Trademark License. (a) Reuters and TSI acknowledge that Reuters has, pursuant to the Existing License Agreement, assigned to TSI all of its (and TFT’s) right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI hereby grants to Reuters a perpetual, royalty-free, irrevocable, worldwide right and license in favor of Reuters and its Affiliates to use Transferred TIB-Related Marks in connection with the marketing, use, sale and distribution of any of Reuters’ and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to time, which guidelines shall be reasonable and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such notice. (b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure to the sole benefit of TSI (or its Affiliates). (c) Reuters and its Affiliates shall support TSI in policing the use of the Transferred TIB-Related Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention. (d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks. (e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks. (f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof. (g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxx.
Appears in 4 contracts
Samples: License Agreement, License, Maintenance and Distribution Agreement (Tibco Software Inc), License, Maintenance and Distribution Agreement (Tibco Software Inc)
Trademark License. (a) Reuters and TSI acknowledge that Reuters has, pursuant Subject to the Existing License terms and conditions of this Agreement, assigned effective the Effective Date, APIL hereby grants Purchaser a non-exclusive, worldwide license to TSI all use the Licensed Trademarks for the advertising, promotion, marketing, distribution and sale of pharmaceutical products covered by the licenses granted in Sections 3(a), (b) and (c) hereof. Purchaser shall have the right to grant sublicenses under the foregoing non-exclusive license to its sublicensees under Sections 3(a), (b) and TFT’s(c) hereof, subject to the provisions of this Section 3(e). Purchaser hereby acknowledges APIL’s exclusive right, title and interest in and to the Transferred TIB-Related Marks Licensed Trademarks and all goodwill associated therewith. Reuters hereby continues agrees that Purchaser and its sublicensees will not at any time do, or cause to assign be done, any act or thing contesting or in any way intending to TSI any impair the validity of and/or APIL’s exclusive right, title and interest in and to the Licensed Trademarks. Purchaser and its sublicensees will not in any manner represent that it may have they own the Licensed Trademarks, and Purchaser hereby acknowledges that use of the Licensed Trademarks as set forth in this Section 3(e) shall not create any rights, title or obtain interest in or to the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI hereby grants to Reuters a perpetual, royalty-free, irrevocable, worldwide right and license Licensed Trademarks in favor of Reuters Purchaser or its sublicensees, but that all use of the Licensed Trademarks by Purchaser and its Affiliates to use Transferred TIB-Related Marks in connection with the marketing, use, sale and distribution of any of Reuters’ and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to time, which guidelines shall be reasonable and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby sublicensees shall inure to the sole benefit of TSI (or APIL. Purchaser shall submit to APIL for its Affiliates).
(c) Reuters review and its Affiliates shall support TSI in policing the approval samples of any proposed use of the Transferred TIB-Related Marks and Licensed Trademarks at least fifteen (15) days prior to such use by Purchaser. APIL shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately review any proposed use of the Transferred TIBLicensed Trademarks within fifteen (15) days of Purchaser’s written request, and if APIL does not either approve or decline to approve such use within such 15-Related Marks. Such cooperation by Reuters and their Affiliates day period, such use shall be at the sole expense of TSIautomatically deemed approved. Each of Reuters and their Affiliates Any such approval shall notify TSI of any infringement be deemed to be approval of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly same or similar to any uses of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereofLicensed Trademarks thereafter. Reuters and its Affiliates APIL shall not knowingly take unreasonably withhold, delay or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy condition any such failure and provide TSI with evidence thereofapproval request by Purchaser.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxx.
Appears in 3 contracts
Samples: Asset Transfer and License Agreement, Asset Transfer and License Agreement (Baudax Bio, Inc.), Asset Transfer and License Agreement (Recro Pharma, Inc.)
Trademark License. (a) The Reuters Parties hereby assign and TSI acknowledge that Reuters has, pursuant to the Existing License Agreement, assigned transfer to TSI all of its (and TFT’s) their respective right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. , subject to a perpetual, royalty- free, irrevocable, worldwide right and license in favor of the Reuters hereby continues Parties and their Affiliates to assign to TSI any right, title and interest that it may have or obtain in the use Transferred TIB-Related Marks in connection with the marketing, use, sale and distribution of any of the Reuters Parties' and their Affiliates' respective products or the goodwill associated therewithprovision by the Reuters Parties or their Affiliates of any services. At TSI’s 's sole expense, the Reuters Parties shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI hereby grants TFT shall be permitted to Reuters a perpetual, royalty-free, irrevocable, worldwide right and license in favor of Reuters and its Affiliates continue to use Transferred TIB-Related Marks in connection with the marketingindefinitely TIBCO or TIB as part of its corporate name, useprovided that such corporate name is at least as distinctive from TIBCO Software, sale and distribution of any of Reuters’ Inc. as TFT's current corporate name. The Reuters Parties and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ ' right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s 's trademark usage guidelines delivered to the Reuters Parties from time to time, which guidelines shall be reasonable and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of the Reuters Parties in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such notice.
(b) The Reuters Parties hereby acknowledges acknowledge and recognizes recognize TSI’s 's exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. The Reuters acknowledges Parties acknowledge that its their use and the use by its Reuters Parties Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure to the sole benefit of TSI (or its Affiliates).
(c) The Reuters Parties and its their Affiliates shall support TSI in policing the use of the Transferred TIB-Related Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by the Reuters Parties and their Affiliates shall be at the sole expense of TSI. Each of the Reuters Parties and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters Parties nor its their Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) The Reuters Parties and its their Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-TIB- Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. The Reuters Parties and its their Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters Parties product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide the Reuters Parties and its their Affiliates with written notice thereof and the Reuters Parties and its their Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to the Reuters Parties registering, at its their own expense, product and company names and related marks that include the word “"TIB”", which (except for the “"TIB” " component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by a Reuters Party solely in connection with TFT's company name or the marketing, use, sale and distribution of any of Reuters’ the Reuters Parties' respective products or the provision by the Reuters Parties of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ the Reuters Parties' expense, either apply to register or assist the Reuters Parties in applying to register such name and/or xxxx and license it to the Reuters Parties in such jurisdiction. TSI and the Reuters Parties shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s 's rights in the xxxx.
Appears in 2 contracts
Samples: License, Maintenance and Distribution Agreement (Tibco Software Inc), License, Maintenance and Distribution Agreement (Tibco Software Inc)
Trademark License. (a) Reuters Medifocus hereby grants JV a license to use the Trademarks solely in connection with the testing, marketing, distribution, import, export, use, offer to sell and TSI acknowledge that Reuters has, pursuant to sale of the Existing License Agreement, assigned to TSI all of its (and TFT’s) right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain Products in the Transferred TIB-Related Marks or Territory during the goodwill associated therewithTerm of this Agreement. At TSI’s sole expense, Reuters Medifocus shall perform take such acts and execute such documents actions as are reasonably required to perfect maintain the foregoing assignment Trademarks in effect, and obtain shall inform JV of any changes in or additions to the Trademarks. JV acknowledges that Medifocus is the owner of the Trademarks and enforce trademarkagrees that JV shall not at any time do, service xxxx cause to be done, or permit any act or thing inconsistent with, contesting or in any way impairing or tending to impair such ownership. JV agrees that all use of the Trademarks by JV shall inure to the benefit of and other similar rights be on behalf of Medifocus and that nothing in this Agreement shall give JV any right, title or interest in the Transferred TIB-Related Marks. TSI hereby grants to Reuters a perpetual, royalty-free, irrevocable, worldwide Trademarks other than the right and license in favor of Reuters and its Affiliates to use Transferred TIB-Related Marks the Trademarks in accordance with this Agreement. JV agrees that it will not challenge the title or ownership of the Trademarks by Medifocus or attack or contest the validity of the Trademarks.
(b) JV shall not be obligated to use the Trademarks in connection with the marketing, usedistribution, sale and distribution of any of Reuters’ and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to timeimport, which guidelines shall be reasonable and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure to the sole benefit of TSI (or its Affiliates).
(c) Reuters and its Affiliates shall support TSI in policing the use of the Transferred TIB-Related Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketingexport, use, offer to sell and sale and distribution of any of Reuters’ products or the provision by Reuters of any servicesProduct; provided, however, that if consent JV does not use a Trademark, then Medifocus shall have the right to such registration is prohibited in a jurisdictionApprove the product name and trademarks proposed to be used by JV with respect to the Products, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI which Approval shall not be required unreasonably withheld or delayed. JV shall provide to take Medifocus for its Approval copies of its promotional and marketing materials prior to their public release. If JV requests that Medifocus Approve JV’s use of any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated of JV’s marks solely and exclusively in connection with the TIB xxxx promotion, marketing, sale or TSI’s rights distribution of the Products (the “Product Marks”) in the xxxxTerritory, and Medifocus Approves the use of any such Product Marks, such Product Marks shall be owned by Medifocus and included in the grant of license under Section 5.04(a) and (b).
Appears in 2 contracts
Samples: License and Distribution Agreement (Medifocus Inc.), License and Distribution Agreement (Medifocus Inc.)
Trademark License. (a) Reuters and TSI acknowledge that Reuters has, pursuant to the Existing License Agreement, assigned to TSI all of its (and TFT’s) right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI Digene hereby grants to Reuters a perpetual, royalty-free, irrevocable, worldwide right and license in favor of Reuters and Abboxx xxx its Affiliates a nonexclusive license, with the right to sublicense, to use Transferred TIB-Related Marks the Digene Trademarks in connection the Field with respect to Products, Other Products and Digene Equipment to market, promote, distribute and sell Products, Other Products and Digene Equipment in the Territory, and the CMV Territory and the SHARP Territory, respectively. On or before January 1 of each Contract Year, Abboxx xxx THIS EXHIBIT HAS BEEN REDACTED AND IS THE SUBJECT OF A CONFIDENTIAL TREATMENT REQUEST. REDACTED MATERIAL IS MARKED WITH "*" AND BRACKETS AND HAS BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. request a trademark report reflecting all applications by Digene for Digene Trademarks and the status thereof. In addition, Digene shall, at its expense, file new applications to register any or all of the Digene Trademarks in any or all of the countries in the Territory, the CMV Territory and the SHARP Territory, as may be reasonably requested by Abboxx. Xxboxx xxxll give Digene at least ninety (90) days' prior written notice before marketing, promoting, selling or distributing any Product, Other Product or Digene Equipment under the Digene Trademarks in any country not identified in the Digene Trademark report. The Parties shall mutually agree on the trademark approach in any such country, taking into consideration, among other things, the length of time required to obtain trademark registration, laws relating to trademark use, sale and distribution the existence of any conflicting trademark registrations, applications or uses and the anticipated sales volumes of Reuters’ and their Affiliates’ respective products the relevant Products, Other Products or Digene Equipment in such country. All representations of the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right Digene Trademarks that Abboxx xxxends to use such Transferred TIB-Related Marks shall be only in conformance consistent with TSI’s trademark usage written guidelines delivered provided to Reuters Abboxx xx Digene or shall first be submitted to Digene for approval of design, color and other details, which approval shall not be unreasonably withheld or will be exact copies of those used by Digene. In addition, Abboxx xxxll follow the written instructions issued by Digene from time to timetime for the purpose of protecting the standards of quality established for the goods and services sold under Digene Trademarks. Any use of an Abboxx xxxdemark by Digene shall be subject to Abboxx'x xxxor approval, which guidelines shall approval may be reasonable and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given withheld by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such noticeAbboxx xx Abboxx'x xxxe discretion.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure to the sole benefit of TSI (or its Affiliates).
(c) Reuters and its Affiliates shall support TSI in policing the use of the Transferred TIB-Related Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxx.
Appears in 2 contracts
Samples: Marketing and Distribution Agreement (Digene Corp), Marketing and Distribution Agreement (Digene Corp)
Trademark License. (a) Reuters and TSI acknowledge that Reuters has, pursuant to the Existing License Agreement, assigned to TSI all of its (and TFT’s) right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI 17.1 Avaya hereby grants to Reuters Distributor a perpetuallimited nonexclusive, royaltynon-free, irrevocable, worldwide transferable license and right and license in favor of Reuters and its Affiliates to use Transferred TIB-Related Marks the Licensed Trademarks (i) in connection with the marketingadvertisement, promotion, sale or marketing of Products, (ii) subject to the terms and conditions of the Section and (iii) solely in the Territory.
17.2 Distributor shall apply the Licensed Trademarks only to materials which have been created, in accordance with the standards of quality in materials, design, workmanship, use, sale advertising and promotion set forth in the Trademark Guidelines. the Guidelines for Use of Avaya Business Partner Promotional Signatures are set forth on the BusinessPartner website and are incorporated herein by reference. Trademark Guidelines are Confidential Information of Avaya.
17.3 Distributor agrees that no variations of the Licensed Trademarks may be created, adopted or used by Distributor.
17.4 Avaya shall have the right at any time to conduct during regular business hours an examination of materials created by Distributor or its contractors and suppliers to determine compliance of such materials with eh applicable Trademark Guidelines. If at any time such materials shall, in the sole opinion of Avaya, fail to conform with the standards of quality in materials, design, workmanship, use, advertising, and promotion set forth in such Trademark Guidelines, Avaya or its authorized representative shall so notify Distributor. Upon such notification Distributor shall promptly cease using the Licensed Trademarks on such materials and not distribute or publicize such nonconforming materials until the standards of quality contained in the applicable Trademark Guidelines have been met to the sole satisfaction of Avaya.
17.5 Avaya acknowledges that it owns the Licensed Trademarks and all registrations and applications therefore in the US and throughout the world but makes no warranties regarding the validity or enforceability of said Licensed trademarks.
17.6 Distributor is not authorized to use the Licensed Trademarks in any manner or media except as set forth herein or in the Trademark Guidelines.
