Licensed Marks. 4.1 CFA Institute hereby grants Society a revocable, nontransferable license to use the Licensed Marks within the NSA during the term of this LDSA for the following activities: a) Society management meetings; b) Member Society member meetings; c) learning events; d) professional development activities; and e) networking functions Society’s business name, domain name, and logo shall not otherwise incorporate CFA Institute’s trademarks. 4.2 If Society is considering the introduction of any products or services for promotion, sale, or distribution either alone or in collaboration with a third party (New Product), which it wishes to be branded with the Licensed Marks, it should give reasonable notice thereof to CFA Institute. CFA Institute and Society will collaborate in good faith to ensure the success and, in particular, the quality and global/regional relevance (as appropriate) of the content of any proposed New Product. CFA Institute reserves the right to withhold the use of the Licensed Marks in relation to any New Product. 4.3 CFA Institute shall remain the sole owner of the Licensed Marks and is solely responsible for the protection of the Licensed Marks. All use by Society of the Licensed Marks, and any goodwill developed therein, shall incur to the benefit of CFA Institute. CFA Institute, from time to time, may request samples of use of the Licensed Marks. Society acknowledges and agrees that CFA Institute may in its sole discretion take action against any third party which it considers to be misusing the Licensed Marks. 4.4 Society shall: a) not register or attempt to register the Licensed Marks with any trademark office or domain name registry; b) use the appropriate trademark symbols and assist CFA Institute with protection of the Licensed Marks; c) not revise or alter the Licensed Marks in any way; d) display the Licensed Marks as set out in Schedule 1 and/or as specified by CFA Institute; e) comply with CFA Institute branding guidelines as amended from time to time; f) not merge the Licensed Marks with any other trademark, service mark, design, or other wording without the prior written approval of CFA Institute; g) not enter into any kind of formal or informal co-branding arrangement or agreement without the prior written consent of CFA Institute; h) not use the Licensed Marks in a manner that might harm, disparage, or otherwise reflect negatively upon CFA Institute or the CFA brand. 4.5 Nothing in this Agreement shall be deemed to limit Society’s ability to use, as Society sees fit, any trademark or logo owned by Society (Society Marks), provided that Society complies with this LDSA in connection with the use of any Licensed Marks used together with those Society Marks. 4.6 Society is permitted to sub-license the Licensed Marks to a third party (the “Sub-Licensee”) provided that: a) Sub-Licensee has been contracted by Society in relation to the creation and/or development of marketing materials and collateral relating to any one or more of the activities set out in Clause 4.1 above; b) Society exercises all reasonable skill and care in selecting Sub-Licensee; c) Sub-Licensee enters into a Sub-License Agreement substantially similar to that set out in Schedule 2 hereto; d) Society continues to be bound by all of the obligations set out in this LDSA and this Clause 4 in particular and ensures that Sub-Licensee is aware of the same; and e) Society must notify CFA Institute as soon as reasonably practicable of all Sub-License Agreements entered into.
Appears in 2 contracts
Samples: Trademark Licensing and Data Sharing Agreement, Trademark Licensing and Data Sharing Agreement
Licensed Marks. 4.1 CFA Institute hereby grants Society a revocable(a) Franchise Owner expressly acknowledges SFS's rights in and to the Licensed Marks and agrees not to represent in any manner that Franchise Owner has acquired any ownership rights in the Licensed Marks. Franchise Owner agrees not to use any of the Licensed Marks or any marks, nontransferable license names or indicia which are or may be confusingly similar in its own corporate or business name except as authorized in this Agreement. Franchise Owner further acknowledges and agrees that any and all goodwill associated with the SUBURBAN LODGE System and identified by the Licensed Marks shall inure directly and exclusively to the benefit of SFS and that, upon the expiration or termination of this Agreement for any reason, no monetary amount shall be assigned as attributable to any goodwill associated with Franchise Owner's use of the Licensed Marks.
