Use of Trade or Service Marks. (a) As of the Closing Date, Seller (or its Affiliate) hereby grants to Purchaser, and Purchaser hereby accepts, a non-exclusive, non-transferable, non-sublicensable, royalty-free license in the Territory to use the Seller Brands, solely to the extent necessary to allow the Purchaser to Distribute the finished Product inventory and use the Promotional Materials and otherwise perform its obligations under this Agreement and the Other Agreements (the "Seller Brand License"). Purchaser acknowledges that the Seller Brand License is being granted solely for transitional purposes and that Purchaser shall use Commercially Reasonable Efforts to as quickly as is reasonably possible to cease its use of the Seller Brands after the Closing Date. Notwithstanding foregoing, the Seller Brand License will terminate (i) with respect to Promotional Materials containing the Seller Brands thirty (30) Business Days after the date upon which Purchaser receives notice from the FDA that Purchaser's promotional materials for Products and/or Product Improvements which do not refer to the Seller Brands have been pre-cleared by the FDA pursuant to 21 CFR 314 Subpart H, and (ii) with respect to packaging and labeling of the Products and/or Product Improvements containing Seller Brands, on the later of, exhaustion of any finished Products labeled with Seller Brands or six (6) months following receipt by Purchaser of labeling approval for Products and/or Product Improvement from the FDA. (b) Purchaser shall not (i) add any other labels or marks to, or otherwise alter, the Seller Brands as used in the Business as of the Closing Date; (ii) change in any way the style of the Seller Brands as used in the Business as of the Closing Date; or (iii) otherwise use the Seller Brands in any manner other than as specifically provided in this Section 8.2. (c) Purchaser acknowledges Seller's (or its Affiliate's) ownership of the Seller Brands, shall do nothing inconsistent with such ownership, agrees that all use of the Seller Brands by Purchaser shall inure to the benefit and be on behalf of the Seller (or its Affiliate), and agrees not to challenge Seller's (or its Affiliate's) title to the Seller Brands. Nothing in this Agreement shall give Purchaser any right, title or interest in the Seller Brands other than the right to use the Seller Brands strictly in accordance with this Section 8.2. All use of the Seller Brands by Purchaser under this Section 8.2 shall conform to the standards followed by the Seller (or its Affiliate) in operating the Business prior to the Closing Date, and upon reasonable notice to Purchaser, Seller (or its Affiliates) shall have the right to review the standards used by Purchaser to operate the Business after the Closing Date to ensure Purchaser's compliance with this requirement related to the Seller Brands. Within ten (10) Business Days of the Execution Date, Seller shall provide Purchaser with written standards which Seller expects Purchaser to adhere to in order for Purchaser to be in compliance with this Section 8.2(c). (d) Purchaser shall not have the right to, and shall not, sublicense, assign, pledge, grant or otherwise encumber or transfer to any Third Party any rights licensed by the Seller (or its Affiliate) to Purchaser under this Section 8.2 without the Seller's prior written consent. The Parties understand and agree that, in addition to all other legal remedies, the Seller (and its Affiliates) shall be entitled to immediate injunctive relief in order to enforce the terms of this Section 8.2. (e) Nothing in this Section 8.2, or any other provision of this Agreement or any provision of the Other Agreements, shall grant the Purchaser any rights in any of Seller's Internet domain names, registrations or applications for registration, or renewals thereof, registered in the United States or any other country or jurisdiction throughout the world, except as such Internet domain names, registrations or applications for registration, or renewals thereof are included as part of the Purchased Assets. (f) Other than as expressly provided in this Section 8.2 or elsewhere in this Agreement or the Other Agreements, Purchaser shall not use or permit any of its Affiliates or distributors to use any of the Seller Brands or any other corporate signs, trademarks or service marks or names now or hereafter owned or used by Seller or any of its Affiliates, other than the Product Intellectual Property on the terms provided herein and in the Other Agreements.