17.7 Distributor shall comply with conditions set forth in the Trademark Guidelines or otherwise established in writing from time-to-time by Avaya with respect to the style, appearance and manner of use of the Licensed Trademarks. Any use of the Licensed Trademarks not specifically provided for by such conditions shall be adopted by Distributor only upon prior approval in writing by Avaya. In addition, Avaya may request that a notice or notices acceptable to Avaya be used on the materials bearing the Licensed Trademarks to indentify the licensed use under the Agreement and the proprietary rights of Avaya.
17.8 All materials using Licensed Trademarks shall be subject to prepublication review an approval, with respect to, but not limited to, content, style, appearance, composition, context, timing, media (including but no limited to broadcast, fax, placement on a web site, Yellow Pages deadline, or any other advertising or marketing medium), and geographic distribution plans. One copy of all such marketing material shall be provided to Avaya (As instructed in the Coop information on the BusinessPartner Website) prior to publication. Avaya agrees to use its reasonable commercial efforts to respond to any request for approval within ten (10) business days of Reuters’ receipt thereof. Within one month after publication, Distributor shall supply Avaya with representative specimens in final form showing the Licensed Trademarks, and their Affiliates’ respective products location on any marketing materials.
17.9 In all marketing, advertising, and promotional and instructional literature, Distributor shall (a) always use each Licensed Trademark as a proper adjective modifying the common descriptive terms “software program, server, modem, switching unit, etc.”; and (b) always use the following legend in type size and style as to reasonably seen.
17.10 On Licensed Materials, on signage used at trade shows or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSIat Distributor’s trademark usage guidelines delivered to Reuters from time to timeoffice, which guidelines shall be reasonable and Distributor shall not be inconsistent with required to use the scope common descriptive term, so long as Distributor uses an ® next to the Licensed Trademarks.
17.11 On all materials relating to Products, Distributor shall identify the product as manufactured by Avaya (i.e. Avaya Cajun® 550) where that is not possible Distributor shall place an asterisk by the Licensed Trademarks and cause the following expression to appear as a legend:
17.12 Distributor shall not use the Licensed Trademarks in the possessive or as a noun nor shall it pluralize or abbreviate the Licensed Trademarks.
17.13 Distributor shall always capitalize the first letter of each xxxx.
17.14 Distributor agrees to the ownership by Avaya and validity of the license herein granted Licensed Trademarks and shall not become effective prior agrees never to thirty (30) days after notice thereof has been given by TSIchallenge the ownership of validity of the Licensed Trademarks. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for Distributor also agrees that any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement rights that accrue on or after may be acquired by the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership use of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use Licensed Trademarks by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby Distributor shall inure to the sole benefit of TSI (or its Affiliates).
(c) Reuters Avaya. Distributor further agrees to execute all papers reasonably requested by Avaya to effect further registration, maintenance and its Affiliates shall support TSI in policing the use renewal of the Transferred TIB-Related Marks Licensed Trademarks, and shall cooperate with TSI in protecting the Transferred TIB-Related Markswhere applicable, including cooperating in becoming to record Distributor as a registered user immediately of the Transferred TIBLicensed Trademarks. Distributor shall no use the Licensed Trademarks or any other marks of Avaya. Distributor shall not directly or indirectly hold itself out as having an ownership interest in the Licensed Trademarks or as having any relationship or affiliation with or authority from Avaya or its Affiliates other than as is provide herein.
17.15 The Licensed Trademarks are not to be used by Distributor in any way to imply Avaya’s endorsement of products, services or materials, other than those furnished to Distributor under this Agreement, such as used or Unused Products originally manufactured by Avaya. Distributor will never alter or remove any of the Licensed Trademarks applied to a Product, without the prior written approval of Avaya.
17.16 Distributor further agrees to register in any country any name or xxxx identical to, resembling or confusingly similar to the Licensed Trademarks. If any application for registration is, or has been filed in the Territory or elsewhere by Distributor which relates to any name or xxxx which, in the sole opinion of Avaya, is confusingly similar, deceptive or misleading with respect to the Licensed Trademarks, Distributor shall immediately abandon any such application or registration or, at Avaya’s sole discretion, assign it to Avaya. Distributor shall reimburse Avaya for all the costs and expenses of any opposition, cancellation or related legal proceedings, including attorney’s fees, incurred by Avaya or its authorized representative, in connection with any such registration or application.
17.17 In the event that Distributor learns of any infringement or threatened infringement of the Licensed Trademarks or any passing-Related Marksoff or that any third party alleges or claims that the Licensed Trademarks are liable to cause deception or confusion to the public, or are liable to dilute or infringe any right, Distributor shall forthwith notify Avaya and the office of Avaya’s Trademark Counsel, giving particulars thereof and Distributor shall provide necessary information and assistance to Avaya or its authorized representative in the event that Avaya decides that proceedings should be assistance to Avaya or its authorized representatives in the event that Avaya decides that proceedings should be commenced or defended. Such cooperation by Reuters and their Affiliates Any such proceedings shall be at the sole expense of TSIAvaya; and any recoveries shall be combined solely by Avaya. Each Nothing herein, however, shall be deemed to require Avaya to enforce the Licensed Trademarks against others.
17.18 In the performance of Reuters this Agreement, Distributor shall comply with all applicable laws and their Affiliates shall notify TSI regulations, and those laws and regulations particularly pertaining to the proper use and designation of trademarks. Should Distributor be or become aware of any infringement applicable laws or regulations which are inconsistent with the provisions of this Agreement, Distributor shall promptly notify Avaya of such inconsistency. Avaya may, at its option, either waive the performance of such inconsistent provisions or terminate the license and rights granted hereunder.
17.19 The benefit of this Agreement shall be personal to Distributor, which shall not assign the same, nor part with any of its rights or obligations hereunder, nor grant or purport to grant any sublicense in respect to the Licensed Trademarks. Avaya may assign the Licensed Trademarks and this Agreement to any other party.
17.20 Unless sooner terminated in accordance with this Agreement, the Trademark license granted under this Agreement shall commence on the date of this Agreement and shall terminate immediately on the termination of this Agreement. Upon termination of the Transferred TIB-Related Marks license and rights granted under this Agreement, Distributor shall cease and discontinue completely further use of the Licensed Trademarks except that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the worldevent the license and rights granted under this Agreement expire after their full terms without renewal, any trademark: Distributor shall have a period of ninety (i90) that is confusingly similar days from the date of such expiration to any use up its supplies of materials on which the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks Licensed Trademarks have been applied prior to the date hereof. Reuters and its Affiliates of expiration as authorized under Section 22.2.1, provide that such use of the Licensed Trademarks shall not knowingly take or permit to otherwise be taken any actions that would detract in a significant way from the goodwill or reputation associated accordance with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxx.
Appears in 2 contracts
Samples: Distribution Agreement (Scansource Inc), Distribution Agreement (Scansource Inc)
Trademark License. (a) Reuters and TSI acknowledge that Reuters hasMERCK hereby grants, pursuant to the Existing License Agreement, assigned to TSI all of its (and TFT’s) right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks event that ONCOTHYREON or an AFFILIATE of ONCOTHYREON obtains the goodwill associated therewith. At TSI’s sole expenseright to manufacture and/or SELL PRODUCT under this AGREEMENT, Reuters shall perform such acts to ONCOTHYREON and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI hereby grants to Reuters its designated AFFILIATES a perpetual, royalty-royalty free, irrevocablenon-exclusive license to use, worldwide right display, reproduce and license in favor of Reuters and its Affiliates to use Transferred TIB-Related Marks publish the TRADEMARKS and/or the SELECTED TRADEMARKS in connection with the marketingmanufacture, use, sale marketing, promotion, distribution and distribution SALE of PRODUCT in any countries in the TERRITORY where ONCOTHYREON or an AFFILIATE of Reuters’ and their Affiliates’ respective products or ONCOTHYREON has the provision by Reuters or their Affiliates of any servicesright to manufacture and/or SELL PRODUCT under this AGREEMENT for so long as such right to manufacture and/or SELL exists under this AGREEMENT. Reuters and its Affiliates’ In addition to the foregoing, ONCOTHYREON shall have the right to use the TRADEMARKS and/or the SELECTED TRADEMARKS in connection with corporate disclosure and corporate information dissemination. ONCOTHYREON and its designated AFFILIATES shall have no right to grant sublicenses under such Transferred TIB-Related Marks license without the prior written consent of MERCK (such consent not to be unreasonably withheld). Any goodwill arising from the use of the TRADEMARKS and/or the SELECTED TRADEMARKS by ONCOTHYREON + DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE COMMISSION or its designated AFFILIATES shall inure to the benefit of MERCK. Further, such use shall be only in conformance accordance with TSI’s trademark usage guidelines delivered to Reuters the applicable laws in the relevant jurisdiction, as well as with any reasonable requirements of any brand guide that may be provided by MERCK from time to time, which guidelines shall be reasonable and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure to the sole benefit of TSI (or its Affiliates).
(c) Reuters and its Affiliates shall support TSI in policing the use of the Transferred TIB-Related Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to When using any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of TRADEMARKS and/or the Transferred TIB-Related Marks.
(e) Reuters SELECTED TRADEMARKS under license, ONCOTHYREON and its Affiliates designated AFFILIATES shall maintain use the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least identifiers Ô or â, as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marksappropriate.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxx.
Appears in 2 contracts
Samples: License Agreement (Oncothyreon Inc.), License Agreement (Oncothyreon Inc.)
Trademark License. (a) Reuters and TSI acknowledge that Reuters has, pursuant to the Existing License Agreement, assigned to TSI all of its (and TFT’s) right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI 17.1 Avaya hereby grants to Reuters Distributor a perpetuallimited nonexclusive, royaltynon-free, irrevocable, worldwide transferable license and right and license in favor of Reuters and its Affiliates to use Transferred TIB-Related Marks the Licensed Trademarks (i) in connection with the marketingadvertisement, promotion, sale or marketing of Products, (ii) subject to the terms and conditions of the Section and (iii) solely in the Territory.
17.2 Distributor shall apply the Licensed Trademarks only to materials which have been created, in accordance with the standards of quality in materials, design, workmanship, use, sale advertising and promotion set forth in the Trademark Guidelines. the Guidelines for Use of Avaya Business Partner Promotional Signatures are set forth on the BusinessPartner website and are incorporated herein by reference. Trademark Guidelines are Confidential Information of Avaya.
17.3 Distributor agrees that no variations of the Licensed Trademarks may be created, adopted or used by Distributor.
17.4 Avaya shall have the right at any time to conduct during regular business hours an examination of materials created by Distributor or its contractors and suppliers to determine compliance of such materials with eh applicable Trademark Guidelines. If at any time such materials shall, in the sole opinion of Avaya, fail to conform with the standards of quality in materials, design, workmanship, use, advertising, and promotion set forth in such Trademark Guidelines, Avaya or its authorized representative shall so notify Distributor. Upon such notification Distributor shall promptly cease using the Licensed Trademarks on such materials and not distribute or publicize such nonconforming materials until the standards of quality contained in the applicable Trademark Guidelines have been met to the sole satisfaction of Avaya.
17.5 Avaya acknowledges that it owns the Licensed Trademarks and all registrations and applications therefore in the US and throughout the world but makes no warranties regarding the validity or enforceability of said Licensed trademarks.
17.6 Distributor is not authorized to use the Licensed Trademarks in any manner or media except as set forth herein or in the Trademark Guidelines.
17.7 Distributor shall comply with conditions set forth in the Trademark Guidelines or otherwise established in writing from time-to-time by Avaya with respect to the style, appearance and manner of use of the Licensed Trademarks. Any use of the Licensed Trademarks not specifically provided for by such conditions shall be adopted by Distributor only upon prior approval in writing by Avaya. In addition, Avaya may request that a notice or notices acceptable to Avaya be used on the materials bearing the Licensed Trademarks to indentify the licensed use under the Agreement and the proprietary rights of Avaya.
17.8 All materials using Licensed Trademarks shall be subject to prepublication review an approval, with respect to, but not limited to, content, style, appearance, composition, context, timing, media (including but no limited to broadcast, fax, placement on a web site, Yellow Pages deadline, or any other advertising or marketing medium), and geographic distribution plans. One copy of all such marketing material shall be provided to Avaya (As instructed in the Coop information on the BusinessPartner Website) prior to publication. Avaya agrees to use its reasonable commercial efforts to respond to any request for approval within ten (10) business days of Reuters’ receipt thereof. Within one month after publication, Distributor shall supply Avaya with representative specimens in final form showing the Licensed Trademarks, and their Affiliates’ respective products location on any marketing materials.
17.9 In all marketing, advertising, and promotional and instructional literature, Distributor shall (a) always use each Licensed Trademark as a proper adjective modifying the common descriptive terms “software program, server, modem, switching unit, etc.”; and (b) always use the following legend in type size and style as to reasonably seen.
17.10 On Licensed Materials, on signage used at trade shows or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSIat Distributor’s trademark usage guidelines delivered to Reuters from time to timeoffice, which guidelines shall be reasonable and Distributor shall not be inconsistent with required to use the scope common descriptive term, so long as Distributor uses an ® next to the Licensed Trademarks.
17.11 On all materials relating to Products, Distributor shall identify the product as manufactured by Avaya (i.e. Avaya Cajun® 550) where that is not possible Distributor shall place an asterisk by the Licensed Trademarks and cause the following expression to appear as a legend: *Registered Trademark of Avaya Inc., Licensed to
17.12 Distributor shall not use the Licensed Trademarks in the possessive or as a noun nor shall it pluralize or abbreviate the Licensed Trademarks.
17.13 Distributor shall always capitalize the first letter of each xxxx.
17.14 Distributor agrees to the ownership by Avaya and validity of the license herein granted Licensed Trademarks and shall not become effective prior agrees never to thirty (30) days after notice thereof has been given by TSIchallenge the ownership of validity of the Licensed Trademarks. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for Distributor also agrees that any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement rights that accrue on or after may be acquired by the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership use of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use Licensed Trademarks by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby Distributor shall inure to the sole benefit of TSI (or its Affiliates).