(b) Franchise Owner understands and agrees that any use of the Licensed Marks other than as expressly authorized by this Agreement, without SFS's prior written consent, may constitute an infringement of SFS's rights therein and that the right to use the Licensed Marks within granted herein does not extend beyond the NSA termination or expiration of this Agreement. Franchise Owner expressly covenants that, during the term of this LDSA for Agreement and thereafter, Franchise Owner shall not, directly or indirectly, commit any act of infringement or contest or aid others in contesting the following activities:validity of SFS's right to use the Licensed Marks or take any other action in derogation thereof.
a) Society management meetings;
b) Member Society member meetings;
(c) learning events;
d) professional development activities; and
e) networking functions Society’s business name, domain name, and logo Franchise Owner shall not otherwise incorporate CFA Institute’s trademarks.
4.2 If Society is considering the introduction promptly notify SFS of any products claim, demand or services for promotioncause of action that it believes may exist or that it becomes aware of, sale, that SFS may have based upon or distribution either alone arising from any unauthorized attempt by any person or in collaboration with a third party (New Product), which it wishes legal entity to be branded with use the Licensed Marks, it should give reasonable notice thereof to CFA Instituteany colorable variation thereof, or any other mark, xxme or indicia in which SFS has or claims a proprietary interest. CFA Institute Franchise Owner shall assist SFS, upon request and Society will collaborate in good faith to ensure the success andat SFS's expense, in particulartaking such action, if any, as SFS may deem appropriate to halt such activities, but shall take no action nor incur any expenses on SFS's behalf without SFS's prior written approval. If SFS undertakes the quality and global/regional relevance (as appropriate) of the content defense or prosecution of any proposed New Product. CFA Institute reserves litigation relating to the right Licensed Marks, Franchise Owner agrees to withhold execute any and all documents and to do such acts and things as may, in the opinion of SFS's legal counsel, be reasonably necessary to carry out such defense or prosecution.
(d) Franchise Owner further agrees and covenants to operate and advertise only under the names or marks from time to time designated by SFS for use by similar SUBURBAN LODGE System franchise owners; to adopt and use the Licensed Marks solely in the manner prescribed by SFS; to refrain from using the Licensed Marks to perform any activity or to incur any obligation or indebtedness in such a manner as may, in any way, subject SFS to liability therefore; to observe all laws with respect to the registration of trade names and assumed or fictitious names, to include in any application therefore a statement that Franchise Owner's use of the Licensed Marks in relation to any New Product.
4.3 CFA Institute shall remain is limited by the sole owner terms of the Licensed Marks and is solely responsible for the protection of the Licensed Marks. All use by Society of the Licensed Marksthis Agreement, and to provide SFS with a copy of any goodwill developed therein, shall incur such application and other registration document(s); to the benefit of CFA Institute. CFA Instituteobserve such requirements with respect to trademark and service mark xxxistrations and copyright notices as SFS may, from time to time, may request samples of use of the Licensed Marks. Society acknowledges and agrees that CFA Institute may in its sole discretion take action against any third party which it considers require, including, without limitation, affixing "SM", "TM", or (R) adjacent to be misusing the Licensed Marks.
4.4 Society shall:
a) not register or attempt to register the Licensed Marks with any trademark office or domain name registry;
b) use the appropriate trademark symbols and assist CFA Institute with protection of the Licensed Marks;
c) not revise or alter the all such Licensed Marks in any way;and all uses thereof; and, to utilize such other appropriate notice of ownership, registration and copyright as SFS may require.
d(e) display SFS reserves the right, in its sole discretion, to designate one or more new, modified or replacement Licensed Marks as set out in Schedule 1 and/or as specified for use by CFA Institute;
e) comply with CFA Institute branding guidelines as amended from time franchise owners and to time;
f) not merge require the Licensed Marks with use by Franchise Owner of any other trademarksuch new, service mark, design, modified or other wording without the prior written approval of CFA Institute;
g) not enter into any kind of formal or informal co-branding arrangement or agreement without the prior written consent of CFA Institute;
h) not use the replacement Licensed Marks in a manner that might harm, disparage, addition to or otherwise reflect negatively upon CFA Institute in lieu of any previously designated Licensed Marks. Any expenses or the CFA brand.
4.5 Nothing in this Agreement shall be deemed to limit Society’s ability to use, as Society sees fit, any trademark or logo owned by Society (Society Marks), provided that Society complies with this LDSA in connection costs associated with the use by Franchise Owner of any such new, modified or replacement Licensed Marks used together with those Society Marksshall be the sole responsibility of Franchise Owner.
