Common use of THE LICENSED MXXX Clause in Contracts

THE LICENSED MXXX. X. Licensee shall not join any name or names with the Licensed Mxxx so as to form a new mxxx, unless and until Licensor consents thereto in writing. Licensee acknowledges the validity of the Licensed Mxxx, the secondary meaning associated with the Licensed Mxxx, and the rights of Licensor with respect to the Licensed Mxxx in the Territory in any form or embodiment thereof and the goodwill attached or which shall become attached to the Licensed Mxxx in connection with the business and goods in relation to which the same has been, is or shall be used. Sales by Licensee shall be deemed to have been made by Licensor for purposes of trademark registration and all uses of the Licensed Mxxx by Licensee shall inure to the benefit of Licensor. Licensee shall not, at any time, do or suffer to be done, any act or thing which may in any way adversely affect any rights of Licensor in and to the Licensed Mxxx or any registrations thereof or which, directly or indirectly, may reduce the value of the Licensed Mxxx or detract from its reputation. Licensee will use its best efforts to distribute Articles in the proper channels comparable to those of similarly situated brands as discussed in Article 7 A (i) herein. B. At Licensor's request, Licensee shall execute any documents, including Registered User Agreements, reasonably required by Licensor to confirm the respective rights of Licensor and Ms. Pxxxx Xxxxxx in and to the Licensed Mxxx in each jurisdiction in the Territory and the respective rights of Licensor and Licensee pursuant to this Agreement. Licensee shall cooperate with Licensor, in connection with the filing and the prosecution by Licensor of applications to register or renew the Licensed Mxxx for Articles sold hereunder in each jurisdiction in the Territory where Licensee has reasonably requested the same. Such filings and prosecution shall be in the name of Licensor or Ms. Pxxxx Xxxxxx, as they may decide, the expense of which shall be paid for by Licensee. Nothing contained herein shall obligate Licensor to prosecute any trademark application outside the U.S. which is opposed or rejected in any country after the application is filed, provided, however, that any such prosecution shall go forward if (a) Licensee requests same; (b) Licensee pays for same directly; and (c) such prosecution is in Licensor's (or Ms. Pxxxx Xxxxxx'x) name and directed by Licensor. Licensor shall cooperate fully with any such prosecution. Licensee agrees to retain and employ on Licensor's behalf the firm of Txxxxx & Lxxxxx, LLP of New York City to file and prosecute the various trademark applications around the World for the Trademark, as long as such fees charged by Txxxxx & Lxxxxx, LLP are competitively priced with other intellectual property law firms. Txxxxx & Lxxxxx, LLP shall work with Licensee's paralegal to keep such paralegal apprised of its progress in connection with the application and registration work referenced herein. Txxxxx & Lxxxxx, LLP shall enter into a retainer agreement with Licensee that is mutually acceptable to Licensee and Txxxxx & Lxxxxx, LLP providing, inter alia, that a retainer amount of $5,500 shall be paid to Txxxxx & Lxxxxx, LLP for the first 12 months and $3,500 for the second 12 months for work to be done by Txxxxx & Lxxxxx, LLP in connection with foreign application work. C. Licensee shall use the Licensed Mxxx in each jurisdiction in the Territory strictly in compliance with the legal requirements obtained therein and shall use such markings in connection therewith as may be required by applicable legal provisions. Licensee shall cause to appear on all Articles and on all materials on or in connection with which the Licensed Mxxx is used, such legends, markings and notices as may be reasonably necessary in order to give appropriate notice of any trademark, trade name or other rights therein or pertaining thereto. D. Licensee shall never challenge the validity of the Licensed Mxxx or any application for registration thereof, or any trademark registration hereof, or any rights of Licensor therein. The foregoing shall not be deemed to prevent Licensee from asserting, as a defense to a claim of breach of contract brought against Licensee by Licensor for failure to perform its obligations hereunder, that its ceasing performance under this Agreement was based upon Licensor's failure to own the Licensed Mxxx in the United States of America, provided that it is established in a court of law that Licensor does not own the Licensed Mxxx, that the Licensed Mxxx is owned by a third party so as to preclude the grant of the license provided herein. E. In the event that Licensee learns of any infringement or imitation of the Licensed Mxxx or of any use by any person of a trademark similar to the Licensed Mxxx, it promptly shall notify Licensor thereof. In no event, however, shall Licensor be required to take any action if it deems it inadvisable to do so. F. Licensor shall not be required to protect, indemnify or hold Licensee harmless against, or be liable to Licensee for, any liabilities, losses, expenses or damages which may be suffered or incurred by Licensee as a result of any infringement or allegation thereof by any other person, firm or corporation, other than by reason of Licensor's breach of the representations made and obligations assumed herein. Licensor and Ms. Pxxxx Xxxxxx make no warranties or representations as to the registrability of the Licensed Mxxx in the various trademark offices around the World, except that Licensor warrants and represents that Ms. Pxxxx Xxxxxx has pending trademark applications as shown on the annexed Exhibit A.

