Special Provisions Concerning Intellectual Property Collateral. Without limiting the generality of the other provisions of this Agreement: (a) Each Grantor hereby represents and warrants to and covenants and agrees with the Secured Party that: (i) a true and complete list of all registered trademarks, registered patents and registered copyrights (and applications therefor) currently owned by such Grantor as of the date hereof, in whole or in part, and in conducting its business is set forth on Schedule 4(a)(i) attached hereto, and such exhibit correctly sets forth the information specified therein; (ii) each and every material trademark owned and in use by such Grantor is subsisting; each and every trademark, patent and copyright which are owned by such Grantor and material to the operations of the Grantor taken as a whole is, to such Grantor’s knowledge, valid and enforceable; and, to each Grantor’s knowledge, there is no infringement or unauthorized use of any of the material trademarks, patents or copyrights owned by such Grantor, in whole or in part; (iii) no written claim has been made and is pending that the use of any of the trademarks or copyrights or the practice of any of the patents which are material to the operations of the Grantor taken as a whole does infringe the rights of any other Person in any material respect, and the Grantor is not aware of any reasonable basis for any such claim to be asserted; and (iv) each Grantor is the sole and exclusive owner of the entire and unencumbered right, title and interest in and to each of the trademarks, patents and copyrights purported to be owned by it on Schedule 4(a)(i) attached hereto, which are material to the operations of the Grantor taken as a whole and are free and clear of any Lien, express or implied, other than Liens permitted in the Credit Agreement. (b) If a Grantor shall create or obtain rights to any material trademarks, patents or copyrights (or any other Intellectual Property Collateral) in addition to those set forth on Schedule 4(a)(i) attached hereto, the provisions of this Agreement shall automatically apply thereto and such Grantor shall take such action as Secured Party may reasonably request to more fully evidence the same. Each Grantor shall promptly notify the Secured Party in writing of any new United States federal patent application or grant, trademark application or registration or copyright application or registration in which such Grantor has an ownership interest with the delivery of each quarterly compliance certificate. (c) Each Grantor: (i) authorizes Secured Party, without any further action by such Grantor, to amend Schedule 4(a)(i) to reference any applications or registrations with respect to any trademark, patent or copyright (or any other Intellectual Property Collateral) acquired by such Grantor after the date hereof or to delete any reference to any right, title or interest in any trademark or patent or copyright in which such Grantor no longer has or claims any right, title or interest; (ii) will promptly (but in any event within ten (10) days after becoming aware thereof) notify Secured Party of the institution of, or any adverse determination in, any proceeding in the United States Patent and Trademark Office, United States Copyright Office or in any federal, state or foreign court or agency regarding the Grantor’s claim of ownership, or the enforceability or validity of any of the Intellectual Property Collateral, in each case that does or could reasonably be expected to materially adversely affect the value of any of the Intellectual Property Collateral necessary for the conduct of such Grantor’s business as then conducted, the ability of such Grantor or Secured Party to dispose of any of the same or the rights and remedies of Secured Party in relation thereto; (iii) will promptly notify Secured Party of any suspected infringement of any of the Intellectual Property Collateral by any third party or any claim by any third party that such Grantor is infringing upon the intellectual property rights of such third party that does or could reasonably be expected to materially adversely affect the Grantors, taken as a whole; and (iv) concurrently with the delivery of a quarterly Compliance Certificate of the Borrowers disclosing any patent application or application for registration of any trademark or copyright, will execute, deliver and record in all appropriate registers and offices, an appropriate form of a collateral security agreement evidencing Secured Party’s security interest therein. (d) Each Grantor shall take commercially reasonable efforts, as determined in its reasonable business judgment, to do the following: (i) maintain and prosecute federal applications on any existing or future registrable but unregistered material trademarks or material copyrights or unpatented but patentable material inventions, consistent with past practice, (ii) preserve, maintain and renew all of the material registrations for Intellectual Property Collateral owned by such Grantor, including, without limitation, by payment of all taxes, annuities, issue and maintenance fees and by the use of all proper statutory notices, designations and patent numbers to the extent necessary to maintain the same, and (iii) initiate and diligently prosecute in its own name, for its own benefit and at its own expense, such suits, proceedings or other actions for infringement, or other damage or opposition, cancellation, concurrent use or interference proceedings as are reasonably necessary to protect any of the trademarks, patents or copyrights or other Intellectual Property Collateral owned by such Grantor and which such Grantor reasonably determines is material to its business; provided, that no such suit, proceeding or other action shall be settled or voluntarily dismissed, nor shall any party be released or excused from any claims or liability for infringement, unless, in the reasonable judgment of such Grantor, to do so is in the best interests of such Grantor.