4.6 Society is permitted to sub-license the Licensed Marks to a third party (the “Sub-Licensee”) provided that:
a) Sub-Licensee has been contracted by Society in relation to the creation and/or development of marketing materials and collateral relating to any one or more of the activities set out in Clause 4.1 above;
b) Society exercises all reasonable skill and care in selecting Sub-Licensee;
c) Sub-Licensee enters into a Sub-License Agreement substantially similar to that set out in Schedule 2 hereto;
d) Society continues to be bound by all of the obligations set out in this LDSA and this Clause 4 in particular and ensures that Sub-Licensee is aware of the same; and
e) Society must notify CFA Institute as soon as reasonably practicable of all Sub-License Agreements entered into.
Appears in 1 contract
Samples: Franchise Agreement (Suburban Lodges of America Inc)
Licensed Marks. 4.1 CFA Institute (a) Franchisee hereby grants Society a revocableacknowledges and agrees that only Franchisor has the exclusive right to use the "Little Switzerland" trade name, nontransferable service marks and copyrights as may presently exist or be acquired by Franchisor and licensed for use by the Franchisor, along with all ancillary signs, symbols or other indicia used in connection or conjunction with said marks (such trade name, service marks, trademarks, and all ancillary symbols and copyrights to be collectively referred to as the "Licensed Marks") in the Territory. The Licensed Marks shall include, without limitation, the distinctive style and appearance of the red-and-white striped shopping bags used in Little Switzerland Stores. Franchisee further agrees that the system, including without limitation Franchisor's retail merchandising methods, its relationship with product manufacturers and its knowledge of product services, prices, terms and other arrangements, constitutes trade secrets solely owned by Franchisor and that only Franchisor and Franchisee have the right to use such trade secrets. Franchisee acknowledges that valuable goodwill is attached to the Licensed Marks and trade secrets and agrees to use them solely for the purpose of operating the L.S. Bahamas Store to the extent specifically licensed by this Agreement, and will not take any action that would impair the goodwill associated with such Licensed Marks or trade secrets.
(b) Franchisee agrees to adopt and use the Licensed Marks solely in the manner prescribed by Franchisor/1/.
(c) Franchisee understands and agrees that any use of the Licensed Marks other than as expressly authorized by this Agreement, without Franchisor's prior written consent, may constitute an infringement of Franchisor's rights therein, and that the right to use the Licensed Marks granted herein does not extend beyond the Licensed Stores or beyond the termination or expiration of this Agreement. Franchisee expressly covenants that, during the term of this Agreement and thereafter, Franchisee shall not, directly or _____________________ /1/ Franchisor further agrees that the license to use the Licensed Marks within is exclusive in the NSA during Territory, but is granted without prejudice to the term Franchisors right to conduct business under the Licensed Marks and to grant other licenses in, to and under the Licensed Marks on any terms and conditions Franchisor deems fit outside the Territory. indirectly, commit any act of this LDSA for infringement or contest or aid others in contesting the following activities:validity of Franchisor's right to use the Licensed Marks or take any other action in derogation thereof.
a) Society management meetings;
b) Member Society member meetings;
c) learning events;
(d) professional development activities; and
e) networking functions Society’s business name, domain name, and logo Franchisee shall not otherwise incorporate CFA Institute’s trademarks.
4.2 If Society is considering the introduction promptly notify Franchisor of any products unauthorized attempt by any person or services for promotion, sale, or distribution either alone or in collaboration with a third party (New Product), which it wishes legal entity to be branded with use the Licensed Marks, it should give reasonable notice any colorable variation thereof to CFA Instituteor any names or xxxx confusingly similar thereto, or any other xxxx, name or indicia in which Franchisor has or claims a proprietary interest. CFA Institute Franchisee shall assist Franchisor, upon request and Society will collaborate in good faith to ensure the success andat Franchisor's expense, in particulartaking such action, if any, as Franchisor may deem appropriate to halt such activities, but shall take no action nor incur any expenses on Franchisor's behalf without Franchisor's prior written approval. If Franchisor undertakes the quality defense of prosecution of any litigation relating to the Licensed Marks, Franchisee agrees to execute any and global/regional relevance all documents and to do such acts and things as may, in the opinion of Franchisor's legal counsel, be reasonably necessary to carry out such defense or prosecution.
