.01(c) their terms, survive termination of the Credit Agreement) or earlier expiration of this Agreement for or release of the earlier Collateral, the license granted by Grantors to occur Administrative Agent pursuant to Section 4.04(b)(i) will automatically terminate without any further action by any party hereto. The exercise of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted rights and remedies under Section 4.05 by the Administrative Agent in its sole discretion), in each case, immediately following shall not terminate the date of such filing or receipt of registration. Upon request rights of the Administrative Agentholders of any licenses, such Grantor shall execute and deliver, and have recorded covenants not to sue or sublicenses theretofore granted by Grantors in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently accordance with the delivery first sentence of the Compliance Certificate required by this Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion4.04(b)(ii), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Credit Agreement and Guaranty (Biodesix Inc), Security Agreement (Biodesix Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (i) continue to use each owned material Trademark material in order to its businessmaintain such Trademark in full force free from any claim of abandonment for non-use, (ii) maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable material Requirements of Law, (iv) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured PartiesLenders, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivv) not (and not knowingly permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not do any act, or omit to do any act, whereby any material Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall
(i) will employ each material Copyright and (ii) will not (and shall will not knowingly permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall will not (either itself or through licensees) do any act whereby any material portion of such the Copyrights may fall into the public domain.
(d) Such Grantor shall (either itself or through licensees) will not do any act that knowingly uses any material Intellectual Property to infringe the intellectual property rights of any other Person.
(e) Such Grantor will notify the Administrative Agent and the Lenders promptly if it knows knows, or suspects has reason to know, that any application or registration relating to any Material material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s 's ownership of, or the validity of, any such Material material Intellectual Property or such Grantor’s 's right to register the same or to own and maintain the same.
(ef) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with within five Business Days after the delivery last day of the Compliance Certificate required by Section 6.01(c) fiscal quarter in which such filing occurs with respect to filings in the United States and, with respect to filings outside the United States, within five Business Days after the last day of the Credit Agreement for fiscal quarter in which the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date Grantor is notified of such filing or receipt of registrationby its foreign agent. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ Administrative Agent's and the Lenders' security interest in any Copyright, Patent, Patent or Trademark or other Intellectual Property and the goodwill and general intangibles of such GrantorGrantor relating thereto or represented thereby.
(fg) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take all reasonable and necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of the material Intellectual Property material to its businessProperty, including the payment of required fees and taxesincluding, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Officewithout limitation, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any material Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Credit Agreement (Bear Island Finance Co Ii), Credit Agreement (Bear Island Finance Co Ii)
Intellectual Property. (a) Such Grantor will use its commercially reasonable efforts to secure all consents and approvals necessary or appropriate for the grant of security interest herein in favour of the Collateral Agent of any material Intellectual Property owned by such Grantor and to enforce the security interests granted hereunder provided that for Copyright Licenses, Patent Licenses and Trademark Licenses, such efforts shall only be required in connection with material Copyright Licenses, Patent Licenses and Trademark Licenses entered into after the date hereof.
(b) Such Grantor will use the material Trademarks owned by such Grantor with proper statutory notice in accordance with applicable law. Such Grantor (either itself or through licensees) shall, will as it reasonably determines in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, judgment consistent with past practice (i) continue subject to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iiiSection 4.7(f)) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Collateral Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(bc) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall will not do any act, or omit to do any act, whereby any Patent material Intellectual Property (as determined in the exercise of such Grantor’s reasonable business judgment) owned by such Grantor material to its business may become prematurely invalidated, forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall will promptly notify the Administrative Collateral Agent promptly if it knows knows, or suspects has reason to know, that any application or registration relating to any Material material Intellectual Property (as determined in the exercise of such Grantor’s reasonable business judgment) owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any material adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or with CIPO or any court or tribunal in any country, but excluding routine office actions or similar determinations in the ordinary course of prosecution before the United States Patent and Trademark Office, CIPO or any foreign counterpart) regarding such Grantor’s ownership of, or the validity of, any such Material material Intellectual Property owned by such Grantor or such Grantor’s right to register the same or to own and maintain the same.
(e) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor Patent, Copyright or Trademark with the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or CIPO or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall report give written notice of such filing or receipt of a registration to the Administrative Collateral Agent prior to or concurrently with the Holdings’ delivery of the Compliance Certificate required by Section 6.01(cits next succeeding financial statements under Sections 6.01(a) and 6.01(b) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registrationAgreement. Upon request of the Administrative Collateral Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Collateral Agent may request to evidence and perfect the Collateral Agent’s and the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property owned by such Grantor and the goodwill and intangibles of such GrantorGrantor relating thereto or represented thereby.
(f) Such GrantorGrantor will, subject to in the exercise of its reasonable business judgmentjudgment consistent with past practice, taking into account the Secured Parties’ interests under this Agreement, shall take all reasonable and necessary stepssteps including, including without limitation, in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or CIPO or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of the material Intellectual Property material to its businessowned by such Grantor, including the payment of required fees and taxesincluding, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Officewithout limitation, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, fees and the participation in interference, reexamination, opposition, cancellation, infringement opposition and misappropriation interference and cancellation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any material Intellectual Property material to its business owned by such Grantor is infringed, misappropriated misappropriated, violated or diluted by a third party, such Grantor shall shall, as it reasonably deems appropriate under the circumstances, (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances action to protect enforce such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Collateral Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilutionthereof.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Pledge and Security Agreement, Pledge and Security Agreement (Postmedia Network Canada Corp.)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Collateral Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an the Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Collateral Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such a Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Collateral Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office Office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Collateral Agent may request to evidence the Secured Parties’ Collateral Agent’s security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Material Intellectual Property material to its businessProperty, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Collateral Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Material Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Collateral Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Effective Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 3 shall automatically apply thereto, thereto and (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees shall furnish to execute an the Collateral Agent from time to time upon the Collateral Agent’s reasonable request therefor reasonably detailed statements and amended schedules further identifying and describing the Owned Intellectual Property Security Agreement with respect to its and Licensed Intellectual Property in order to record and such other materials evidencing, or reports pertaining to, the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Owned Intellectual Property Security Agreement with respect to its After-Acquired and Licensed Intellectual Property in order as the Collateral Agent may from time to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Officetime reasonably request.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: First Lien Pledge and Security Agreement (McDermott International Inc), Credit Agreement (McDermott International Inc)
Intellectual Property. In each case, unless it is permitted by the Credit Agreement to do otherwise:
(a) Such Grantor (either itself or through licensees) shallwill, in the exercise of and will use commercially reasonable efforts to, cause its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, licensees to (i) continue to use each owned material Trademark in order to maintain such material to its businessTrademark in full force free from any claim of abandonment for non-use, (ii) maintain commercially reasonable as in the past the quality of products and services offered under each such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualitymaterial Trademark, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation each such material Trademark with the appropriate notice of such Trademarks unless the Administrative Agent, for the ratable benefit registration and all other notices and legends required by applicable Requirements of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security AgreementLaw, and (iv) not (and not knowingly permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any such material Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees)will, subject and will use commercially reasonable efforts to the exercise of cause its reasonable business judgmentlicensees to, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any material Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall will not (and shall will use commercially reasonable efforts to not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any such material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall will not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall (either itself or through licensees) will, and will use commercially reasonable efforts to cause its licensees to, not do any act that knowingly uses any material Intellectual Property to infringe the intellectual property rights of any other Person.
(e) Such Grantor will notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any material adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(ef) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor Patent or Trademark with the United States Patent and Trademark Office or any similar office or agency in any other country or political subdivision thereof, such Grantor shall report (i) the initial application to and (ii) the corresponding grant, if any, of the Patent or Trademark from the United States Patent and Trademark Office to the Administrative Agent at the times specified in Section 6.2 of the Credit Agreement. Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Copyright with the United States Copyright Office, such Grantor shall report such the filing or receipt of a registration the initial application to the Administrative Agent prior to or concurrently with at the delivery of the Compliance Certificate required by times specified in Section 6.01(c6.2(b) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registrationAgreement. Upon request of the Administrative Agent, other than in respect of intent-to-use trademark or service xxxx applications, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent may reasonably request to evidence the Administrative Agent’s and the other Secured Parties’ security interest in any Copyright, Patent, Patent or Trademark or other Intellectual Property and the goodwill and general intangibles of such GrantorGrantor relating thereto or represented thereby.
(fg) Such GrantorGrantor will use commercially reasonable efforts, subject to the exercise of its reasonable business judgmentincluding, taking into account the Secured Parties’ interests under this Agreementwithout limitation, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each material application (and to obtain the relevant registration) and to maintain each registration of the material U.S. Intellectual Property material to its businessProperty, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any material Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilutionProperty.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Credit Agreement (CrowdStrike Holdings, Inc.), Credit Agreement (CrowdStrike Holdings, Inc.)
Intellectual Property. (a) After any change to Exhibit D (or the information required to be disclosed thereon), the applicable Grantor shall (i) except with respect to Copyrights that are registered or subject to an application for registration, at the time of the next delivery of financial statements pursuant to Section 5.01(a) or (b) of the Credit Agreement, provide the Administrative Agent notification thereof in the next compliance certificate required to be delivered under the Credit Agreement and the respective Confirmatory Grant as described in this Section 4.7 and any other documents that Administrative Agent reasonably requests with respect thereto, and (ii) solely with respect to Copyrights that are registered or subject to an application for registration, within fifteen (15) days of the filing or acquisition thereof, provide the Administrative Agent written notification thereof and the respective Confirmatory Grant as described in this Section 4.7 and any other documents that Administrative Agent reasonably requests with respect thereto.
(b) Such Grantor shall (either itself or through licenseesand shall cause all its licensees to) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) (1) continue to use each Trademark included in the Material Intellectual Property owned by it in order to maintain such Trademark material in full force and effect with respect to its businesseach class of goods for which such Trademark is currently used, free from any claim of abandonment for non-use, (ii2) maintain commercially reasonable at least the same standards of quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark as are currently maintained, (iii3) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law and (4) not adopt or use any xxxx which other Trademark that is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, Agent shall obtain a perfected security interest in such xxxx other Trademark pursuant to this Security Agreement and an Intellectual Property Security Agreement, and (ivii) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby (w) such Trademark (or any goodwill associated therewith) may become invalidated destroyed, invalidated, impaired or impaired harmed in any way.
, (bx) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business included in the Material Intellectual Property may become forfeited, misused, unenforceable, abandoned or dedicated to the public, (y) any portion of the Copyrights included in the Material Intellectual Property may become invalidated, otherwise impaired or fall into the public domain or (z) any Trade Secret that is Material Intellectual Property may become publicly available or otherwise unprotectable.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly immediately if it knows knows, or suspects has reason to know, that any application or registration relating to any Patent, Trademark or Copyright constituting Material Intellectual Property owned by such Grantor it may become forfeited, misused, unenforceable, abandoned or dedicated to the public, or of any adverse determination or development regarding the validity or enforceability or such Grantor’s ownership of, interest in, right to use, register, own or maintain any such Patent, Trademark, Copyright or other Material Intellectual Property (including the institution of, or any such determination or development in, any proceeding in relating to the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal foregoing in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Applicable IP Office, such ). Such Grantor shall report such filing take all actions that are necessary or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted reasonably requested by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registrationregistration or recordation) and to maintain each registration of and recordation included in the Material Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued owned by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedingsit.
(gd) Such Grantor (either itself shall not knowingly do any act or through licensees)omit to do any act to infringe, subject to the exercise of its reasonable business judgmentmisappropriate, taking into account the Secured Parties’ interests under this Agreementdilute, shall not, without the prior written consent of the Administrative Agent, discontinue use of violate or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or impair the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) any other Person. In the event that any Material Intellectual Property material to its business of such Grantor is or has been infringed, misappropriated misappropriated, violated, diluted or diluted otherwise impaired by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate dilution and to recover any and all damages for such infringement, misappropriation or dilution, and shall take such other actions as the Administrative Agent shall deem appropriate under the circumstances to protect such Material Intellectual Property.
(ie) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, execute and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior deliver to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), form and substance reasonably acceptable to Agent and suitable for (i) filing in each case, following the date on which such ownership is obtained, Applicable IP Office the respective Confirmatory Grant in form and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein substance acceptable to the Administrative Agent for the ratable benefit all Copyrights, Trademarks, Patents and Material License Agreements of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Officesuch Grantor.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(lf) Such Grantor shall take commercially reasonable steps all actions necessary or reasonably requested by the Administrative Agent to protect maintain and pursue each application, to obtain the secrecy relevant registration and to maintain the registration of all trade secrets Material Intellectual Property owned by it (now or confidential information material to its businesshereafter existing), including entering into confidentiality agreements with employees the filing of applications for renewal, affidavits of use, affidavits of noncontestability and labeling defense of opposition, interference and restricting access to secret information and documentscancellation proceedings.
Appears in 2 contracts
Samples: Pledge and Security Agreement (PLAYSTUDIOS, Inc.), Pledge and Security Agreement (PLAYSTUDIOS, Inc.)
Intellectual Property. (a) Within 30 days after any change to Schedule 3.16 to the Credit Agreement for such Grantor, such Grantor shall provide Agent notification thereof and the short-form intellectual property agreements and assignments as described in this Section 5.6 and any other documents that Agent reasonably requests with respect thereto.
(b) Such Grantor shall (either itself or through licenseesand shall cause all its licensees to) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i)
(1) continue to use each owned Trademark material included in the Material Intellectual Property in order to its businessmaintain such Trademark in full force and effect with respect to each class of goods for which such Trademark is currently used, free from any claim of abandonment for non-use, (ii2) maintain commercially reasonable at least the same standards of quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark as are currently maintained, (iii3) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law, (4) not adopt or use any xxxx which other Trademark that is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, Agent shall obtain a perfected security interest in such xxxx other Trademark pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivii) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby (w) such Trademark (or any goodwill associated therewith) may become invalidated destroyed, invalidated, impaired or impaired harmed in any way.
