TRADEMARK SECURITY AGREEMENT
Exhibit 10.6
TRADEMARK SECURITY AGREEMENT, dated as of May 14, 2015, by Winmark Corporation, a Minnesota corporation (the “Company”), Xxxxx Business Credit, Inc., a Minnesota corporation (“Xxxxx”), Winmark Capital Corporation, a Minnesota corporation (“Winmark Capital”), and Grow Biz Games, Inc., a Minnesota corporation (“Grow Biz”; the Company, Xxxxx, Winmark Capital, Grow Biz, collectively the “Grantors”, and each individually a “Grantor”), in favor of THE PRIVATEBANK AND TRUST COMPANY, an Illinois bank and trust company, in its capacity as collateral agent for the Senior Lenders (as defined in the Intercreditor Agreement defined below) (the “Collateral Agent”).
W I T N E S S E T H:
WHEREAS, The Grantors, The PrivateBank and Trust Company, in its capacity as Agent thereunder (in such capacity, the “Bank Agent”) and certain other persons are parties to that certain Credit Agreement, dated as of July 13, 2010 (as amended to the date hereof and as it may be further amended, modified, supplemented, restated or replaced from time to time, the “Credit Agreement”) pursuant to which the Lenders from time to time party thereto (collectively, the “Bank Lenders”) have provided and will continue to provide financial accommodations to the Pledgor and the other Loan Parties (as defined in the Credit Agreement);
WHEREAS, the Grantors and the Purchasers named in the Purchaser Schedule attached thereto (the “Purchasers” and, together with the holders of the Senior Secured Notes (as defined below) from time to time, the “Noteholders”) are parties to that certain Note Agreement, dated as of the date hereof (as it may be amended, modified, supplemented, restated or replaced from time to time, the “Note Agreement”) pursuant to which the Purchasers are purchasing the Grantors’ senior secured promissory notes in the aggregate principal amount of $25,000,000 on the date hereof (the “Senior Secured Notes”);
WHEREAS, Pursuant to that certain Intercreditor and Collateral Agency Agreement, dated as of the date hereof (the “Intercreditor Agreement”), by and between the Collateral Agent, the Bank Agent, the Bank Lenders and the Noteholders, the Collateral Agent shall, among other things, be appointed as collateral agent in respect of the Collateral described herein;
WHEREAS, as a condition to the Purchasers entering into the financing arrangements proposed by the Note Agreement, the Grantors have executed and delivered to the Collateral Agent, for itself and the ratable benefit of the Senior Lenders, those certain Amended and Restated Security Agreements, each dated as of the date hereof (including all annexes, exhibits or schedules thereto, as from time to time amended, restated, supplemented or otherwise modified, collectively, the “Security Agreements”); and
WHEREAS, pursuant to the terms of the Security Agreements, each Grantor has granted to the Collateral Agent, for itself and the ratable benefit of the Senior Lenders, a security interest in all the assets such Grantor, including all right, title and interest of such Grantor in, to and under all now owned and hereafter acquired trademarks, trademark applications and
trademark licenses, and all products and proceeds thereof and goodwill associated therewith, to secure the payment of the Obligations (as defined in the Security Agreements).
NOW, THEREFORE, in consideration of the premises and mutual covenants herein contained and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, each Grantor hereby agrees as follows:
DEFINED TERMS. All capitalized terms used but not otherwise defined herein have the meanings given to them in the Security Agreements. In addition, the following term shall have the meaning herein specified:
“Xxxx License” means rights under any written agreement now owned or hereafter acquired by any Grantor granting any right to use any Xxxx.
“Marks” means all right, title and interest in and to any trademarks, service marks and trade names now held or hereafter acquired by any Grantor, including any registration or application for registration of any trademarks and service marks now held or hereafter acquired by any Grantor, which are registered in the United States Patent and Trademark Office or the equivalent thereof in any State of the United States or in any foreign country, as well as any unregistered marks used by any Grantor, and any trade dress including logos, designs, company names, business names, fictitious business names and other business identifiers used by any Grantor.
GRANT OF SECURITY INTEREST IN XXXX COLLATERAL. As collateral security for the prompt and complete payment and performance when due (whether at stated maturity, by acceleration or otherwise) of all of the Obligations, whether now existing or hereafter arising and howsoever evidenced, each Grantor hereby assigns, transfers and grants to the Collateral Agent and hereby creates in favor of the Collateral Agent, for the benefit of the Senior Lenders, a continuing Lien on and first priority security interest in, and right of set-off against, all of the right, title and interest of such Grantor, to and under the following, whether presently existing or hereafter created or acquired (collectively, the “Xxxx Collateral”):
all of its Marks and Xxxx Licenses to which it is a party including those referred to on Schedule I hereto;
all goodwill of the business connected with the use of, and symbolized by, each Xxxx and each Xxxx License; and
all products and proceeds of the foregoing, including, without limitation, any claim by such Grantor against third parties for past, present or future (i) infringement or dilution of any Xxxx or Xxxx licensed under any Xxxx License or (ii) injury to the goodwill associated with any Xxxx or any Xxxx licensed under any Xxxx License.
