Exhibit 10.12
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement ("Agreement"), dated December 18, 1994, by
and between Florists' Transworld Delivery Association, a Michigan non-profit
corporation (hereinafter "Licensor"), located at 00000 Xxxxxxxxxxxx Xxxxxxx,
Xxxxxxxxxx, Xxxxxxxx 00000 and FTD Association (hereinafter "FTDA" or
"Licensee"), an Ohio non-profit corporation, located at 00000 Xxxxxxxxxxxx
Xxxxxxx, Xxxxxxxxxx, Xxxxxxxx 00000.
WITNESSETH
WHEREAS, Licensor is a party to the Agreement and Plan of Merger among
Licensor, Perry Capital Corp., and FTD Acquisition Corporation (formerly known
as IRIS Acquisition Corp.) ("Iris"), dated August 2, 1994 (the "Merger
Agreement"), whereby Iris is to be merged into Licensor and Licensor is to be
the Surviving Corporation ("Merger"), with the name of Licensor to be changed to
"Florists' Transworld Delivery, Inc." by the filing of a post-Merger amendment
to its Articles of Association; and
WHEREAS, Licensor now owns or otherwise has a valid right to license the
Licensed Intellectual Property (as defined in the Merger Agreement), including
all of the service marks, collective marks, trademarks, trade names, and trade
dress, listed on Exhibit TL-A; and
WHEREAS, the Licensed Intellectual Property has achieved widespread
recognition among members of the general public; and
WHEREAS, Licensee is desirous of using the Licensed Intellectual Property
in connection with its trade association activities and Licensor is desirous of
granting such a license all pursuant to the terms of a Mutual Support Agreement
between Licensor and Licensee of even date herewith ("Mutual Support
Agreement").
NOW, THEREFORE, in consideration of the foregoing and of the mutual
promises hereinafter set forth, the parties agree as follows:
1. GRANT OF LICENSE
(a) Subject to the terms and conditions of this Agreement and the
Mutual Support Agreement, Licensor hereby grants to Licensee, and
Licensee accepts, a non-exclusive (except as provided herein)
nonassignable, right, license and privilege to use the Licensed
Intellectual Property, and all marks subsequently used by Licensor
which include the Mercury Man Emblem ("Logo") (Exhibit TL-B), or the
marks "FTD", "FTDA", "FLORISTS' TRANSWORLD DELIVERY", "FTD FAMILY" and
"FLORIST", throughout the world (subject to the FTD/Fleurop-Interflora
Agreement, dated November 13, 1987) in the Retail/Professional Florist
Industry (as defined in the Merger Agreement), for use in connection
with Licensee's on-going trade association activities, including
without limitation, educational, public service, governmental,
membership, publicity, publications, research and administrative
matters, and any products bearing the Licensed Intellectual Property
created or
offered by Licensee in association with such trade association
activities (hereinafter "the Licensed Products and Services").
Licensee acknowledges that Licensor makes no representation or
warranty of ownership of any rights in and to the Licensed
Intellectual Property for trade association services or associated
products, with the exception of the Logo and the marks "FTD", "FTDA",
"FLORISTS' TRANSWORLD DELIVERY", "FLORIST" and "FTD FAMILY". Licensee
shall not be required to make any actual royalty payments under such
license, but Licensee shall be deemed to make royalty payments to
Licensor, and Licensor shall be deemed to make payments to Licensee
(in consideration of Licensee's agreement not to compete under Section
3.1(o) of the Mutual Support Agreement) in equal amounts and at the
same time over the terms of the license.
(b) Licensor shall not, without Licensee's prior written consent,
permit any other person to use the Licensed Intellectual Property in
the Retail/Professional Florists Industry, except that Licensor shall
be permitted to license to FTDA Members, and to permit the use by FTDA
International Members (as defined in the Mutual Support Agreement) of,
that portion of the Licensed Intellectual Property which is defined in
the Mutual Support Agreement as "Member Used Intellectual Property",
subject to such FTDA Members' execution of the Trademark Membership
License Agreement and except in accordance with Section 1(c) (ii)
hereof.