THE LICENSED MXXX. X. a. Licensee shall not use the Licensed Mxxx, in whole or in part, as a corporate name or trade name. Licensee shall not join any name or names with the Licensed Mxxx so as to form a new mxxx, except that during the term of this Agreement Licensee may conduct business contemplated by this Agreement under the name "Sxxxx Xxxxxx Sportswear". Except as provided herein, Licensee shall not use any name or names in connection with the Licensed Mxxx in any advertising, publicity, labeling, packaging or printed matter of any kind utilized by Licensee in connection with Articles, unless and until Licensor consents thereto in writing. b. Licensee shall: (i) use the Licensed Mxxx in the Territory strictly in accordance with the legal requirements obtaining therein. Licensee acknowledges the validity of the Licensed Mxxxshall cooperate fully with Licensor in preparing and causing to be recorded in every jurisdiction where applicable Registered User agreements and all other documents which may be necessary or desirable to evidence, the secondary meaning associated with the Licensed Mxxx, protect and implement the rights of Licensor pursuant to this Agreement. Upon expiration or termination of this Agreement for any reason whatsoever, Licensee shall execute and file documents, as required by Licensor, terminating any and all Registered User agreements and other documents regarding the Licensed Mxxx or, at Licensor's option shall, and hereby does, authorize and empower Licensor to terminate all Registered User or other documents regarding the Licensed Mxxx on Licensee's behalf and in Licensee's name. (ii) in the event any designs developed by Licensor for Articles may be made the subject of patent, trademark or copyright protection, Licensor shall have the right, at its own expense, to file applications therefor, and shall be the exclusive owner of such rights. Licensee shall cooperate with respect Licensor or its designers in obtaining and perfecting such rights including providing Licensor or its designers with copies of documents, sketches, renderings or the like normally prepared by Licensee in connection with the manufacture of Articles and executing such documents as may reasonably be required. (iii) affix to all Articles and Packaging and Related Material such trademark and copyright notices as Licensor reasonably may direct; (iv) manufacture, sell, distribute or otherwise deal with Packaging and Related Materials solely in connection with Articles; and (v) not cause or grant permission to any third parties to acquire any copyright or other proprietary right in connection with any word, device, design or symbol used by Licensee in connection with any Articles or Packaging and Related Materials. c. Licensee acknowledges that, as between Licensor and Licensee, Licensor is the owner of all right, title and interest in and to the Licensed Mxxx in the Territory in any form or embodiment thereof and is also the owner of the goodwill attached or which shall become attached to the Licensed Mxxx in connection with the business and goods in relation to which the same has been, is or shall be used. Sales by Licensee shall be deemed to have been made by Licensor for purposes of trademark registration and all uses of the Licensed Mxxx by Licensee shall inure to the benefit of Licensor. Licensee shall not, at any time, do or suffer to be done, done any act or thing which may in any way adversely affect any rights of Licensor in and to the Licensed Mxxx or any registrations thereof or which, directly or indirectly, may reduce the value of the Licensed Mxxx or detract from its reputation. Licensee will use its best efforts to distribute Articles in the proper channels comparable to those of similarly situated brands as discussed in Article 7 A (i) herein. B. At d. Licensee never shall challenge Licensor's request, Licensee shall execute any documents, including Registered User Agreements, reasonably required by Licensor to confirm the respective rights ownership of Licensor and Ms. Pxxxx Xxxxxx in and to the Licensed Mxxx in each jurisdiction in the Territory and the respective