SECURITY AGREEMENT. The security interests granted pursuant to this Trademark Security Agreement are granted in conjunction with the security interests granted to Collateral Agent, for itself and the ratable benefit of the Senior Lenders, pursuant to the Security Agreements. Each Grantor hereby acknowledges and affirms that the rights and remedies of
Collateral Agent with respect to the security interest in the Xxxx Collateral made and granted hereby are more fully set forth in the Security Agreements, the terms and provisions of which are incorporated by reference herein as if fully set forth herein.
COUNTERPARTS. This Trademark Security Agreement may be executed in any number of counterparts (or counterpart signature pages), each of which counterparts shall be an original but all of which together shall constitute one instrument.
APPLICABLE LAW. THIS TRADEMARK SECURITY AGREEMENT SHALL BE CONSTRUED AND ENFORCED IN ACCORDANCE WITH, AND THE RIGHTS OF THE PARTIES SHALL BE GOVERNED BY, THE LAW OF THE STATE OF MINNESOTA (EXCLUDING ANY CONFLICTS OF LAW RULES WHICH WOULD OTHERWISE CAUSE THIS TRADEMARK SECURITY AGREEMENT TO BE CONSTRUED OR ENFORCED IN ACCORDANCE WITH, OR THE RIGHTS OF THE PARTIES TO BE GOVERNED BY, THE LAWS OF ANY OTHER JURISDICTION).
[Signature page follows]
IN WITNESS WHEREOF, each Grantor has caused this Trademark Security Agreement to be executed and delivered by its duly authorized officer as of the date first set forth above.
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WINMARK CORPORATION | |
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By: |
/s/ Xxxxx X. Xxxxxx |
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Name: |
Xxxxx X. Xxxxxx |
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Title: |
President |
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XXXXX BUSINESS CREDIT, INC. | |
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By: |
/s/ Xxxxx X. Xxxxxx |
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Name: |
Xxxxx X. Xxxxxx |
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Title: |
Treasurer |
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WINMARK CAPITAL CORPORATION | |
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By: |
/s/ Xxxxx X. Xxxxxx |
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Name: |
Xxxxx X. Xxxxxx |
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Title: |
Chief Financial Officer and Treasurer |
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GROW BIZ GAMES, INC. | |
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By: |
/s/ Xxxxx X. Xxxxxx |
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Name: |
Xxxxx X. Xxxxxx |
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Title: |
Treasurer |
[Signature Page to Trademark Security Agreement]
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ACCEPTED AND ACKNOWLEDGED BY: |
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THE PRIVATEBANK AND TRUST COMPANY, |
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as Collateral Agent |
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By: |
/s/ Xxxx X. Xxxxxx |
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Name: Xxxx X. Xxxxxx |
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Its: Officer |
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[Signature Page to Trademark Security Agreement]
SCHEDULE I
TO
TRADEMARK SECURITY AGREEMENT
Trademarks
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TRADEMARK |
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COUNTRY |
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APPL. # |
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CLASS |
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REG. # |
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REG. DATE |
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WINMARK |
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USA |
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76-339,144 |
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35 |
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2,728,008 |
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6/17/03 |
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WINMARK |
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USA |
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78-683,252 |
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36, 37, 38, 39, 42 |
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3,137,283 |
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8/29/06 |
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WINMARK BUSINESS SOLUTIONS |
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USA |
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78-326,272 |
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35 |
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2,906,674 |
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11/30/04 |
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WINMARK CAPITAL |
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USA |
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78-405,795 |
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36 |
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3,184,450 |
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1/12/06 |
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XXXXX BUSINESS CREDIT |
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USA |
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78-722,246 |
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35, 36, 37, 38, 39, 42 |
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3,320,486 |
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10/23/07 |
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LEASEMANAGER |
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USA |
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78-257,794 |
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36 |
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2,983,934 |
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9/9/05 |
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PEERSPHERE |
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USA |
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77-387992 |
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38,42 |
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3,609,933 |
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4/21/09 |
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O LOGO DESIGN |
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USA |
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74-662,893 |
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35,42 |
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2,550,186 |
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3/19/02 |
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O LOGO DESIGN |
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CANADA |
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890,859 |
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531,253 |
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8/16/00 |
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BUY. SELL. REPEAT. |
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USA |
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77-718317 |
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35 |
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3,765,266 |
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3/23/10 |
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SELL. BUY. REPEAT. |
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USA |
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77-718320 |
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35 |
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3,759,215 |
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3/9/10 |
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PLAY IT AGAIN SPORTS (and design) |
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USA |
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74-184,959 |
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42 |
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1,738,778 |
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12/8/92 |
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PLAY IT AGAIN SPORTS |
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USA |
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73-780,009 |
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42 |
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1,562,785 |
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10/24/89 |
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PLAY IT AGAIN SPORTS |
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CANADA |
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683,688 |
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407,459 |
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1/29/93 |