Appears in 2 contracts
Samples: Security Agreement (GTT Communications, Inc.), Security Agreement (Global Telecom & Technology, Inc.)
Special Provisions Concerning Intellectual Property Collateral. Without limiting the generality of the other provisions of this Agreement:
(a) Each Grantor hereby represents and warrants to and covenants and agrees with the Secured Party Administrative Agent that:
(i) a true and complete list of all registered trademarks, registered patents and registered copyrights (and applications therefor) currently owned by such Grantor as of the date hereof, in whole or in part, and used in conducting its business is set forth on Schedule 4(a)(i) attached hereto, and such exhibit correctly sets forth the information specified therein;
(ii) each and every material trademark owned and in use by such Grantor is subsisting; each and every trademark, patent and copyright which are owned by such Grantor and material to the operations of the Grantor taken as a whole is, to such Grantor’s knowledge, is valid and enforceable; and, to each Grantor’s knowledge, and there is no infringement or unauthorized use of any of the material trademarks, patents or copyrights owned by such Grantor, in whole or in part;
(iii) except to the extent disclosed in the perfection certificate delivered to the Administrative Agent pursuant to Section 4.01(a)(x) of the Credit Agreement, no written claim has been made and is pending that the use of any of the trademarks or copyrights or the practice of any of the patents which are material to the operations of the owned by any Grantor taken as a whole does infringe infringes the rights of any other Person in any material respect, and the such Grantor is not aware of any reasonable basis for any such claim to be asserted; and;
(iv) each such Grantor is the sole and exclusive owner of the entire and unencumbered right, title and interest in and to each of the trademarks, patents and copyrights purported to be owned by it on Schedule 4(a)(i) attached hereto, which are material to the operations of the Grantor taken as a whole and are free and clear of any Lien, express or implied, other than Liens permitted Permitted Liens; and
(v) such Grantor and its predecessors in interest has used the Credit Agreementproper statutory notice in connection with its use of the trademarks owned by such Grantor, and such Grantor has marked its products with all applicable patent numbers, in each case to the extent necessary to protect such Grantor’s trademarks or patents, as the case may be.
(b) If a Grantor shall create or obtain rights to any material trademarks, patents or copyrights (or any other Intellectual Property Collateral) in addition to those set forth on Schedule 4(a)(i) attached hereto, the provisions of this Agreement shall automatically apply thereto and such Grantor shall take such action as Secured Party the Administrative Agent may reasonably request to more fully evidence the same. Each Grantor shall promptly notify the Secured Party Administrative Agent in writing of any new United States federal patent application or grant, trademark application or registration or copyright application or registration in which such Grantor has an ownership interest with the delivery of each quarterly compliance certificateCompliance Certificate.