(c) Reuters Avaya. Distributor further agrees to execute all papers reasonably requested by Avaya to effect further registration, maintenance and its Affiliates shall support TSI in policing the use renewal of the Transferred TIB-Related Marks Licensed Trademarks, and shall cooperate with TSI in protecting the Transferred TIB-Related Markswhere applicable, including cooperating in becoming to record Distributor as a registered user immediately of the Transferred TIBLicensed Trademarks. Distributor shall no use the Licensed Trademarks or any other marks of Avaya. Distributor shall not directly or indirectly hold itself out as having an ownership interest in the Licensed Trademarks or as having any relationship or affiliation with or authority from Avaya or its Affiliates other than as is provide herein.
17.15 The Licensed Trademarks are not to be used by Distributor in any way to imply Avaya’s endorsement of products, services or materials, other than those furnished to Distributor under this Agreement, such as used or Unused Products originally manufactured by Avaya. Distributor will never alter or remove any of the Licensed Trademarks applied to a Product, without the prior written approval of Avaya.
17.16 Distributor further agrees to register in any country any name or xxxx identical to, resembling or confusingly similar to the Licensed Trademarks. If any application for registration is, or has been filed in the Territory or elsewhere by Distributor which relates to any name or xxxx which, in the sole opinion of Avaya, is confusingly similar, deceptive or misleading with respect to the Licensed Trademarks, Distributor shall immediately abandon any such application or registration or, at Avaya’s sole discretion, assign it to Avaya. Distributor shall reimburse Avaya for all the costs and expenses of any opposition, cancellation or related legal proceedings, including attorney’s fees, incurred by Avaya or its authorized representative, in connection with any such registration or application.
17.17 In the event that Distributor learns of any infringement or threatened infringement of the Licensed Trademarks or any passing-Related Marksoff or that any third party alleges or claims that the Licensed Trademarks are liable to cause deception or confusion to the public, or are liable to dilute or infringe any right, Distributor shall forthwith notify Avaya and the office of Avaya’s Trademark Counsel, giving particulars thereof and Distributor shall provide necessary information and assistance to Avaya or its authorized representative in the event that Avaya decides that proceedings should be assistance to Avaya or its authorized representatives in the event that Avaya decides that proceedings should be commenced or defended. Such cooperation by Reuters and their Affiliates Any such proceedings shall be at the sole expense of TSIAvaya; and any recoveries shall be combined solely by Avaya. Each Nothing herein, however, shall be deemed to require Avaya to enforce the Licensed Trademarks against others.
17.18 In the performance of Reuters this Agreement, Distributor shall comply with all applicable laws and their Affiliates shall notify TSI regulations, and those laws and regulations particularly pertaining to the proper use and designation of trademarks. Should Distributor be or become aware of any infringement applicable laws or regulations which are inconsistent with the provisions of this Agreement, Distributor shall promptly notify Avaya of such inconsistency. Avaya may, at its option, either waive the performance of such inconsistent provisions or terminate the license and rights granted hereunder.
17.19 The benefit of this Agreement shall be personal to Distributor, which shall not assign the same, nor part with any of its rights or obligations hereunder, nor grant or purport to grant any sublicense in respect to the Licensed Trademarks. Avaya may assign the Licensed Trademarks and this Agreement to any other party.
17.20 Unless sooner terminated in accordance with this Agreement, the Trademark license granted under this Agreement shall commence on the date of this Agreement and shall terminate immediately on the termination of this Agreement. Upon termination of the Transferred TIB-Related Marks license and rights granted under this Agreement, Distributor shall cease and discontinue completely further use of the Licensed Trademarks except that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the worldevent the license and rights granted under this Agreement expire after their full terms without renewal, any trademark: Distributor shall have a period of ninety (i90) that is confusingly similar days from the date of such expiration to any use up its supplies of materials on which the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks Licensed Trademarks have been applied prior to the date hereof. Reuters and its Affiliates of expiration as authorized under Section 22.2.1, provide that such use of the Licensed Trademarks shall not knowingly take or permit to otherwise be taken any actions that would detract in a significant way from the goodwill or reputation associated accordance with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxx.
Appears in 1 contract
Samples: Distribution Agreement
Trademark License. 7.1 VGS hereby grants to Americold (aand its Subsidiaries) Reuters the sole and TSI acknowledge exclusive royalty-free, fully paid up right and license (with rights to sublicense) to use in any manner the Versacold Marks anywhere in the Territory in connection with the Designated Business. For purposes of clarity, VGS agrees not to use or permit others to use, directly or indirectly, in any manner the Versacold Marks anywhere in the Territory. Such right and license shall continue during the Term but shall be subject to earlier termination on a country-by-country basis in the event that Reuters has, pursuant to the Existing License Agreement, assigned to TSI all neither Americold nor any of its Subsidiaries has used in any manner (and TFT’shas not had a bona fide intent to use in any manner) rightthe Versacold Marks in such country for any consecutive period of 24 months or more. Once such license in terminated in any specific country in accordance with the foregoing sentence, title and interest it shall not be reinstated except with VGS’s prior written consent, not to be unreasonably withheld. All goodwill in and to the Transferred TIB-Related Versacold Marks shall belong to and inure to the benefit of VGS. Americold acknowledges that VGS is the owner of the Versacold Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewithretains all ownership rights thereon. At TSI’s sole expense, Reuters shall perform such acts VGS represents and execute such documents as are reasonably required warrants to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI hereby grants to Reuters a perpetual, royalty-free, irrevocable, worldwide right and license in favor of Reuters and its Affiliates to use Transferred TIB-Related Marks in connection with the marketing, use, sale and distribution of any of Reuters’ and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ Americold that it has full right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to time, which guidelines shall be reasonable and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates of the Transferred TIB-Related Marks pursuant to enter into this Agreement and any goodwill established thereby shall inure grant the rights and benefits granted to the sole benefit of TSI (or its Affiliates).
(c) Reuters Americold and its Affiliates shall support TSI in policing Subsidiaries hereunder, without violating, breaching or conflicting with the use rights or interests of any other person or entity. During the term of the Transferred TIB-Related license, VGS shall maintain and protect the Versacold Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any manner consistent with VGS’s past practice, but in no event in a manner less than the greater of reasonable care and the Transferred TIB-Related Marks.
(e) Reuters manner in which VGS maintains and protects its Affiliates trademark/service xxxx portfolio. Americold shall maintain use and require its Subsidiaries to use the Versacold Marks in a manner of quality consistent with the quality of products goods and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation currently associated with the Transferred TIB-Related Versacold Marks. Americold shall reasonably cooperate and cause its Subsidiaries to reasonably cooperate with VGS in order to maintain the requisite level of quality control necessary for VGS to maintain its rights in and to the Versacold Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxx.
Appears in 1 contract
Samples: Non Competition and Services Agreement (Americold Realty Trust)
Trademark License. CuraLinc has used and continues to use the Registered Trademark eConnect® in connection with its EAP services (athe “Registered Trademark”) Reuters and TSI acknowledge has developed certain intellectual property and commercial rights in said Trademark, and continues to use said trademark in said capacity throughout the United States. The eConnect® trademark is registered with the United States Patent and Trademark Office under Serial Number 85813748. CuraLinc and Company agree that Reuters hasCuraLinc has exclusive title to and ownership of the Registered Trademark and is entitled to all trademark rights, pursuant including all goodwill associated therewith, associated with the trademark eConnect® as used in connection with the services set forth in this Agreement. Company agrees that during the term of this Agreement and at any time thereafter, it shall not challenge the ownership and other commercial and proprietary rights CuraLinc retains with respect to the Existing License Agreementaforementioned Registered Trademark, assigned shall not challenge the validity of this Agreement and shall not engage in any actions or omissions deemed harmful by CuraLinc to TSI all of its (and TFT’s) such rights. Company acknowledges CuraLinc’s exclusive right, title and interest in and to the Transferred TIB-Related Marks Registered Trademark under applicable law in all jurisdictions, and all goodwill associated therewith. Reuters hereby continues will not, either directly or indirectly, at any time, do anything to assign to TSI discredit, encumber or diminish any part of such right, title title, or interest or challenge the validity of this license. Company agrees that its use of the Registered Trademark will inure entirely to the benefit of CuraLinc. To the extent permitted by law, upon the terms and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expenseconditions set forth herein, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI hereby CuraLinc grants to Reuters Company a perpetualnon-exclusive, non-transferable, royalty-free, irrevocable, worldwide right and free license in favor of Reuters and its Affiliates to use Transferred TIB-Related Marks the Registered Trademark in connection relation Company’s utilization and provision of CuraLinc’s services as set forth in this Agreement and/or the promotion and advertising thereof (the “Licensed Activities”). Company shall use the Registered Trademark only in relation to the Licensed Activities and only in accordance with the marketing, use, sale terms and distribution conditions of any this Agreement. Any use of Reuters’ the Registered Trademark not provided for in this Agreement is expressly prohibited absent express written consent of CuraLinc. Company shall use the Registered Trademark only in the precise form and their Affiliates’ respective products or manner as prescribed herein by CuraLinc. CuraLinc retains the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters specify, from time to time, the format in which guidelines Company shall be reasonable use and display the Registered Trademark, and Company shall only use or display the Registered Trademark in a format approved by CuraLinc. Every use of the Registered Trademark by Company shall incorporate in an appropriate manner the “®” symbol. An example of an approved use is as follows: eConnect®. Company shall not permit any other person and/or company to use the Registered Trademark without CuraLinc’s prior written consent and shall not be inconsistent with assign or transfer in any way its rights and duties derived from this license. Company shall immediately notify CuraLinc in writing of any infringements or third party imitations of any mark and/or design, or other act of a third party that may concern the scope Registered Trademark, of which Licensee becomes aware. CuraLinc shall have the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the sole right to substitute determine whether or not any alternative trademark action shall be taken on account of such infringements or imitations. In the event that CuraLinc determines that action shall be taken on account of such infringements or imitations, it is the sole responsibility of CuraLinc to pursue and bear the Transferred TIB-Related Marks cost of said action. Company shall cooperate with CuraLinc in good faith, at CuraLinc’s expense, in the event such Transferred TIB-Related Xxxx of any action for infringement pursued by CuraLinc. Company is held under no obligation to infringe pursue or bear the cost of any action against infringements or third party imitations of any mark and/or design, or other xxxx; provided that, if TSI advises either or both act of Reuters in writing a third party that may concern the Registered Trademark. The term of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after this license shall generally coincide with the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership Term of the Transferred TIB-Related Marks Agreement, and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates this license shall terminate upon termination of the Transferred TIB-Related Marks pursuant to Agreement. Notwithstanding, either party may terminate this Agreement and any goodwill established thereby shall inure license with or without cause by delivering ten (10) business days written notice to the sole benefit other party. All rights granted by this license, including without limitation, Company’s right to use the Registered Trademark, shall expire upon termination of TSI (this license or its Affiliates).
(c) Reuters the Agreement, and its Affiliates upon termination, Company shall support TSI in policing the immediately cease and desist from all further use of the Transferred TIB-Related Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attentionRegistered Trademark.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxx.
Appears in 1 contract
Trademark License. (a) Reuters and TSI acknowledge that Reuters has, pursuant Subject to the Existing License terms and conditions of this Agreement, assigned to TSI all of its (and TFT’s) right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI Wherify hereby grants to Reuters Company, and Company hereby accepts, a perpetual, royaltynon-free, irrevocable, worldwide exclusive and non-transferable (except as otherwise provided in Section 12.6) right and license in favor of Reuters and its Affiliates (with no right to grant or authorize sublicenses) to use Transferred TIB-Related Marks in connection with the marketing, use, sale Wherify Trademarks for the marketing and distribution of any of Reuters’ Products in the Territory in accordance with this Agreement and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s Wherify's then current trademark usage guidelines, as such guidelines delivered to Reuters are provided and updated by Wherify from time to time. Notwithstanding the foregoing, which guidelines shall be reasonable and the Wherify Trademarks shall not be inconsistent with used except to the scope extent that the Company has obtained Wherify's prior written consent to the particular use, including to the nature and content of the license herein granted and shall not become effective prior materials on which they are being used, to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure to the sole benefit of TSI (or its Affiliates).
(c) Reuters and its Affiliates shall support TSI in policing the use of such materials, and to the Transferred TIB-Related Marks representations of the Wherify Trademarks being used. Accordingly, the Company shall provide Wherify with copies of all materials on which the Wherify Trademarks are proposed to be used for review and approval by Wherify prior to use. Without limiting the foregoing, absent Wherify's prior written consent to the contrary, if any Wherify Trademark is to be used in conjunction with another trademark or logo, such as those of the Company, then the Wherify Trademark shall cooperate with TSI be presented equally legibly and equally prominently, but nevertheless separated from the other so that each appears to be a mark in protecting its own right, distinxx xrom the Transferred TIB-Related Marksother mark. All representations of xxx Wherify Trademarks shall be identical to the representations used by Wherify, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters color and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark officedetail, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks absent Wherify's prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product a change. All use and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx Wherify Trademark shall inure exclusively to the benefit of Wherify. Upon notice from Wherify of its objection to any improper or TSI’s rights in unauthorized use of a Wherify Trademark, Company shall correct or discontinue such usage, as the xxxxcase may be. Company shall indemnify and hold Wherify harmless from and against any and all liability, charges and/or costs, including attorneys' fees and costs, of defending against claims arising from improper or unauthorized use.
Appears in 1 contract
Samples: International Supply and Distribution Agreement (Wherify Wireless Inc)
Trademark License. (a) Reuters and TSI acknowledge that Reuters hasEffective as of the Closing Date, pursuant any license agreement (including, but not limited to the Existing Trademark License Agreement, assigned effective as of March 30, 1998, between VF Brands, Inc. and Vlasic Farms, Inc.) pursuant to TSI which Seller or any Affiliate of Seller has granted to the Company the right to use trademarks, trade names, service marks, domain names or logos that include the word "Vlasic" shall immediately terminate.