(c) Licensor shall not, during the term of this Agreement and without
Licensee's prior written consent, license or otherwise permit any
person to use or display or itself use or display the Licensed
Intellectual Property, or any marks confusingly similar thereto: (i)
in the legal, assumed or tradename of, or (except as to FTDA Members
or FTDA International Members, as defined in the Mutual Support
Agreement) on or in connection with, any staffed retail operation in a
public area which is accessible to a customer and provides a customer
with the opportunity to order flowers or other floral products; or
(ii) on or in connection with any unstaffed retail operation in a
public area which is accessible to a customer and provides a customer
with the opportunity to order flowers or other floral products and is
within 150 yards of any Member's preexisting retail floral operation
(without such Member's written consent).
(d) Nothing contained in this Agreement shall be construed as an
assignment or grant to Licensee of any right, title, or interest in or
to the Licensed Intellectual Property, it being understood and
acknowledged by Licensee that all rights, except those granted
hereunder and all goodwill relating to the Licensed Intellectual
Property are reserved by Licensor, except for the license granted
hereunder. Further, nothing in this Agreement or the license shall
entitle Licensee, nor shall Licensee be entitled, to use the Licensed
Intellectual Property in connection with the sale or distribution of
any product or service except as specifically provided herein or in
the Mutual Support Agreement in connection with Licensee's activities
as a trade association.
(e) Licensee acknowledges and affirms Licensor's ownership and
exclusive right, title, and interest in and to the Licensed
Intellectual Property. Licensee agrees that it will not directly or
indirectly attack or impair the title of Licensor to the Licensed
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Intellectual Property and any of Licensor's registrations or
applications therefor or the validity of this Agreement. Licensee
further agrees not to file any state, federal, or foreign applications
for registration of any of the Licensed Intellectual Property or any
xxxx or other source-identifier confusingly similar thereto.
(f) Licensor agrees that it will do nothing directly or indirectly to
attack or impair the validity of this Agreement.
(g) Licensor agrees that, after the Merger, Licensee shall be
entitled to all subscription fees for the FTD FAMILY and FLORIST
publications and, in consideration for the license of these two marks,
Licensee shall provide advertising space to Licensor in such
publications, with a value of $10,000 per year, subject to increases
based upon the CPI Index (as defined in the Mutual Support Agreement).
2. TERM
(a) This Agreement shall continue in force and effect for a period of
ninety-nine years and be automatically renewable for like periods,
unless Licensee materially breaches the terms of this Agreement and
does not rectify such breach as provided in Section 8 herein, or
Licensee terminates the Agreement in writing, after providing Licensor
with ninety (90) days' written notice of its desire to terminate.
(b) Licensor shall in no event transfer or sell the Logo or the marks
"FTD", "FTDA", "FLORISTS' TRANSWORLD DELIVERY", "FLORIST" or "FTD
FAMILY", unless Licensor obligates the acquiring party and their
successors and assigns to acknowledge all of Licensee's rights and
privileges under this Agreement and to be bound by its terms in the
position of Licensor.
3. QUALITY CONTROL
(a) Licensee has proposed to Licensor standards of quality which
Licensee wishes to govern Licensee's trade association services and
related products during the term of this Agreement. Licensor has
reviewed such standards (hereinafter called the "Quality Standards")
and finds them to be sufficient to adequately maintain and protect the
goodwill associated with the Licensed Intellectual Property.
Accordingly, Licensee warrants that all Licensed Products and Services
bearing or offered in connection with the Licensed Intellectual
Property shall be of a quality at least equal with the Quality
Standards.