(c) Each Grantor: (i) authorizes Secured Partythe Administrative Agent, without any further action by such Grantor, to amend Schedule 4(a)(i) to reference any applications or registrations with respect to any trademark, patent or copyright (or any other Intellectual Property Collateral) acquired by such Grantor after the date hereof or to delete any reference to any right, title or interest in any trademark or patent or copyright in which such Grantor no longer has or claims any right, title or interest; (ii) will promptly (but in any event within ten (10) days after becoming aware thereof) notify Secured Party the Administrative Agent of the institution of, or any adverse determination in, any proceeding in the United States Patent and Trademark Office, United States Copyright Office or in any federal, state or foreign court or agency regarding the such Grantor’s claim of ownership, or the enforceability or validity of any of the Intellectual Property Collateral, in each case that does or could reasonably be expected to materially adversely affect the value of any of the Intellectual Property Collateral necessary for the conduct of such Grantor’s business as then conducted, the ability of such Grantor or Secured Party the Administrative Agent to dispose of any of the same or the rights and remedies of Secured Party the Administrative Agent in relation thereto; (iii) will promptly notify Secured Party the Administrative Agent of any suspected infringement of any of the Intellectual Property Collateral by any third party or any claim by any third party that such Grantor is infringing upon the intellectual property rights of such third party that does or could reasonably be expected to materially adversely affect the Grantors, taken as a wholeparty; and (iv) concurrently with the delivery of a quarterly Compliance Certificate of the Borrowers disclosing any patent application or application for registration of any trademark or copyright, will execute, execute and deliver and record to the Administrative Agent for recording in all appropriate registers and offices, an appropriate form of a collateral security agreement evidencing Secured Partythe Administrative Agent’s security interest therein.
(d) Each Grantor shall take commercially reasonable efforts, as determined in its reasonable business judgment, to do the following: (i) maintain and prosecute federal applications on any existing or future registrable but unregistered material trademarks or material copyrights or unpatented but patentable inventions, in each case which are material inventionsto the Borrower’s Business, consistent with past practice, (ii) preserve, maintain and renew all of the material registrations for Intellectual Property Collateral owned by such GrantorGrantor which are material to the Borrower’s Business, including, without limitation, by payment of all taxes, annuities, issue and maintenance fees and by the use of all proper statutory notices, designations and patent numbers to the extent necessary to maintain the same, and (iii) initiate and diligently prosecute in its own name, for its own benefit and at its own expense, such suits, proceedings or other actions for infringement, or other damage or opposition, cancellation, concurrent use or interference proceedings as are reasonably necessary to protect any of the trademarks, patents or copyrights or other Intellectual Property Collateral owned by such Grantor and which such Grantor reasonably determines is are material to its businessthe Borrower’s Business; provided, that no such suit, proceeding or other action shall be settled or voluntarily dismissed, nor shall any party be released or excused from any claims or liability for infringement, unless, in the reasonable judgment of such Grantor, unless to do so is in the best interests of such Grantor.
(e) Without limiting the generality of the other provisions of this Agreement, the Credit Agreement and the other Loan Documents, and in addition to all other rights and remedies of the Administrative Agent hereunder and thereunder and referred to herein and therein, each Grantor hereby grants to the Administrative Agent an absolute power of attorney (which grant is coupled with an interest and is irrevocable) to sign, upon the occurrence and during the continuance of any Event of Default, any document which may be necessary or required by the United States Patent and Trademark Office, the United States Copyright Office or by any other office or authority in order to evidence (and to effect and to record) the assignment of all, right, title and interest of each Grantor in and to the Intellectual Property Collateral (including, without limitation, each patent, trademark and copyright, now owned or hereafter acquired by such Grantor, and all of the goodwill of the business of such Grantor symbolized by the same and all interest of such Grantor in and to any cause of action related thereto) to the Administrative Agent. Each Grantor further agrees that, upon the occurrence and during the continuance of any Event of Default, the Administrative Agent may take any or all of the following actions: (i) declare the entire right, title and interest of such Grantor in and to the Intellectual Property Collateral vested in the Administrative Agent, in which event such right, title and interest shall immediately vest in the Administrative Agent; (ii) take and use and/or, subject to the terms of Section 6 and applicable Law, sell the Intellectual Property Collateral (or any portion thereof) and carry on the business and use the assets of such Grantor in connection with which the Intellectual Property Collateral (or any portion thereof) has been used; (iii) bring suit to enforce the Trademarks, Patents and/or Copyrights (each as defined below) or any of the other Intellectual Property Collateral and/or any licenses thereunder or other rights with respect thereto; (iv) direct such Grantor to refrain, in which event such Grantor shall refrain, from using the Intellectual Property Collateral (or any portion thereof) in any manner whatsoever, directly or indirectly; and (v) direct such Grantor to execute, in which event such Grantor shall execute, such other and further documents that the Administrative Agent may reasonably request to further confirm the provisions hereof and to further evidence the foregoing assignment. Upon request of the Administrative Agent, each Grantor also shall make available to the Administrative Agent, to the extent within such Grantor’s power and authority, such individuals then in such Grantor’s employ to assist in the production, advertisement and sale of the products and services sold under the Trademarks, Copyrights and Patents or any of the other Intellectual Property Collateral, such individuals to be available to perform their prior functions on the Administrative Agent’s behalf and to be compensated at the expense of the Grantors.