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PLAY SAFE PLAY HARD PLAY IT AGAIN PLAY IT AGAIN SPORTS |
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USA |
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74-580,446 |
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42 |
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1,950,617 |
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1/23/96 |
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SPORTS EQUIPMENT THAT’S USED BUT NOT USED UP |
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USA |
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74-407,964 |
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42 |
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1,874,326 |
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1/17/95 |
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BUY, SELL TRADE NEW AND USED GEAR (for PIAS and MGR) |
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USA |
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77-440060 |
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42 |
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Abandoned registration app. |
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REUSE.RECYCLE.REPLAY. |
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USA |
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85-049345 |
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35 |
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3,913,486 |
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2/1/11 |
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TRADEMARK |
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COUNTRY |
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APPL. # |
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CLASS |
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REG. # |
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REG. DATE |
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EDGEVANTAGE |
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USA |
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85-781,530 |
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37 |
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4,506,805 |
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4/1/14 |
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EDGEVANTAGE |
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CANADA |
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1,619,323 |
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884425 |
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10/20/14 |
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PLAY IT AGAIN SPORTS EVERYBODY PLAYS |
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USA |
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86-137,377 |
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35 |
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Abandoned registration app. |
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EVERYBODY PLAYS PLAY IT AGAIN SPORTS |
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USA |
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86,204,901 |
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35 |
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4,626,375 |
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10/21/14 |
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OFFICIAL SPONSOR OF ALL THOSE WHO PLAY |
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USA |
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86-137,378 |
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35 |
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4,626,270 |
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10/21/14 |
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PLAY IT AGAIN SPORTS EVERYBODY PLAYS |
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CANADA |
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1,671,675 |
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Abandoned registration app. |
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OFFICIAL SPONSOR OF ALL THOSE WHO PLAY |
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CANADA |
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1,671,674 |
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PENDING |
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EVERYBODY PLAYS PLAY IT AGAIN SPORTS |
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CANADA |
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1,683,001 |
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PENDING |
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MUSIC GO ROUND |
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USA |
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74-407,988 |
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35 |
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1,933,637 |
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11/7/95 |
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MUSIC GO ROUND (and design) |
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USA |
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74-595,598 |
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35,42 |
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1,938,398 |
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11/28/95 |
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MUSIC GO ROUND (and design) |
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USA |
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75-806,705 |
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35 |
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2,413,870 |
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12/19/00 |
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MUSIC GO ROUND |
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USA |
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74-389,491 |
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42 |
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1,857,397 |
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10/4/94 |
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MUSIC GO ROUND |
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CANADA |
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740,108 |
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472,787 |
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3/18/97 |
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PRO CUSTOM |
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USA |
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74-638,321 |
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15 |
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2,352,130 |
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5/23/00 |
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PRO CUSTOM |
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CANADA |
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797,464 |
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553,444 |
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11/15/01 |
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RE-USE. RECYCLE. ROCK |
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USA |
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77-718562 |
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35 |
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3,761,853 |
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3/16/10 |
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YOUR ULTIMATE USED GEAR RESOURCE |
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USA |
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77-718860 |
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42 |
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3,690,852 |
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9/29/09 |
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ORIGINAL AND UNSIGNED |
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USA |
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86-137,377 |
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41 |
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4,646,272 |
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11/25/14 |
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ONCE UPON A CHILD |
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USA |
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74-130,870 |
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35 |
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1,668,930 |
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12/17/91 |
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ONCE UPON A CHILD (and design) |
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USA |
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74-358,788 |
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42 |
