Common use of Use of Retained Names and Marks Clause in Contracts

Use of Retained Names and Marks. (a) Bioverativ hereby acknowledges that Biogen or its Affiliates or its or their licensors own all right, title and interest in and to the company names (including “Biogen” and “Biogen Hemophilia”), trade names, logos, trade dress and other Trademarks, together with all variations, translations, transliterations and acronyms thereof and all company names, Trademarks, Internet domain names, social media accounts, addresses and all other identifiers and other identifiers of source or goodwill containing, incorporating or associated with any of the foregoing, excluding, on and after the Distribution Date, Intellectual Property included in the Bioverativ Assets (collectively, the “Retained Names and Marks”), and that, except as expressly provided below, any and all right of Bioverativ to use the Retained Names and Marks shall terminate as of the Distribution Date and shall immediately revert to Biogen or its Affiliates, along with any and all goodwill associated therewith. Bioverativ further acknowledges that it has no rights in any of the Retained Names and Marks, and that it is not acquiring any rights, directly or indirectly, to use the Retained Names and Marks, except as expressly provided herein. (b) Bioverativ shall, during the six (6) months following the Regulatory Authorization Date (the “Applicable Transition Period”), be entitled to use (and shall have a limited non-exclusive, non-transferable license to use, without the right to sublicense, the Retained Names and Marks used therein or thereon), solely in connection with the operation of the Bioverativ Business as operated immediately prior to the Distribution Date, all of the Bioverativ Business’s existing stocks of signs, letterheads, invoices, advertisements and promotional materials and all website content and other documents and materials in existence and used by Biogen or its Affiliates in the Bioverativ Business as of the Distribution Effective Time, and contained in the Bioverativ Assets (collectively, the “Existing Stock”), in each case, containing the Retained Names and Marks, after which Applicable Transition Period Bioverativ shall cause the removal or obliteration of all Retained Names and Marks from such Existing Stock or cease using such Existing Stock; provided, however, that the Applicable Transition Period shall be twelve (12) months following the Regulatory Authorization Date for (A) all Existing Stock to the extent related to Bioverativ Products and (B) Bioverativ’s use of “formerly Biogen Hemophilia” as a tag line or in any Bioverativ logo. Notwithstanding the foregoing, with respect to any and all Existing Stock related to Bioverativ Products, Bioverativ shall be permitted to use Retained Names and Marks in or on such Existing Stock following the Applicable Transition Period to the extent required or permitted by any applicable Governmental Entity; provided, that Bioverativ shall use commmercially reasonable efforts to cease using Retained Names and Marks as soon as practicable following the expiration of the Applicable Transition Period. Upon Biogen’s request, Bioverativ shall promptly execute all assignment, transfer and other documents, and, at Biogen’s sole cost and expense, take all steps, in each case, that are necessary to confirm, effectuate or otherwise evidence Biogen’s and its Affiliates’ or any of its or their licensors’ rights, title and interests in and to, and control over, the Retained Names and Marks, including any registration or application thereof. (c) Except as expressly provided in this Section 5.3 or to the extent contemplated in the IP License Agreement, no other right to use the Retained Names and Marks, any other rights in the Trademarks of Biogen or its Affiliates (or any of its or their licensors) is granted by Biogen or its Affiliates to Bioverativ, its Affiliates or, after the Distribution Date, the Bioverativ Business, whether by implication or otherwise, and nothing hereunder permits Bioverativ, its Affiliates or, after the Distribution Date, the Bioverativ Business to use the Retained Names and Marks in any manner, other than in connection with the Existing Stock as set forth in this Section 5.4, or to register or seek to register, or to permit any Third Party to register or to seek to register, any of the Retained Names and Marks or any other rights in Trademarks of Biogen or its Affiliates not transferred to Bioverativ or Bioverativ’s Affiliates pursuant to this Agreement in any jurisdiction. Bioverativ shall ensure that all use of the Retained Names and Marks in connection with the Bioverativ Business, after the Distribution Date, as provided in this Section 5.4, shall (i) be only with respect to goods and services of a level of quality equal to or greater than the quality of goods and services with respect to which Biogen and its Affiliates used the Retained Names and Marks immediately prior to the Distribution Date, (ii) comply with all reasonable trademark usage restrictions or other guidelines furnished by Biogen or its Affiliates, as applicable, to Bioverativ with respect to the use of such Retained Names and Marks and (iii) comply with all applicable Laws. Any and all goodwill generated by the use of the Retained Names and Marks as permitted under this Section 5.4 shall inure solely to the benefit of Biogen and its Affiliates (or its or their licensors), and if Bioverativ obtains any goodwill, right, title or interest in or to any of the Retained Names and Marks, Bioverativ shall assign and hereby irrevocably assigns to Biogen or its Affiliates all such goodwill, rights, title and interests. In any event, Bioverativ shall not, and shall cause its Affiliates not to, and, after the Distribution Date, the Bioverativ Business not to, use the Retained Names and Marks in any manner that would damage or tarnish the reputation of Biogen or its Affiliates or the goodwill associated with the Retained Names and Marks, or take any action that would adversely affect Biogen’s or its Affiliates’ (or its or their licensor(s)’) rights in any of the Retained Names and Marks or the validity, enforceability or distinctiveness of any of the Retained Names and Marks or any registrations or applications therefor. Following the Applicable Transition Period, Bioverativ shall cease all use of any of the Retained Names and Marks and it shall not, and shall cause its Affiliates not to, adopt, use, register or seek to register any rights in Trademarks that are substantially similar to, confusingly similar to or dilutive of any of the Retained Names and Marks (including the trade dress used with the Bioverativ Products prior to the Distribution Date). (d) Bioverativ agrees that none of Biogen or its Affiliates (or any of its or their licensors) shall have any responsibility for claims by Third Parties arising out of, or relating to, the use by Bioverativ or any of its Affiliates of any Retained Names and Marks after the Distribution Date, other than such claims that the use of the Retained Names and Marks in connection with the Bioverativ Business in accordance with the terms and conditions of this Section 5.4 or the IP License Agreement infringes the Intellectual Property rights of any Third Party. Bioverativ hereby acknowledges and agrees that in the event of any breach or threatened breach of this Section 5.4, Biogen shall have the right to specific performance and injunctive or other equitable relief in accordance with Section 10.12, in addition to any and all other rights and remedies at law or in equity, and all such rights and remedies shall be cumulative.

Use of Retained Names and Marks. (a) Bioverativ hereby acknowledges that Biogen or its Affiliates or its or their licensors own all right, title and interest in and to the company names (including “Biogen” and “Biogen Hemophilia”), trade names, logos, trade dress and other Trademarks, together with all variations, translations, transliterations and acronyms thereof and all company names, Trademarks, Internet domain names, social media accounts, addresses and all other identifiers and other identifiers of source or goodwill containing, incorporating or associated with any of the foregoing, excluding, on and after the Distribution Date, Intellectual Property included in the Bioverativ Assets (collectively, the “Retained Names and Marks”), and that, except as expressly provided below, any and all right of Bioverativ to use the Retained Names and Marks shall terminate as of the Distribution Date and shall immediately revert to Biogen or its Affiliates, along with any and all goodwill associated therewith. Bioverativ further acknowledges that it has no rights in any of the Retained Names and Marks, and that it is not acquiring any rights, directly or indirectly, to use the Retained Names and Marks, except as expressly provided herein. (b) Bioverativ shall, during the six (6) months following the Regulatory Authorization Date (the “Applicable Transition Period”), be entitled to use (and shall have a limited non-exclusive, non-transferable license to use, without the right to sublicense, the Retained Names and Marks used therein or thereon), solely in connection with the operation of the Bioverativ Business as operated immediately prior to the Distribution Date, all of the Bioverativ Business’s existing stocks of signs, letterheads, invoices, advertisements and promotional materials and all website content and other documents and materials in existence and used by Biogen or its Affiliates in the Bioverativ Business as of the Distribution Effective Time, and contained in the Bioverativ Assets (collectively, the “Existing Stock”), in each case, containing the Retained Names and Marks, after which Applicable Transition Period Bioverativ shall cause the removal or obliteration of all Retained Names and Marks from such Existing Stock or cease using such Existing Stock; provided, however, that the Applicable Transition Period shall be twelve (12) months following the Regulatory Authorization Date for (A) all Existing Stock to the extent related to Bioverativ Products and (B) Bioverativ’s use of “formerly Biogen Hemophilia” as a tag line or in any Bioverativ logo. Notwithstanding the foregoing, with respect to any and all Existing Stock related to Bioverativ Products, Bioverativ shall be permitted to use Retained Names and Marks in or on such Existing Stock following the Applicable Transition Period to the extent required or permitted by any applicable Governmental Entity; provided, that Bioverativ shall use commmercially commercially reasonable efforts to cease using Retained Names and Marks as soon as practicable following the expiration of the Applicable Transition Period. Upon Biogen’s request, Bioverativ shall promptly execute all assignment, transfer and other documents, and, at Biogen’s sole cost and expense, take all steps, in each case, that are necessary to confirm, effectuate or otherwise evidence Biogen’s and its Affiliates’ or any of its or their licensors’ rights, title and interests in and to, and control over, the Retained Names and Marks, including any registration or application thereof. (c) Except as expressly provided in this Section 5.3 or to the extent contemplated in the IP License Agreement, no other right to use the Retained Names and Marks, any other rights in the Trademarks of Biogen or its Affiliates (or