(f) For the purposes of this Agreement, “Intellectual Property Collateral” means:
Appears in 2 contracts
Samples: Security Agreement (Cambium Learning Group, Inc.), Security Agreement (Cambium Learning Group, Inc.)
Special Provisions Concerning Intellectual Property Collateral. Without limiting the generality of the other provisions of this Agreement:
(a) Each Grantor Debtor hereby represents and warrants to and covenants and agrees with the Secured Party that:
(i) a true and complete list of all registered trademarks, registered patents and registered copyrights currently owned, held (and applications thereforwhether pursuant to a license or otherwise) currently owned or used by such Grantor as of the date hereofDebtor, in whole or in part, and in conducting its business is set forth on Schedule Exhibit 4(a)(i) attached hereto, and such exhibit correctly sets forth the information specified therein;
(ii) each and every material trademark owned and in use by such Grantor is subsisting; to the extent owned by the Debtor, each and every trademark, patent and copyright which are owned by such Grantor and material to the operations of the Grantor taken as a whole is, to such Grantor’s knowledge, is valid and enforceable; and, to each Grantorthe best of Debtor’s knowledge, there is no infringement or unauthorized use of any of the material trademarks, patents or copyrights owned by such Grantorcopyrights, in whole or in part;
(iii) no written claim has been made and is pending in writing that the use of any of the trademarks or copyrights or the practice of any of the patents which are material to the operations of the Grantor taken as a whole does infringe or may violate the rights of any other Person in any material respectPerson, and the Grantor Debtor is not aware of any reasonable basis for any such claim to be asserted; and;
(iv) each Grantor the Debtor is the sole and exclusive owner of the entire and unencumbered right, title and interest in and to each of the trademarks, patents and copyrights purported to be owned by it on Schedule 4(a)(i) attached heretoit, which are material to the operations of the Grantor taken as a whole and are free and clear of any Lienlien, express or implied, other than Liens permitted Permitted Liens, and except as set forth on Exhibit 4(a)(i) attached hereto, no other Person has any license or other right with respect to any of the trademarks, patents, copyrights or any other Intellectual Property Collateral; and
(v) Debtor and, to Debtor’s knowledge, its predecessors in interest has used the Credit Agreementproper statutory notice in connection with its use of the trademarks in all material respects, and the Debtor has marked its products with all applicable patent numbers.
(b) If a Grantor Debtor shall create or obtain rights to any material trademarks, patents or copyrights (or any other Intellectual Property Collateral) in addition to those set forth on Schedule Exhibit 4(a)(i) attached hereto, the provisions of this Agreement shall automatically apply thereto and such Grantor Debtor shall take such action as the Secured Party may reasonably request to more fully evidence the same. Each Grantor Debtor shall promptly notify the Secured Party in writing of any new United States federal patent application or grant, grant or trademark application or registration or copyright application or registration in which such Grantor Debtor has an ownership interest with the delivery of each quarterly compliance certificateinterest.