(b) Seller or its wholly owned subsidiary, VF Brands, Inc. hereby grants to Buyer, effective upon the Closing Date, a non-transferable, exclusive, royalty free worldwide right and license to use the trademarks, service marks, and trade names listed on Exhibit 6.16, together with all slogans, logotypes, designs and trade dress associated therewith (collectively, the "Vlasic Farms Marks") solely in connection with the Business and on and in connection with the goods and services of the Business, and which are embodied in any stationery, business cards, advertising and promotional materials, and inventory which is, in each case, in existence at Closing and is currently being used in the conduct of the Business ("Business Materials"), for transition purposes. Such license shall run for one year, unless earlier terminated in accordance with this Section 6.16. The Business Materials shall be used solely in the form and consistent with the manner in which such Business Materials have heretofore been used in the Business. No other use of Business Materials shall be made which incorporate, or utilize, the Vlasic Farms Marks without Seller's express written consent, which consent shall not be unreasonably withheld.
(c) All rights and goodwill arising from the use of the Vlasic Farms Marks and/or any similar names or marks (including logos) shall inure solely to Seller's benefit. Buyer agrees that neither Buyer, nor any of its (Affiliates, shall use, directly or indirectly, the word "Vlasic," the Vlasic Farms Marks or any marks similar thereto, as part of Buyer's or any of its Affiliates' own trade names, or in any other way that suggests that there is any relation or affiliation between Seller and TFT’s) Buyer or any of its Affiliates other than that created by this Agreement, or as a trademark, service mark xx trade name for any other business, product or service. Buyer shall have no interest in the Vlasic Farms Marks except as expressly provided in this Agreement and shall not claim any other rights therein. Nothing in this Agreement or in the -41- 47 performance thereof, or that might otherwise be implied by law, shall operate to grant Buyer any right, title and title, or interest in and to the Transferred TIB-Related Vlasic Farms Marks other than as specified in the limited license granted in this Agreement. All rights not expressly granted in this Agreement or herein are reserved to the Seller.
(d) Buyer's right to use the Vlasic Farms Marks shall cease upon the earlier of (i) the end of the one year period immediately after the Closing Date; or (ii) Buyer's failure to cure any material breach with respect to its use of the Vlasic Farms Marks within 30 days of receipt of written notice from Seller. Upon the termination of Buyer's right to use the Vlasic Farms Marks, Buyer shall immediately cease all use of the Vlasic Farms Marks and all goodwill associated therewith. Reuters hereby continues materials bearing the Vlasic Farms Marks (such materials to be returned to Seller or destroyed).
(e) Buyer agrees to assign to TSI any right, title Seller and interest that does hereby assign to Seller all rights it may have acquire, if any, by the operation of law or obtain otherwise in the Transferred TIB-Related Marks Vlasic Farms Marks, including all applications or registrations therefore, along with the goodwill associated therewith. At TSI’s sole Buyer shall, at Seller's expense, Reuters shall perform such acts assist Seller in protecting and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar maintaining Seller's rights in the Transferred TIB-Related Marks. TSI hereby grants to Reuters a perpetual, royalty-free, irrevocable, worldwide right and license in favor of Reuters and its Affiliates to use Transferred TIB-Related Vlasic Farms Marks in connection with Buyer's licensed use hereunder, including preparation and execution of documents necessary or appropriate to register the marketingVlasic Farms Marks or record this Agreement. As between the parties, use, sale and distribution of any of Reuters’ and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks Seller shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to time, which guidelines shall be reasonable and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure to have the sole benefit of TSI (or right to, and in its Affiliates).
(c) Reuters sole discretion may, commence, prosecute, defend, and its Affiliates shall support TSI in policing control any action, concerning the use of the Transferred TIB-Related Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Vlasic Farms Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any In relation to its use of the Transferred TIB-Related Marks fails Vlasic Farms Marks, Buyer agrees to conform maintain the quality of all aspects of the Business (e.g., products and services, advertising) at a level that meets or exceeds those standards maintained by Seller immediately prior to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereofexecution of this Agreement.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of Neither Buyer nor any of Reuters’ products its Affiliates shall directly or indirectly, contest the provision by Reuters of validity of, or take any services; providedaction, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required fail to take any action pursuant to this Section that would injureinconsistent with, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s Seller's rights in the xxxxVlasic Farms Marks (including attempting to register the Vlasic Farms Marks or a mark xxxorporating either the Vlasic Farms Marks or the word "Vlasic" or any mark xxxilar thereto). Buyer's rights under the license granted herein are personal and may not be sublicensed, assigned or otherwise transferred, other than to its Affiliates.
Appears in 1 contract
Samples: Stock Purchase Agreement (Vlasic Foods International Inc)
Trademark License. (a) Reuters and TSI acknowledge that Reuters has, pursuant Subject to the Existing License Agreementterms of this License, assigned to TSI all of its (and TFT’s) right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI Nautilus hereby grants to Reuters a perpetualBuyer an exclusive, non-transferable, non-assignable, non-sublicensable, worldwide, royalty-freebearing, irrevocable, worldwide right license to the Licensed Marks solely for use on Indoor Cycles and license Accessories in favor of Reuters the Commercial Channel and its Affiliates to use Transferred TIB-Related Marks in connection with marketing and selling Indoor Cycles and Accessories in the marketingCommercial Channel. Subject to the terms of this License, useNautilus hereby also grants to Buyer a non-exclusive, sale non-transferable, non-assignable, non-sublicensable, worldwide, royalty-bearing, license to the Licensed Marks solely for use on Indoor Cycles and distribution of any of Reuters’ and their Affiliates’ respective products or Accessories in the provision Permitted Retail Channel. No license is granted by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right this License to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to timethe Licensed Marks, which guidelines shall be reasonable and Buyer shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute use any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Licensed Xxxx is held to infringe and/or any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure to the sole benefit of TSI (or its Affiliates).
(c) Reuters and its Affiliates shall support TSI in policing the use of the Transferred TIB-Related Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is xxxx confusingly similar to any of Licensed Xxxx, for any goods or services other than for Indoor Cycles and Accessories in the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereofChannel. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions The Trademark License of this Section 2.8, TSI 2.B. shall consent be subject to Reuters registering, at its own expenseBuyer’s compliance with Nautilus Quality Standards as to product quality, product appearance, customer satisfaction and company names service as set forth in Section 4.B. below and related marks in Schedule E and Buyer’s compliance with Nautilus Trademark Usage Guidelines as set forth in Section 4.B. below and in Schedule F. Buyer shall prominently use at least the SCHWINN pg. 5 xxxx on all Indoor Cycles sold by Buyer that include are made using any Nautilus Trade Secrets, Copyrighted Works, Nautilus Indoor Cycle Know How, or Nautilus Indoor Cycle Confidential Information, and/or that are covered by any Licensed Patents. Buyer may combine the word XXXXXXX xxxx with Buyer’s trademarks, for example to market “TIB”, which (except for SCHWINN LA” Indoor Cycles provided that the “TIB” component) are not confusingly similar with any TSI XXXXXXX xxxx in existence or applied for at such time, is prominently used. Buyer understands and which are used by Reuters or the marketing, use, sale agrees that Buyer is to focus Buyer’s efforts on sales of Licensed Indoor Cycles and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights Accessories in the xxxxCommercial Channel and that Buyer is only licensed by this License to make up to a maximum of twenty (25) percent of Buyer’s total Net Sales of Licensed Indoor Cycles and Accessories in the Permitted Retail Channel in any Calendar Year.
Appears in 1 contract
Samples: License Agreement
Trademark License. (a) Reuters and TSI acknowledge that Reuters has, pursuant to the Existing License Agreement, assigned to TSI all of its (and TFT’s) right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI OBI hereby grants to Reuters ASI a perpetual, fully paid up and royalty-free, irrevocable, worldwide free right and license in favor of Reuters and its Affiliates to use Transferred TIB-Related Marks the Trademarks in connection with the promotion, marketing, usesale, sale distribution, and distribution delivery of any of Reuters’ the Products in the Field in the Territory during the period in which ASI is authorized to distribute Products hereunder. ASI hereby grants to OBI a fully paid up and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters royalty-free right and its Affiliates’ right license to use such Transferred TIB-Related Marks shall be only any and all of the trademarks, service marks, copyrights and logos owned, used or controlled by ASI in conformance connection with TSI’s trademark usage guidelines delivered to Reuters from time to time, which guidelines shall be reasonable and the performance of OBI's obligations under this Agreement. ASI shall not be inconsistent required to use the Trademarks in connection with the scope promotion, marketing, sale, distribution, or delivery of any Product. ASI shall be entitled to use its own service marks and trademarks, in ASI's sole discretion, subject to its obligations to identify the license herein granted Products as manufactured by OBI as set forth in Section 2.1, in connection with the promotion, marketing, sale, distribution, and delivery of Products, which service marks and trademarks shall remain at all times the exclusive property of ASI. ASI, its Affiliates and Agents shall not become effective prior obscure, change or otherwise modify the Trademarks of OBI and other information that appears on the Products or their packaging as provided by OBI to thirty (30) days after notice thereof has been given by TSIASI. TSI OBI, its Affiliates and Agents shall maintain not obscure, change or otherwise modify ASI's trademarks, service marks, copyrights and logos that appear on the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either Products or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such noticetheir packaging.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership All of ASI's rights with respect to the Trademarks provided hereunder are as set forth in this Section 5.1. There are no implied rights with respect to the Trademarks. All use of the Transferred TIB-Related Marks Trademarks inures to the benefit of OBI and agree not to take such Trademarks shall remain the exclusive property of OBI. All use of any action inconsistent service marks or trademarks of ASI in connection with such ownership. Reuters acknowledges that its use the promotion, marketing, sale, distribution and the use by its Affiliates delivery of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby Product shall inure to the sole benefit of TSI (ASI and such service marks and trademarks shall remain the exclusive property of ASI, and neither Party shall contest the validity, enforcement, or its Affiliates).
(c) Reuters and its Affiliates shall support TSI in policing the use of the Transferred TIB-Related Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI registration of any infringement such service marks or trademarks. ASI shall not contest the validity, enforcement, or registration of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; Trademarks or (ii) that otherwise infringes or dilutes in a significant way any of new Trademarks which the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services Parties agree to use in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality sale of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related MarksProducts.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxx.
Appears in 1 contract
Samples: Private Label Distribution Agreement (Alphatec Holdings, Inc.)
Trademark License. (a) Reuters and TSI acknowledge that Reuters has, pursuant 2.5.1 Subject to the Existing License terms and conditions of this Agreement, assigned to TSI all of its (and TFT’s) right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI INFI hereby grants Licensee an exclusive (even as to Reuters a perpetualINFI), worldwide, royalty-free, irrevocable, worldwide free right and license in favor of Reuters to use and sublicense to its Affiliates to use Transferred TIB-Related Marks in connection with and Sublicensees INFI’s trademarks set forth on Exhibit E (each a “Product Mark”), solely during the marketingTerm, use, sale and distribution solely for the purpose of any of Reuters’ and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to time, which guidelines shall be reasonable and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such noticeCommercializing IPI-145 Products.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges 2.5.2 Licensee shall ensure that its use and the use by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure to the sole benefit of TSI (or its Affiliates).
(c) Reuters and its Affiliates shall support TSI in policing the use of the Transferred TIB-Related Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters IPI-145 Product, and the Manufacture and Commercialization thereof, marketed under the Product Marks shall be consistent with the quality of any IPI-145 Product Manufactured by or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks on behalf of INFI prior to the date hereofEffective Date and with the standards of quality customary in the pharmaceuticals industry. Reuters Licensee shall, and shall cause its Affiliates and the Sublicensees to, at Licensee’s expense, submit a sample of each proposed use of a Product Mark to INFI for approval, which approval shall not knowingly take be unreasonably withheld, conditioned or permit delayed. If INFI reasonably objects to a proposed usage of a Product Mark, it shall give written notice of such objection to Licensee within [**] days of receipt of such sample, specifying the way in which such usage of the Product Mark fails to meet the quality standards, or quality control, style or usage guidelines for such Product or Product Mark. If Licensee, any of its Affiliates or any Sublicensee wishes to use the Product Mark in the manner included in such sample, it must remedy the failure and submit further samples to INFI for approval.
2.5.3 Licensee shall be taken any actions that would detract responsible for all of INFI’s reasonable and documented Out-of-Pocket Expenses and Internal Personnel Expenses incurred on or after November 1, 2016 associated with registering, prosecuting, maintaining and enforcing the Product Mark and shall reimburse INFI within [**] days of Licensee’s receipt of an invoice therefor. Licensee shall have the first right to control the registration, prosecution, maintenance and enforcement of the Product Mark, in INFI’s name. INFI shall, at Licensee’s request, reasonably assist Licensee with respect thereto, and Licensee shall reimburse INFI for its reasonable and documented Out-of-Pocket Expenses and Internal Personnel Expenses related thereto.
2.5.4 If Licensee does not wish to register, prosecute, maintain or enforce a Product Mark in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Markscountry, Licensee shall notify INFI thereof.
(f) 2.5.5 If TSI INFI determines in good faith that Licensee has not registered, prosecuted, maintained or enforced a Product Xxxx in a country in a timely manner, and in any event if INFI reasonably believes it is in danger of losing any rights in such Product Xxxx, then INFI shall have the right to register, prosecute, maintain or enforce such Product Mark in such country, at INFI’s expense, and Licensee shall reasonably assist INFI with respect thereto.
2.5.6 As between the Parties and except as set forth in Section 2.5.7, and subject to the licenses set forth in this Section 2.5, INFI will own the Product Marks. Subject to Section 2.5.7, Licensee, its Affiliates and Sublicensees will not contest, oppose or challenge INFI’s ownership of any Product Mark.