any of its or their licensors) is granted by Biogen or its Affiliates to Bioverativ, its Affiliates or, after the Distribution Date, the Bioverativ Business, whether by implication or otherwise, and nothing hereunder permits Bioverativ, its Affiliates or, after the Distribution Date, the Bioverativ Business to use the Retained Names and Marks in any manner, other than in connection with the Existing Stock as set forth in this Section 5.4, or to register or seek to register, or to permit any Third Party to register or to seek to register, any of the Retained Names and Marks or any other rights in Trademarks of Biogen or its Affiliates not transferred to Bioverativ or Bioverativ’s Affiliates pursuant to this Agreement in any jurisdiction. Bioverativ shall ensure that all use of the Retained Names and Marks in connection with the Bioverativ Business, after the Distribution Date, as provided in this Section 5.4, shall (i) be only with respect to goods and services of a level of quality equal to or greater than the quality of goods and services with respect to which Biogen and its Affiliates used the Retained Names and Marks immediately prior to the Distribution Date, (ii) comply with all reasonable trademark usage restrictions or other guidelines furnished by Biogen or its Affiliates, as applicable, to Bioverativ with respect to the use of such Retained Names and Marks and (iii) comply with all applicable Laws. Any and all goodwill generated by the use of the Retained Names and Marks as permitted under this Section 5.4 shall inure solely to the benefit of Biogen and its Affiliates (or its or their licensors), and if Bioverativ obtains any goodwill, right, title or interest in or to any of the Retained Names and Marks, Bioverativ shall assign and hereby irrevocably assigns to Biogen or its Affiliates all such goodwill, rights, title and interests. In any event, Bioverativ shall not, and shall cause its Affiliates not to, and, after the Distribution Date, the Bioverativ Business not to, use the Retained Names and Marks in any manner that would damage or tarnish the reputation of Biogen or its Affiliates or the goodwill associated with the Retained Names and Marks, or take any action that would adversely affect Biogen’s or its Affiliates’ (or its or their licensor(s)’) rights in any of the Retained Names and Marks or the validity, enforceability or distinctiveness of any of the Retained Names and Marks or any registrations or applications therefor. Following the Applicable Transition Period, Bioverativ shall cease all use of any of the Retained Names and Marks and it shall not, and shall cause its Affiliates not to, adopt, use, register or seek to register any rights in Trademarks that are substantially similar to, confusingly similar to or dilutive of any of the Retained Names and Marks (including the trade dress used with the Bioverativ Products prior to the Distribution Date). (d) Bioverativ agrees that none of Biogen or its Affiliates (or any of its or their licensors) shall have any responsibility for claims by Third Parties arising out of, or relating to, the use by Bioverativ or any of its Affiliates of any Retained Names and Marks after the Distribution Date, other than such claims that the use of the Retained Names and Marks in connection with the Bioverativ Business in accordance with the terms and conditions of this Section 5.4 or the IP License Agreement infringes the Intellectual Property rights of any Third Party. Bioverativ hereby acknowledges and agrees that in the event of any breach or threatened breach of this Section 5.4, Biogen shall have the right to specific performance and injunctive or other equitable relief in accordance with Section 10.12, in addition to any and all other rights and remedies at law or in equity, and all such rights and remedies shall be cumulative.

Use of Retained Names and Marks. (a) Bioverativ hereby acknowledges that Biogen or its Affiliates or its or their licensors own all right, title and interest in and to the company names (including “Biogen” and “Biogen Hemophilia”), trade names, logos, trade dress and other Trademarks, together with all variations, translations, transliterations and acronyms thereof and all company names, Trademarks, Internet domain names, social media accounts, addresses and all other identifiers and other identifiers of source or goodwill containing, incorporating or associated with any of the foregoing, excluding, on and after the Distribution Date, Intellectual Property included in the Bioverativ Assets (collectively, the “Retained Names and Marks”), and that, except as expressly provided below, any and all right of Bioverativ to use the Retained Names and Marks shall terminate as of the Distribution Date and shall immediately revert to Biogen or its Affiliates, along with any and all goodwill associated therewith. Bioverativ further acknowledges that it has no rights in any of the Retained Names and Marks, and that it is not acquiring any rights, directly or indirectly, to use the Retained Names and Marks, except as expressly provided herein. (b) Bioverativ shall, during the six (6) months following the Regulatory Authorization Date (the “Applicable Transition Period”), be entitled to use (and shall have a limited non-exclusive, non-transferable license to use, without the right to sublicense, the Retained Names and Marks used therein or thereon), solely in connection with the operation of the Bioverativ Business as operated immediately prior to the Distribution Date, all of the Bioverativ Business’s existing stocks of signs, letterheads, invoices, advertisements and promotional materials and all website content and other documents and materials in existence and used by