Appears in 2 contracts
Samples: Asset Purchase and Sale Agreement (Prometheus Laboratories Inc), Asset Purchase and Sale Agreement (Prometheus Laboratories Inc)
Use of Trade or Service Marks. (a) As of the Closing Date, Seller (or its Affiliate) hereby grants to Purchaser, and Purchaser hereby accepts, a non-exclusive, non-transferable, non-sublicensable, royalty-free license in the Territory to use the Seller Brands, solely to the extent necessary to allow the Purchaser to Distribute the finished Product inventory and use the Promotional Materials and otherwise perform its obligations under this Agreement and the Other Agreements (the "Seller Brand License"). Purchaser acknowledges that the Seller Brand License is being granted solely for transitional purposes and that Purchaser shall use Commercially Reasonable Efforts to as quickly as is reasonably possible to cease its use of the Seller Brands after the Closing Date. Notwithstanding foregoing, the Seller Brand License will terminate (i) with respect to Promotional Materials containing the Seller Brands thirty (30) Business Days after the date upon which Purchaser receives notice from the FDA that Purchaser's promotional materials for Products and/or Product Improvements which do not refer to the Seller Brands have been pre-cleared by the FDA pursuant to 21 CFR 314 Subpart H, and (ii) with respect to packaging and labeling of the Products and/or Product Improvements containing Seller Brands, on the later of, exhaustion of any finished Products labeled with Seller Brands or six (6) months following receipt by Purchaser of labeling approval for Products and/or Product Improvement from the FDA.
(b) Purchaser shall not (i) add any other labels or marks to, or otherwise alter, the Seller Brands as used in the Business as of the Closing Date; (ii) change in any way the style of the Seller Brands as used in the Business as of the Closing Date; or (iii) otherwise use the Seller Brands in any manner other than as specifically provided in this Section 8.2.
(c) Purchaser acknowledges Seller's (or its Affiliate's) ownership of the Seller Brands, shall do nothing inconsistent with such ownership, agrees that all use of the Seller Brands by Purchaser shall inure to the benefit and be on behalf of the Seller (or its Affiliate), and agrees not to challenge Seller's (or its Affiliate's) title to the Seller Brands. Nothing in this Agreement shall give Purchaser any right, title or interest in the Seller Brands other than the right to use the Seller Brands strictly in accordance with this Section 8.2. All use of the Seller Brands by Purchaser under this Section 8.2 shall conform to the standards followed by the Seller (or its Affiliate) in operating the Business prior to the Closing Date, and upon reasonable notice to Purchaser, Seller (or its Affiliates) shall have the right to review the standards used by Purchaser to operate the Business after the Closing Date to ensure Purchaser's compliance with this requirement related to the Seller Brands. Within ten (10) Business Days of the Execution Date, Seller shall provide Purchaser with written standards which Seller expects Purchaser to adhere to in order for Purchaser to be in compliance with this Section 8.2(c).
(d) Purchaser shall not have the right to, and shall not, sublicense, assign, pledge, grant or otherwise encumber or transfer to any Third Party any rights licensed by the Seller (or its Affiliate) to Purchaser under this Section 8.2 without the Seller's prior written consent. The Parties understand and agree that, in addition to all other legal remedies, the Seller (and its Affiliates) shall be entitled to immediate injunctive relief in order to enforce the terms of this Section 8.2.
(e) Nothing in this Section 8.2, or any other provision of this Agreement or any provision of the Other Agreements, shall grant the Purchaser any rights in any of Seller's Internet domain names, registrations or applications for registration, or renewals thereof, registered in the United States or any other country or jurisdiction throughout the world, except as such Internet domain names, registrations or applications for registration, or renewals thereof are included as part of the Purchased Assets.
(f) Other than as expressly provided in this Section 8.2 or elsewhere in this Agreement or the Other Agreements, Purchaser Buyers shall not use or permit any of its Affiliates or their distributors to use any of the Seller Brands names "Witco," "Crompton" or any other corporate signscorporate, trademarks trade or service marks or names now or hereafter owned or used by Seller or any of its Seller's Affiliates, other than the Product Intellectual Property on the terms provided herein and unless such marks or names are specifically included in the Other AgreementsPurchased Assets. All products (if applicable) and product packaging of the Business as of the Closing Date shipped and/or manufactured by Buyers after the Closing Date shall bear a new code identification which indicates the products were shipped and/or manufactured by Buyers, as applicable.