2.5.7 At any time following Licensee’s filing of an NDA in the United States or an MAA in any other country in the Territory with respect to an IPI-145 Product, Licensee may request that INFI transfer ownership of the Product Mark and any Reuters product or service goodwill associated with or bearing therewith (but not any of the Transferred TIB-Related Marks fails Duvelisib IP or any assets of INFI or any of its Affiliates, other than the Product Mark and the Internet domain names described hereafter) and any Internet domain names incorporating any Product Mark, or any variation or part of any Product Mark. Promptly following such request, INFI shall assign ownership of the Product Mark and any goodwill associated therewith (but not any of the Duvelisib IP or any assets of INFI or any of its Affiliates, other than the Product Mark and such Internet domain names) and any Internet domain names incorporating any Product to conform to the quality standards set forth herein, TSI shall provide Reuters and Licensee or its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such timedesignee, and which are used by Reuters or the marketing, use, sale Licensee shall reimburse INFI for its reasonable and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx documented Out-of-Pocket Expenses and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxxInternal Personnel Expenses related thereto.
Appears in 1 contract
Samples: License Agreement (MEI Pharma, Inc.)
Trademark License. (a) Reuters and TSI acknowledge that Reuters has, pursuant Subject to the Existing License terms and conditions of this Agreement, assigned as of the Closing, Seller hereby grants to TSI Purchaser and Purchaser accepts a worldwide, nontransferable, fully-paid and royalty-free right and license under any rights Adaptec may have in the Adaptec Marks, to reproduce and affix: (i) through the end-of-life of each Product, the Adaptec trademark "AIC" to units of the Products as embedded as of the Closing Date in the mask works for such Products; (ii) for one year after the Closing Date, the Adaptec trademark "AIC" in price lists, literature and advertising for the Products; and (iii) on a Product-by-Product basis, until the sale by Purchaser of all Inventory of its such Product transferred to Purchaser on the Closing Date, the Adaptec trademarks "Adaptec" and the stylized "A" logo on the device packaging for the Products (such Adaptec trademarks collectively, the "ADAPTEC MARKS"). Purchaser agrees to cease using the Adaptec Marks upon the expiration of the licenses herein granted. Purchaser acknowledges and TFT’s) agrees that Seller owns and will continue to own all right, title and interest in and to the Transferred TIB-Related Adaptec Marks and in any and all goodwill associated therewiththerein and thereto, whether arising as a result of Purchaser's use of the Adaptec Marks or otherwise. Reuters Purchaser hereby continues assigns and, if and as Seller may request in the future, agrees to assign and affirm assignment to TSI any Seller of all such right, title and interest that it may have or obtain in the Transferred TIB-Related Adaptec Marks or the goodwill associated therewithand related goodwill. At TSI’s sole expenseIf requested by Seller, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx Purchaser will cooperate with Seller in securing any trademark registrations and other similar rights in the Transferred TIB-Related Marks. TSI hereby grants to Reuters indicia of ownership for which Purchaser's cooperation is required as a perpetual, royalty-free, irrevocable, worldwide right and license in favor matter of Reuters and its Affiliates to use Transferred TIB-Related Marks in connection with the marketing, use, sale and distribution of any of Reuters’ and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to time, which guidelines shall be reasonable and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred applicable local law as a result of such actual or alleged infringement that accrue on or after the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure to the sole benefit of TSI (or its Affiliates).
(c) Reuters and its Affiliates shall support TSI in policing the Purchaser's use of the Transferred TIB-Related Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Adaptec Marks. Such cooperation Purchaser agrees to use the Adaptec Marks in substantially the same manner of current use by Reuters and their Affiliates shall be at Seller unless otherwise agreed by Seller in writing. Without limiting the sole expense preceding sentence, without the prior written consent of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
Seller (d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required unreasonably withheld), Purchaser agrees not to take combine, alter or obscure the Adaptec Marks in any action pursuant way or authorize any third party to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxxdo so.
Appears in 1 contract
Trademark License. (a) Reuters and TSI acknowledge that Reuters hasEffective as of the Closing Date, pursuant subject to the Existing License Agreementterms and conditions set forth herein, assigned ARC Dealership will cause Enspire Insurance LLC (“Enspire Insurance”) to TSI grant to Enspire Finance a worldwide, exclusive, non-sublicensable, royalty free, perpetual and non-transferable right (except as set forth herein) and license to use the Enspire Trademarks solely in connection with the financing operations of Enspire Finance as such business is conducted as of the Closing Date. For the avoidance of doubt, Enspire Finance shall have no right to use the Enspire Trademarks for insurance purposes. Except for the limited rights expressly granted to Enspire Finance herein, all of its (and TFT’s) right, title and interest to the Enspire Trademarks shall be owned by and remain with Enspire Insurance. All use of the Enspire Trademarks by Enspire Finance shall inure to the benefit of Enspire Insurance and Enspire Finance acknowledges that Enspire Insurance owns the Enspire Trademarks and agrees that it will not (i) challenge the title or any rights of Enspire Insurance in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI Enspire Trademarks or (ii) claim or assert any right, title and or interest that it may have or obtain in the Transferred TIB-Related Marks or Enspire Trademarks other than the goodwill associated therewithrights expressly granted to Enspire Finance hereunder. At TSIEnspire Finance agrees to cooperate fully and in good faith with Enspire Insurance at the expense of Enspire Insurance for the purpose of securing and preserving Enspire Insurance’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI hereby grants to Reuters a perpetual, royalty-free, irrevocable, worldwide right and license in favor of Reuters and its Affiliates to use Transferred TIB-Related Marks in connection with the marketing, use, sale and distribution of any of Reuters’ and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to time, which guidelines shall be reasonable and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such noticeEnspire Trademarks.
(b) Reuters hereby The Buyer acknowledges the prestige, high reputation and recognizes TSI’s exclusive worldwide ownership goodwill associated with the “Enspire” Trademark and agrees that, in order to preserve such prestige, high reputation and goodwill, the products and services offered in connection with the Enspire Trademark shall be of at least the same quality maintained by the Sellers in connection with such products and services immediately prior to the Closing Date, including compliance with all Laws governing such use. The Buyer shall not (i) use the Enspire Trademarks in any way which would be reasonably expected to allow it to become generic, lose its distinctiveness, become liable to mislead the public, or be detrimental to or inconsistent with the good name, goodwill, reputation and image of the Transferred TIB-Related Marks Sellers; or (ii) use or cause or authorize to be used the Enspire Trademarks in a manner that is likely to cause confusion with the products, services and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates business of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure to the sole benefit of TSI (or its Affiliates)Sellers.
(c) Reuters and its Affiliates shall support TSI in policing If the use Sellers reasonably believe that the Buyer has not maintained the requisite level of quality of the Transferred TIB-Related Marks Enspire Trademarks or is otherwise in violation of this license, the Sellers will provide the Buyer with written notice of such violation, and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming Buyer will have a registered user immediately period of thirty (30) Business Days to cure the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be violation at the Buyer’s sole expense of TSIcost and expense. Each of Reuters and their Affiliates If the Buyer fails to cure the violation within such ten (10) day period, the Sellers shall notify TSI of any infringement of have the Transferred TIB-Related Marks that comes right to its attentionterminate this license upon written notice to the Buyer.
(d) Neither Reuters nor its Affiliates will attempt to register with The Buyer shall notify the Sellers of any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any potential infringement of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way Enspire Trademarks of which it becomes aware. The Buyer shall not take any of action with respect to such potential infringement without the Transferred TIB-Related MarksBuyer’s prior written consent.
(e) Reuters Buyer hereby acknowledges and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates agrees that it shall not knowingly take have the right to sublicense, assign or permit transfer its rights to be taken any actions that would detract in a significant way from use the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with Enspire Trademark without Enspire Insurance’s prior written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any servicesconsent; provided, however, that if consent Buyer may (i) transfer or sublicense this license to such registration is prohibited in any of its Affiliates and (ii) transfer or assign any of its rights or duties under this license to a jurisdictionsuccessor-in-interest of Buyer by way of merger, TSI shallacquisition, at Reuters’ expenseconsolidation, either apply to register sale of all or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights substantially all of the assets of Buyer, similar corporate reorganization or by TSI consistent with the other terms operation of this Agreementlaw; provided provided, that, notwithstanding in the foregoing provisions case of this Section 2.8(geither (i) or (ii), TSI shall not be required to take any action pursuant to this Section that would injureBuyer provides Enspire Insurance with written notice of such sublicense, harm transfer or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxxassignment within thirty (30) days of such event.
(f) THE LICENSE DESCRIBED IN THIS SECTION 5.20 IS BEING GRANTED ON AN “AS IS, WHERE IS” BASIS, AND THE SELLERS DISCLAIM ALL OTHER WARRANTIES, REPRESENTATIONS AND GUARANTIES, WHETHER EXPRESS OR IMPLIED INCLUDING, WITHOUT LIMITATION, ANY REPRESENTATION REGARDING NON-INFRINGEMENT
Appears in 1 contract
Samples: Transaction Agreement (Affordable Residential Communities Inc)
Trademark License. (a) Reuters Certain information on this page has been omitted and TSI acknowledge that Reuters has, pursuant filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the Existing License Agreement, assigned to TSI all of its omitted portions. LifeLock Agreement for Consumer Disclosure Service RES-43904 6
(and TFT’sA) right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI hereby Equifax grants to Reuters Broker a perpetual, royaltynon-free, irrevocable, worldwide right and exclusive license in favor of Reuters and its Affiliates to use Transferred TIB-Related Equifax Marks solely for the purpose of attributing the source of the Credit Information in connection with advertising, marketing and promoting the marketingProducts. All uses of the Equifax Marks must be pre-approved by Equifax, usewhich approval will not be unreasonably withheld. Equifax may terminate the foregoing trademark license if, sale and distribution in its reasonable discretion, Broker’s use of any of Reuters’ and their Affiliates’ respective products the Equifax Xxxx tarnishes, blurs or dilutes the quality associated with the Equifax Xxxx or the provision by Reuters associated goodwill and that problem is not cured within ten (10) days of notice; alternatively, instead of terminating the license in total, Equifax may specify that certain materials, or their Affiliates portions thereof, may not contain the Equifax Xxxx. Title to and ownership of any servicesthe Equifax Marks, Equifax Collateral, Equifax Products and Equifax API (collectively known as the “Equifax Property”) will remain with Equifax. Reuters Broker will use the Equifax Property exactly in the form provided and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s any trademark usage guidelines delivered to Reuters from time to time, which guidelines shall be reasonable and shall policies provided by Equifax. Broker will not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownershipEquifax’s ownership of the Equifax Property and any benefits accruing from use of the Equifax Property will automatically vest in Equifax. Reuters acknowledges Broker will not form any combination marks with Equifax’s Marks. Notwithstanding anything to the contrary, the license granted in this Section 2.7 does not include the right to register any domain name that its includes any Equifax Xxxx or a word likely to be confused with an Equifax Xxxx. In all materials, display of the Equifax logo must include the ® symbol and the attribution clause: “The Equifax logo is a registered trademark owned by Equifax in the United States and other countries.”
(B) Broker agrees that the trademarks, trade names, product names, brands, logos, and service marks (“Vantage Marks”) for VantageScores and VantageScore credit scoring models will remain the sole property of VantageScore Solutions, LLC. Equifax grants and Broker obtains a limited, non-exclusive, non-transferable, royalty free license to use and display the Vantage Marks in connection with [the activities solely permitted by this Agreement. The use by its Affiliates of the Transferred TIB-Related Vantage Marks pursuant under the preceding license is limited to use only in connection with the Services covered by this Agreement Agreement, and the Broker expressly agrees not to use the Vantage Marks in connection with any goodwill established thereby shall inure products or services not covered by this Agreement. Any use of the Vantage Marks is subject to VantageScore Solutions, LLC’s prior written authorization. Broker further agrees it will include the Vantage Marks in all advertising and marketing materials which reference the VantageScores or Vantage models and it will comply with the VantageScore Trademark Policy and Brand Guidelines, which may be changed from time to time upon written notice. All use of the Vantage Marks will accrue solely to the sole benefit of TSI (or its Affiliates)VantageScore Solutions, LLC.
(cC) Reuters and its Affiliates shall support TSI in policing the Broker will not use of the Transferred TIB-Related any Equifax Xxxx or Vantage Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx refer to Equifax or TSI’s rights VantageScore in the xxxxany paid search or pay per click advertising or negative key words.
Appears in 1 contract
Trademark License. (a) Reuters Effective upon the Closing, the Sellers and TSI acknowledge that Reuters has, pursuant the Sellers' affiliates hereby grant to the Existing License AgreementCompany, assigned its Subsidiaries and the Buyers a nonexclusive, nontransferable, royalty free license to TSI all of its (and TFT’s) rightuse, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain solely in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI hereby grants to Reuters a perpetual, royalty-free, irrevocable, worldwide right and license in favor of Reuters Company's and its Affiliates Subsidiaries' businesses as presently conducted or as contemplated to use Transferred TIB-Related Marks be conducted in connection with the marketingExpansion Projects, useany and all trademarks, sale service marks, and distribution trade names owned by the Sellers and the Sellers' affiliates solely to the extent appearing on existing inventory of any of Reuters’ and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters Company and its Affiliates’ Subsidiaries (such as on marketing and other materials), advertisements, or property (such as on vehicles, equipment, pipelines and signs) (collectively "Sellers' Marks"), without right to sublicense, for a period of one year from the Closing Date (the "License Period"). The Buyers and the Company may use such Transferred TIB-Related Marks existing inventory, advertising and property during the License Period. The Buyers and the Company shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to timenot create new inventory, which guidelines shall be reasonable advertising and property using the Sellers' Marks, and shall not be inconsistent with otherwise use commercially reasonable efforts to replace or remove the scope of the license herein granted Sellers' Marks on inventory, advertising and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; property, provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after use shall cease no later than the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership end of the Transferred TIB-Related Marks License Period. The nature and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates quality of all uses of the Transferred TIB-Related Sellers' Marks pursuant to this Agreement made by the Buyer, the Company and any goodwill established thereby its Subsidiaries shall inure conform to the sole benefit Sellers' existing quality standards; provided, that, the way in which the Sellers' Marks are currently used is hereby deemed to meet such quality standards. Immediately upon termination of TSI (or its Affiliates).