(as appropriatee) Franchisee further agrees and covenants to operate the Licensed stores and advertise such stores only under the names or marks from time to time designated by Franchisor and to adopt and use the Licensed Marks solely in connection with the operation of the content Licensed Stores in accordance with the System and solely in the manner prescribed by Franchisor; to refrain from using the Licensed Marks to perform any activity or to incur any obligation or indebtedness in such a manner as may, in any way, subject Franchisor to liability therefore; to observe all laws with respect to the registration of trade names and assumed or fictitious names, to include in any proposed New Product. CFA Institute reserves the right to withhold the application therefore a statement that Franchisee's use of the Licensed Marks in relation to any New Product.
4.3 CFA Institute shall remain is limited by the sole owner terms of the Licensed Marks and is solely responsible for the protection of the Licensed Marks. All use by Society of the Licensed Marksthis Agreement, and to provide Franchisor with a copy of any goodwill developed thereinsuch application and other registration document(s), shall incur to the benefit of CFA Institute. CFA Instituteobserve such requirements with respect to trademark, service xxxx and copyright notices as Franchisor may, from time to time, may request samples of use require, including, without limitation, affixing R adjacent to all such Licensed Marks which are registered under the law of the Territory and affixing TM adjacent to all such Licensed Marks which are so registered, in any and all uses thereof, and, to utilize such other appropriate notice of ownership, registration and copyright as Franchisor may require.
(f) Franchisor reserves the right, in its sole discretion, to designate one or more new, modified or replacement Licensed Marks for use by Franchisee and to require use by Franchisee of any such new, modified or replacement Licensed Marks in addition to or in lieu of any previously designated Licensed Marks. Society acknowledges and agrees that CFA Institute may in its sole discretion take action against Any expenses or costs associated with the use by Franchisee of any third party which it considers to be misusing the Licensed Marks.
4.4 Society shall:
a) not register such new, modified or attempt to register the replacement Licensed Marks with any trademark office or domain name registry;
b) use and the appropriate trademark symbols and assist CFA Institute with protection cessation of the Licensed Marks;
c) not revise or alter the Licensed Marks in any way;
d) display the Licensed Marks as set out in Schedule 1 and/or as specified by CFA Institute;
e) comply with CFA Institute branding guidelines as amended from time to time;
f) not merge the Licensed Marks with any other trademark, service mark, design, or other wording without the prior written approval of CFA Institute;
g) not enter into any kind of formal or informal co-branding arrangement or agreement without the prior written consent of CFA Institute;
h) not use the Licensed Marks in a manner that might harm, disparage, or otherwise reflect negatively upon CFA Institute or the CFA brand.
4.5 Nothing in this Agreement shall be deemed to limit Society’s ability to use, as Society sees fit, any trademark or logo owned by Society (Society Marks), provided that Society complies with this LDSA in connection with the it's use of any Licensed Marks used together with those Society Markswhich are replaced shall be the sole responsibility of Franchisee.
4.6 Society is permitted to sub-license (g) Franchisee hereby acknowledges that the Licensed Marks to a third party (are valid and enforceable and are the “Sub-Licensee”) provided that:
a) Sub-Licensee has been contracted property of Franchisor. Franchisee shall not in any manner challenge the validity of the Licensed Marks or question Franchisor's ownership thereof, either during or after the term of this Agreement. Franchisee acknowledges that all use by Society in relation Franchisee of the Licensed Marks shall inure to the creation and/or development benefit of marketing materials Franchisor, and collateral relating Franchisee shall not acquire any rights therein by virtue of any such use. If and to the extent that Franchisee may acquire any one or more of rights in the activities set out in Clause 4.1 above;
b) Society exercises Licensed Marks, Franchisee shall and does hereby assign to Franchisor any and all reasonable skill such rights acquired by it, and care in selecting Sub-Licensee;
c) Sub-Licensee enters into a Sub-License Agreement substantially similar to that set out in Schedule 2 hereto;
d) Society continues to be bound by all of the obligations set out in this LDSA and this Clause 4 in particular and ensures that Sub-Licensee is aware of the same; and
e) Society must notify CFA Institute as soon as reasonably practicable of all Sub-License Agreements entered intogoodwill pertaining thereto.
Appears in 1 contract