, (bx) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business included in the Material Intellectual Property may become forfeited, misused, unenforceable, abandoned or dedicated to the public, (y) any portion of the Copyrights included in the Material Intellectual Property may become invalidated, otherwise impaired or fall into the public domain or (z) any Trade Secret that is Material Intellectual Property may become publicly available or otherwise unprotectable.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly immediately if it knows knows, or suspects has reason to know, that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, misused, unenforceable, abandoned or dedicated to the public, or of any adverse determination or development regarding the validity or enforceability or such Grantor’s ownership of, interest in, right to use, register, own or maintain any Material Intellectual Property (including the institution of, or any such determination or development in, any proceeding in relating to the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal foregoing in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Applicable IP Office, such ). Such Grantor shall report such filing take all actions that are necessary or receipt of a registration to the Administrative reasonably requested by Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registrationregistration or recordation) and to maintain each registration of and recordation included in the Material Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedingsProperty.
(gd) Such Grantor (either itself shall not knowingly do any act or through licensees)omit to do any act to infringe, subject to the exercise of its reasonable business judgmentmisappropriate, taking into account the Secured Parties’ interests under this Agreementdilute, shall not, without the prior written consent of the Administrative Agent, discontinue use of violate or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or impair the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) any other Person. In the event that any Material Intellectual Property material to its business of such Grantor is or has been infringed, misappropriated misappropriated, violated, diluted or diluted otherwise impaired by a third party, such Grantor shall (i) take such actions action as such Grantor shall it reasonably deem deems appropriate under the circumstances in response thereto, including promptly bringing suit and recovering all damages therefor.
(e) Such Grantor shall execute and deliver to protect Agent in form and substance reasonably acceptable to Agent and suitable for (i) filing in the Applicable IP Office the short-form intellectual property security agreements in the form attached hereto as Annex 3 for all Copyrights, Trademarks, Patents and IP Licenses of such Intellectual Property Grantor and (ii) if such Intellectual Property is of material economic value, promptly notify recording with the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing DateInternet domain name registrar, a part duly executed form of the Intellectual Property Collateral assignment for all Internet Domain Names of such Grantor (the “After-Acquired Intellectual Property”together with appropriate supporting documentation as may be requested by Agent), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Guaranty and Security Agreement (Diplomat Pharmacy, Inc.), Guarantee and Security Agreement (Solo Cup CO)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shallAt any time when an Event of Default has occurred and is continuing, in and upon the exercise written request of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, each Grantor will (i) use its commercially reasonable efforts to obtain all consents and approvals necessary and appropriate for the ratable assignment to or for the benefit of the Secured PartiesAdministrative Agent of any License held by such Grantor in the U.S. to enable the Administrative Agent to enforce the security interests granted hereunder and (ii) to the extent required pursuant to any material License in the U.S. under which such Grantor is the licensee, shall obtain a perfected deliver to the licensor thereunder any notice of the grant of security interest hereunder or such other notices required to be delivered thereunder in such xxxx order to permit the security interest created or permitted to be created hereunder pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby the terms of such Trademark may become invalidated or impaired in any wayLicense.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Each Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application for or registration relating to of any Material Intellectual Property owned by such Grantor may Patent, Trademark, Domain Name, or Copyright (now or hereafter existing) has become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any countrycourt) regarding abandoning such Grantor’s ownership of, or the validity of, of any such Material Intellectual Property Patent, Trademark or such Grantor’s Copyright, its right to register the same same, or to own keep and maintain the same, except, in each case, for Dispositions not prohibited by the ABL Credit Agreement or where such occurrences individually or in the aggregate, could not reasonably be expected to result in a Material Adverse Effect.
(ec) After such Grantor, either by itself or through In the event that any agent, employee, licensee or designee, shall file Grantor (x) files an application for the registration of any Intellectual Property that is material to the business of such Grantor Patent, Trademark or Copyright with the United States Patent and Trademark Office or the United States Copyright Office, (y) acquires any such Grantor shall report such filing Patent, Trademark or receipt Copyright by purchase or assignment, or (z) files a Statement of a registration Use or an Amendment to the Administrative Agent prior Allege Use with respect to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier any “intent to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion)use” Trademark application, in each case, immediately following after the Closing Date and to the extent the same constitutes Collateral (and other than as a result of an application that is then subject to an Intellectual Property Security Agreement or Intellectual Property Security Agreement Supplement becoming registered), it shall, (i) if the event giving rise to the obligation under this Section 4.03(c) occurs during the first three Fiscal Quarters of any Fiscal Year, on or before the date on which financial statements are required to be delivered pursuant to Section 5.01(a) of the ABL Credit Agreement for the Fiscal Quarter in which the relevant event occurred or (ii) if the event giving rise to the obligation under this Section 4.03(c) occurs during the fourth Fiscal Quarter of any Fiscal Year, on or before the date that is 60 days after the end of such filing or receipt Fiscal Quarter (or, in the case of registration. Upon request each of the Administrative Agentclauses (i) and (ii), such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers longer period as the Administrative Agent may reasonably agree), notify the Administrative Agent and, execute and deliver to the Administrative Agent, at such Grantor’s sole cost and expense, any Intellectual Property Security Agreement or Intellectual Property Security Agreement Supplement, as applicable, or any other instrument as the Administrative Agent may reasonably request to evidence the Secured Parties’ Administrative Agent’s security interest in any Copyright, such registered Patent, Trademark or other Intellectual Property Copyright (or application therefor), and the General Intangibles of such GrantorGrantor relating thereto or represented thereby.
(fd) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, Each Grantor shall take reasonable and all actions necessary steps, including in any proceeding before or reasonably requested by the United States Patent and Trademark Office or the United States Copyright Office, Administrative Agent to (i) maintain and pursue each application (and to obtain and maintain the relevant registration) and to maintain each registration of Intellectual Property material each Patent, Trademark, Domain Name and, to its businessthe extent consistent with past practices, Copyright that constitutes Collateral (now or hereafter existing), including the payment of required fees and taxes, the by filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and use, affidavits of incontestabilitynon contestability and, if consistent with good business judgment (as determined by such Grantor), by initiating opposition and interference and cancellation proceedings against third parties, (ii) maintain and protect the filing secrecy or confidentiality of divisional, continuation, continuation-its Trade Secrets and (iii) otherwise protect and preserve such Grantor’s rights in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interferencevalidity or enforceability of, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable Collateral, in the conduct of such Grantor’s business and that the loss thereof each case except where failure to do so (A) could not reasonably be expected to have result in a Material Adverse Effect, or (B) is otherwise permitted under the ABL Credit Agreement.
(he) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Each Grantor shall (i) promptly notify the Administrative Agent of any material infringement or misappropriation of such Grantor’s Patents, Trademarks, Copyrights or Trade Secrets of which it becomes aware, and shall take such actions as such Grantor shall reasonably deem are reasonable and appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic valuePatent, promptly notify the Administrative Agent after it learns thereof and xxx for infringementTrademark, misappropriation Copyright or dilutionTrade Secret, to seek injunctive relief except where appropriate and to recover any and all damages for such infringement, misappropriation or dilutiondilution could not reasonably be expected to cause a Material Adverse Effect.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Abl Credit Agreement (Hayward Holdings, Inc.), Abl Credit Agreement (Hayward Holdings, Inc.)
Intellectual Property. (a) Such If any Grantor (either itself or through licensees) shall, in shall become the exercise owner of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an registered Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licenseesalready identified on Schedule 4), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report promptly (and in any event on or prior to the date by which financial statements are required to be delivered with respect to the fiscal quarter in which the Grantor became the owner of such filing or receipt of a registration registered Intellectual Property) execute and deliver to the Administrative Agent prior in form and substance reasonably acceptable to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such and suitable for filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or Applicable IP Office the United States Copyright Office, short-form intellectual property security agreements in the form attached hereto as applicable, any and Annex 3 for all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other such registered Intellectual Property of such Grantor.
(fb) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless Unless such Grantor shall have previously determined determines that such use or the use, pursuit or maintenance of such Intellectual Property Trademark, Patent, Copyright or Trade Secret is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could would not reasonably be expected to have a Material Adverse Effect, such Grantor shall (i)
(1) continue to use each Trademark included in the Material Intellectual Property in order to maintain such Trademark in full force and effect with respect to each class of goods for which such Trademark is currently used, free from any claim of abandonment for non-use, (2) maintain at least the same standards of quality of products and services offered under such Trademark as are currently maintained, (3) use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law, (4) not adopt or use any other Trademark that is confusingly similar or a colorable imitation of such Trademark unless Administrative Agent shall obtain a perfected security interest in such other Trademark pursuant to this Agreement and (ii) not do any act or omit to do any act whereby: (w) such Trademark (or any goodwill associated therewith) may become destroyed, invalidated, impaired or harmed in any way, (x) any Patent included in the Material Intellectual Property may become forfeited, misused, unenforceable, abandoned or dedicated to the public, (y) any portion of the Copyrights included in the Material Intellectual Property may become invalidated, otherwise impaired or fall into the public domain or (z) any Trade Secret that is Material Intellectual Property becomes publicly available or otherwise unprotectable.
(hc) Unless such Grantor determines that the use, pursuit or maintenance of such registration or recordation is no longer desirable in the conduct of such Grantor’s business and that the loss thereof would not reasonably be expected to have a Material Adverse Effect, such Grantor shall (i) notify Administrative Agent promptly if it knows that any application or registration relating to any Material Intellectual Property may become forfeited, misused, unenforceable, abandoned or dedicated to the public, or of any adverse determination or development regarding the validity or enforceability or such Grantor’s ownership of, interest in, right to use, register, own or maintain any Material Intellectual Property (including the institution of, or any such determination or development in, any proceeding relating to the foregoing in any Applicable IP Office); and (ii) take all actions that are commercially reasonable to maintain and pursue each application (and to obtain the relevant registration or recordation) and to maintain each registration and recordation included in the Material Intellectual Property.
(d) Such Grantor shall not knowingly do any act or omit to do any act to infringe, misappropriate, dilute, violate or otherwise impair the Intellectual Property of any other Person. In the event that any Material Intellectual Property material to its business of such Grantor is or has been infringed, misappropriated misappropriated, violated, diluted or diluted otherwise impaired by a third party, such Grantor shall (i) take such actions action as such Grantor shall it reasonably deem deems appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilutionin response thereto.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Security Agreement (Unisys Corp), Security Agreement (Unisys Corp)
Intellectual Property. Each Grantor agrees that:
(a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) it shall not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) knowingly do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeitedlapses, abandoned is impaired, or becomes abandoned, dedicated to the public, or unenforceable, except where such lapse, impairment, abandonment, dedication or unenforceability would not reasonably be expected to have a material adverse effect on the financial condition of the Grantors (taken as a whole); provided, that nothing contained in this Agreement shall prevent any Grantor from transferring or otherwise disposing of any Intellectual Property if such transfer or other disposition is permitted under the Indenture;
(b) it shall promptly after Grantor or any of its agents, employees, designees or licensees (i) files, in the name of or for the benefit of Grantor, an application for the registration of any material Patent or Trademark with the United States Patent and Trademark Office or (ii) receives, as owner or exclusive licensee, a Copyright registration with the United States Copyright Office, in any case which is material to the business of Grantors, notify the Collateral Agent, and promptly execute and deliver documents as are necessary to evidence the Collateral Agent’s security interest in such Collateral;
(c) it shall promptly notify the Collateral Agent if it knows or has reason to know that any item of Intellectual Property may become (i) abandoned or dedicated to the public or placed in the public domain, (ii) invalid or unenforceable, (iii) subject to any adverse determination or development (including the institution of, of proceedings) in any action or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any state registry, or any United States court or tribunal in any country(iv) regarding such Grantor’s ownership of, or be the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration subject of any Intellectual Property that is material to the business of reversion or termination rights (other than by its terms or under applicable law) except where such Grantor with the United States Patent and Trademark Office abandonment, dedication, placement, invalidity, unenforceability, determination or the United States Copyright Officedevelopment, such Grantor shall report such filing reversion or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could termination would not reasonably be expected to have a Material Adverse Effect.
material adverse effect on the financial condition of the Grantors (h) In the event taken as a whole); provided, that nothing contained in this Agreement shall prevent any Grantor from transferring or otherwise disposing of any Intellectual Property material to its business if such transfer or other disposition is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate permitted under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.Indenture;
Appears in 2 contracts
Samples: Consent Agreement (Blyth Inc), Collateral Agreement (Blyth Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shallAt any time when an Event of Default has occurred and is continuing, in and upon the exercise written request of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, each Grantor will (i) use its commercially reasonable efforts to obtain all consents and approvals necessary for the ratable assignment to or for the benefit of the Secured PartiesAdministrative Agent of any License held by such Grantor in the U.S. to enable the Administrative Agent to enforce the security interests granted hereunder and (ii) to the extent required pursuant to any material License in the U.S. under which such Grantor is the licensee, shall obtain a perfected deliver to the licensor thereunder any notice of the grant of security interest hereunder or such other notices required to be delivered thereunder in such xxxx order to permit the security interest created or permitted to be created hereunder pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby the terms of such Trademark may become invalidated or impaired in any wayLicense.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Each Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application for or registration relating to of any Material Intellectual Property owned by such Grantor may become forfeitedPatent, Trademark or Copyright included in the Collateral (now or hereafter existing) has been abandoned or dedicated to the public, or of any adverse determination or development (including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any countrycourt) regarding abandoning such Grantor’s ownership of, or the validity of, of any such Material Intellectual Property Patent, Trademark or such Grantor’s Copyright included in the Collateral, its right to register the same same, or to own keep and maintain the same, except, in each case, (i) to the extent the same is permitted or not restricted by the Credit Agreement or (ii) where the same, individually or in the aggregate, could not reasonably be expected to result in a Material Adverse Effect.