(c) Reuters the License Period, the Buyers, the Company and its Affiliates Subsidiaries shall support TSI in policing the cease and desist from all further use of the Transferred TIB-Related Sellers' Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Markswill adopt new trademarks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters service marks, and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with trade names related thereto which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx to Sellers' Marks. All rights not expressly granted in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI 4.21 with respect to the Sellers' Marks are hereby reserved. Any inadvertent failure of the Buyers to comply with their obligations under this provision shall not be required a breach of this Agreement unless the Buyers fail to take any action pursuant use commercially reasonable efforts to promptly remedy such failure after receipt of written notice from the Sellers or to remedy such failure within 30 days of such notice, in which case the Sellers may terminate this Section that would injure, harm or otherwise adversely affect trademark license upon written notice to the goodwill associated with Buyers and the TIB xxxx or TSI’s rights in the xxxxCompany.
Appears in 1 contract
Samples: Purchase Agreement (Midamerican Energy Holdings Co /New/)
Trademark License. (a) Reuters and TSI acknowledge that Reuters has, pursuant Subject to the Existing License Agreementprovisions hereof, assigned Delta hereby grants to TSI all IAT a non-exclusive, non-transferable, limited license for the term of its this Agreement to (i) display Delta’s name, trade name and TFT’scertain service marks as each exists from time to time (the “Delta Marks”) righton the FIDS and directional and operational signage, title and interest at other locations in Terminal 4 for the purpose of providing informational and/or directional information, and (ii) use the Delta Marks in IAT advertising, brochures or other marketing and informational material relating to Terminal 4, in each case described in clause (ii) to be subject to the Transferred TIB-Related prior written approval of Delta. No license or right to display or use the Delta Marks and all goodwill associated therewithis granted to IAT, except as expressly provided herein. Reuters hereby continues Nothing herein shall be construed or deemed to assign convey to TSI IAT any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar property rights in the Transferred TIB-Related Delta Marks. TSI hereby grants to Reuters a perpetual, royalty-free, irrevocable, worldwide right and license in favor of Reuters IAT acknowledges and its Affiliates to use Transferred TIB-Related Marks in connection with the marketing, use, sale and distribution of agrees that any of Reuters’ and their Affiliates’ respective products goodwill or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to time, other rights which guidelines shall be reasonable and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred arise as a result of the use by it of the Delta Marks shall accrue solely to the benefit of the Person owning such actual marks. The license of clause (ii) above to display and use the Delta Marks may be revoked or alleged infringement that accrue limited by Delta upon notice by Delta to IAT. Delta shall provide to IAT on or after prior to the date Effective Date, a description and sample of each of the Delta Marks and thereafter shall provide to IAT written notice of any changes thereto. IAT agrees that all advertising, promotional and other materials bearing a Delta Xxxx shall be submitted for Delta’s prior review and approval before printing, publishing, or distributing any such noticematerial. Each Delta Xxxx must appear exactly as set forth in specifications provided by Delta. Once Delta has approved a specific type of advertisement, IAT may continue to use such Delta Xxxx in the same format during the term of this Agreement without further approval, but subject to Delta’s right to revoke or limit such use on written notice to IAT. At Delta’s direction, IAT shall cause the withholding, discontinuance, recall or cancellation, as appropriate, of any advertising or promotional material (i) not approved by Delta, at IAT’s sole cost and expense, and (ii) previously approved by Delta but subsequently revoked or limited by Delta, at Delta’s sole cost and expense. Delta reserves the right to refuse to participate in any advertising or promotional materials proposed by IAT. Delta shall have sole discretion to determine the acceptability of both the quality and presentation of advertising and promotional materials using any Delta Xxxx. Each Delta Xxxx shall be marked with an ® or SM or other symbol, as appropriate, and reference a legend indicating that “Delta is a registered service xxxx of Delta Air Lines, Inc.” or similar words to that effect. IAT hereby indemnifies and holds harmless Delta from and against any and all Damages that Delta incurs or suffers arising out of a breach by IAT or any IAT’s Party’s breach of this Section. Delta hereby releases each IAT Party from any Damages that Delta incurs or suffers arising out of any IAT Party’s proper display or use of the Delta Marks in accordance with this Section.
(b) Reuters Subject to the provisions hereof, IAT hereby grants to Delta a non-exclusive, non-transferable, limited license for the term of this Agreement to display IAT’s and/or IAT’s name, trade name and certain service marks as each exists from time to time (the “IAT Marks”) in Delta advertising, brochures or other marketing and informational material relating to Terminal 4, subject to the prior written approval of IAT. No license or right to display or use the IAT Marks is granted to Delta, except as expressly provided herein. Nothing herein shall be construed or deemed to convey to Delta any interest or property rights in the IAT Marks, and Delta acknowledges and recognizes TSI’s exclusive worldwide ownership agrees that any goodwill or other rights which arise as a result of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates it of the Transferred TIB-Related IAT Marks pursuant shall accrue solely to the benefit of the Person owning such marks. The license of this Section to display and use the IAT Marks may be revoked or limited by IAT upon notice by IAT to Delta. IAT shall provide to Delta on or prior to the Effective Date, a description and sample of each of the IAT Marks and thereafter shall provide to Delta written notice of any changes thereto. Delta agrees that all advertising, promotional and other materials bearing an IAT Xxxx shall be submitted for IAT’s prior review and approval before printing, publishing, or distributing any such material. Each IAT Xxxx must appear exactly as set forth in specifications provided by IAT. Once IAT has approved a specific type of advertisement, Delta may continue to use such IAT Xxxx in the same format during the term of this Agreement without further approval, but subject to IAT’s right to revoke or limit such use on written notice to Delta. At IAT’s direction, Delta shall cause the withholding, discontinuance, recall or cancellation, as appropriate, of any advertising or promotional material (i) not approved by IAT, at Delta’s sole cost and expense, and (ii) previously approved by IAT but subsequently revoked or limited by IAT, at IAT’s sole cost and expense. IAT reserves the right to refuse to participate in any goodwill established thereby advertising or promotional materials proposed by Delta. IAT shall inure have sole discretion to determine the sole benefit acceptability of TSI (both the quality and presentation of advertising and promotional materials using any IAT Xxxx. Each IAT Xxxx shall be marked with an ® or its Affiliates).
(c) Reuters SM or other symbol, as appropriate, as directed by IAT. Delta hereby indemnifies and its Affiliates shall support TSI in policing the holds harmless IAT from and against any and all Damages that IAT incurs or suffers arising out of a breach by Delta or any Delta Party’s breach of this Section. IAT hereby releases each Delta Party from any Damages that IAT incurs or suffers arising out of any Delta Party’s proper display or use of the Transferred TIB-Related IAT Marks and shall cooperate in accordance with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marksthis Section. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior Notwithstanding anything herein to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform contrary, to the quality standards set forth hereinextent that IAT’s consent is required for Delta’s use of same, TSI shall provide Reuters IAT hereby irrevocably grants to Delta the right to use during the Term the names “Terminal 4” and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy “Terminal Four” or any such failure and provide TSI with evidence thereofother name by which Terminal 4 is commonly known from time to time.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxx.
Appears in 1 contract
Trademark License. Subject to the terms and conditions of this Agreement, and upon Sublicensee’s election to sublicense the Software and Documentation branded with the ProStores Marks (a) Reuters and TSI acknowledge that Reuters hasdefined below in this Section), pursuant to Section 4.3 below, Reseller, on behalf of ProStores, grants to Sublicensee a non-exclusive, non-transferable, non-assignable, revocable, royalty-free license (without the Existing License Agreementright to grant sublicenses) to use and reproduce the ProStores trademarks and trade names of ProStores as notified by Reseller or ProStores (“ProStores Marks”), assigned to TSI all of its (solely in connection with marketing Software and TFT’s) rightin accordance with ProStores’ Reseller Trademark Usage Policy, title which is attached as Exhibit D and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewithincorporated herein by reference. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar Sublicensee is granted no rights in the Transferred TIB-Related MarksProStores Marks other than those expressly granted in this Section 2.3. TSI hereby grants to Reuters a perpetual, royalty-free, irrevocable, worldwide right and license in favor of Reuters and its Affiliates to use Transferred TIB-Related Marks in connection with the marketing, use, sale and distribution of any of ReutersSublicensee acknowledges ProStores’ and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to time, which guidelines shall be reasonable and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree ProStores Marks. Sublicensee agrees not to take any action inconsistent with such ownership. Reuters acknowledges that its use ownership and to cooperate, at Reseller’s or ProStores’ request, in any action (including the use by its Affiliates conduct of the Transferred TIB-Related Marks pursuant legal proceedings) which Reseller or ProStores deems necessary or desirable to this Agreement establish or preserve ProStores’ exclusive rights in and any goodwill established thereby shall inure to the sole benefit ProStores Marks. Sublicensee will not adopt, use, or attempt to register any trademarks or trade names that are confusingly similar to the ProStores Marks or in such a way as to create combination marks with the ProStores Marks. Upon ProStores’ or Reseller’s request, Sublicensee will provide ProStores with samples of TSI (all materials that contain the ProStores Marks prior to their public use, distribution, or its Affiliates).
(c) Reuters display for ProStores’ quality assurance purposes and its Affiliates shall support TSI in policing the will obtain Reseller’s or ProStores’ written approval before such use, distribution, or display. At Reseller’s or ProStores’ request, Sublicensee will modify or discontinue any use of the Transferred TIB-Related ProStores Marks if Reseller or ProStores determines that such use does not comply with ProStores’ Reseller Trademark Usage Policy. Sublicensee acknowledges and shall cooperate agrees that, except with TSI respect to the trademark license granted herein in protecting and to the Transferred TIB-Related ProStores Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar no licenses are granted to any of the Transferred TIB-Related Marks; other trademarks, service marks, or (ii) that otherwise infringes trade names owned by ProStores or dilutes in a significant way any of the Transferred TIB-Related Marksits affiliates.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxx.
Appears in 1 contract
Samples: Sublicense Agreement
Trademark License. (a) Reuters Effective upon the Closing, the Sellers and TSI acknowledge that Reuters has, pursuant the Sellers' affiliates hereby grant to the Existing License AgreementCompany, assigned its Subsidiaries and the Buyers a nonexclusive, nontransferable, royalty free license to TSI all of its (and TFT’s) rightuse, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain solely in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI hereby grants to Reuters a perpetual, royalty-free, irrevocable, worldwide right and license in favor of Reuters Company's and its Affiliates Subsidiaries' businesses as presently conducted or as contemplated to use Transferred TIB-Related Marks be conducted in connection with the marketingExpansion Projects, useany and all trademarks, sale service marks, and distribution trade names owned by the Sellers and the Sellers' affiliates solely to the extent appearing on existing inventory of any of Reuters’ and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters Company and its Affiliates’ Subsidiaries (such as on marketing and other materials), advertisements, or property (such as on vehicles, equipment, pipelines and signs) (collectively "Sellers' Marks"), without right to sublicense, for a period of one year from the Closing Date (the "License Period"). The Buyers and the Company may use such Transferred TIB-Related Marks existing inventory, advertising and property during the License Period. The Buyers and the Company shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to timenot create new inventory, which guidelines shall be reasonable advertising and property using the Sellers' Marks, and shall not be inconsistent with otherwise use commercially reasonable efforts to replace or remove the scope of the license herein granted Sellers' Marks on inventory, advertising and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; property, provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after use shall cease no later than the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership end of the Transferred TIB-Related Marks License Period. The nature and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates quality of all uses of the Transferred TIB-Related Sellers' Marks pursuant to this Agreement made by the Buyer, the Company and any goodwill established thereby its Subsidiaries shall inure conform to the sole benefit Sellers' existing quality standards; provided, that, the way in which the Sellers' Marks are currently used is hereby deemed to meet such quality standards. Immediately upon termination of TSI (or its Affiliates).
(c) Reuters the License Period, the Buyers, the Company and its Affiliates Subsidiaries shall support TSI in policing the cease and desist from all further use of the Transferred TIB-Related Sellers' Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Markswill adopt new trademarks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters service marks, and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with trade names related thereto which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx to Sellers' Marks. All rights not expressly granted in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI 4.21 with respect to the Sellers' Marks are hereby reserved. Any inadvertent failure of the Buyers to comply with their obligations under this provision shall not be required a breach of this Agreement unless the Buyers fail to take any action pursuant use commercially reasonable efforts to promptly remedy such failure after receipt of written notice from the Sellers or to remedy such failure within 30 days of such notice, in which case the Sellers may terminate this Section that would injure, harm or otherwise adversely affect trademark license upon Written notice to the goodwill associated with Buyers and the TIB xxxx or TSI’s rights in the xxxxCompany.
Appears in 1 contract
Trademark License. (a) Reuters and TSI acknowledge that Reuters has, pursuant to the Existing License Agreement, assigned to TSI all of its (and TFT’s) right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI Licensor hereby grants to Reuters a perpetualLicensee, royaltysubject to termination as provided herein, an exclusive (subject to the following sentence), non-freetransferable (except as provided herein), irrevocable, worldwide right and license in favor of Reuters and its Affiliates (i) to use Transferred TIB-Related and display the Licensed Marks in the Territory solely in connection with the marketing, use, sale conduct of the Business and distribution (ii) to register in the Territory one or more Internet domain names using the Licensed Marks. The exclusivity of any of Reuters’ and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to time, which guidelines shall be reasonable and this license shall not be inconsistent with prevent Licensor from undertaking global marketing campaigns using the scope of Licensed Marks that result in promotional materials and information being accessible or distributed into the license herein granted and shall Territory, provided that such campaigns are not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks directed principally at Territory Customers or other Persons in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such noticeTerritory.