(b) Notwithstanding Section 11.2(a), for a period of up to one year from the Closing Date, Buyers shall be entitled to use all inventories of packaging, labels and sales literature existing as of the Closing Date bearing or reflecting any names or marks which had been used by the Business prior to the Closing Date but which are not Purchased Assets (collectively, "Marks"), provided that:
(i) such use is strictly the same as existed prior to the Closing Date;
(ii) the services and goods rendered and all goods produced, distributed or sold under the Marks are of at least equal quality standards as were maintained by Sellers prior to the Closing Date;
(iii) Sellers, through a mutually agreed upon accounting firm or professional inspectors of goods, shall have the right to inspect Buyers' operations and evaluate products to ensure compliance with this Section 11.2(b); and (iv) Buyers discontinue the use of such packaging, labels and sales literature as soon as practicable after the Closing Date.
(c) Buyers acknowledge that the Marks are the sole property of Sellers, and Buyers will (i) do nothing inconsistent with such ownership, (ii) not attack the Marks in any way or use, register or seek to register any trademark or tradename which is the same as or similar to a Xxxx, or (iii) identify and use the Marks in accordance with any applicable international, national, state and local laws or standards as may be appropriate to protect the validity and strength of the Marks or as may be reasonably requested by Sellers.
(d) [Intentionally omitted.]
(e) At the Closing, Buyers shall grant back to Sellers a perpetual, non-exclusive, royalty-free license to use (A) the unregistered, common law trademarks Witcamine, Witcodet, Witcohol, Witcomul, Witconate, Witcor, and Witflo and (B) the registered trademarks Witconol, Witcamide, Emcol, Witbreak and Witcolate from Schedule 2.1(a)(ix), which will be assigned to Buyers at Closing, provided that:
(i) such use is strictly the same as existed prior to the Closing Date, excluding use in connection with the Business;
(ii) Sellers acknowledge that the such marks are the sole property of Buyers, and Sellers will (i) do nothing inconsistent with such ownership, (ii) not attack such marks in any way or use, register or seek to register any trademark or tradename which is the same as or similar to one of the marks, or (iii) identify and use each such xxxx in accordance with any applicable international, national, state and local laws or standards as may be appropriate to protect the validity and strength of the xxxx or as may be reasonably requested by Buyers.
(f) At the Closing, Sellers shall grant to Buyers a perpetual, non-exclusive, royalty-free license to use in the Business any patents, patent applications, trade secrets, unpatented inventions, protocols, know-how, product formulae, product formulations, specifications, manufacturing processes and procedures, operating parameters and conditions which are not part of the Business Assets to the extent the same were used in the conduct of the Business prior to the Closing.
Appears in 1 contract
Samples: Purchase Agreement (Crompton Corp)
Use of Trade or Service Marks. (a) As Buyer shall not use or permit its distributors to use the name "Witco" or any other corporate, trade or service marks or names owned or used by Sellers or any of Sellers' Affiliates, unless such marks or names are specifically included in the Purchased Assets, Purchased Co-Assets, or are owned by Witco Surfactants. All products (if applicable) and product packaging of the Business and the Germany Business as of the Closing Date, Seller (or its Affiliate) hereby grants to Purchaser, and Purchaser hereby accepts, a non-exclusive, non-transferable, non-sublicensable, royalty-free license in the Territory to use the Seller Brands, solely to the extent necessary to allow the Purchaser to Distribute the finished Product inventory and use the Promotional Materials and otherwise perform its obligations under this Agreement and the Other Agreements (the "Seller Brand License"). Purchaser acknowledges that the Seller Brand License is being granted solely for transitional purposes and that Purchaser shall use Commercially Reasonable Efforts to as quickly as is reasonably possible to cease its use of the Seller Brands Date manufactured by Buyer after the Closing Date. Notwithstanding foregoing, Date shall bear a new code identification which indicates the Seller Brand License will terminate (i) with respect to Promotional Materials containing the Seller Brands thirty (30) Business Days after the date upon which Purchaser receives notice from the FDA that Purchaser's promotional materials for Products and/or Product Improvements which do not refer to the Seller Brands have been pre-cleared products were manufactured by the FDA pursuant to 21 CFR 314 Subpart H, and (ii) with respect to packaging and labeling of the Products and/or Product Improvements containing Seller Brands, on the later of, exhaustion of any finished Products labeled with Seller Brands or six (6) months following receipt by Purchaser of labeling approval for Products and/or Product Improvement from the FDABuyer.