(ec) After such Grantor, either by itself or through In the event that any agent, employee, licensee or designee, shall file Grantor files an application for the registration of any Intellectual Property that is material to the business of such Grantor Patent, Trademark or Copyright with the United States Patent and Trademark Office or the United States Copyright Office, acquires any such Grantor shall report application or registration by purchase or assignment or files an accepted “Statement of Use”, a “Declaration of Use” or an “Amendment to Allege Use” with respect to any intent-to-use Trademark application owned by such filing Grantor, or receipt of becomes party to an exclusive License to a registration United States registered Copyright, in each case, after the Closing Date and to the Administrative Agent prior extent the same constitutes Collateral ( and other than as a result of an application that is then subject to an Intellectual Property Security Agreement becoming registered), it shall, on or concurrently with before the delivery of the date on which a Compliance Certificate is required by to be delivered pursuant to Section 6.01(c5.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or in which the Fiscal Year ending (relevant event occurred ( or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may reasonably agree), execute and deliver to the Administrative Agent, at such Grantor’s sole cost and expense, any Intellectual Property Security Agreement or other instrument as the Administrative Agent may reasonably request and require to evidence the Secured Parties’ Administrative Agent’s security interest in any Copyright, such registered Patent, Trademark Trademark, Copyright ( or other Intellectual Property application therefor) or License, and the General Intangibles of such GrantorGrantor relating thereto or represented thereby.
(fd) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, Each Grantor shall take reasonable and all actions reasonably necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to (i) maintain and pursue each application (and to obtain and maintain the relevant registration) and to maintain each registration of Intellectual Property material each Patent, Trademark, Domain Name and, to its businessthe extent consistent with past practices, Copyright included in the Collateral (now or hereafter existing), including the payment of required fees and taxes, the by filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and use, affidavits of incontestabilitynoncontestability and, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
if reasonably necessary (g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreementprojected cost of such proceedings versus the expected benefit thereof), shall notby initiating opposition and interference and cancellation proceedings against third parties, without (ii) maintain and protect the prior written consent of the Administrative Agent, discontinue use of secrecy or otherwise abandon any confidentiality of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of Trade Secrets and (iii) otherwise protect and preserve such Grantor’s business rights in, and that the loss thereof validity or enforceability of, its Intellectual Property Collateral, in each case except where failure to do so (A) could not reasonably be expected to have result in a Material Adverse Effect, or (B) is otherwise permitted under or not restricted by the Credit Agreement.
(he) In Each Grantor shall promptly notify the event that Agent of any material infringement or misappropriation of such Grantor’s Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor Collateral of which it becomes aware and shall (i) take such actions as such Grantor shall reasonably deem that, in the Grantors’ commercially reasonable business judgment, are reasonable and appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic valuesame, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief except where appropriate and to recover any and all damages for such infringement, misappropriation or dilutiondilution could not reasonably be expected to cause a Material Adverse Effect.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Credit Agreement (Cava Group, Inc.), Credit Agreement (Cava Group, Inc.)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall (i) continue to use each owned Trademark material that is Material Intellectual Property in order to its businessmaintain such Trademark in full force and effect with respect to each class of goods for which such Trademark is currently used, free from any claim of abandonment for non-use, (ii) maintain commercially reasonable consistent with past practice the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) use such Trademark with the appropriate notice of registration and all other notices and legends, in each case, as required by applicable Requirements of Law, (iv) not adopt or use any xxxx which that is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, Collateral Agent shall obtain a perfected security interest interests in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivv) not (and not permit any licensee or sublicensee thereof to) do any other act or knowingly omit to do any act whereby such Trademark (or any goodwill associated therewith) may become invalidated destroyed, invalidated, impaired or impaired harmed in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, ) shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business that is Material Intellectual Property may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, ) (i) shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights owned by such Grantor and material to its business that is Material Intellectual Property may become invalidated or otherwise impaired. Such Grantor impaired and (ii) shall not (either itself or through licensees) do any act whereby any material portion of such the Copyrights that is Material Intellectual Property may fall into the public domain.
(d) Such Grantor (either itself or through licensees) shall not do any act, or omit to do any act, which would substantially increase the risk of any trade secret that is Material Intellectual Property becoming publicly available or otherwise unprotectable; provided, however, that execution and delivery of any agreement related to such trade secret subject to customary and reasonable confidentiality provisions shall not constitute a breach of this clause (d).
(e) Such Grantor (either itself or through licensees) shall not do any act that knowingly uses any Material Intellectual Property to infringe, misappropriate, or violate any valid intellectual property right of any other Person.
(f) Such Grantor shall notify the Administrative Collateral Agent promptly if it knows or suspects knows, after due inquiry, that (i) any application or registration relating to any Material Intellectual Property owned by such Grantor may is likely to become forfeited, abandoned or dedicated to the public, or of any adverse determination or development related to such application or registration (including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office or the United States Copyright Office or any court or tribunal in any country, but excluding any ordinary course office actions) regarding such Grantor’s ownership of, right to use, interest in, or the validity of, any Material Intellectual Property owned by such Grantor or such Grantor’s right to register the same or to own and maintain the same or (ii) any action or proceeding seeking to limit, cancel or question the validity of any Material Intellectual Property owned by such Grantor or such Grantor’s ownership interest therein is pending or, to the knowledge of such Grantor, threatened.
(g) The Grantors shall deliver to the Administrative Agents, the Noteholder Representative and the Collateral Agent, by each January 31st and July 31st of each year following the date hereof, commencing January 31, 2010 (or, if the Controlling Agent with respect to the Term Loan Collateral reasonably so requests in writing, more often; provided, however, that, except during such time as a Default or Event of Default under any Credit Agreement or the Indenture has occurred and is continuing, such Controlling Agent shall not so request more frequently than monthly), an update of Schedule 5B (Material Intellectual Property), listing all of the Material Intellectual Property of the Company and its Subsidiaries as of such date and any licensing or franchise agreement with respect thereto pursuant to which such Grantor is the licensor or franchisor.
(h) Such Grantor shall take all reasonable actions necessary or requested by the Collateral Agent, including in any proceeding before the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark similar office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Officeagency, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of any Copyright, Trademark, Patent or Internet domain name that is Material Intellectual Property material to its businessProperty, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and use, affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue incontestability and renewal applications or extensions, the payment of maintenance fees, opposition and the participation in interference, reexamination, opposition, cancellation, infringement interference and misappropriation cancellation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(hi) In the event that any Material Intellectual Property material to its business is infringed, or has been infringed upon or misappropriated or diluted by a third party, which event could reasonably be expected to adversely affect the net revenues of the Company and its Subsidiaries, taken as a whole, by more than $5,000,000 in the aggregate, such Grantor shall (i) take such actions as notify the Collateral Agent promptly after such Grantor learns thereof. Such Grantor shall reasonably deem take appropriate under the circumstances action in its reasonable judgment in response to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate including promptly bringing suit for infringement, misappropriation or dilution and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest and shall take such other actions as may be appropriate in any item of intellectual property which is not, as of its reasonable judgment under the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired circumstances to protect such Material Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such At such times required by Section 10.14 of the Credit Agreements and Section 4.16 of the Indenture, such Grantor agrees shall execute and deliver to execute an the Collateral Agent for filing in (i) the United States Copyright Office a short-form copyright security agreement in the form attached hereto as Annex 3 (Form of Short Form Intellectual Property Security Agreement with respect to its Intellectual Property Agreement), (ii) in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and with the Secretary of State of all appropriate States of the United States Copyright Office.
a short-form trademark security agreement in the form attached hereto as Annex 3 (k) Such Grantor agrees to execute an Form of Short Form Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with Agreement), and (iii) the United States Patent and Trademark Office and the United States Copyright Officea short-form patent security agreement in form attached hereto as Annex 3 (Form of Short Form Intellectual Property Security Agreement).
(lk) Such Notwithstanding anything to the contrary in this Section 4.7, (i) the Grantor shall have the right to license its Patents and Trademarks in accordance with Section 10.14(d) of the Credit Agreements and the Indenture and (ii) no Grantor shall be prohibited from causing or permitting the expiration, abandonment or invalidation of any of the Intellectual Property (other than Material Intellectual Property) or failing to renew, abandoning or permitting to expire any applications or registrations for any of the Intellectual Property (other than Material Intellectual Property), if, in such Grantor’s reasonable good faith judgment, there is a reasonable and valid business reason for taking or omitting to take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documentssuch action.
Appears in 2 contracts
Samples: Pledge and Security Agreement (Revlon Consumer Products Corp), Pledge and Security Agreement (Revlon Consumer Products Corp)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shallwill, in the exercise except with respect to any Trademark that such Grantor shall reasonably determine is of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreementimmaterial economic value to it or otherwise reasonably determines not to do so, (i) continue to use each owned Trademark material on each and every trademark class of goods applicable to its businesscurrent line as reflected in its current catalogs, brochures and price lists in order to maintain such Trademark in full force free from any claim of abandonment for non-use, (ii) maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) use reasonable efforts to employ such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law, (iv) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks Trademark unless within 45 days after such use or adoption the Administrative Collateral Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself will not, except with respect to any Patent that such Grantor shall reasonably determine is of immaterial economic value to it or through licensees)otherwise reasonably determines to do so, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) (i) will employ each material Copyright and (ii) will not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall will not (either itself or through licensees) do any act whereby any material portion of such the Copyrights may fall into the public domain.
(d) Such Grantor shall (either itself or through licensees) will not do any act that knowingly uses any material Intellectual Property to infringe the intellectual property rights of any other Person.
(e) Such Grantor will promptly notify the Administrative Collateral Agent promptly and the Lenders if it knows or suspects that any application or registration relating to any Material material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(ef) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material with the United States Patent and Trademark Office, the United States Copyright Office or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall report such filing to the business Collateral Agent within five Business Days after the last day of the fiscal quarter in which such Grantor filing occurs and execute and deliver, and have recorded with the United States Patent and Trademark Office or the United States US Copyright Office, such Grantor shall report such filing or receipt of a registration Office short form security agreements in form and substance reasonably acceptable to the Administrative Collateral Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all other agreements, instruments, documents, and papers as the Administrative Collateral Agent may reasonably request to evidence the Collateral Agent’s and the other Secured Parties’ security interest in any Copyright, Patent, Patent or Trademark or other Intellectual Property and the goodwill and general intangibles of such GrantorGrantor relating thereto or represented thereby.
(fg) Such GrantorGrantor will, subject except with respect to the exercise any Intellectual Property that such Grantor shall reasonably determine is of its reasonable business judgmentimmaterial economic value to it or otherwise reasonably determines not to do so, taking into account the Secured Parties’ interests under this Agreement, shall take all reasonable and necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of the Intellectual Property material to its businessProperty, including the payment of required fees and taxesincluding, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Officewithout limitation, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any material Intellectual Property material to its business is infringed, misappropriated or diluted by a third partyparty which would reasonably be expected to have a material adverse effect on the business, assets or financial condition of the Borrower and its Subsidiaries taken as a whole, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is reasonably deemed by the Grantor to be of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Credit Agreement (Calpine Corp), Credit Agreement (Calpine Corp)
Intellectual Property. (a) Such The Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (i) continue to use each owned Trademark material that is Material Intellectual Property in order to its businessmaintain such Trademark in full force and effect with respect to each class of goods for which such Trademark is currently used, free from any claim of abandonment for non-use, (ii) maintain commercially reasonable quality use such Trademark with any applicable and appropriate notice of products registration and services offered under such Trademarks all other notices and take all necessary steps to ensure that all licensed users legends required by applicable Requirements of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityLaw, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, Collateral Trustee shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such The Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business which is Material Intellectual Property may become forfeited, abandoned or dedicated to the public.
(c) Such The Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall
(i) will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights owned by such Grantor and material to its business which is Material Intellectual Property may become invalidated or otherwise impaired. Such Grantor shall impaired and (ii) will not (either itself or through licensees) do any act whereby any material portion of such the Copyrights which is Material Intellectual Property may fall into the public domain.
(d) Such The Grantor shall (either itself or through licensees) will not do any act, or omit to do any act, whereby any trade secret which is Material Intellectual Property may become publicly available or otherwise unprotectable.
(e) The Grantor (either itself or through licensees) will not do any act that knowingly uses any Material Intellectual Property to infringe the intellectual property rights of any other Person.
(f) The Grantor will notify the Administrative Agent promptly Collateral Trustee immediately if it knows knows, or suspects has reason to know, that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such the Grantor’s 's ownership of, right to use, interest in, or the validity of, any such Material Intellectual Property or such the Grantor’s 's right to register the same or to own and maintain the same.
(eg) After such Whenever the Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency within or outside the United States, such the Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with Collateral Trustee within five Business Days after the delivery last day of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent fiscal quarter in its sole discretion), in each case, immediately following the date of which such filing or receipt of registrationoccurs. Upon request of the Administrative AgentCollateral Trustee, such the Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent Collateral Trustee may request to evidence the Secured Parties’ Collateral Trustee's security interest in any Copyright, Patent, Patent or Trademark and the goodwill and general intangibles of the Grantor relating thereto or other Intellectual Property of such Grantorrepresented thereby.