rights of Licensor and Licensee pursuant to this Agreement. Licensee shall cooperate with Licensor, in connection with the filing and the prosecution by Licensor of applications to register or renew the Licensed Mxxx for Articles sold hereunder in each jurisdiction in the Territory where Licensee has reasonably requested the same. Such filings and prosecution shall be in the name of Licensor or Ms. Pxxxx Xxxxxx, as they may decide, the expense of which shall be paid for by Licensee. Nothing contained herein shall obligate Licensor to prosecute any trademark application outside the U.S. which is opposed or rejected in any country after the application is filed, provided, however, that any such prosecution shall go forward if (a) Licensee requests same; (b) Licensee pays for same directly; and (c) such prosecution is in Licensor's (or Ms. Pxxxx Xxxxxx'x) name and directed by Licensor. Licensor shall cooperate fully with any such prosecution. Licensee agrees to retain and employ on Licensor's behalf the firm of Txxxxx & Lxxxxx, LLP of New York City to file and prosecute the various trademark applications around the World for the Trademark, as long as such fees charged by Txxxxx & Lxxxxx, LLP are competitively priced with other intellectual property law firms. Txxxxx & Lxxxxx, LLP shall work with Licensee's paralegal to keep such paralegal apprised of its progress in connection with the application and registration work referenced herein. Txxxxx & Lxxxxx, LLP shall enter into a retainer agreement with Licensee that is mutually acceptable to Licensee and Txxxxx & Lxxxxx, LLP providing, inter alia, that a retainer amount of $5,500 shall be paid to Txxxxx & Lxxxxx, LLP for the first 12 months and $3,500 for the second 12 months for work to be done by Txxxxx & Lxxxxx, LLP in connection with foreign application work. C. Licensee shall use the Licensed Mxxx in each jurisdiction in the Territory strictly in compliance with the legal requirements obtained therein and shall use such markings in connection therewith as may be required by applicable legal provisions. Licensee shall cause to appear on all Articles and on all materials on or in connection with which the Licensed Mxxx is used, such legends, markings and notices as may be reasonably necessary in order to give appropriate notice of any trademark, trade name or other rights therein or pertaining thereto. D. Licensee shall never challenge the validity of the Licensed Mxxx or any application for registration thereof, or any trademark registration hereofthereof, or any rights of Licensor therein. The foregoing shall not be deemed to prevent Licensee from asserting, as a defense to a claim of breach of contract brought against Licensee by Licensor for failure to perform its obligations hereunder, that its ceasing performance under this Agreement was based upon Licensor's failure to own the Licensed Mxxx in the United States of America, provided that it is established in a court of law that Licensor does not own the Licensed Mxxx, that the Licensed Mxxx is owned by a third party so as to preclude the grant of the license provided herein. E. In the event that Licensee learns of any infringement or imitation of the Licensed Mxxx or of any use by any person of a trademark similar to the Licensed Mxxx, it promptly shall notify Licensor thereof. In no event, however, shall Licensor be required to take any action if it deems it inadvisable to do so. F. Licensor shall not be required to protect, indemnify or hold Licensee harmless against, or be liable to Licensee for, any liabilities, losses, expenses or damages which may be suffered or incurred by Licensee as a result of any infringement or allegation thereof by any other person, firm or corporation, other than by reason of Licensor's breach of the representations made and obligations assumed herein. Licensor and Ms. Pxxxx Xxxxxx make no warranties or representations as to the registrability of the Licensed Mxxx in the various trademark offices around the World, except that Licensor warrants and represents that Ms. Pxxxx Xxxxxx has pending trademark applications as shown on the annexed Exhibit A.