(b) In the event Licensee wishes to add a new product or service or
change the quality of an existing product or service, Licensee shall
advise Licensor of the description of such product or service or the
proposed revision to the Quality Standard for an existing product or
service and, where practicable, shall provide Licensor with a
representative sample. Unless Licensor shall have advised Licensee in
writing of Licensor's objections to such new product or service or
change to an existing product or service within thirty (30) days of
receipt of notice and, where applicable, a sample from Licensee,
Licensor shall be deemed to have approved such new product or service
or change to the Quality Standards.
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(c) Licensor shall not during the term of this Agreement make any
material changes to the Quality Standards unless such changes are, in
Licensor's reasonable judgment, necessary to protect the goodwill
associated with the Licensed Intellectual Property. In the event that
Licensee disputes the action of Licensor, Licensee may submit the
dispute to arbitration subject to the procedures in Section 7.8 of the
Mutual Support Agreement. Licensor agrees not to require any
modifications to the Licensed Products and Services so long as they
are consistent with or higher than the Quality Standards without
obtaining Licensee's consent, which shall not be unreasonably
withheld.
(d) Licensee shall furnish or make available to Licensor at least
once a year or upon reasonable request, a reasonable number of
representative samples of the Licensed Products, or descriptions of
the Licensed Services, to permit Licensor to determine that such
Licensed Products and Services meet the Quality Standards. The
reasonable costs of the articles submitted, their shipment to Licensor
and testing by Licensor shall be borne by Licensor. If so notified in
writing by Licensor, Licensee shall not offer or provide any products
or services whose nature or quality does not in Licensor's reasonable
judgment, comply with Quality Standards.
4. DOCUMENTATION
Licensee agrees to keep adequate and complete records of the Members
of Licensee's association and to give Licensor the right to inspect
such records upon reasonable notice.
5. GOODWILL
(a) Licensee recognizes the value of the goodwill associated with the
Licensed Intellectual Property and acknowledges that the Licensed
Intellectual Property and all the rights therein, and goodwill
attached thereto, inure to, benefit and belong exclusively to
Licensor. Licensee shall at all times recognize the validity of the
Licensed Intellectual Property and Licensor's rights and title
therein. Licensee shall not, during the term of this Agreement or
thereafter, attack, impair or put in issue the title or any rights of
Licensor in and to the Licensed Intellectual Property or attack the
validity of the license granted herein.
(b) The parties understand and agree that Licensor's primary
objective in entering into this Agreement is the further protection
and enhancement of its Licensed Intellectual Property. Accordingly,
Licensee covenants and agrees that, notwithstanding any other
provision of this Agreement, it will never intentionally take or
continue any action which it knows or has reason to know would result
in or cause a boycott of any product or service bearing Licensor's
marks, including the Licensed Intellectual Property, or threaten to
injure or diminish the image or reputation of Licensor or any of its
marks, including the Licensed Intellectual Property, or products or
services (such as boycott, threatened injury, and diminishment
hereafter referred to as "Injury to Licensor"). In the event any
action taken or continued by Licensee results, or threatens to result,
in Injury to Licensor,
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Licensee agrees promptly to take steps necessary to avoid or stop the
occurrence of such Injury to Licensor after receiving written notice
thereof from Licensor.
6. PROTECTION OF RIGHTS
(a) Licensee agrees to assist Licensor in protecting and defending
any of Licensor's rights in the Licensed Intellectual Property, in the
filing and prosecution of any applications, renewals, and the like, in
the recording of this Agreement or any other relevant agreements, and
in the doing of any other acts with respect to the Licensed
Intellectual Property (above and beyond those required of Licensee by
Section 3 herein), including the prevention of the use thereof by any
unauthorized persons, that in the judgment of Licensor may be
necessary or desirable under any law, regulation or decree of the
United States, all at Licensor's expense.