(fh) Such Grantor, subject to The Grantor will take all reasonable actions necessary or requested by the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary stepsCollateral Trustee, including in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of any Copyright, Trademark or Patent that is Material Intellectual Property material to its businessProperty, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and use, affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue incontestability and renewal applications or extensions, the payment of maintenance fees, opposition and the participation in interference, reexamination, opposition, cancellation, infringement interference and misappropriation cancellation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(hi) In the event that any Material Intellectual Property material to its business is infringed, infringed upon or misappropriated or diluted by a third party, such the Grantor shall (i) take such actions as such notify the Collateral Trustee promptly after the Grantor learns thereof. The Grantor shall reasonably deem take appropriate under the circumstances action in response to protect such Intellectual Property and (ii) if such Intellectual Property is infringement, misappropriation of material economic valuedilution, including promptly notify the Administrative Agent after it learns thereof and xxx bringing suit for infringement, misappropriation or dilution, to seek injunctive relief where appropriate dilution and to recover any and all damages for such infringement, misappropriation or of dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest and shall take such other actions as may be appropriate in any item of intellectual property which is not, as of its reasonable judgment under the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired circumstances to protect such Material Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Unless otherwise agreed to by the Collateral Trustee, the Grantor agrees to will execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein and deliver to the Administrative Agent Collateral Trustee for filing in (i) the ratable benefit of United States Copyright Office a short-form copyright security agreement in the Secured Parties with form attached hereto as Annex 4, (ii) in the United States Patent and Trademark Office a short-form patent security agreement in the form attached hereto as Annex 5 and the United States Copyright Office.
(kiii) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office a short-form trademark security agreement in form attached hereto as Annex 6, with respect to all registered Copyrights and Trademarks, and all of the United States Copyright OfficeGrantor's Patents.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Indenture (Finova Group Inc), Pledge and Security Agreement (Finova Group Inc)
Intellectual Property. (a) Such Grantor The Debtor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall (and shall cause all licensees or sublicensees thereof to)
(i) continue to use each owned Trademark material that is Material Intellectual Property in order to its businessmaintain such Trademark in full force and effect with respect to each class of goods for which such Trademark is currently used, free from any claim of abandonment for non-use, (ii) maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) not adopt use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law, (iv) execute and file all documents necessary to perfect a security interest pursuant to this Agreement in favour of the Collateral Agent promptly upon adopting or use using any xxxx which that is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, Trademark and (ivv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act (and not permit or direct by express act or omission any licensee or sublicensee thereof to do any act) whereby such Trademark (or any goodwill associated therewith) may become invalidated destroyed, invalidated, impaired or impaired harmed in any way; provided, however, that (i) to (iii) and (v) above shall be subject to the good faith exercise by the Debtor of its reasonable business judgment consistent with past practices.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, The Debtor shall not (and shall not permit or direct by express act or omission any licensee or sublicensee thereof to) do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business that is Material Intellectual Property may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor The Debtor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, i) shall not (and shall not permit or direct by express act or omission any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights owned by such Grantor and material to its business that is Material Intellectual Property may become invalidated or otherwise impaired. Such Grantor impaired and (ii) shall not (either itself and shall not permit or through licenseesdirect by express act or omission any licensee or sublicensee thereof to) do any act whereby any material portion of such the Copyrights that is Material Intellectual Property may fall into the public domain.
(d) Such Grantor The Debtor shall not knowingly (and shall not permit or direct by express act or omission any licensee or sublicensee thereof to) do any act, or knowingly omit to do any act, whereby any trade secret that is Material Intellectual Property may become publicly available or otherwise unprotectable.
(e) The Debtor shall not (and shall not permit or direct by express act or omission any licensee or sublicensee thereof to) do any act that knowingly infringes, misappropriates, dilutes or violates any Third Party Intellectual Property Rights.
(f) The Debtor shall promptly inform the Collateral Agent in writing of the acquisition by the Debtor of any Registerable Intellectual Property, and the Debtor shall execute and deliver, at its own expense, from time to time amendments to this Agreement or additional security agreements or schedules as may be required by the Collateral Agent in order that the Security Interest shall attach to such Registerable Intellectual Property.
(g) The Debtor shall notify the Administrative Collateral Agent promptly immediately if it knows knows, or suspects has reason to know, that any application for registration or recording, registration or recording relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark OfficeCIPO, the United States Copyright Office Federal Court of Canada or any other court or tribunal in any other country) regarding such GrantorDebtor’s ownership of, right to use, interest in, or the validity or enforceability of, any such Material Intellectual Property or such GrantorDebtor’s right to register the same or to own and maintain the same.
(eh) After such GrantorAs set forth below, whenever the Debtor, either by itself or through its counsel or any agent, employee, licensee agent or designee, shall file an application for the registration or recording of any Intellectual Property with CIPO or any similar office or agency within or outside Canada or register any Internet domain name, the Debtor shall report such filing to the Collateral Agent within five Business Days after the last day of the fiscal quarter in which such filing occurs. Upon request of the Collateral Agent, the Debtor shall execute and deliver, and have recorded, all agreements, instruments, documents and papers as the Collateral Agent may request to evidence the Collateral Agent’s security interest in any such Copyright, Patent, Trademark or Internet domain name and the goodwill and intangibles of the Debtor relating thereto or represented thereby.
(i) The Debtor shall take all reasonable actions that are (i) necessary (subject to the good faith exercise by the Debtor of its reasonable business judgment consistent with past practices) or (ii) requested by the Collateral Agent, including in any proceeding before CIPO or any similar office or agency and any Internet domain name registrar, to maintain and pursue each application for registration or recording (and to obtain the relevant registration or recording) and to maintain each registration and recording of any Copyright, Trademark, Patent or Internet domain name that is material Material Intellectual Property, including filing of applications for renewal, affidavits of use, affidavits of incontestability and opposition and interference and cancellation proceedings.
(j) In the event that any Material Intellectual Property is infringed, misappropriated, diluted or violated by a third party, the Debtor shall notify the Collateral Agent promptly after the Debtor learns thereof. The Debtor shall take appropriate action in response to any infringement, misappropriation, dilution or violation of the Material Intellectual Property, including promptly bringing suit for infringement, misappropriation, dilution or violation and to recover all damages for such infringement, misappropriation, dilution or violation, and shall take such other actions may be appropriate under the circumstances to protect such Intellectual Property; provided, however, that the foregoing shall be subject to the good faith exercise by the Debtor of its reasonable business judgment consistent with past practices.
(k) Unless otherwise agreed to by the Collateral Agent the Debtor shall execute and deliver to the Collateral Agent for filing in (i) the United States Copyright Office or any similar office or agency a short-form copyright security agreement in the form attached hereto as Annex 1 (Form of such Grantor with Short Form Copyright Security Agreement) for all Copyrights of the Debtor registered therein from time to time, (ii) in the United States Patent and Trademark Office or any similar office or agency a short-form patent security agreement in the United States Copyright Office, such Grantor shall report such filing or receipt form attached hereto as Annex 2 (Form of a registration to the Administrative Agent prior to or concurrently with the delivery Short Form Patent Security Agreement ) for all Patents of the Compliance Certificate required by Section 6.01(cDebtor registered therein from time to time, (iii) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or any similar office or agency and with the appropriate department or division of all appropriate States of the United States Copyright Officea short-form trademark security agreement in form attached hereto as Annex 3 (Form of Short Form Trademark Security Agreement) for all Trademarks of the Debtor registered therein from time to time and (iv) with the appropriate Internet domain name registrar, a duly executed form of assignment of all Internet domain names of the Debtor to maintain the Collateral Agent (together with appropriate supporting documentation as may be requested by the Collateral Agent) in form and pursue each application substance reasonably acceptable to the Collateral Agent. In the case of clause (iv) above, the Debtor hereby authorizes the Collateral Agent to file such assignment in the Debtor’s name and to obtain otherwise perform in the relevant registration) and name of the Debtor all other necessary actions to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance feescomplete such assignment, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject Debtor agrees to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such perform all appropriate actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted deemed necessary by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Collateral Agent for the ratable benefit Collateral Agent to ensure such Internet domain name is registered in the name of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright OfficeCollateral Agent.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: General Security Agreement (Warnaco Group Inc /De/), General Security Agreement (Warnaco Group Inc /De/)
Intellectual Property. (a) As of the Effective Date, Schedule 4 lists all Patents and pending Patent applications, registered Trademarks and pending Trademark applications, registered Copyrights and pending Copyright applications and material unregistered Trademarks, in each case, owned or purported to be owned by such Grantor. All Intellectual Property owned or purported to be owned by such Grantor is valid, subsisting and enforceable. Such Grantor exclusively owns (either itself free and clear of any Liens, except for Permitted Liens) or through licensees) shall, has a valid right to use all material Intellectual Property used in the exercise conduct of its reasonable such Grantor’s business judgmentor operations. To the knowledge of each Grantor, taking into account neither the Secured Parties’ interests under this Agreementconduct of such Grantor’s business or operations nor any Intellectual Property owned or purported to be owned by such Grantor infringes, misappropriates, dilutes or otherwise violates the Intellectual Property of any other Person. There are no outstanding holdings, decisions, consents, settlements, decrees, orders, injunctions, rulings or judgments that would (i) continue to use each owned Trademark material to its businessmaterially limit, (ii) maintain commercially reasonable quality cancel or (iii) question the validity or enforceability of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with any Intellectual Property included in the Collateral or such Grantor’s quality control requirements and maintain reasonable qualityrights therein or use thereof. No action or proceeding is pending or, to such Grantor’s knowledge, threatened (i) challenging the use by such Grantor of any Intellectual Property or seeking to limit or cancel or question the validity or enforceability of any Intellectual Property included in the Collateral or such Grantor’s ownership interest or rights therein, (ii) which, if adversely determined, could have a Material Adverse Effect on the value of any Intellectual Property included in the Collateral or (iii) not adopt alleging that any Intellectual Property included in the Collateral, or use such Grantor’s conduct of its business or operations, infringes, misappropriates, dilutes or otherwise violates the Intellectual Property of any xxxx which is confusingly similar or a colorable imitation Person. To the knowledge of such Trademarks unless Grantor, no Person is infringing, misappropriating, diluting or otherwise violating any Intellectual Property included in the Administrative Agent, Collateral. Such Grantor has taken commercially reasonable measures to maintain the confidentiality and value of all trade secrets used or held for use in the ratable benefit conduct of the Secured Partiesbusiness or operations of such Grantor. Such Grantor, shall obtain a perfected security interest and, to the knowledge of such Grantor, each other party thereto, is not in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit breach or default of any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired material License included in any waythe Collateral.
(b) Such Grantor This Security Agreement is effective to create a valid and continuing Lien and, upon filing of (either itself or through licensees)i) appropriate financing statements in the offices listed on Schedule 7, subject to (ii) the exercise grant of its reasonable business judgmentcopyright security interest set forth on Exhibit B with the United States Copyright Office and (iii) the notices of grant of security interest in trademarks and patents set forth on Exhibits C and D, taking into account the Secured Parties’ interests under this Agreementrespectively, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in with the United States Patent and Trademark Office, fully perfected first priority security interests in favor of the United States Copyright Office or any court or tribunal in any country) regarding Administrative Agent on such Grantor’s ownership ofU.S. Patents and Patent applications, or the validity of, U.S. Trademark registrations and applications (excluding any such Material Intellectual Property or such Grantor’s right to register the same or to own Excluded Trademark Applications) and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent U.S. Copyright registrations and Trademark Office or the United States Copyright Officeapplications, such Grantor perfected security interests shall report be enforceable as such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, against any and all agreements, instruments, documents, creditors of and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of purchasers from such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable ; and all action necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after perfect the Administrative Agent’s requestLien on such Grantor’s U.S. Patents and Patent applications, it shall provide the Administrative Agent with an amended Schedule 3.9(aU.S. Trademark registrations and applications (excluding any Excluded Trademark Applications) and take the actions specified in clauses (j) U.S. Copyright registrations and (k) of Section 4.10applications shall have been duly taken.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Credit Agreement (Arcadium Lithium PLC), Credit Agreement (Livent Corp.)
Intellectual Property. (ai) Such Grantor (agrees that, should it, either by itself or through licenseesany agent, employee, licensee or designee, obtain, an ownership interest in any (x) shallregistration or application of Copyright, in Patent or Trademark or (y) exclusive rights under a Copyright License, Patent License or Trademark License which is not now a part of the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this AgreementCollateral, (iA) continue to use each owned Trademark material to its businessthe provisions of Section 3 shall automatically apply thereto, (iiB) maintain commercially reasonable quality any such Copyright, Copyright License, Patent, Patent License, Trademark or Trademark License shall automatically become part of products the Collateral, and services offered under (C) with respect to any ownership interest in any such Trademarks Copyright, Copyright License, Patent, Patent License, Trademark or Trademark License that such Grantor should obtain, it shall file all documents necessary to perfect a security interest therein in favor of the Collateral Agent for its benefit and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the other Secured Parties with (1) the United Stated Patent and Trademark Office within three months of obtaining any such ownership interest and (2) the United States Copyright Office within one month of obtaining any such ownership interest and shall give notice thereof to the Collateral Agent in writing, in reasonable detail, at its address set forth in the Credit Agreement within 45 days after the end of the calendar quarter in which it obtains such ownership interest. Such Grantor hereby authorizes the Collateral Agent to modify this Agreement by amending Schedule 4 (and will cooperate reasonably with the Collateral Agent in effecting any such amendment) to include on Schedule 4 any Copyright, Copyright License, Patent, Patent License, Trademark or Trademark License of which it receives notice under this Section, or to prepare and file with the United States Patent and Trademark Office or the United States Copyright Office a supplement to this Agreement to include any Copyright, Patent or Trademark of which it receives notice under this Section. Upon request of the Collateral Agent, such Grantor shall execute and deliver, and have recorded, any and all agreements, instruments, documents, and papers as the Collateral Agent may request to evidence the Collateral Agent’s and the Secured Parties, shall obtain a perfected ’ security interest in any Intellectual Property.