THE LICENSED MXXX. X. 8.1 Licensee shall use and display the Licensed Mxxx only in the form and manner designated or approved by Licensor from time to time hereunder. Licensor shall notify Licensee ifit elects to change the form of the Licensed Mxxx and Licensee shall effect the change as promptly as reasonably practicable. However, if, after the change has been effected, Licensee has an inventory of Licensed Products bearing the previous form of the Licensed Mxxx, Licensee may sell off such Licensed Products, in the ordinary course. 8.2 Both during and after the term of this Agreement, Licensee shall not use the Licensed Mxxx or any component, variation, simulation, derivation or abbreviation thereof, in whole or in part, as a corporate name, trade name, domain name or otherwise except as expressly provided in this Agreement. Licensee shall not join any name or names name(s) with the Licensed Mxxx so as to form a new mxxx, unless and until Licensor consents thereto in writing. Licensee shall not use any name in connection with the Licensed Mxxx in any materials or other printed matter. In that regard, Licensee acknowledges that Licensor has not authorized Licensee to use the validity of Licensed Mxxx or any designation or identification relating to the Licensed Mxxx, the secondary meaning associated with Licensor or any Licensed Product, other than as specifically provided in this Agreement. Licensee shall not sign the Licensed MxxxMxxx or any component, variation, simulation, derivation or abbreviation thereof to any contracts, leases, bills of sale or other instruments or hold itself out as a partner or co-venturer or as a general or special agent of Licensor, nor shall Licensee establish any bank accounts under the Licensed Mxxx or any component, variation, simulation, derivation or abbreviation thereof. 8.3 Licensee acknowledges that, as between Licensee and Licensor, Licensor is the rights owner of Licensor with respect all right, title and interest in and to the Licensed Mxxx in throughout the Territory in any form or embodiment thereof and is also the owner of the goodwill attached or which that shall become attached to the Licensed Mxxx in connection with the business and goods in relation to which the same has been, is or shall be used. Sales by Licensee shall be deemed to have been made by Licensor for purposes of trademark registration and and, in that regard, all uses of the Licensed Mxxx by Licensee shall inure to Licensor’s benefit. Neither Licensee nor any of its affiliates (including Affiliated Distributors) or any of the benefit respective managers, officers, directors, members, shareholders, owners, employees and agents of Licensor. Licensee or any of its affiliates shall not, at any time, do anything or suffer anything to be done, any act whether under or thing which may in any way connection with the business to be conducted hereunder or this Agreement or otherwise, that may, directly or indirectly, (a) adversely affect any rights of Licensor in and to the Licensed Mxxx or any registrations thereof thereof, (b) reduce or which, directly or indirectly, may reduce dilute the value of the Licensed Mxxx or (c) disparage, dilute, detract from or reflect adversely upon the Image and, in that regard, Licensee shall adopt and implement rigorous quality control systems for Licensed Products. Hereinafter, any of the affiliates of Licensee and any of the respective managers, officers, directors, members, shareholders, owners, employees and agents of Licensee or any of its reputationaffiliates shall be referred to collectively as the “Licensee Group.” Neither Licensee nor any member of the Licensee Group shall seek to register the Licensed Mxxx or any component, variation, simulation, derivation or abbreviation thereof in any jurisdiction as a trademark or service mxxx for any products or services. The provisions of and the obligations of Licensee will use its best efforts to distribute Articles in and the proper channels comparable to those members of similarly situated brands as discussed in Article 7 A (i) hereinthe Licensee Group shall survive Termination. B. At Licensor's request8.4 Licensee, Licensee at its expense, shall execute any documents, including Registered User Agreementsregistered user agreements and short form license agreements, reasonably required by Licensor to confirm the respective Licensor’s ownership of all rights of Licensor and Ms. Pxxxx Xxxxxx in and to the Licensed Mxxx in each jurisdiction in the Territory and the respective rights of Licensor, Licensor and Licensee pursuant to under or in connection with this Agreement. . 8.5 Licensee shall cooperate with Licensor, Licensor in connection with the filing and the prosecution by Licensor of applications in Licensor’s name to register or renew the Licensed Mxxx for Articles sold hereunder in each jurisdiction Products in the Territory where Licensee has various countries within the Territory. All costs reasonably requested incurred by Licensor in connection therewith, including the same. Such filings costs of prosecuting or defending opposition and prosecution cancellation proceedings and obtaining clearance negotiated payments and the costs of the maintenance and renewal of any registrations that hereafter may issue, as well as attorneys’ fees, search costs and filing fees, shall be solely and exclusively borne by Licensor. 