(c) Each GrantorDebtor: (i) authorizes the Secured Party, without any further action by such GrantorDebtor, to amend Schedule Exhibit 4(a)(i) to reference any applications or registrations with respect to any trademark, patent or copyright (or any other Intellectual Property CollateralCollateral (as defined below)) acquired by such Grantor Debtor after the date hereof or to delete any reference to any right, title or interest in any trademark or patent or copyright (or any other Intellectual Property Collateral) in which such Grantor Debtor no longer has or claims any right, title or interest; (ii) will promptly (but in any event within ten (10) days after becoming aware thereof) notify the Secured Party and the Lenders, as provided in the Loan Agreement, of the institution of, or any adverse determination in, any proceeding in the United States U.S. Patent and Trademark Office, United States the U.S. Copyright Office or in any federal, state or foreign court or agency regarding the GrantorDebtor’s claim of ownership, or the enforceability or validity of any of the Intellectual Property Collateral, in each case that does or which could reasonably be expected to materially adversely affect the value of any of the Intellectual Property Collateral necessary for the conduct of such Grantor’s business as then conductedCollateral, the ability of such Grantor Debtor or the Secured Party to dispose of any of the same or the rights and remedies of the Secured Party in relation thereto; (iii) will promptly notify the Secured Party of any suspected infringement of any of the Intellectual Property Collateral by any third party or any claim by any third party that such Grantor Debtor is infringing upon the intellectual property rights of such third party that does or could reasonably be expected to materially adversely affect the Grantors, taken as a wholevalue of any of the Intellectual Property Collateral; and (iv) concurrently with the delivery filing of a quarterly Compliance Certificate of the Borrowers disclosing any patent application or application for registration of any trademark or copyright, will execute, deliver and record in all appropriate registers and offices, an appropriate form of a collateral security agreement evidencing the Secured Party’s security interest therein; and (v) will keep accurate and complete records respecting the Intellectual Property Collateral.
(d) Each Grantor shall take commercially reasonable efforts, as determined in its reasonable business judgment, to do the followingDebtor shall: (i) maintain to the extent commercially reasonable, make and diligently prosecute federal applications application on any existing or future registrable but unregistered material trademarks or material copyrights or unpatented but patentable material inventions, consistent with past practice, (ii) to the extent still utilized in the operation of the business, preserve, maintain and renew all of the material registrations for Intellectual Property Collateral owned by such Grantorand rights and interests related thereto, including, without limitation, by payment of all taxes, annuities, issue and maintenance fees and by the use of all proper statutory notices, designations and patent numbers to the extent necessary to maintain the samenumbers, and (iii) initiate and diligently prosecute in its own name, for its own benefit and at its own expense, such suits, proceedings or other actions for infringement, or other damage or opposition, cancellation, concurrent use or interference proceedings as are reasonably necessary to protect any of the trademarks, patents or copyrights or other Intellectual Property Collateral owned by such Grantor and which such Grantor Debtor reasonably determines is material to its business; provided, that no such suit, proceeding or other action shall be settled or voluntarily dismissed, nor shall any party be released or excused from any claims or liability for infringement, unless, in the reasonable judgment of such GrantorDebtor, to do so is in the best interests of the Debtor and is not disadvantageous in any material respect to the Secured Party.