(ii) Except as permitted in the Loan Documents, such xxxx pursuant Grantor agrees to this Agreement take all reasonably necessary steps, including, without limitation, (A) continue to use each material Trademark in order to maintain such Trademark in full force free from any claim of abandonment or cancellation for non-use, (B) maintain in all material respects as in the past the quality of all products and an Intellectual Property Security Agreementservices offered under any material Trademark, (C) use each material Trademark with all appropriate notices of registration and all other notices and legends required by applicable Requirements of Law, (ivD) not (and not permit will use commercially reasonable efforts to prohibit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such a material Trademark may could reasonably be expected to become invalidated or impaired diluted in any way, and (E) in the United States Patent and Trademark Office, to (x) maintain each trademark registration and each Trademark License identified on Schedule 4, and (y) pursue each trademark application now or hereafter identified on Schedule 4, including, without limitation, the filing of responses to office actions issued by the United States Patent and Trademark Office, the filing of any amendments to allege use or statements of use, the filing of applications for renewal, the filing of affidavits under Sections 8 and 15 of the United States Trademark Act, and the participation in opposition, cancellation, infringement and dilution proceedings, the payment of any maintenance or renewal fees, except, in each case in which such Grantor has reasonably determined that any of the foregoing is not material to its business. Such Grantor agrees to take corresponding steps with respect to each new or acquired trademark or service xxxx registration, or application for trademark or service xxxx registration, or any rights obtained under any Trademark License, in each case, to which it is now or later becomes entitled, except in each case in which such Grantor has reasonably determined that any of the foregoing is not material to its business. Any expenses incurred in connection with such activities shall be borne by such Grantor.
(biii) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall will not do any act, or omit to do any act (and will use commercially reasonable efforts to ensure that any licensee or sublicensee does not do any act or omit to do any act, ) whereby any material Patent owned by such Grantor material to its business may become is forfeited, abandoned or dedicated to the public, except in the case in which such Grantor has reasonably determined that the foregoing is not material to its business. Except as permitted in the Loan Documents, such Grantor agrees to take all necessary steps, including, without limitation, in the United States Patent and Trademark Office or in any court, to (A) maintain each Patent and each Patent License identified on Schedule 4, and (B) pursue each patent application, now or hereafter identified on Schedule 4, including, without limitation, the filing of divisional, continuation, continuation-in-part and substitute applications, the filing of applications for reissue, renewal or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition or infringement and misappropriation proceedings, except, in each case in which such Grantor has reasonably determined that any of the foregoing is not material to its business. Such Grantor agrees to take corresponding steps with respect to each new or acquired patent, patent application, or any rights obtained under any Patent License, in each case, to which it is now or later becomes entitled, except in each case in which such Grantor has reasonably determined that any of the foregoing is not material to its business. Any expenses incurred in connection with such activities shall be borne by such Grantor.
(civ) Except as provided in clause (v) hereof, such Grantor shall take all additional steps not set forth in clauses (ii) and (iii) hereof which it or the Collateral Agent deems reasonably appropriate under the circumstances to preserve and protect its material Patents, Patent Licenses, Trademarks, and Trademark Licenses.
(v) Such Grantor (either itself shall not abandon or through licensees)cancel, subject or allow any trademark registration, patent or any pending trademark or patent application to be abandoned or cancelled, in each case listed on Schedule 4, without the written consent of the Collateral Agent, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such trademark registration, patent or pending trademark or patent application is not material to its business, in which case, such Grantor will, at least annually, give notice of any such abandonment or cancellation to the exercise of Collateral Agent in writing, in reasonable detail, at its reasonable business judgment, taking into account address set forth in the Secured Parties’ interests under this Credit Agreement, shall .
(vi) Such Grantor will not (and shall not permit any licensee or sublicensee thereof to) knowingly do any act or knowingly omit to do any act (and will use commercially reasonable efforts to ensure that any licensee or sublicensee does not do any act or omit to do any act) whereby any material portion of the Copyrights owned by such Grantor and material could reasonably be expected to its business may become invalidated materially impaired or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into dedicated to the public domainpublic.
(dvii) Such Grantor shall will not (and will use commercially reasonable efforts to ensure that any licensee or sublicense does not) knowingly infringe in any material respect upon the intellectual property rights of any other Person.
(viii) Such Grantor will notify the Administrative Collateral Agent promptly if it knows knows, or suspects has reason to know, that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned abandoned, cancelled, lost or dedicated to the public, or of any material adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court similar office or tribunal in agency, or any countryU.S. court, but excluding normal course office actions) regarding such Grantor’s ownership ofrights in, or the validity validity, enforceability, ownership or use of, any such Material material Intellectual Property or Property, including, without limitation, such Grantor’s right to register the same register, keep or to own and maintain the same.
(eix) After such Grantor, either by itself or through In the event that any agent, employee, licensee or designee, shall file an application for the registration of Grantor becomes aware that any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration item of Intellectual Property which such Grantor has reasonably determined to be material to its businessbusiness is infringed or misappropriated by a third party, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal which infringement or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not would reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) notify the Collateral Agent promptly and in writing, in reasonable detail, at its address set forth in the Credit Agreement, and shall take such actions as such Grantor shall or the Collateral Agent deems reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if Property, including, without limitation, suing for damages and/or for an injunction against such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation infringement or dilution, to seek injunctive relief where appropriate and to recover any and all damages for misappropriation. Any expense incurred in connection with such infringement, misappropriation or dilution.
(i) activities shall be borne by such Grantor. Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of will advise the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, Agent promptly and in writing, in reasonable detail, at its address set forth in the case Credit Agreement, of trademarksany adverse determination or the institution of any proceeding (including, without limitation, the goodwill institution of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent any proceeding in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and or any court) regarding any item of the United States Copyright OfficeIntellectual Property which could reasonably result in a Material Adverse Effect.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(lx) Such Grantor shall take commercially reasonable steps to protect xxxx its products with the secrecy trademark registration symbol ®, the numbers of all appropriate patents, the common law trade secrets xxxx symbol ™, the designation “patent pending,” as the case may be, to the extent that it is reasonably and commercially practicable.
(xi) Such Grantor will not create, incur or confidential information permit to exist, will defend the Intellectual Property against, and will take such other action as is reasonably necessary to remove, any material Lien or material adverse claim on or to any of the Intellectual Property other than Liens created hereby and other than as permitted pursuant to the Loan Documents (including, without limitation, any Liens permitted to exist on the Intellectual Property pursuant to subsection 7.3 of the Credit Agreement), and will defend the right, title and interest of the Collateral Agent and the other Secured Parties in and to any of the Intellectual Property against the claims and demands of all Persons whomsoever, except where failure to defend would not have a Material Adverse Effect.
(xii) Without the prior written consent of the Collateral Agent, such Grantor will not sell, assign, transfer, exchange, license or otherwise dispose of or grant any option with respect to, the Intellectual Property, or attempt, offer or contract to do so, except with respect to licenses in the ordinary course of business or as permitted by this Agreement or the other Loan Documents.
(xiii) Such Grantor will advise the Collateral Agent promptly and in writing, in reasonable detail, at its businessaddress set forth in the Credit Agreement, including entering into confidentiality agreements with employees of (A) any Lien (other than Liens created hereby or permitted under the Loan Documents, including, without limitation, any Liens permitted to exist on the Intellectual Property pursuant to subsection 7.3 of the Credit Agreement) on any Intellectual Property and labeling and restricting access (B) the occurrence of any other event which would reasonably be expected in the aggregate to secret information and documentshave a material adverse effect on the aggregate value of the Intellectual Property as a whole or the Liens created hereunder.
Appears in 2 contracts
Samples: Guarantee and Collateral Agreement (Sirva Inc), Guarantee and Collateral Agreement (Sirva Inc)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, will (i) continue to use each owned material Trademark material (other than the Excluded Trademarks) on each and every trademark class of goods applicable to its businesscurrent line as reflected in its current catalogs, brochures and price lists in order to maintain such Trademark (other than the Excluded Trademarks) in full force free from any claim of abandonment for non-use, (ii) maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark (other than the Excluded Trademarks), (iii) use such Trademark (other than the Excluded Trademarks) with the appropriate notice of registration and all other notices and legends required by applicable Requirements of Law, (iv) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark (other than the Excluded Trademarks) may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) will not do any act, or omit to do any act, whereby any material Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall ) (i) will employ each material Copyright and (ii) will not (and shall will not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of the Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall will not (either itself or through licensees) do any act whereby any material portion of such the Copyrights may fall into the public domain.
(d) Such Grantor shall (either itself or through licensees) will not do any act that knowingly uses any material Intellectual Property to infringe the intellectual property rights of any other Person.
(e) Such Grantor will notify the Administrative Agent promptly and the Lenders immediately if it knows knows, or suspects has reason to know, that any application or registration relating to any Material material Intellectual Property owned by such Grantor (other than the Excluded Trademarks) may become forfeited, abandoned or dedicated to the public, or of any adverse determination or development (including including, without limitation, the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(ef) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with within five Business Days after the delivery last day of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent fiscal quarter in its sole discretion), in each case, immediately following the date of which such filing or receipt of registrationoccurs. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all reasonably necessary agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Administrative Agent’s and the Secured Parties’ security interest in any Copyright, Patent, Patent or Trademark or other Intellectual Property and the goodwill and general intangibles of such GrantorGrantor relating thereto or represented thereby.
(fg) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall Grantor will take all reasonable and necessary steps, including including, without limitation, in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency in any other country or any political subdivision thereof, to maintain and pursue each application relating to any material Intellectual Property (and to obtain the relevant registration) and to maintain each registration of the material Intellectual Property material to its business(other than the Excluded Trademarks), including the payment of required fees and taxesincluding, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Officewithout limitation, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any material Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Guarantee and Collateral Agreement (Sba Communications Corp), Guarantee and Collateral Agreement (Sba Communications Corp)
Intellectual Property. (a) Such Grantor (either itself or through licensees) Each Obligor shall, in the exercise of subject to its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material that is set forth on Schedule 9.1.12(a) in order to its businessmaintain such Trademark in full force free from any claim of abandonment for non-use, (ii) maintain commercially maintain, consistent with reasonable business judgment, the quality of products and services offered under each such Trademarks Trademark and take all necessary commercially reasonable steps to ensure that all licensed users of such Trademarks comply with Trademark maintain quality standards as established by such Grantor’s quality control requirements and maintain reasonable qualityObligor, (iii) use reasonable efforts to use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable law, (iv) not adopt or use any xxxx owned by any Obligor which is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall be entitled to obtain a perfected security interest in such xxxx pursuant to this Agreement, the Trademark Security Agreement and an Intellectual Property any other Security AgreementDocument, immediately following such adoption or use, and (ivv) not knowingly (and not knowingly permit any licensee or sublicensee thereof to, subject to existing Licenses) do any act or knowingly omit to do any act whereby any registration of such Trademark may would be reasonably likely to become invalidated or impaired in any way; in each case with respect to subsections (i) to (v), except for such instances of non-compliance, that individually or in the aggregate, could not reasonably be expected to have Material Adverse Effect.
(b) Such Grantor (either itself or through licensees)Each Obligor, subject to the exercise of except in accordance with its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not knowingly (and not knowingly permit any licensee or sublicensee thereof to) do any act, or omit to do any act, whereby any Patent owned by such Grantor material an Obligor that is set forth on Schedule 9.1.12
(a) would be reasonably likely to its business may become forfeited, abandoned or dedicated to the public, except for such instances of non-compliance, that individually or in the aggregate, could not reasonably be expected to have Material Adverse Effect.
(c) Such Grantor (either itself or through licensees)Each Obligor, subject to the exercise of except in accordance with its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall will not knowingly (and shall will not knowingly permit any licensee or sublicensee thereof to, subject to existing Licenses) (i) do any act or knowingly omit to do any act whereby any material portion of such Copyrights owned by such Grantor and material an Obligor would be reasonably likely to its business may become invalidated or otherwise impaired. Such Grantor shall not , or (either itself or through licenseesii) do any act whereby which would be reasonably likely to cause any material portion of such the Copyrights may owned by an Obligor to fall into the public domain, except, in each case, for such instances of non-compliance, that individually or in the aggregate, could not reasonably be expected to have Material Adverse Effect.
(d) Such Grantor Each Obligor, except in accordance with its reasonable business judgment, agrees that it shall not (A) do any act that uses any Intellectual Property to infringe, misappropriate or violate the intellectual property rights of any other Person if such act is(i) done knowingly in violation of such other person’s rights and (ii) could reasonably be expected to have a Material Adverse Effect, except, in each case, for such instances of non-compliance, that individually or in the aggregate, could not reasonably be expected to have Material Adverse Effect.
(e) Concurrently with the delivery of the financial statements as provided in this Agreement, each Obligor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material included in the Registered Intellectual Property owned or exclusively licensed by such Grantor may an Obligor has become forfeited, abandoned or dedicated to the public, or of any materially adverse determination (including of any Governmental Authority regarding any Obligor’s ownership of or right to use, or the institution validity of, or any such determination inIntellectual Property or such Obligor’s right to register the same, any proceeding in to own and maintain the same or use the same, except for (i) office actions issued by the United States Patent and Trademark Office, the United States Copyright Office or any court similar office, agency or tribunal Governmental Authority in any countryother country or any political subdivision thereof during the ordinary course of prosecution of any applications for any Intellectual Property, and (ii) regarding such Grantor’s ownership ofinstances of non-compliance, forfeit, dedication to the public, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliverabandonment, and have recorded such determinations, that, individually or in the United States Patent and Trademark office or the United States Copyright Officeaggregate, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request could not reasonably be expected to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantorhave Material Adverse Effect.