(b) Reuters hereby Licensee acknowledges and recognizes TSI’s exclusive worldwide ownership that the quality of the Transferred TIB-Related products and services offered by Licensee under the Licensed Marks will reflect on Licensor, and agree not to take any action inconsistent with such ownershipwill affect the reputation and goodwill of Licensor in the Territory and elsewhere. Reuters acknowledges Licensee agrees that its use and the use by its Affiliates quality of the Transferred TIB-Related products and services that it distributes and offers under the Licensed Marks pursuant to this Agreement and any goodwill established thereby shall inure be of a level at least comparable to the sole benefit quality of TSI (the products and services distributed and offered by Licensor outside of the Territory. In the event that the quality of the products and services offered by Licensee under the Licensed Marks are not at such level, then Licensor shall have the right, upon 30 days' prior written notice to Licensee, to terminate the licenses granted under this Section 2.5, if by the end of such 30 day period Licensee has not improved the quality of the relevant products or its Affiliates)services, or presented Licensor with a corrective plan that is acceptable to Licensor in Licensor's reasonable discretion.
(c) Reuters Licensee agrees that it shall not register any Licensed Xxxx, or any name, logo, trade name, domain name, trademark or design that is confusingly similar thereto, in any jurisdiction, inside or outside the Territory, except as expressly permitted in this Section 2.5(c), in Section 2.5(a)(ii) above or with the prior written consent of Licensor. Licensee shall timely make all registrations and its Affiliates filings, execute all documents required under applicable law and take such other actions as are reasonably necessary to protect the Licensed Marks in the Territory. Licensee shall support TSI have the right to require Licensor diligently to pursue trademark registrations with regard to the Licensed Marks in policing the use Territory. In the event that Licensor fails to file, prosecute or maintain any trademark application (or ensuing trademark registrations) with respect to the Licensed Marks in the Territory as requested by Licensee within a reasonable period of time following such request, Licensee shall have the Transferred TIB-Related Marks right, at Licensor's reasonable expense, to prosecute and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately maintain such trademark applications (or ensuing trademark registrations) on behalf of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attentionLicensor.
(d) Neither Reuters nor Licensee shall provide to Licensor, as represented by the individual designated by the Licensor as its Affiliates will attempt to register with any trademark office, anywhere corporate marketing representative on the Advisory Committee (as defined in the worldShareholder's Agreement), a copy of any trademark: tangible promotional materials, advertising or packaging that will bear the Licensed Marks for review and pre-approval, which approval shall not be unreasonably withheld. Any failure of Licensor to indicate its approval or disapproval of any such promotional materials within fifteen (i15) days after its receipt of such copy shall be deemed acceptance thereof. With respect to promotional materials bearing the Licensed Marks made available in electronic form via publicly accessible portions of the Internet, Licensor shall have the right to review and approve such materials via such publicly accessible portions of the Internet. In the event that is confusingly similar to Licensor disapproves of any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services Licensee's promotional materials bearing the Transferred TIB-Related Licensed Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take (whether in tangible or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth hereinelectronic form), TSI it shall provide Reuters and its Affiliates Licensee with written notice thereof and Reuters and setting forth the grounds for its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx disapproval in existence or applied for at such timereasonable detail, and which are used by Reuters or Licensee cease using such promotional materials until the marketing, use, sale and distribution of any of Reuters’ products or promotional materials have been modified to address the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters grounds for disapproval set forth in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxxwritten notice.
Appears in 1 contract
Trademark License. (a) Reuters and TSI acknowledge that Reuters has, pursuant to the Existing License Agreement, assigned to TSI all of its (and TFT’s) right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI NxStage hereby grants to Reuters Asahi a perpetual, royaltynon-free, irrevocable, worldwide right exclusive and non-transferable license in favor of Reuters and its Affiliates to use Transferred TIB-Related Marks the NxStage trademarks, trade names and logos (hereinafter collectively referred to as “Trademarks”) set forth in Exhibit 2.4(a) solely in connection with the marketing, usepromotion, and sale of Simplex Dialyzers (including Simplex Dialyzers manufactured by NxStage for Asahi under the Production Agreement). Streamline Blood Tubing Sets and distribution of any of Reuters’ Harmony Products (hereinafter collectively referred to as “Contract Products”) for use in Extracorporeal Therapies in accordance with this Agreement. All ownership and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to time, which guidelines shall be reasonable and shall not be inconsistent with the scope goodwill arising out of the license herein granted use of the Trademarks by Asahi shall vest in and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark inure solely to the Transferred TIB-Related Marks benefit of NxStage. Asahi agrees to conduct business related to such Simplex Dialyzers in a manner that reflects favorably at all times on the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided thatproducts, if TSI advises either or both goodwill, and reputation of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such noticeNxStage.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership All representations of the Transferred TIB-Related Marks Trademarks that Asahi intends to use shall first be submitted to NxStage for approval (which shall not be unreasonably withheld or delayed) of design, color, and agree not to take any action inconsistent with such ownershipother details or shall be exact copies of those used by NxStage. Reuters acknowledges that its use and the use by its Affiliates In addition, all representations of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure to the sole benefit of TSI (or its Affiliates).
(c) Reuters and its Affiliates shall support TSI in policing the use of the Transferred TIB-Related Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks Trademarks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters Asahi shall comply with the reasonable usage guidelines provided by NxStage. Asahi shall submit to a NxStage representative promotional materials, packaging and product labels for review and comment by NxStage prior to their first use and prior to any subsequent change or addition. NxStage may change the marketingTrademarks and usage guidelines, useto be used by Asahi only upon [**] prior written notice to Asahi, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters setting forth in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with notice the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxxchanges.
Appears in 1 contract
Samples: Technology and Trademark License Agreement (NxStage Medical, Inc.)
Trademark License. (a) Reuters and TSI acknowledge that Reuters hasEffective as of the date of termination, pursuant to the Existing License Agreement, assigned to TSI all of its (and TFT’s) right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI Licensee hereby grants and agrees to Reuters grant to Licensor a perpetualfully paid-up, royalty-free, irrevocableworldwide, worldwide right transferable, sublicensable (through multiple tiers), perpetual, and irrevocable license in favor of Reuters and its Affiliates to use Transferred TIBthe Trademarks owned or otherwise Controlled by Licensee solely identifying each Licensed Product (which will not include any of Licensee’s housemarks) for the purpose of Commercializing the Licensed Product. In addition, during the period commencing on the effective date of termination of this Agreement and continuing until the date upon which (a) all Regulatory Approvals have been assigned to Licensor, and (b) the applicable Regulatory Authorities in each country in the Territory have approved, and Licensor (or its designee) is prepared to Commercialize the Licensed Products under, new packaging and labeling bearing Licensor’s housemarks (or its designees’ housemarks) and branding for each Licensed Product, Licensee hereby grants and agrees to grant to Licensor a fully paid-Related Marks up, royalty-free, worldwide, transferable, sublicensable (through multiple tiers) license to use any Licensee housemarks and branding that, as of the effective date of termination of this Agreement, are included on the packaging and labeling of any Licensed Product for the purpose of Commercializing the Licensed Products, provided that Licensor complies - 38 - [*] = Certain confidential information contained in connection this document, marked by brackets, has been omitted and filed separately with the marketingSecurities and Exchange Commission pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, use, sale as amended. with any and distribution of any of Reuters’ all use guidelines applicable to such housemarks and their Affiliates’ respective products or the provision branding that are provided by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters Licensee from time to time, which guidelines shall be reasonable ; and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure to the sole benefit of TSI (or its Affiliates).
(c) Reuters and its Affiliates shall support TSI in policing the use of the Transferred TIB-Related Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, howeverfurther, that if consent to Licensee shall only use such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx Licensee housemarks and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action branding pursuant to this Section that would injurefor so long as is reasonably necessary for Licensor to ensure a smooth transition of commercialization of the Licensed Product and to comply with Applicable Law, harm or otherwise adversely affect and Licensor shall use reasonable efforts to convert the goodwill associated packaging and labeling of Licensed Product to Licensor’s housemarks and branding as soon as practical following termination of this Agreement, consistent with the TIB xxxx or TSILicensor’s rights in the xxxxCommercialization needs and Applicable Law.
Appears in 1 contract
Trademark License. (a) Reuters and TSI acknowledge that Reuters has, pursuant Subject to the Existing License terms and conditions of this Agreement, assigned to TSI all of its (and TFT’s) right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI Tegal hereby grants to Reuters Distributor a perpetuallimited, non-exclusive, non-transferable, royalty-free, irrevocable, worldwide right and free license in favor of Reuters and its Affiliates to use Transferred TIB-Related Marks Tegal’s trademarks, trade names, designs, trade dress, copyrights, copyrightable works, markings, insignias, logos, slogans, and legends that Tegal uses in connection with the marketingProducts (collectively, use, sale and distribution of any of Reuters’ and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services“Marks”) for marketing the Products in the Territory. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters Tegal may from time to time, which guidelines shall be reasonable time use other or additional Marks to the Products. Noah agrees to state in appropriate places on all materials using the Marks that the Marks are trademarks of Tegal and shall not be inconsistent with to include the scope appropriate trademark symbols. Noah’s use of the license herein Marks must be in strict conformity with all applicable laws, decrees, regulations and other legal requirements as well as all applicable Tegal usage guidelines. Tegal grants no other rights than expressly granted hereunder, and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such notice.
(b) Reuters hereby Noah acknowledges and recognizes TSITegal’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree the renown of Tegal’s Marks worldwide. Noah agrees not to take any action inconsistent with such ownershipownership and further agrees to take, at Tegal’s expense, any action, including the conduct of legal proceedings, which Tegal deems necessary to establish and preserve Tegal’s exclusive rights in and to its Marks. Reuters acknowledges Noah shall not adopt, use or attempt to register any trademarks or trade names that its use and the use by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure are confusingly similar to the sole benefit Marks or in such a way as to create combination marks with the Marks. Noah shall provide Tegal with samples of TSI (all materials that use the Marks prior to their public use or its Affiliates).
(c) Reuters and its Affiliates shall support TSI display for Tegal’s quality control purposes. Tegal may suspend or terminate, in policing whole or in part, Noah’s license to use the Marks if, in Tegal’s reasonable judgment, Noah’s use of the Transferred TIB-Related Marks does not meet Tegal’s then current trademark usage policy. Tegal agrees to provide Noah in advance any updates to Tegal’s trademark usage policy and shall cooperate with TSI in protecting provide Noah reasonable time, not to exceed 60 days, to make changes to marketing and other materials that incorporate the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall Tegal agrees to notify TSI Noah of any infringement failure to meet the Tegal trademark usage policy and Noah shall have a grace period of the Transferred TIB-Related Marks that comes no more than ten days to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy rectify any such failure and provide TSI with evidence thereofunless Tegal agrees to extend such grace period in Tegal’s sole discretion.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxx.
Appears in 1 contract
Trademark License. (a) Reuters From and TSI acknowledge that Reuters hasafter the closing Purchaser hereby grants Seller a perpetual, pursuant worldwide, nonexclusive, full paid, royalty-free license under the trademarks “XXXXXX” and “XXXXXX BROTHERS,” including any logos containing such names (collectively, the “Licensed Marks”) for any of its existing uses or in connection with the IMD Business and the unwinding of any of its other operations including use in corporate or other entity names. The foregoing license as it relates to the Existing License Agreement, assigned IMD Business shall be assignable by Seller without the need for further consent to TSI a purchaser of all or substantially all of the equity interests in or assets of the IMD Business. Seller shall have the right to sublicense the foregoing license to any of its Subsidiaries and an assignee in connection with a sale of all or substantially all of the IMD Business shall have a right to sublicense such right to any of its Affiliates in connection with the conduct of that business, provided that any such sublicense shall terminate on the date when Seller’s or its assignee’s license terminates. In the remainder of this provision, the licensee or sublicense (Seller or Seller’s assignee or their sublicensees) shall be referred to as “Licensee.” Each Licensee acknowledges Purchaser’s ownership of the Licensed Marks and TFT’s) rightthe validity of the Licensed Marks and shall not register any confusingly similar xxxx in any jurisdiction. All goodwill arising from use of the Licensed Marks shall inure to Purchaser’s benefit. Each Licensee shall use each Licensed Xxxx in connection with any markings or other notices as required by law. Purchaser shall have the right to supervise and control the use of the Licensed Marks by each Licensee, title and interest in and including by reviewing specimens of use of the Licensed Marks, with respect to the Transferred TIB-Related nature and quality of the products and services designed, performed, distributed, sold or otherwise commercialized by such Licensee and the materials used to promote such products and services for the purpose of protecting and maintaining the validity of the Licensed Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect with the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Licensed Marks. TSI hereby grants to Reuters a perpetual, royalty-free, irrevocable, worldwide right Each Licensee shall at all times use the Licensed Marks only in connection with goods and license in favor services of Reuters quality at least as high as that offered by Seller and its Affiliates under such marks immediately prior to the Closing. Any use Transferred TIB-Related of the Licensed Marks in connection with the marketing, use, sale and distribution of any of Reuters’ and their Affiliates’ respective products IMD Business shall include a disclaimer in a form reasonably acceptable to Purchaser indicating that the IMD Business is not affiliated with Seller. Seller or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks assignee shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to time, which guidelines shall be reasonable and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for each Licensee’s compliance with the terms of this Section 8.9 and shall be liable to Purchaser for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of non-compliance by any such actual or alleged infringement that accrue on or after the date of Licensee with any such noticeterms.