(b) Purchaser Notwithstanding Section 11.2(a), for a period of up to one year from the Closing Date, Buyer shall not (i) add any other be entitled to use all inventories of packaging, labels or marks to, or otherwise alter, the Seller Brands as used in the Business and sales literature existing as of the Closing Date bearing or reflecting any names or marks, other than names or marks set forth on Schedule 11.2(b) which shall be used exclusively by Sellers, which had been used by the Total Business prior to the Closing Date but which are not Purchased Assets or assets retained by the Germany Business (altogether "Marks") provided that:
(i) such use is strictly the same as existed prior to the Closing Date; ;
(ii) change in any way the style services and goods rendered and all goods produced, distributed or sold under the Marks are of the Seller Brands at least equal quality standards as used in the Business as of were maintained by Sellers and Witco Surfactants prior to the Closing Date; or ;
(iii) otherwise use Sellers, through a mutually agreed upon accounting firm or professional inspectors of goods, shall have the Seller Brands in any manner other than as specifically provided in right to inspect Buyer's operations and evaluate products to ensure compliance with this Section 8.211.2(b); and
(iv) Buyer discontinues the use of such packaging, labels and sales literature as soon as practicable after the Closing Date.
(c) Purchaser Buyer acknowledges Seller's that the Marks are the sole property of Sellers, and they will (or its Affiliate'si) ownership of the Seller Brands, shall do nothing inconsistent with such ownership, agrees that all use of (ii) not attack the Seller Brands by Purchaser shall inure Marks in any way nor use, register or seek to register any trademark or trade name which is the benefit same as or similar to a Xxxx, (iii) identify and be on behalf of the Seller (or its Affiliate), and agrees not to challenge Seller's (or its Affiliate's) title to the Seller Brands. Nothing in this Agreement shall give Purchaser any right, title or interest in the Seller Brands other than the right to use the Seller Brands strictly Marks in accordance with this Section 8.2. All use any applicable international, national, state and local laws or standards as may be appropriate to protect the validity and strength of the Seller Brands Marks or as may be reasonably requested by Purchaser under this Section 8.2 shall conform to the standards followed by the Seller (or its Affiliate) in operating the Business prior to the Closing Date, and upon reasonable notice to Purchaser, Seller (or its Affiliates) shall have the right to review the standards used by Purchaser to operate the Business after the Closing Date to ensure Purchaser's compliance with this requirement related to the Seller Brands. Within ten (10) Business Days of the Execution Date, Seller shall provide Purchaser with written standards which Seller expects Purchaser to adhere to in order for Purchaser to be in compliance with this Section 8.2(c)Sellers.
(d) Purchaser shall not have the right to, and shall not, sublicense, assign, pledge, grant or otherwise encumber or transfer to any Third Party any rights licensed by the Seller (or its Affiliate) to Purchaser under this Section 8.2 without the Seller's prior written consent. The Parties understand and agree that, in addition to all other legal remedies, the Seller (and its Affiliates) shall be entitled to immediate injunctive relief in order to enforce the terms of this Section 8.2.
(e) Nothing in this Section 8.2, or any other provision of this Agreement or any provision of the Other Agreements, shall grant the Purchaser any rights in any of Seller's Internet domain names, registrations or applications for registration, or renewals thereof, registered in the United States or any other country or jurisdiction throughout the world, except as such Internet domain names, registrations or applications for registration, or renewals thereof are included as part of the Purchased Assets.
(f) Other than as expressly provided in this Section 8.2 or elsewhere in this Agreement or the Other Agreements, Purchaser shall not use or permit any of its Affiliates or distributors to use any of the Seller Brands or any other corporate signs, trademarks or service marks or names now or hereafter owned or used by Seller or any of its Affiliates, other than the Product Intellectual Property on the terms provided herein and in the Other Agreements.
Appears in 1 contract
Samples: Purchase Agreement (Witco Corp)