(f) Such Grantor, subject Subject to the exercise of its such Obligor’s reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, each Obligor shall take all reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office, agency or Governmental Authority in any other country or any political subdivision thereof, to maintain and pursue each pending application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, owned by an Obligor including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright OfficeOffice or any similar office, agency or Governmental Authority in any other country or any political subdivision thereof, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue reissue, and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself , except for such instances of non-compliance, that individually or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof aggregate, could not reasonably be expected to have a Material Adverse Effect.
(g) Notwithstanding anything to the contrary set forth in this Section 10.1.8, each Obligor shall not, without the prior written consent of Agent, abandon any registration of its material Intellectual Property, unless (i) such Obligor shall have determined, in its discretion, reasonably exercised, that the use or the pursuit or maintenance of such registration of Intellectual Property is no longer commercially reasonable or desirable in the conduct of such Obligor’s business or (ii) the loss thereof, individually or in the aggregate with other Intellectual Property abandoned pursuant to this Section 10.1.8(g), could not reasonably be expected to have a Material Adverse Effect. Upon the request of Agent, such Obligor shall prepare and deliver to Agent a summary of any registrations of material Intellectual Property so abandoned.
(h) In the event that any Obligor becomes aware that any material Intellectual Property material to its business is owned by an Obligor has been infringed, misappropriated or diluted in any material respect by a third another party, such Grantor Obligor shall (i) take such actions and cause its Subsidiaries to take such actions, as such Grantor Obligor shall reasonably deem appropriate under the circumstances (to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for extent such infringement, misappropriation misappropriation, or dilutiondilution could reasonably be expected to have a Material Adverse Effect, as Agent may reasonably request) to protect, maintain, enforce and preserve the full value of such Intellectual Property.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor Each Obligor shall take commercially all reasonably necessary steps reasonable steps under the circumstances to protect the secrecy of all trade secrets material Trade Secrets of such Obligor, except for such instances of non-compliance that, individually or confidential information material in the aggregate, could not reasonably be expected to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documentshave a Material Adverse Effect.
Appears in 2 contracts
Samples: Loan and Security Agreement (Boise Cascade Holdings, L.L.C.), Loan and Security Agreement (Boise Cascade Holdings, L.L.C.)
Intellectual Property. (a) Such Grantor (either itself or through licenseesAs of the date of delivery of the most recent Compliance Certificate pursuant to Section 5.2(a)(ii) shall, in of the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Credit Agreement, Schedule 6 (ias such schedule may be amended or supplemented by the Borrower from time to time) continue lists, with respect to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeitedin its own name all pending or issued Patents, abandoned registered Copyrights, registrations and applications included in the Trademarks, registrations for domain names actively used by the Grantors, and all written Copyright Licenses, Trademark Licenses and Patent Licenses that grant exclusive rights to any of the Grantors. The Collateral Agent acknowledges and agrees that Grantors do not make any representations or dedicated warranties relating to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding Intellectual Property in jurisdictions other than in the United States Patent States.
(b) Except as set forth in Schedule 6 (as such schedule may be amended or supplemented by the Borrower from time to time), (i) all material Intellectual Property owned by such Grantor in its own name is valid, subsisting, unexpired, has not been abandoned and, to the knowledge of such Grantor, is enforceable and Trademark Officedoes not infringe, the United States Copyright Office misappropriate, dilute or otherwise violate any intellectual property right of any other Person and (ii) no material written claim has been made that such Intellectual Property owned by such Grantor (or any court of its respective licensees) infringes, misappropriates, dilutes or tribunal otherwise violates the asserted Intellectual Property rights of any other Person.
(c) Except as set forth in Schedule 6 (as such schedule may be amended or supplemented by the Borrower from time to time) none of the material Intellectual Property is the subject of any countrylicensing or franchise agreement pursuant to which such Grantor is the licensor or franchisor.
(d) regarding Except as set forth in Schedule 6 (as such schedule may be amended or supplemented by the Borrower from time to time), to the knowledge of such Grantor’s ownership , no final holding, decision or judgment has been rendered by any Governmental Authority which would limit, cancel or question the validity, enforceability or scope of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the samerights in, any material Intellectual Property.
(e) After Except as set forth in Schedule 6 (as such schedule may be amended or supplemented by the Borrower from time to time), no action or proceeding is pending against such Grantor or, to the knowledge of such Grantor, either by itself is threatened against such Grantor, (i) seeking to limit, cancel or through any agent, employee, licensee question the validity or designee, shall file an application for the registration enforceability of any material Intellectual Property that is owned by such Grantor, seeking to challenge such Grantor’s ownership interest therein or (ii) which, if adversely determined, could reasonably be expected to have a material to adverse effect on the business value of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other material Intellectual Property of owned by such Grantor.
(f) Such GrantorGrantor has been using commercially reasonable efforts, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Officeconsistent with industry standards, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each display appropriate statutory notice of registration in connection with its use of Intellectual Property material to registered Trademarks, proper marking practices in connection with its business, including the payment use of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance feesPatents, and appropriate notice of copyright in connection with the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedingspublication of any material Copyrights.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take has taken commercially reasonable steps to protect the secrecy confidentiality of its Trade Secrets in accordance with industry standards.
(h) Such Grantor controls the nature and quality in accordance with industry standards of all trade secrets products sold under or confidential information in connection with all Trademarks of such Grantor, in each case consistent with industry standards, and has taken commercially reasonable steps to insure that all licensees of the Trademarks owned by such Grantor comply with such Grantor’s standards of quality.
(i) Except as set forth in Schedule 6 (as such schedule may be amended or supplemented by the Borrower from time to time), to such Grantor’s knowledge, no Person is infringing, misappropriating, diluting or otherwise violating any rights in any material to its businessIntellectual Property owned, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documentslicensed or used by such Grantor.
Appears in 2 contracts
Samples: Guarantee and Collateral Agreement (B&G Foods, Inc.), Guarantee and Collateral Agreement (B&G Foods, Inc.)
Intellectual Property. (a) Such with respect to its Material Intellectual Property, each Grantor (either itself or through licenseesi) shallagrees to take, at its expense, all commercially reasonable steps, including, without limitation, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States U.S. Patent and Trademark Office, the United States U.S. Copyright Office or and any court or tribunal in any countryother governmental authority, to (A) regarding such Grantor’s ownership of, or maintain the validity of, any and enforceability of such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to Collateral and maintain such Intellectual Property that is Collateral in full force and effect (in accordance with the business exercise of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole Grantor’s reasonable business discretion), and (B) pursue the registration and maintenance (in each case, immediately following accordance with the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property exercise of such Grantor.
(f’s reasonable business discretion) Such of each Patent, Trademark, or Copyright registration or application, now or hereafter included in such Intellectual Property that is Collateral of such Grantor, subject to the exercise of its reasonable business judgmentincluding, taking into account the Secured Parties’ interests under this Agreementwithout limitation, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States U.S. Patent and Trademark Office, the U.S. Copyright Office and the United States Copyright Officeor other governmental authorities, the filing of applications for renewal or extension, the filing of affidavits under Sections 8 and 15 of use and affidavits of incontestabilitythe U.S. Trademark Act, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, fees and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
, and (gii) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, not without the prior written consent of the Administrative AgentCollateral Trustee, discontinue use of or otherwise abandon any of its registered Owned Intellectual PropertyProperty that is Collateral, or abandon any application or any right to file an application for any patentPatent, trademarkTrademark, or copyrightCopyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property that is Collateral is no longer desirable in the conduct of such Grantor’s business and that the loss or abandonment thereof could would not be reasonably be expected likely to have a Material Adverse Effect.;
(hb) In no later than the next Quarterly Reporting Date with respect to any fiscal quarter, each Grantor agrees to notify the Collateral Trustee if such Grantor becomes aware of (i) a Material Adverse Effect arising from the fact that any registered item of the Material Intellectual Property owned by such Grantor may have become abandoned, placed in the public domain, invalid or unenforceable (other than as a result of the expiration of the statutory term for such Intellectual Property that is Collateral), or of any materially adverse determination regarding such Grantor’s ownership of any of the Intellectual Property that is Collateral or its right to register the same or to keep and maintain and enforce the same, or (ii) any materially adverse determination regarding any item of the Intellectual Property that is Collateral, in each case occurring during such fiscal quarter;
(c) in the event that any Material Intellectual Property material owned by or exclusively licensed to its business any Grantor is infringed, infringed or misappropriated or diluted by a third partyparty and Grantor becomes aware of such infringement or misappropriation, such Grantor shall (i) take such actions as in its commercially reasonable judgment to stop such Grantor shall reasonably deem appropriate under the circumstances to infringement or misappropriation and protect its rights in such Material Intellectual Property including, but not limited to, the initiation of a suit for infringement or misappropriation and (ii) if for an injunction against such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation infringement or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.misappropriation; and
(id) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any subject to such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the Grantor’s reasonable business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s requestjudgment, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps steps, consistent with industry standards, to protect the secrecy of all trade secrets or confidential information material to its businesssecrets, including including, without limitation, entering into confidentiality agreements with employees and consultants, non-disclosure agreements with third parties and labeling and restricting access to secret information and documentssuch trade secrets.
Appears in 2 contracts
Samples: Priority Lien Pledge and Security Agreement (Unisys Corp), Junior Lien Pledge and Security Agreement (Unisys Corp)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall (i) continue to use each owned Trademark material that is Material Intellectual Property in order to its businessmaintain such Trademark with respect to footwear and retail shoe store services (if so used as of the date hereof), free from any claim of abandonment for non-use, (ii) except as it may otherwise determine in the ordinary course of its business, maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) not adopt or generally use any xxxx which is confusingly similar or a colorable imitation such Trademark with commercially reasonable notices of such Trademarks unless the Administrative Agent, for the ratable benefit registration and regular notices and legends required by applicable Requirements of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, Law and (iv) not (and not permit any licensee or sublicensee thereof to) knowingly do any act or knowingly omit to do any act whereby such Trademark (or any goodwill associated therewith) may become destroyed or invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, ) shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become that is Material Intellectual Property becomes forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to owned by such Grantor for any Material Intellectual Property owned by such Grantor may is likely to become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, public or any such determination in, any action or proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal is commenced seeking to limit in any country) regarding material respect or cancel such Grantor’s ownership of, right to use, interest in, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(ed) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency within the United States or register any Internet domain name, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with within 60 days after the delivery last day of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent fiscal quarter in its sole discretion), in each case, immediately following the date of which such filing or receipt of registrationoccurs. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright OfficeStates, as applicable, any and all agreements, instruments, documents, documents and papers as the Administrative Agent may request to evidence the Secured Parties’ Administrative Agent’s security interest in any Copyright, Patent, Trademark or other Internet domain name and the goodwill and general intangibles of such Grantor relating thereto or represented thereby. The failure to provide or any omissions from such report shall not constitute an Event of Default unless any Material Intellectual Property is omitted therefrom. At the written request of such Grantorthe Administrative Agent, each Grantor shall provide a true and complete list of all Material Intellectual Property and United States copyright registrations included in the Collateral.
(fe) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, Grantor shall take all reasonable and actions necessary stepsor requested by the Administrative Agent, including in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright OfficeOffice or any similar office or agency and any Internet domain name registrar, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of any Copyright, Trademark, Patent or Internet domain name that is Material Intellectual Property material to its businessProperty, and that is in such Grantor’s reasonable judgment appropriate, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and use, affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(hf) In the event that any Material Intellectual Property material to its business is infringed, or has been infringed upon or misappropriated or diluted by a third party, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent promptly after it such Grantor learns thereof and xxx thereof. Such Grantor shall take appropriate action in response to such infringement, misappropriation of dilution, including when bringing suit for infringement, misappropriation or dilution, to seek injunctive relief where appropriate dilution and to recover any and all damages for such infringement, misappropriation or of dilution, and shall taking such other actions, in each case as appropriate in such Grantor’s reasonable judgment under the circumstances to protect such Material Intellectual Property.
(ig) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior Unless otherwise agreed to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion)Agent, in each case, following the date on which such ownership is obtained, Grantor shall execute and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein deliver to the Administrative Agent for filing (i) in the ratable benefit United States Copyright Office a short-form copyright security agreement in the form attached hereto as Annex 5 (Form of the Secured Parties with Short Form Intellectual Property Security Agreement), (ii) in the United States Patent and Trademark Office and with the Secretary of State of all appropriate States of the United States Copyright Office.
a short-form patent security agreement in the form attached hereto as Annex 5 (k) Such Grantor agrees to execute an Form of Short Form Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property Agreement) and (iii) in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Officea short-form trademark security agreement in form attached hereto as Annex 5 (Form of Short Form Intellectual Property Security Agreement).