(b) Licensee shall notify Licensor promptly in writing of any
infringements or imitations by others of the Licensed Intellectual
Property which come to Licensee's attention and Licensor covenants
that it shall take all action against such infringers or imitators
which Licensor believes, in its sound business judgment, to be
necessary to protect the goodwill of the Licensed Intellectual
Property and its enforceability, at Licensor's expense. Except as may
be provided in the Mutual Support Agreement, Licensor shall have the
exclusive right to initiate any action or proceeding to protect the
Licensed Intellectual Property, which action or proceeding Licensee
may join at Licensee's own expense. In the event that Licensor
declines to initiate any such action or proceeding, Licensee may do so
at its own expense, and Licensor shall joint in any such action at its
option or if necessary to confer standing. In no event shall Licensee
settle or discontinue any action or proceeding, or appeal any
judgment, without the written permission of Licensor. Any damages or
award recovered in such an action or proceeding shall first be used to
cover the costs and expenses of the party initiating the action, next
to the costs and expenses of the party which may have joined the
action, and any remainder shall belong exclusively to the Licensor.
7. INDEMNIFICATION
Licensee agrees to indemnify and hold harmless Licensor from any and
all third party allegations and claims directly or indirectly caused
by (i) Licensee's use of the Licensed Intellectual Property Outside
the scope of, or in violation of, this Agreement; or (ii) Licensee's
breach of the warranty contained in Section 10 herein.
8. ARBITRATION
In the event of breach by Licensee of any provision of this Agreement,
Licensor may give Licensee notice in writing to rectify the breach
within one (1) month and if the breach is not rectified within such
period, Licensor shall be entitled to exercise any remedies it may
have hereunder. In the event that there continues to be a dispute
regarding rectification, either party may submit the dispute to
arbitration and be subject to the procedures in Section 7.8 of the
Mutual Support Agreement. In the event the arbitrator requires more
than thirty days in which to render his or her decision, Licensor
shall have the right during the pendency of the decision to take
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whatever steps it deems reasonably necessary to maintain the goodwill
associated with the Licensed Intellectual Property. The decision of
the arbitrator shall be deemed to constitute action by Licensor to
maintain the goodwill associated with the Licensed Intellectual
Property. Notwithstanding the foregoing, Licensor reserves its rights
to seek injunctive relief in an appropriate judicial forum against any
actions by Licensee which are likely to cause irreparable harm to the
Licensed Intellectual Property.
9. MARKINGS
Subject to Licensor's instructions and approval, Licensee shall
periodically inform all persons from whom Licensee obtains Licensed
Products or Services of the appropriate trademark and copyright
notices to be used in connection with the advertising, promotion,
display and sale of the Licensed Products and Services and Licensee
shall take similar steps with respect to the Licensed Products and
Services it creates or offers.
10. COMPLIANCE WITH APPLICABLE LAWS AND STANDARDS
Licensee warrants and agrees that all Licensed Products and Services
offered by Licensee shall comply with all applicable federal, state
and local statutes, standards, regulations and guidelines pertaining
to such products or services.
11. NOTICES
All notices and statements to be given and all payments to be made
pursuant to this Agreement shall be sent by First Class Mail, Postage
Prepaid, if to Licensee, to:
Xx. Xxxxx X. Xxxxxx
Secretary
FTD Association
00000 Xxxxxxxxxxxx Xxxxxxx
Xxxxxxxxxx, XX 00000
Fax: (000) 000-0000
Copy to:
Xxxxx X. Xxxxxxx, Esq.
Dickinson, Wright, Moon, Van Dusen
& Xxxxxxx
000 Xxxxxxxx Xxxxxx, Xxxxx 0000
Xxxxxxx, XX 00000
Fax: (000) 000-0000
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and if to Licensor, to:
Xx. Xxxxxxx X. Xxxxx
President
Florists' Transworld Delivery, Inc.
Perry Capital Corp.
000 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Copy to:
Xxxx X. Xxxxxx, Esq.