8.6 Licensee shall not use the Licensed Mxxx, nor may any Licensed Products be advertised, marketed, promoted, publicized or otherwise exploited or distributed, offered for sale or sold, (A) in any Country in which the Licensed Mxxx had not theretofore been registered in the name of Licensor applicable trademark class for Products or Ms. Pxxxx Xxxxxx, as they may decide, an application to register the expense of which shall be paid Licensed Mxxx in such class for by Licensee. Nothing contained herein shall obligate Licensor to prosecute any trademark application outside the U.S. which is opposed or rejected in any country after the application is Products has not theretofore been filed, provideduntil (I) an appropriate trademark search has been conducted and an application to register the Licensed Mxxx for Products has been filed in such Country or (2) Licensor determines that it would be preferable not to seek to register the Licensed Mxxx for Products in such Country but that there is no material impediment to the use of the Licensed Mxxx therein, however, that any such prosecution shall go forward if (a) Licensee requests same; (b) Licensee pays for same directly; and (c3) such prosecution is Licensor notifies Licensee that it may do so, and (B) in Licensor's (a British Commonwealth Country, or Ms. Pxxxx Xxxxxx'x) name any other Country where required, prior to the execution of a registered user agreement or similar type agreement approved by Licensor and directed by Licensor. Licensor shall cooperate fully with any such prosecution. Licensee agrees to retain and employ on Licensor's behalf the firm of Txxxxx & Lxxxxx, LLP of New York City to file and prosecute the various trademark applications around the World for the Trademark, as long as such fees charged by Txxxxx & Lxxxxx, LLP are competitively priced with other intellectual property law firms. Txxxxx & Lxxxxx, LLP shall work with Licensee's paralegal to keep such paralegal apprised of its progress in connection filing thereof with the application and registration work referenced herein. Txxxxx & Lxxxxx, LLP shall enter into a retainer agreement with Licensee that is mutually acceptable to Licensee and Txxxxx & Lxxxxx, LLP providing, inter alia, that a retainer amount of $5,500 shall be paid to Txxxxx & Lxxxxx, LLP for the first 12 months and $3,500 for the second 12 months for work to be done by Txxxxx & Lxxxxx, LLP in connection with foreign application workappropriate governmental agency. C. 8.7 Licensee shall use the Licensed Mxxx in each jurisdiction in the Territory country strictly in compliance with the legal requirements obtained therein and shall use of, or in effect within, each such markings in connection therewith as may be required by applicable legal provisionscountry. Licensee shall cause to appear place on all Articles Licensed Products and on all ancillary materials on or in connection with which the Licensed Mxxx is used, such all legends, markings and notices as may be reasonably necessary in order (i) required to give appropriate notice of any trademark, trade name trademark or other rights therein in or pertaining theretoto the Licensed Mxxx in accordance with the governing trademark and other applicable laws, rules and regulations of, or in effect within, the various countries or (ii) otherwise reasonably requested by Licensor. D. 8.8 Neither Licensee nor any member of the Licensee Group shall never challenge Licensor’s ownership of or the validity of the Licensed Mxxx, any application for registration or registration of the Licensed Mxxx or any application for registration thereof, or any trademark registration hereof, or any rights of Licensor therein. The foregoing shall not be deemed to prevent Licensee from asserting, as a defense to a claim of breach of contract brought against Licensee by or Licensor for failure to perform its obligations hereunder, that its ceasing performance under this Agreement was based upon Licensor's failure to own the Licensed Mxxx in the United States of America, provided that it is established in a court of law that Licensor does not own the Licensed Mxxx, that . The provisions of and the Licensed Mxxx is owned by a third party so as to preclude obligations of Licensee and the grant members of the license provided hereinLicensee Group shall survive Termination. E. In the event that 8.9 If Licensee learns of any infringement infringement, imitation or imitation counterfeiting of the Licensed Mxxx or Licensed Products or of any use by any person of a trademark similar to the Licensed MxxxMxxx or of any instances of the importation and sale in any country of otherwise legitimate Products bearing the Licensed Mxxx (including Licensed Products) by any third party, it promptly shall notify Licensor thereof. In no eventUpon receipt of Licensee’s notice or when any such situation comes to their attention, howeverLicensor and Licensor shall take such action as they in their sole discretion deem advisable for the protection of their rights in and to the Licensed Mxxx and Licensed Products. If requested by Licensor, Licensee shall reasonably cooperate with and follow the reasonable directions of Licensor in connection therewith, including by conducting investigations to determine the extent of the infringement or counterfeiting activity, acting as a plaintiff or co-plaintiff in lawsuits and causing its officers to execute pleadings and other related documents. Licensor shall not be required to take any action if it deems it inadvisable to do so. F. Licensor shall so (and in its sole discretion may discontinue any action it may commence) and Licensee may not be required take any action with respect to protect, indemnify or hold Licensee harmless against, or be liable to Licensee for, any liabilities, losses, expenses or damages which may be suffered or incurred by Licensee as a result of any infringement or allegation thereof by any other person, firm or corporation, other than by reason of Licensor's breach of the representations made and obligations assumed herein. Licensor and Ms. Pxxxx Xxxxxx make no warranties or representations as to the registrability of the Licensed Mxxx or the counterfeiting or diversion of Licensed Products without Licensor’s prior approval. The costs, fees and expenses (including investigatory expenses and legal expenses such as attorneys’ fees, court costs and filing fees) incurred in the various trademark offices around the World, except that Licensor warrants and represents that Ms. Pxxxx Xxxxxx has pending trademark applications as shown on the annexed Exhibit A.connection with any action relating to Products taken hereunder shall be borne by Licensee.