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Loan and Guaranty Agreement (Collective Brands, Inc.), Term Loan Agreement (Collective Brands, Inc.)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, to the extent such Grantor deems necessary and beneficial to such Grantor’s business in the exercise of accordance with its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each Trademark owned by such Grantor that is Material Intellectual Property in order to maintain such Trademark in full force and effect with respect to each class of goods for which such Trademark is currently used that is material to its businesssuch Grantor’s business or the business of the Grantors taken as a whole, free from any claim of abandonment for non-use, (ii) maintain commercially reasonable the quality of products and services offered under such Trademarks and take all necessary steps to ensure Trademark such that all licensed users of no rights under such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark are cancelled, impaired, genericized or otherwise negatively affected, (iii) use such Trademark with all appropriate notices and legends required by applicable Requirements of Law, (iv) not adopt or use any xxxx which Trademark that is confusingly similar or a colorable imitation of such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, Collateral Agent shall obtain a perfected security interest Requisite Liens in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (ivv) not (and not knowingly permit any licensee or sublicensee thereof to) knowingly do any act or knowingly omit to do any act whereby such Trademark (or any goodwill associated therewith) that constitutes Material Intellectual Property may become invalidated destroyed, invalidated, impaired or impaired harmed in any waymaterial respect; provided that clauses (i), (ii) and (v) above shall not apply to any advertising slogan so long as (x) such slogan is no longer in use by such Grantors or the franchisees of the Grantors (in such Grantor’s reasonable estimation) and (y) such Grantor does not, in its reasonable estimation, expect to use such slogan (or any substantially similar slogan) in the future.
(b) Such Grantor (either itself or through licensees)) shall, subject to the exercise of in accordance with its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not knowingly do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business that is Material Intellectual Property may become forfeited, limited, cancelled in whole or in part, invalidated in whole or in part, abandoned or dedicated to the publicpublic (except for Patents expiring at the end of their statutory terms).
(c) Such Grantor (either itself or through licensees), subject to the exercise of in accordance with its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) knowingly do any act whereby any material portion of such the Copyrights that is Material Intellectual Property may fall into the public domaindomain (except for Copyrights expiring at the end of their statutory terms).
(d) Such Grantor (either itself or through licensees) shall not do any unreasonable act, or knowingly omit to do any act, whereby any trade secret that is Material Intellectual Property may become publicly available or otherwise unprotectable. For the avoidance of doubt, it shall not be an unreasonable act for such Grantor to make any trade secret publicly available for the purpose of disclosure in any patent application by such Grantor.
(e) Such Grantor (either itself or through licensees) shall not knowingly do any act that uses any Material Intellectual Property to infringe, dilute, misappropriate, violate or otherwise harm the intellectual property rights of any other Person in any material respect.
(f) Such Grantor shall notify the Administrative Collateral Agent promptly if it knows knows, or suspects has reason to know, that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any material adverse determination or material development (including the institution of, or any such determination or development in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office Office, or any court other Governmental Authority or tribunal in any country) international agency or similar authority, but excluding any non-final office actions or ordinary course correspondence issued by such Governmental Authorities), regarding such Grantor’s ownership of, right to use, interest in, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.
(eg) After Whenever such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or Office, the United States Copyright Office, or any similar Governmental Authority of or within the United States or Canada, such Grantor shall report such filing or receipt of a registration to the Administrative Collateral Agent prior to or concurrently with within 10 Business Days after the delivery last day of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of which such filing or receipt of registrationoccurs. Upon request of the Administrative Collateral Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Officerecorded, as applicable, any and all agreements, instruments, documents, documents and papers as the Administrative Collateral Agent may reasonably request to evidence the Secured Parties’ Collateral Agent’s security interest in any Copyright, Patent, Patent or Trademark or (other Intellectual Property than Excluded Property) and the goodwill of such GrantorGrantor relating thereto or represented thereby.
(fh) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, Grantor shall take all reasonable and actions necessary stepsor appropriate or requested by the Collateral Agent, including in any proceeding before the United States Patent and Trademark Office or Office, the United States Copyright Office, any similar Governmental Authority of or within the United States or Canada and any Internet domain name registrar, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of any Copyright, Trademark, Patent or Internet domain name that is Material Intellectual Property material to its businessProperty, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extensionrenewal, the filing of affidavits of use and use, affidavits of incontestability, the filing of divisionalopposition and interference and cancellation proceedings, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance all applicable fees, and except to the participation extent that such Grantor determines in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedingsits reasonable business judgment that the maintenance or pursuit of any such registration or application is no longer necessary or beneficial to the conduct of Grantor’s business.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(hi) In the event that any Material Intellectual Property material to its business is infringed, or has been materially infringed upon or misappropriated or diluted by a third party, such Grantor shall notify the Collateral Agent promptly after such Grantor learns thereof. Such Grantor shall take appropriate action in accordance with its reasonable business judgment in response to such infringement, misappropriation or dilution, including promptly bringing suit for infringement, misappropriation or dilution and/or other cause of action and to recover all damages, injunctive relief and declaratory judgments in connection with such infringement, misappropriation, dilution or other cause of action (i) unless such Grantor has a good faith reason not to bring such suits), and shall take such other actions as such Grantor shall reasonably deem may be appropriate in its reasonable judgment under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Material Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Unless otherwise agreed to by the Collateral Agent, such Grantor agrees to shall execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein and deliver to the Administrative Collateral Agent for filing (i) in the ratable benefit of United States Copyright Office, a short-form copyright security agreement in the Secured Parties with form attached hereto as Annex 5, (ii) in the United States Patent and Trademark Office Office, a short-form patent security agreement in the form attached hereto as Annex 5, and the United States Copyright Office.
(kiii) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office, a short-form trademark security agreement in form attached hereto as Annex 5.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Pledge and Security Agreement (Wendy's/Arby's Group, Inc.), Pledge and Security Agreement (Wendy's/Arby's Group, Inc.)
Intellectual Property. (a) Such Grantor Except as set forth on Schedule 11.1.3(a), as of the Effective Date,
(either itself i) Orion has legal right, title and interest in and to the Orion Patent Rights, Orion Know-How and to Orion’s Knowledge, the Cygnus/Farmos Patent, free of any liens or through licenseesrestrictions, and
(ii) shall, in Orion has the exercise right to grant to Licensee all of its reasonable business judgment, taking into account the Secured Parties’ interests licenses and other rights granted to Licensee under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licenseesExcept as set forth on Schedule 11.1.3(a), subject Orion has not entered into, and will not enter into, any agreement nor granted any third party any rights with respect to the exercise of its reasonable business judgmentOrion Patent Rights, taking into account Orion Know-How, or, to Orion’s Knowledge, to Other Orion Patent Rights or Cygnus/Farmos Patents that are inconsistent with the Secured Parties’ interests rights granted to Licensee under this Agreement, shall not do any actwhich would limit the scope of Licensee’s rights granted under this Agreement, or omit which would limit Orion’s ability to do any act, whereby any Patent owned perform all of the obligations undertaken by such Grantor material to its business may become forfeited, abandoned or dedicated to the publicOrion hereunder.
(c) Such Grantor (either itself Orion is not a party to, nor otherwise bound by, any contract that will result in any person or through licensees)entity obtaining any interest in, subject or which would give any third party any right to the exercise of its reasonable business judgmentassert any claim in or with respect to, taking into account the Secured Parties’ interests Licensee’s rights under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by such Grantor and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the public, or of any adverse determination (including the institution of, or any such determination in, any proceeding in the United States Patent and Trademark OfficeTo Orion’s Knowledge, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own Cygnus Agreement is valid and maintain the sameenforceable.
(e) After such Grantor, either by itself Orion shall not suffer or through permit any agent, employee, licensee liens or designee, shall file an application for restrictions to be imposed on the registration of any Intellectual Property that is material to the business of such Grantor with the United States Orion Patent Rights and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any Copyright, Patent, Trademark or other Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuationOrion Know-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, How without the prior written consent of the Administrative Agent, discontinue use of Licensee (which shall not be unreasonably withheld or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effectdelayed).
(hf) In As of the event that Effective Date, no item of Orion Patent Rights or Orion Know-How, save for the Orion Patent Rights or Orion Know-How in-licensed from Hospira, is in-licensed by Orion from an Affiliate or Third Party. As of the Effective Date, neither Orion nor its Affiliate has received notice of any Intellectual Property material to its business is infringed, misappropriated or diluted by a third party, such Grantor shall breach of any provision of Orion’s agreement with Hospira.
(g) To Orion’s Knowledge as of the Effective Date: (i) take such actions Orion owns or controls no patents or patent applications (including international and provisional applications) not within the Orion Patent Rights or Other Orion Patent Rights that cover or claim Dexmedetomidine or its manufacture, Development, use or Commercialization as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply theretoany Recro Product, (ii) any such After-Acquired Intellectual Propertyexcept for Dosage Form Technology, which Licensee intends to license from Third Parties, for the Cygnus Patents and in the case of trademarksCygnus/Farmos Patent, the goodwill Orion is not, to Orion’s Knowledge as of the business connected therewith or symbolized therebyEffective Date, shall automatically become part aware of that Licensee’s practice of the Intellectual Property CollateralOrion Patent Rights and Orion Know-How with respect to its initial development projects as set out on Schedule 11.1.3(g)(i) would infringe the patent rights or other intellectual property rights of a Third Party, (iii) provide written notice thereof prior to or concurrently with the delivery none of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 Orion Patent Rights are unenforceable, have been infringed or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtainedmisused, and (viv) promptly after the Administrative Agentthere are no existing actions, suits or proceedings, and Orion has not received any written claim or demand from a Third Party, that challenges Orion’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement rights with respect to its Intellectual Property in order the Orion Patent Rights, Orion Know-How, the Cygnus/Farmos Patents or Orion’s rights to record enter into this Agreement or that asserts that Development, manufacture or Commercialization of Dexmedetomidine would infringe the security interest granted herein to the Administrative Agent for the ratable benefit intellectual property rights of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Officea third party.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: License Agreement (Baudax Bio, Inc.), License Agreement (Recro Pharma, Inc.)
Intellectual Property. (a) Such Grantor Each Loan Party (either itself or through licenseeslicensees or sublicensee thereof) shallshall refrain from taking any act that knowingly infringes, in misappropriates, or dilutes the exercise Intellectual Property rights of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, any other third party.
(b) Each Loan Party (either itself or through licensees or sublicensee thereof) will (i) continue not abandon any Trademark used in connection with any goods and services reflected in current catalogs, brochures and price lists unless the Loan Party discontinues the associated goods or services or determines to use each owned change the Trademark material to its businessused in connection therewith, (ii) maintain commercially reasonable as in the past the quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable qualityTrademark, (iii) use best efforts to use such Trademark with the appropriate notice of registration and all other notices and legends required by applicable law, (iv) not adopt or use any xxxx which is confusingly similar or a colorable imitation of any such Trademarks Trademark unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in Lien upon such xxxx Trademark pursuant to this Agreement and an Intellectual Property Security Agreementsubject to the limitation of Section 6.1(e), and (ivv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated abandoned, diluted, unenforceable or impaired dedicated to the public; other than where the Loan Party has determined, in any wayits reasonable business judgment, to abandon or cancel such Trademark.
(bc) Such Grantor Each Loan Party (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall licensees or sublicensee thereof) will not do any act, or knowingly omit to do any act, whereby any material Patent owned by such Grantor material to its business may become forfeited, abandoned abandoned, unenforceable (including due to a lack of standing to xxx or lack of patent markings) or dedicated to the publicpublic other than where the Loan Party has determined, in its reasonable business judgment, to abandon or cancel such Patent.
(cd) Such Grantor Each Loan Party (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee licensees or sublicensee thereof tothereof) will not do any act or knowingly omit to do any act act, whereby any material portion of Copyrights owned by such Grantor and material to its business Copyright may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeited, abandoned or dedicated to the publicpublic other than where the Loan Party has determined, in its reasonable business judgment, to abandon or of any adverse determination (including the institution of, or any cancel such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office or any court or tribunal in any country) regarding such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the sameCopyright.
(e) After such Grantor, either by itself or through any agent, employee, licensee or designee, shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to Each Loan Party will notify the Administrative Agent prior and Lenders immediately if it knows, or has reason to know, that any of the registered Intellectual Property is the subject of any order of any Governmental Authority declaring that the Loan Party does not own the registered Intellectual Property or concurrently the registered Intellectual Property is invalid or unenforceable.
(f) Concurrently with the next delivery of financial statements of such Loan Party pursuant to Section 9.6, the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier Loan Parties shall provide an update as to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted all registered Intellectual Property then owned by the Administrative Agent Loan Parties, including therewith the information described in its sole discretion), in each case, immediately following the date of such filing or receipt of registrationSection 8.11. Upon the request of the Administrative Agent, such Grantor Loan Party shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicablerecorded, any and all agreements, instruments, documents, and papers as the Administrative Agent may reasonably request to evidence the Secured PartiesAdministrative Agent’s and Lenders’ security interest in any Copyright, Patent, Trademark or other Lien upon such registered Intellectual Property of such Grantor.
(f) Such Grantor, subject to the exercise limitations of its reasonable business judgment, taking into account Section 6.1(e)) and the Secured Parties’ interests under goodwill and general intangibles of such Loan Party relating thereto or represented thereby consistent with the terms of this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that a Loan Party becomes aware that any owned Intellectual Property material to its business is infringed, infringed upon or misappropriated or diluted by a third party, such Grantor Loan Party shall (i) take such actions as such Grantor Loan Party shall reasonably deem appropriate under the circumstances to protect such owned Intellectual Property and (ii) if such owned Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and of its infringement, misappropriation or dilution and, to the extent such Loan Party determines in its reasonable business judgment it appropriate under the circumstances, xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable steps to protect the secrecy of all trade secrets or confidential information material to its business, including entering into confidentiality agreements with employees and labeling and restricting access to secret information and documents.
Appears in 2 contracts
Samples: Loan and Security Agreement (ADS Tactical, Inc.), Loan and Security Agreement (ADS Tactical, Inc.)