Skadden, Arps, Slate, Xxxxxxx & Xxxx
000 Xxxx Xxxxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000
Fax: (000) 000-0000
12. CONTROLLING LAW
(a) This Agreement shall be construed according to the laws of the
State of Michigan, without giving effect to any choice of law
provisions.
(b) The parties agree that the jurisdiction and venue for any action
brought by either party shall be in any state or federal court within
the Eastern District of Michigan, Southern Division or the Northern
District of Illinois.
(c) This Agreement has been jointly drafted by both parties hereto
and shall be construed in accordance with its fair meaning, and not
strictly against any party.
13. NO IMPLIED WARRANTIES
Neither party makes any warranty or representation to the other except
as specifically set forth herein.
14. NO FRANCHISE OR JOINT VENTURE
Nothing contained herein shall be construed to place the parties in
the relationship of franchisor/franchisee, partners or joint
venturers, it being agreed and understood as well that each party is
an independent contractor and is not an agent or employee of the other
party.
15. FURTHER DOCUMENTS
Each party shall, upon request, make, execute and deliver such
documents as shall be reasonably necessary or take such action as may
be reasonably requested to fully implement and carry out the purposes
of this Agreement.
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16. BINDING EFFECT
In the event of acquisition or merger, all covenants, agreements,
representations, warranties and indemnifications in this Agreement by
and on behalf of either of the parties shall bind and inure to the
benefit of their respective successors and permitted assigns.
17. ASSIGNMENT
Except as provided in Section 2 (b), neither party shall assign or
sublicense its rights under this Agreement, in whole or in part,
without the prior written consent of the other party.
18. WAIVER
Silence, acquiescence or inaction shall not be deemed a waiver of any
right of either party hereunder, and a waiver shall only be effective
if in writing signed by the party to be charged and such waiver shall
not be construed to contain a continuing waiver of any other breaches
of a same or similar type of breach specifically set forth therein.
19. SEVERABILITY
In the event that any part or portion of this Agreement shall be
deemed to be invalid or illegal, then such invalid or illegal portion
shall, so far as possible, not affect the validity or legality of the
remainder of this Agreement, but the parties agree that they shall
meet and attempt to arrive at the modification of any illegal or
invalid part so as to render the same legal and valid and within the
keeping of the original tenor and spirit of the agreement of the
parties.
20. FORCE MAJEURE
Neither party shall be liable for any loss or damage caused by failure
or delay in the performance, observance or fulfillment of any terms,
obligations, provisions or conditions of this Agreement (including,
but not necessarily limited to, the failure to make any payments
specified herein) if such failure or delay arises either wholly or in
part from any cause reasonably beyond the control of such party.
21. ENTIRE AGREEMENT
This Agreement, the Merger Agreement, and the Mutual Support Agreement
constitute the entire agreement between the parties with respect to
the licensing of the Licensed Intellectual Property, and supersedes
all prior negotiations, understandings and agreements, if any, between
the parties. This Agreement may only be amended or modified by written
instrument signed by the parties.
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22. TITLES AND HEADINGS
Titles and headings herein are for convenient reference only and are
not part of this Agreement.
FLORISTS' TRANSWORLD DELIVERY ASSOCIATION
By: /s/ Xxxx Xxxxxxxxx
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Print Name: Xxxx Xxxxxxxxx
-------------------------------
Title: President
-------------------------------
Date: December 18, 1994
-------------------------------
FTD ASSOCIATION
By: /s/ Xxxx Xxxx
-------------------------------
Print Name: Xxxx Xxxx
-------------------------------
Title: President
-------------------------------
Date: December 18, 1994
-------------------------------
Executed to ratify and conform this
Agreement, and to agree to cause
Florists' Transworld Delivery, Inc.,
to comply with this Agreement in all
respects following the Merger:
FTD ACQUISITION CORPORATION
By: /s/ Xxxx Xxxxxxxxxx
-------------------------
Print Name: Xxxx Xxxxxxxxxx
-------------------------
Title: Vice President
-------------------------
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