(e) Without limiting the generality of the other provisions of this Agreement, the Loan Agreement and the other Loan Documents, and in addition to all other rights and remedies of the Secured Party hereunder and thereunder and referred to herein and therein, Debtor hereby collectively assigns to the Secured Party all of its right, title and interest in and to all and any of the Intellectual Property Collateral including, without limitation, each patent, trademark and copyright, now owned or hereafter acquired by Debtor, and all of the goodwill of the business of Debtor symbolized by the same and all interest of Debtor in and to any cause of action related thereto, and Debtor hereby grants to the Secured Party an absolute power of attorney (which grant is coupled with an interest and is irrevocable) to sign, upon the occurrence and during the continuance of any Event of Default, any document which may be necessary or required by the U.S. Patent and Trademark Office, the U.S. Copyright Office or by any other office or authority in order to further evidence (and to effect and to record) the foregoing assignment. Debtor further agrees that, upon the occurrence and during the continuance of any Event of Default, the Secured Party may take any or all of the following actions: (i) declare the entire right, title and interest of Debtor in and to the Intellectual Property Collateral vested in the Secured Party, in which event such Grantorright, title and interest shall immediately vest in the Secured Party; (ii) take and use and/or, subject to the terms of Section 7 and applicable law, sell the Intellectual Property Collateral (or any portion thereof) and carry on the business and use the assets of Debtor in connection with which the Intellectual Property Collateral (or any portion thereof) has been used; (iii) bring suit to enforce the Trademarks, Patents and/or Copyrights or any of the other Intellectual Property Collateral and/or any licenses thereunder or other rights with respect thereto; (iv) direct Debtor to refrain, in which event Debtor shall refrain, from using the Intellectual Property Collateral (or any portion thereof) in any manner whatsoever, directly or indirectly; and (v) direct Debtor to execute, in which event Debtor shall execute, other and further documents that the Secured Party may reasonably request to further confirm the provisions hereof and to further evidence the foregoing assignment. Upon request of the Secured Party, Debtor also shall make available to the Secured Party, to the extent within Debtor’s power and authority, such individuals then in Debtor’s employ to assist in the production, advertisement and sale of the products and services sold under the Trademarks, Copyrights and Patents or any of the other Intellectual Property Collateral, such individuals to be available to perform their prior functions on the Secured Party’s behalf and to be compensated at the expense of the Debtor.
(f) For the purposes of this Agreement, “Intellectual Property Collateral” means:
Appears in 1 contract
Samples: Security and Pledge Agreement (Cyalume Technologies Holdings, Inc.)
Special Provisions Concerning Intellectual Property Collateral. Without limiting the generality of the other provisions of this Agreement:
(a) Each Grantor Debtor hereby represents and warrants to and covenants and agrees with the Secured Party that:
(i) a true and complete list of all registered trademarks, registered patents and registered copyrights currently owned, held (and applications thereforwhether pursuant to a license or otherwise) currently owned or used by such Grantor as of the date hereofDebtor, in whole or in part, and in conducting its business is set forth on Schedule Exhibit 4(a)(i) attached hereto, and such exhibit correctly sets forth the information specified therein;
(ii) each and every material trademark owned and in use by such Grantor is subsisting; to the extent owned by the Debtor, each and every trademark, patent and copyright which are owned by such Grantor and material to the operations of the Grantor taken as a whole is, to such Grantor’s knowledge, is valid and enforceable; and, to each Grantor’s the best of Debtor's knowledge, there is no infringement or unauthorized use of any of the material trademarks, patents or copyrights owned by such Grantorcopyrights, in whole or in part;
(iii) no written claim has been made and is pending in writing that the use of any of the trademarks or copyrights or the practice of any of the patents which are material to the operations of the Grantor taken as a whole does infringe or may violate the rights of any other Person in any material respectPerson, and the Grantor Debtor is not aware of any reasonable basis for any such claim to be asserted; and;
(iv) each Grantor the Debtor is the sole and exclusive owner of the entire and unencumbered right, title and interest in and to each of the trademarks, patents and copyrights purported to be owned by it on Schedule 4(a)(i) attached heretoit, which are material to the operations of the Grantor taken as a whole and are free and clear of any Lienlien, express or implied, other than Liens permitted Permitted Liens, and except as set forth on Exhibit 4(a)(i) attached hereto, no other Person has any license or other right with respect to any of the trademarks, patents, copyrights or any other Intellectual Property Collateral; and
(v) Debtor and, to Debtor's knowledge, its predecessors in interest has used the Credit Agreementproper statutory notice in connection with its use of the trademarks in all material respects, and the Debtor has marked its products with all applicable patent numbers.