Intellectual Property. (a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) it shall not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion Material Intellectual Property will lapse, or become abandoned, canceled, dedicated to the public or unenforceable, or which would adversely affect the validity or enforceability of Copyrights the security interest granted therein, except where, in Grantor’s reasonable business judgment, such change in status will not materially and adversely affect Grantor’s business or the costs of enforcement are greater than the economic value to the Grantor’s business;
(b) it shall not, with respect to any Trademarks constituting Material Intellectual Property, fail to maintain the level of the quality of products sold and services rendered under any of such Trademark by it at a level at least substantially consistent with the quality of such products and services as of the date hereof;
(c) it shall, within 30 days of the creation or acquisition or exclusive license of any copyrightable work of authorship that is included in the Material Intellectual Property owned by such Grantor, apply to register the Copyright in the United States Copyright Office or, where appropriate, any foreign counterpart and, in the case of an exclusive Copyright License in respect of a registered Copyright, record such license, in the United States Copyright Office or, where appropriate, any foreign counterpart, except that (A) computer software and other Trade Secrets may be withheld from said registration where: (i) in Grantor’s reasonable business judgment, such item should be protected as a Trade Secret and (ii) Grantor promptly discloses said decision in writing to Collateral Agent, and material to its business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licenseesB) do any act whereby any material portion of such Copyrights may fall into the public domain.no registration is required if it would be a Regulatory Exception;
(d) Such Grantor it shall notify the Administrative Collateral Agent promptly if it knows or suspects within a reasonable period of knowing that any application or registration relating to any item of Material Intellectual Property owned by such Grantor may is reasonably likely to become forfeited, (i) abandoned or dedicated to the publicpublic or placed in the public domain, (ii) invalid or of unenforceable, (iii) subject to any adverse determination or development regarding such Grantor’s ownership, registration or use or the validity or enforceability of such item of Intellectual Property (including the institution of, or any such determination inadverse development with respect to, any action or proceeding in the United States Patent and Trademark Office, the United States Copyright Office Office, any state registry, any foreign counterpart of the foregoing, or any court court) or tribunal in (iv) the subject of any country) regarding such Grantor’s ownership of, reversion or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.termination rights;
(e) After such Grantorit shall take commercially reasonable steps, either by itself to pursue any application and maintain any registration or through any agent, employee, licensee or designee, shall file an application for the registration issuance of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded in the United States Patent and Trademark office or the United States Copyright Office, as applicable, any and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in any CopyrightTrademark, Patent, Trademark or other and Copyright owned by such Grantor and constituting Material Intellectual Property of such which in Grantor.’s reasonable business judgment, it has decided to maintain in subsistence;
(f) Such Grantor, subject it shall use commercially reasonable efforts so as not to permit the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including inclusion in any proceeding before contract to which it hereafter becomes a party of any provision that materially impairs or prevents the United States Patent and Trademark Office creation of a security interest in, or the United States Copyright Officeassignment of, to maintain such Grantor’s rights and pursue each application (and to obtain interests in any property included within the relevant registration) and to maintain each registration definitions of any Material Intellectual Property material to its business, including the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.that constitutes Collateral acquired under such contracts;
(g) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event that any Material Intellectual Property material to its business owned by such Grantor is infringed, misappropriated misappropriated, diluted or diluted otherwise violated by a third party, upon learning of such, such Grantor shall (i) take such actions as such Grantor shall reasonably deem appropriate under the circumstances to protect such Intellectual Property and (ii) if such Intellectual Property is of material economic value, promptly notify the Administrative Agent after it learns thereof and xxx for infringement, misappropriation or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, (iii) provide written notice thereof prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (v) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable actions to stop such infringement, misappropriation, dilution or other violation and protect its rights in such Material Intellectual Property;
(h) it shall take commercially reasonably steps to protect the secrecy of material Trade Secrets owned by it;
(i) it shall use required statutory notices in connection with its use of any of the Material Intellectual Property; and
(j) it shall continue to collect, at its own expense, all trade secrets amounts due or confidential information material to its businessbecome due to such Grantor in respect of the license by such Grantor of the Material Intellectual Property or any portion thereof owned by it. In connection with such collections, including entering into confidentiality agreements such Grantor may take (and, at the Collateral Agent’s reasonable direction, shall take) such action as such Grantor or the Collateral Agent may deem reasonably necessary or advisable to enforce collection of such amounts. Notwithstanding the foregoing, the Collateral Agent shall have the right upon a First Lien Event of Default, to notify, or require any Grantor to notify, any obligors with employees and labeling and restricting access respect to secret information and documentsany such amounts of the existence of the security interest created hereby. In connection with such collections, such Grantor may take (and, at the Collateral Agent’s reasonable direction, shall take) such action as such Grantor or the Collateral Agent may deem reasonably necessary or advisable to enforce collection of such amounts. Notwithstanding the foregoing, the Collateral Agent shall have the right at any time, to notify, or require any Grantor to notify, any obligors with respect to any such amounts of the existence of the security interest created hereby.
Appears in 2 contracts
Samples: First Lien Pledge and Security Agreement (Alion Science & Technology Corp), First Lien Credit and Guaranty Agreement (Alion Science & Technology Corp)
Intellectual Property. Each Obligor hereby covenants and agrees as follows:
(a) Such Grantor (either itself or through licensees) shall, in the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, (i) continue to use each owned Trademark material to its business, (ii) maintain commercially reasonable quality of products and services offered under such Trademarks and take all necessary steps to ensure that all licensed users of such Trademarks comply with such Grantor’s quality control requirements and maintain reasonable quality, (iii) it shall not adopt or use any xxxx which is confusingly similar or a colorable imitation of such Trademarks unless the Administrative Agent, for the ratable benefit of the Secured Parties, shall obtain a perfected security interest in such xxxx pursuant to this Agreement and an Intellectual Property Security Agreement, and (iv) not (and not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby such Trademark may become invalidated or impaired in any way.
(b) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not do any act, or omit to do any act, whereby any Patent owned by such Grantor material to its business may become forfeited, abandoned or dedicated to the public.
(c) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not (and shall not permit any licensee or sublicensee thereof to) do any act or knowingly omit to do any act whereby any material portion of Copyrights owned by the Intellectual Property which such Grantor and Obligor determines in its reasonable business judgment is material to its the business may become invalidated or otherwise impaired. Such Grantor shall not (either itself or through licensees) do any act whereby any material portion of such Copyrights Obligor may fall into the public domain.
(d) Such Grantor shall notify the Administrative Agent promptly if it knows lapse, or suspects that any application or registration relating to any Material Intellectual Property owned by such Grantor may become forfeitedabandoned, abandoned or dedicated to the public, or unenforceable, or which would adversely affect the validity, grant, or enforceability of the security interest granted therein;
(b) it shall not, with respect to any Trademarks which such Obligor determines in its reasonable business judgment are material to the business of such Obligor, cease the use of any of such Trademarks or fail to maintain the level of the quality of products sold and services rendered under any such Trademarks at a level which such Obligor determines in its reasonable business judgment to be appropriate to maintain the value of such Trademarks, and each Obligor shall take all steps reasonably necessary to ensure that licensees of such Trademarks use such consistent standards of quality;
(c) it shall promptly notify the Collateral Agent if it knows or has reason to know that any item of the Intellectual Property that is material to the business of any Obligor may become (a) abandoned or dedicated to the public or placed in the public domain, (b) invalid or unenforceable, or (c) subject to any adverse determination or development (including the institution of, of proceedings) in any action or any such determination in, any proceeding in the United States Patent and Trademark Office, the United States Copyright Office Office, any state registry, any foreign counterpart of the foregoing, or any court court, other than in the ordinary course of prosecuting and/or maintaining the applications or tribunal in any country) regarding registrations of such Grantor’s ownership of, or the validity of, any such Material Intellectual Property or such Grantor’s right to register the same or to own and maintain the same.Property;
(ed) After such Grantor, either by itself or through any agent, employee, licensee or designee, it shall file an application for the registration of any Intellectual Property that is material to the business of such Grantor with the United States Patent and Trademark Office or the United States Copyright Office, such Grantor shall report such filing or receipt of a registration to the Administrative Agent prior to or concurrently with the delivery of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 or the Fiscal Year ending (or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, immediately following the date of such filing or receipt of registration. Upon request of the Administrative Agent, such Grantor shall execute and deliver, and have recorded take all reasonable steps in the United States Patent and Trademark office or Office, the United States Copyright Office, as applicableany state registry or any foreign counterpart of the foregoing, to pursue any application and all agreements, instruments, documents, and papers as the Administrative Agent may request to evidence the Secured Parties’ security interest in maintain any Copyrightregistration of each Trademark, Patent, Trademark or other Intellectual Property of and Copyright owned by any Obligor that such Grantor.
(f) Such Grantor, subject to the exercise of Obligor determines in its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall take reasonable and necessary steps, including in any proceeding before the United States Patent and Trademark Office or the United States Copyright Office, to maintain and pursue each application (and to obtain the relevant registration) and to maintain each registration of Intellectual Property judgment is material to its business, including business which is now or shall become included in the payment of required fees and taxes, the filing of responses to office actions issued by the United States Patent and Trademark Office and the United States Copyright Office, the filing of applications for renewal or extension, the filing of affidavits of use and affidavits of incontestability, the filing of divisional, continuation, continuation-in-part, reissue and renewal applications or extensions, the payment of maintenance fees, and the participation in interference, reexamination, opposition, cancellation, infringement and misappropriation proceedings.Intellectual Property Collateral;
(ge) Such Grantor (either itself or through licensees), subject to the exercise of its reasonable business judgment, taking into account the Secured Parties’ interests under this Agreement, shall not, without the prior written consent of the Administrative Agent, discontinue use of or otherwise abandon any of its registered Owned Intellectual Property, or abandon any application or any right to file an application for any patent, trademark, or copyright, unless such Grantor shall have previously determined that such use or the pursuit or maintenance of such Intellectual Property is no longer desirable in the conduct of such Grantor’s business and event that the loss thereof could not reasonably be expected to have a Material Adverse Effect.
(h) In the event it has knowledge that any Intellectual Property material owned by or exclusively licensed to its business any Obligor is infringed, misappropriated misappropriated, or diluted by a third party, such Grantor Obligor shall, except as it determines otherwise in its reasonable business judgment, promptly take all reasonable actions to stop such infringement, misappropriation, or dilution and protect its rights in such Intellectual Property including, but not limited to, the initiation of a suit for injunctive relief and to recover damages;
(f) it shall promptly (but in no event more than thirty (30) days after any Obligor obtains knowledge thereof) report to the Collateral Agent (i) take the filing by or on behalf of such actions as such Grantor shall reasonably deem appropriate under the circumstances Obligor of any application to protect such register any Intellectual Property with the United States Patent and Trademark Office, the United States Copyright Office, or any state registry or foreign counterpart of the foregoing and (ii) if such the registration of any Intellectual Property is of material economic valueowned by such Obligor by any such office, in each case by executing and delivering to the Collateral Agent a completed Pledge Supplement, together with all supplements to Annexes thereto;
(g) it shall, promptly notify upon the Administrative reasonable request of the Collateral Agent, execute and deliver to the Collateral Agent after it learns thereof and xxx for infringementany document required to acknowledge, misappropriation confirm, register, record, or dilution, to seek injunctive relief where appropriate and to recover any and all damages for such infringement, misappropriation or dilution.
(i) Such Grantor agrees that, should it obtain an ownership perfect the Collateral Agent’s interest in any item of intellectual property which is not, as of the Closing Date, a part of the Intellectual Property Collateral (the “After-Acquired Intellectual Property”), (i) the provisions of Section 2.1 shall automatically apply thereto, (ii) any such After-Acquired Intellectual Property, and in the case of trademarks, the goodwill of the business connected therewith or symbolized thereby, shall automatically become part of the Intellectual Property Collateral, whether now owned or hereafter acquired by or on behalf of such Obligor, including intellectual property security agreements in the form of Exhibit C hereto;
(iiih) provide written notice thereof prior it shall hereafter use commercially reasonable efforts so as not to permit the inclusion in any contract to which it hereafter becomes a party of any provision that could or concurrently with might in any way materially impair or prevent the delivery creation of the Compliance Certificate required by Section 6.01(c) of the Credit Agreement for the earlier to occur of either the Fiscal Quarter ending June 30 a security interest in, or the Fiscal Year ending assignment of, such Obligor’s rights and interests in any property included within the definitions of any Intellectual Property acquired under such contracts;
(or such longer period of time permitted by the Administrative Agent in its sole discretion), in each case, following the date on which such ownership is obtained, and (vi) promptly after the Administrative Agent’s request, it shall provide the Administrative Agent with an amended Schedule 3.9(a) and take the actions specified in clauses (j) and (k) of Section 4.10.
(j) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(k) Such Grantor agrees to execute an Intellectual Property Security Agreement with respect to its After-Acquired Intellectual Property in order to record the security interest granted herein to the Administrative Agent for the ratable benefit of the Secured Parties with the United States Patent and Trademark Office and the United States Copyright Office.
(l) Such Grantor shall take commercially reasonable all steps reasonably necessary to protect the secrecy of all trade secrets or confidential information material to its businessTrade Secrets, including entering into confidentiality agreements with its employees and labeling and restricting access to secret information and documents; and
(j) it shall continue to collect, at its own expense, all amounts due or to become due to such Obligor in respect of the Intellectual Property Collateral or any portion thereof. In connection with such collections, each Obligor may take (and, while an Event of Default exists, at the Collateral Agent’s reasonable direction, shall take) such action as such Obligor or the Collateral Agent may deem reasonably necessary or advisable to enforce collection of such amounts. Notwithstanding the foregoing, while an Event of Default exists, the Collateral Agent shall have the right at any time, to notify, or require any Obligor to notify, any obligors with respect to any such amounts of the existence of the security interest created hereby.
Appears in 2 contracts
Samples: Guarantee, Pledge and Security Agreement (Capitala Finance Corp.), Guarantee, Pledge and Security Agreement (Capitala Finance Corp.)