Biogen or its Affiliates in the Bioverativ Business as of the Distribution Effective Time, and contained in the Bioverativ Assets (collectively, the “Existing Stock”), in each case, containing the Retained Names and Marks, after which Applicable Transition Period Bioverativ shall cause the removal or obliteration of all Retained Names and Marks from such Existing Stock or cease using such Existing Stock; provided, however, that the Applicable Transition Period shall be twelve (12) months following the Regulatory Authorization Date for (A) all Existing Stock to the extent related to Bioverativ Products and (B) Bioverativ’s 's use of “formerly Biogen Hemophilia” as a tag line or in any Bioverativ logo. Notwithstanding the foregoing, with respect to any and all Existing Stock related to Bioverativ Products, Bioverativ shall be permitted to use Retained Names and Marks in or on such Existing Stock following the Applicable Transition Period to the extent required or permitted by any applicable Governmental Entity; provided, that Bioverativ shall use commmercially reasonable efforts to cease using Retained Names and Marks as soon as practicable following the expiration of the Applicable Transition Period. Upon Biogen’s request, Bioverativ shall promptly execute all assignment, transfer and other documents, and, at Biogen’s sole cost and expense, take all steps, in each case, that are necessary to confirm, effectuate or otherwise evidence Biogen’s and its Affiliates’ or any of its or their licensors’ rights, title and interests in and to, and control over, the Retained Names and Marks, including any registration or application thereof. (c) Except as expressly provided in this Section 5.3 or to the extent contemplated in the IP License Agreement, no other right to use the Retained Names and Marks, any other rights in the Trademarks of Biogen or its Affiliates (or any of its or their licensors) is granted by Biogen or its Affiliates to Bioverativ, its Affiliates or, after the Distribution Date, the Bioverativ Business, whether by implication or otherwise, and nothing hereunder permits Bioverativ, its Affiliates or, after the Distribution Date, the Bioverativ Business to use the Retained Names and Marks in any manner, other than in connection with the Existing Stock as set forth in this Section 5.4, or to register or seek to register, or to permit any Third Party to register or to seek to register, any of the Retained Names and Marks or any other rights in Trademarks of Biogen or its Affiliates not transferred to Bioverativ or Bioverativ’s Affiliates pursuant to this Agreement in any jurisdiction. Bioverativ shall ensure that all use of the Retained Names and Marks in connection with the Bioverativ Business, after the Distribution Date, as provided in this Section 5.4, shall (i) be only with respect to goods and services of a level of quality equal to or greater than the quality of goods and services with respect to which Biogen and its Affiliates used the Retained Names and Marks immediately prior to the Distribution Date, (ii) comply with all reasonable trademark usage restrictions or other guidelines furnished by Biogen or its Affiliates, as applicable, to Bioverativ with respect to the use of such Retained Names and Marks and (iii) comply with all applicable Laws. Any and all goodwill generated by the use of the Retained Names and Marks as permitted under this Section 5.4 shall inure solely to the benefit of Biogen and its Affiliates (or its or their licensors), and if Bioverativ obtains any goodwill, right, title or interest in or to any of the Retained Names and Marks, Bioverativ shall assign and hereby irrevocably assigns to Biogen or its Affiliates all such goodwill, rights, title and interests. In any event, Bioverativ shall not, and shall cause its Affiliates not to, and, after the Distribution Date, the Bioverativ Business not to, use the Retained Names and Marks in any manner that would damage or tarnish the reputation of Biogen or its Affiliates or the goodwill associated with the Retained Names and Marks, or take any action that would adversely affect Biogen’s or its Affiliates’ (or its or their licensor(s)’) rights in any of the Retained Names and Marks or the validity, enforceability or distinctiveness of any of the Retained Names and Marks or any registrations or applications therefor. Following the Applicable Transition Period, Bioverativ shall cease all use of any of the Retained Names and Marks and it shall not, and shall cause its Affiliates not to, adopt, use, register or seek to register any rights in Trademarks that are substantially similar to, confusingly similar to or dilutive of any of the Retained Names and Marks (including the trade dress used with the Bioverativ Products prior to the Distribution Date). (d) Bioverativ agrees that none of Biogen or its Affiliates (or any of its or their licensors) shall have any responsibility for claims by Third Parties arising out of, or relating to, the use by Bioverativ or any of its Affiliates of any Retained Names and Marks after the Distribution Date, other than such claims that the use of the Retained Names and Marks in connection with the Bioverativ Business in accordance with the terms and conditions of this Section 5.4 or the IP License Agreement infringes the Intellectual Property rights of any Third Party. Bioverativ hereby acknowledges and agrees that in the event of any breach or threatened breach of this Section 5.4, Biogen shall have the right to specific performance and injunctive or other equitable relief in accordance with Section 10.12, in addition to any and all other rights and remedies at law or in equity, and all such rights and remedies shall be cumulative.