(b) Reuters Purchaser hereby acknowledges and recognizes TSI’s exclusive worldwide ownership grants to Seller a perpetual, irrevocable, worldwide, nonexclusive, fully-paid, royalty-free license under all non-Xxxx Purchased Intellectual Property used in or covering any business of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by Seller andor its Affiliates other than the Business in the fields of investment management, investment research, portfolio management and other fields of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure to IMD Business as well as the sole benefit of TSI (or its Affiliates).
(c) Reuters and its Affiliates shall support TSI in policing the use of the Transferred TIB-Related Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI unwinding of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark officeSeller’s other operations, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services solely for use in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality such business outside of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior Business. The foregoing license as it relates to the date hereofIMD Business shall be assignable without the requirement of further consent by Seller in connection with a sale of all or substantially all of the assets of the IMD Business and may be sublicensed to any entity conducting the IMD Business and any successor of the IMD Business and any contractor providing services to such business or successor. Reuters and The foregoing license shall be under Purchased Intellectual Property acquired by Purchaser hereunder that was previously owned by Seller or its Affiliates as well as Purchased Intellectual Property owned by third parties as to which Purchaser shall not knowingly take have after Closing has the right to grant a sublicense without requirement of additional consent or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Markspayment of additional consideration.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxx.
Appears in 1 contract
Samples: Asset Purchase Agreement (Lehman Brothers Holdings Inc)
Trademark License. Netsol and one or more affiliated companies (aindividually or collectively, as the case may be, but referred to as the "Licensors") Reuters hereby grant and TSI acknowledge CFS hereby accepts, a personal, non-exclusive, non-transferable and non-assignable license to CFS to use the certain trademarks and service marks owned by the Licensors identified as such in writing to CFS by Netsol (as expanded by Netsol after the date hereof) (collectively, the "Licensed Marks"), during the term of the Agreement solely for the advertising, marketing and promotion of the Products. The Software shall contain Netsol-designed screen giving development credit to Netsol. CFS shall use the Licensed Marks only in a manner that Reuters hascomplies with the Agreement and the minimum specifications set forth by Netsol as amended from time to time. CFS shall not use the Licensed Marks in connection with the offer, pursuant to sale, advertising, marketing or promotion of any goods, services or other activities other than in connection with the Existing License Agreement, assigned to TSI Products. CFS hereby accepts that Licensors own all of its (and TFT’s) right, title and interest in and to the Transferred TIB-Related Licensed Marks and all goodwill associated therewithattached or which shall become attached thereto, excepting CFS's limited right to use the Licensed Marks pursuant to the license herein granted. Reuters hereby continues CFS may not use the Licensed Marks as part of any domain name. CFS shall not at any time do or cause or suffer to assign be done any act or thing in any way impairing or tending to TSI any impair Licensors' right, title and interest that it may have or obtain in and to the Transferred TIB-Related Marks or the goodwill associated therewithLicensed Marks. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar All rights in the Transferred TIB-Related Marks. TSI hereby grants to Reuters a perpetual, royalty-free, irrevocable, worldwide right and license in favor of Reuters and its Affiliates to use Transferred TIB-Related Licensed Marks in connection with the marketing, use, sale and distribution of any of Reuters’ and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters arising from time to time, which guidelines shall be reasonable and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use thereof by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby CFS shall inure to the sole benefit of TSI (Licensors and Licensors shall have the exclusive right to register or its Affiliates).
(c) Reuters deal with the same. CFS shall not represent in any manner that it has any ownership interest in the Licensed Marks, and its Affiliates shall support TSI in policing the CFS accepts that use of the Transferred TIB-Related Licensed Marks and shall cooperate with TSI not create in protecting its favor any right, title <PAGE> or interest in or to the Transferred TIB-Related Licensed Marks, including cooperating in becoming . CFS shall promptly inform Netsol of any use or infringement by a registered user immediately third party of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Licensed Marks.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as the quality of the Reuters or Reuters Affiliate products and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks fails to conform to the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereof.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxx.
Appears in 1 contract
Samples: Software Distribution Agreement
Trademark License. (a) Reuters Enthone hereby grants to ATMI, upon the terms and TSI acknowledge that Reuters hasconditions of this Agreement, pursuant the non-exclusive right and license to use those Enthone trademarks, including Viaform, related to the Existing License Products including those listed on Schedule I hereto (the "Enthone Trademarks"). Enthone reserves all rights to the Enthone Trademarks except as expressly granted herein to ATMI.
(b) All use of the Enthone Trademarks by ATMI under the terms of this Agreement shall inure to the benefit of Enthone in accordance with the terms of this Agreement. ATMI shall not question or attack, assigned to TSI all of its (and TFT’s) or knowingly perform any act which interferes with, Enthone's right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI hereby grants to Reuters a perpetual, royalty-free, irrevocable, worldwide right and license in favor of Reuters and its Affiliates to use Transferred TIB-Related Marks in connection with the marketing, use, sale and distribution of any of Reuters’ and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to time, which guidelines shall be reasonable and shall not be inconsistent with the scope of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and the use by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure to the sole benefit of TSI (or its Affiliates)Enthone Trademarks.
(c) Reuters and its Affiliates shall support TSI in policing ATMI acknowledges that ATMI is not the use owner of the Transferred TIB-Related Marks Enthone Trademarks. ATMI acknowledges that, except as provided hereunder, ATMI does not have any right to license others to use the Enthone Trademarks and shall cooperate with TSI that Enthone may, in protecting its sole and absolute discretion, use or license others to use the Transferred TIB-Related MarksEnthone Trademarks, including cooperating in becoming a registered user immediately provided, that, such use or license of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates Enthone Trademarks shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes not limit ATMI's rights or otherwise restrict ATMI's ability to meet its attentionobligations under this Agreement.
(d) Neither Reuters nor Subject to the terms and conditions of this Agreement, the license granted to ATMI under Section 12.3(a) is a royalty-free right and license to use the Enthone Trademarks in furtherance of its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademark: (i) that is confusingly similar to any of the Transferred TIB-Related Marks; or (ii) that otherwise infringes or dilutes in a significant way any of the Transferred TIB-Related Marksobligations under this Agreement.
(e) Reuters and its Affiliates shall maintain the quality of products and services in connection with which any Transferred TIB-Related Xxxx is used at a level at least as high as ATMI agrees that the quality of the Reuters or Reuters Affiliate Products sold by ATMI from a second source using the Enthone Trademarks, which second source was chosen by ATMI, shall be reasonably satisfactory to Enthone. ATMI agrees, upon the reasonable request of Enthone, to submit to Enthone samples of the products and services bearing sold using the Transferred TIB-Related Marks prior to Enthone Trademarks for the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Markspurpose of determining compliance herewith.
(f) If TSI reasonably believes ATMI agrees that any Reuters product or service associated in connection with or bearing any the use of the Transferred TIB-Related Marks fails to conform to Enthone Trademarks by ATMI it shall include an appropriate designation that the quality standards set forth herein, TSI shall provide Reuters and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly remedy any such failure and provide TSI with evidence thereofEnthone Trademarks are trademarks by using the appropriate trademark symbol.
(g) Notwithstanding the foregoing provisions of this Section 2.8, TSI shall consent to Reuters registering, at its own expense, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such time, and which are used by Reuters or the marketing, use, sale and distribution of any of Reuters’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxx.
Appears in 1 contract
Samples: Alliance Agreement (Atmi Inc)
Trademark License. (a) Reuters Effective upon the Closing Date, Buyer and TSI acknowledge that Reuters has, pursuant the Company hereby grant to the Existing License Agreement, assigned to TSI all of its (and TFT’s) right, title and interest in and to the Transferred TIB-Related Marks and all goodwill associated therewith. Reuters hereby continues to assign to TSI any right, title and interest that it may have or obtain in the Transferred TIB-Related Marks or the goodwill associated therewith. At TSI’s sole expense, Reuters shall perform such acts and execute such documents as are reasonably required to perfect the foregoing assignment and obtain and enforce trademark, service xxxx and other similar rights in the Transferred TIB-Related Marks. TSI hereby grants to Reuters a perpetual, royalty-free, irrevocable, worldwide right and license in favor of Reuters IO International and its Affiliates Subsidiaries (the “Seller Licensees”) a limited, revocable, non-exclusive license to use Transferred TIB-Related Marks all Trademarks set forth on Schedule 6.21 (the “Buyer Marks”) in a manner consistent with past practice and customary “phase out” use in connection with the marketing, use, sale and distribution of any of Reuters’ and their Affiliates’ respective products or the provision by Reuters or their Affiliates of any services. Reuters and its Affiliates’ right to use such Transferred TIB-Related Marks shall be only in conformance with TSI’s trademark usage guidelines delivered to Reuters from time to time, which guidelines shall be reasonable and shall not be inconsistent with the scope operation of the license herein granted and shall not become effective prior to thirty (30) days after notice thereof has been given by TSI. TSI shall maintain the right to substitute any alternative trademark to the Transferred TIB-Related Marks in the event such Transferred TIB-Related Xxxx is held to infringe any other xxxx; provided that, if TSI advises either or both of Reuters in writing of an alleged infringement, Reuters will be responsible for any and all losses, liabilities, damages, costs and expenses assessed or incurred as a result of such actual or alleged infringement that accrue on or after the date of such notice.
(b) Reuters hereby acknowledges and recognizes TSI’s exclusive worldwide ownership businesses of the Transferred TIB-Related Marks and agree not to take any action inconsistent with such ownership. Reuters acknowledges that its use and Seller Licensees, for the use by its Affiliates of the Transferred TIB-Related Marks pursuant to this Agreement and any goodwill established thereby shall inure to the sole benefit of TSI (or its Affiliates).
(c) Reuters and its Affiliates shall support TSI in policing the use of the Transferred TIB-Related Marks and shall cooperate with TSI in protecting the Transferred TIB-Related Marks, including cooperating in becoming a registered user immediately of the Transferred TIB-Related Marks. Such cooperation by Reuters and their Affiliates shall be at the sole expense of TSI. Each of Reuters and their Affiliates shall notify TSI of any infringement of the Transferred TIB-Related Marks that comes to its attention.
(d) Neither Reuters nor its Affiliates will attempt to register with any trademark office, anywhere in the world, any trademarkfollowing time periods: (i) for 60 days, for uses on the Internet and in social media; and (ii) for 90 days, for uses on publicly distributed physical and tangible materials, including all internal office supplies and similar collateral that is confusingly similar are not visible to the public. After such time periods, the license granted shall automatically terminate, provided that the Seller Licensees may continue to use the Buyer Marks thereafter to the extent required by applicable Law. For the avoidance of doubt, all such use shall solely be in connection with the businesses of the Seller Licensees in the same manner, purpose, and scope as the Buyer Marks are in use by such Persons immediately prior to the Closing Date, and in no event shall such Persons: (a) increase the scope of use of the Buyer Marks, including use on any new goods or services, or in any new media, geographic territories, or channels of trade; and/or (b) alter or modify the Buyer Marks in any way, or form composite marks of which any of the Transferred TIB-Related Marks; Buyer Marks is a part. Sellers will, or (ii) shall cause IO International and/or its Subsidiaries to, file with all applicable governmental authorities within 30 days after the Closing Date to change all corporate, trade and d/b/a name registrations that otherwise infringes or dilutes in a significant way are owned by Sellers and/or their Affiliates that contain any of the Transferred TIB-Related Buyer Marks.
(e) Reuters , to new names that do not include any of the Buyer Marks or any portion thereof. The Seller Licensees will diligently and its Affiliates shall maintain in good faith pursue such name changes. The Seller Licensees’ use of the Buyer Marks, and the nature and quality of the products and services in connection with which any Transferred TIB-Related Xxxx is used at a level related thereto shall be maintained at least as high as at the levels of quality of in existence on the Reuters or Reuters Affiliate products Closing Date. If Buyer and services bearing the Transferred TIB-Related Marks prior to the date hereof. Reuters and its Affiliates shall not knowingly take or permit to be taken any actions Company reasonably determine that would detract in a significant way from the goodwill or reputation associated with the Transferred TIB-Related Marks.
(f) If TSI reasonably believes that any Reuters product or service associated with or bearing any of the Transferred TIB-Related Marks Seller Licensees fails to conform to maintain a consistent level of quality in accordance with the quality standards set forth hereinforegoing, TSI shall provide Reuters then Buyer and/or the Company may request that Sellers take, or cause IO International and its Affiliates with written notice thereof and Reuters and its Affiliates shall promptly Subsidiaries to take, reasonable steps to remedy any such failure deficiencies and provide TSI Sellers shall, or shall cause IO International and its Subsidiaries to, promptly comply with evidence thereof.
such requests. Within (gI) Notwithstanding 60 days after the foregoing provisions of this Section 2.8Closing Date, TSI shall consent to Reuters registeringfor uses on the Internet and in social media; and (II) 90 days after the Closing Date, at its own expensefor uses on publicly distributed physical and tangible materials, product and company names and related marks that include the word “TIB”, which (except for the “TIB” component) are not confusingly similar with any TSI xxxx in existence or applied for at such timeBuyer shall, and which are used by Reuters or shall cause the marketingCompany and the Company Subsidiaries to, use, sale remove from such venues and distribution of any of Reutersitems all references to the Company’s and its Subsidiaries’ products or the provision by Reuters of any services; provided, however, that if consent to such registration is prohibited in a jurisdiction, TSI shall, at Reuters’ expense, either apply to register or assist Reuters in applying to register such name and/or xxxx and license it to Reuters in such jurisdiction. TSI and Reuters shall enter into a customary license agreement embodying such terms and limited usage rights by TSI consistent with the other terms of this Agreement; provided that, notwithstanding the foregoing provisions of this Section 2.8(g), TSI shall not be required to take any action pursuant to this Section that would injure, harm or otherwise adversely affect the goodwill associated with the TIB xxxx or TSI’s rights in the xxxxSingapore business.
Appears in 1 contract