(b) If a Grantor Debtor shall create or obtain rights to any material trademarks, patents or copyrights (or any other Intellectual Property Collateral) in addition to those set forth on Schedule Exhibit 4(a)(i) attached hereto, the provisions of this Agreement shall automatically apply thereto and such Grantor Debtor shall take such action as the Secured Party may reasonably request to more fully evidence the same. Each Grantor Debtor shall promptly notify the Secured Party in writing of any new United States federal patent application or grant, grant or trademark application or registration or copyright application or registration in which such Grantor Debtor has an ownership interest with the delivery of each quarterly compliance certificateinterest.
(c) Each GrantorDebtor: (i) authorizes the Secured Party, without any further action by such GrantorDebtor, to amend Schedule Exhibit 4(a)(i) to reference any applications or registrations with respect to any trademark, patent or copyright (or any other Intellectual Property Collateral) acquired by such Grantor Debtor after the date hereof or to delete any reference to any right, title or interest in any trademark or patent or copyright (or any other Intellectual Property Collateral) in which such Grantor Debtor no longer has or claims any right, title or interest; (ii) will promptly (but in any event within ten (10) days after becoming aware thereof) notify the Secured Party and the Lenders, as provided in the Loan Agreement, of the institution of, or any adverse determination in, any proceeding in the United States U.S. Patent and Trademark Office, United States the U.S. Copyright Office or in any federal, state or foreign court or agency regarding the Grantor’s Debtor's claim of ownership, or the enforceability or validity of any of the Intellectual Property Collateral, in each case that does or which could reasonably be expected to materially adversely affect the value of any of the Intellectual Property Collateral necessary for the conduct of such Grantor’s business as then conductedCollateral, the ability of such Grantor Debtor or the Secured Party to dispose of any of the same or the rights and remedies of the Secured Party in relation thereto; (iii) will promptly notify the Secured Party of any suspected infringement of any of the Intellectual Property Collateral by any third party or any claim by any third party that such Grantor Debtor is infringing upon the intellectual property rights of such third party that does or could reasonably be expected to materially adversely affect the Grantors, taken as a wholevalue of any of the Intellectual Property Collateral; and (iv) concurrently with the delivery filing of a quarterly Compliance Certificate of the Borrowers disclosing any patent application or application for registration of any trademark or copyright, will execute, deliver and record in all appropriate registers and offices, an appropriate form of a collateral security agreement evidencing the Secured Party’s 's security interest therein; and (v) will keep accurate and complete records respecting the Intellectual Property Collateral.
(d) Each Grantor shall take commercially reasonable efforts, as determined in its reasonable business judgment, to do the followingDebtor shall: (i) maintain to the extent commercially reasonable, make and diligently prosecute federal applications application on any existing or future registrable but unregistered material trademarks or material copyrights or unpatented but patentable material inventions, consistent with past practice, (ii) to the extent still utilized in the operation of the business, preserve, maintain and renew all of the material registrations for Intellectual Property Collateral owned by such Grantorand rights and interests related thereto, including, without limitation, by payment of all taxes, annuities, issue and maintenance fees and by the use of all proper statutory notices, designations and patent numbers to the extent necessary to maintain the samenumbers, and (iii) initiate and diligently prosecute in its own name, for its own benefit and at its own expense, such suits, proceedings or other actions for infringement, or other damage or opposition, cancellation, concurrent use or interference proceedings as are reasonably necessary to protect any of the trademarks, patents or copyrights or other Intellectual Property Collateral owned by such Grantor and which such Grantor Debtor reasonably determines is material to its business; provided, that no such suit, proceeding or other action shall be settled or voluntarily dismissed, nor shall any party be released or excused from any claims or liability for infringement, unless, in the reasonable judgment of such GrantorDebtor, to do so is in the best interests of the Debtor and is not disadvantageous in any material respect to the Secured Party.
(e) Without limiting the generality of the other provisions of this Agreement, the Loan Agreement and the other Loan Documents, and in addition to all other rights and remedies of the Secured Party hereunder and thereunder and referred to herein and therein, Debtor hereby collectively assigns to the Secured Party all of its right, title and interest in and to all and any of the Intellectual Property Collateral including, without limitation, each patent, trademark and copyright, now owned or hereafter acquired by Debtor, and all of the goodwill of the business of Debtor symbolized by the same and all interest of Debtor in and to any cause of action related thereto, and Debtor hereby grants to the Secured Party an absolute power of attorney (which grant is coupled with an interest and is irrevocable) to sign, upon the occurrence and during the continuance of any Event of Default, any document which may be necessary or required by the U.S. Patent and Trademark Office, the U.S. Copyright Office or by any other office or authority in order to further evidence (and to effect and to record) the foregoing assignment. Debtor further agrees that, upon the occurrence and during the continuance of any Event of Default, the Secured Party may take any or all of the following actions: (i) declare the entire right, title and interest of Debtor in and to the Intellectual Property Collateral vested in the Secured Party, in which event such Grantorright, title and interest shall immediately vest in the Secured Party; (ii) take and use and/or, subject to the terms of Section 7 and applicable law, sell the Intellectual Property Collateral (or any portion thereof) and carry on the business and use the assets of Debtor in connection with which the Intellectual Property Collateral (or any portion thereof) has been used; (iii) bring suit to enforce the Trademarks, Patents and/or Copyrights or any of the other Intellectual Property Collateral and/or any licenses thereunder or other rights with respect thereto; (iv) direct Debtor to refrain, in which event Debtor shall refrain, from using the Intellectual Property Collateral (or any portion thereof) in any manner whatsoever, directly or indirectly; and (v) direct Debtor to execute, in which event Debtor shall execute, other and further documents that the Secured Party may reasonably request to further confirm the provisions hereof and to further evidence the foregoing assignment. Upon request of the Secured Party, Debtor also shall make available to the Secured Party, to the extent within Debtor's power and authority, such individuals then in Debtor's employ to assist in the production, advertisement and sale of the products and services sold under the Trademarks, Copyrights and Patents or any of the other Intellectual Property Collateral, such individuals to be available to perform their prior functions on the Secured Party's behalf and to be compensated at the expense of the Debtor.
(f) For the purposes of this Agreement, "Intellectual Property Collateral" means:
(i) all trademarks, trademark applications and registrations and trade names, together with the goodwill appurtenant thereto, owned, held (whether pursuant to a license or otherwise), used or to be used, in whole or in part, in conducting the Debtor's business, (the "Trademarks");
(ii) all patents and patent applications of the Debtor, including, without limitation, the inventions and improvements described and claimed therein (the "Patents");
(iii) all copyrights and applications for registration of copyrights of the Debtor and all rights in literary property (the "Copyrights");
(iv) all reissues, divisions, continuations, renewals, extensions and continuations-in-part of any Trademarks, Patents and/or Copyrights; all income, royalties, damages and payments now or hereafter due and/or payable with respect to any Trademarks, Patents and/or Copyrights, including, without limitation, damages and payments for past or future infringements thereof; all rights (but no obligation) to xxx for past, present and future infringements of any Trademarks, Patents and/or Copyrights or bring interference proceedings with respect thereto; and all rights corresponding to any Trademarks, Patents and/or Copyrights throughout the world;
(v) all rights and interests of the Debtor pertaining to common law and statutory trademark, service marks, trade names, slogans, labels, trade secrets, patents, copyrights, corporate names, company names, business names, fictitious business names, trademark or service xxxx registrations, designs, logos, trade styles, applications for trademark registration and any other indicia of origin; and
(vi) all operating methods, formulae, processes, know-how and the like of the Debtor.
Appears in 1 contract
Samples: Subordinated Security and Pledge Agreement (Cyalume Technologies Holdings, Inc.)