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1,821,841 |
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2/15/94 |
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ONCE UPON A CHILD (and design) |
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USA |
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74-470,445 |
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16,21,25 |
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1,872,459 |
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1/10/95 |
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TRADEMARK |
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COUNTRY |
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APPL. # |
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CLASS |
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REG. # |
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REG. DATE |
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ONCE UPON A CHILD (and design) |
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USA |
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74-407,962 |
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35 |
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1,856,930 |
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10/4/94 |
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ONCE UPON A CHILD (and design) |
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CANADA |
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729,770 |
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447,287 |
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9/8/95 |
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ONCE UPON A CHILD |
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EUROPE |
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011188729 |
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25, 35 |
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011188729 |
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2/11/13 |
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KIDS STUFF WITH PREVIOUS EXPERIENCE |
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USA |
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74-407,961 |
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42 |
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1,926,022 |
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10/10/95 |
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KIDS’ STUFF WITH PREVIOUS EXPERIENCE |
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CANADA |
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817,083 |
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515,845 |
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8/31/99 |
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PLATO’S CLOSET |
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USA |
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75-440,438 |
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35 |
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2,211,282 |
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12/15/98 |
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PLATO’S CLOSET |
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USA |
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78-781590 |
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35 |
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3,176,822 |
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11/28/06 |
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PLATO’S CLOSET (AND DESIGN) |
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USA |
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78-784675 |
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35 |
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3,201,210 |
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1/23/07 |
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PLATO’S CLOSET (AND DESIGN) |
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USA |
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85-094606 |
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35 |
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3,908,174 |
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1/18/11 |
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PLATO’S CLOSET |
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CANADA |
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1,302,695 |
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695,576 |
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10/4/07 |
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PLATO’S CLOSET (AND DESIGN) |
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CANADA |
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1,492,667 |
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807,932 |
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9/29/11 |
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PLATO’S CLOSET |
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EUROPE |
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011321197 |
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25,35 |
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011321197 |
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4/15/13 |
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PLATO’S CLOSET BRAND TEEN WEAR AND DESIGN |
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CANADA |
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1,017,819 |
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545,218 |
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5/16/01 |
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PLATO’S CLOSET CHANGE YOUR CLOTHES |
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USA |
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78-871939 |
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35 |
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3,407,132 |
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4/1/08 |
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PLATO’S CLOSET CHANGE YOUR CLOTHES |
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CANADA |
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1,300,139 |
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731,773 |
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1/6/09 |
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RECYCLE YOUR STYLE |
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USA |
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85-552285 |
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35 |
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4,256,651 |
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12/11/12 |
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RECYCLE YOUR STYLE |
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CANADA |
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1,567,647 |
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860,573 |
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9/18/13 |
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YOUR STORE. YOUR STYLE. |
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USA |
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85-624584 |
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35 |
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4,250,197 |
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11/27/12 |
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YOUR STORE. YOUR STYLE. |
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CANADA |
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1,577,573 |
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848,667 |
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4/16/13 |
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|
|
|
YOUR STYLE. YOUR STORE. |
|
USA |
|
85-624579 |
|
35 |
|
4,246,067 |
|
11/20/12 |
|
|
|
|
|
|
|
|
|
|
|
|
|
YOUR STYLE. YOUR STORE. |
|
CANADA |
|
1,577,574 |
|
|
|
848,668 |
|
4/16/13 |
|
|
|
|
|
|
|
|
|
|
|
|
|
RETOOL (and design)* |
|
USA |
|
75-496,931 |
|
35 |
|
2,267,043 |
|
8/3/99 |
|
TRADEMARK |
|
COUNTRY |
|
APPL. # |
|
CLASS |
|
REG. # |
|
REG. DATE |
|
|
|
|
|
|
|
|
|
|
|
|
|
RETOOL |
|
USA |
|
75-467,230 |
|
35 |
|
2,304,808 |
|
12/28/99 |
|
|
|
|
|
|
|
|
|
|
|
|
|
RETOOL (and design) |
|
CANADA |
|
882,608 |
|
|
|
539,715 |
|
1/16/01 |
|
|
|
|
|
|
|
|
|
|
|
|
|
RETOOL |
|
CANADA |
|
882,609 |
|
|
|
524,445 |
|
3/8/00 |
|
|
|
|
|
|
|
|
|
|
|
|
|
COMPUTER RENAISSANCE (and design) |
|
USA |
|
74-595,597 |
|
35,42 |
|
1,975,949 |
|
5/28/96 |
|
|
|
|
|
|
|
|
|
|
|
|
|
STYLE ENCORE |
|
USA |
|
85-841,074 |
|
35 |
|
4,426,761 |
|
10/29/13 |
|
|
|
|
|
|
|
|
|
|
|
|
|
STYLE ENCORE |
|
CANADA |
|
1,613,038 |
|
|
|
873,846 |
|
3/19/14 |
|
|
|
|
|
|
|
|
|
|
|
|
|
STYLE ENCORE (and design) |
|
USA |
|
85-867,462 |
|
35 |
|
4,426,768 |
|
10/29/13 |
|
|
|
|
|
|
|
|
|
|
|
|
|
STYLE ENCORE (and design) |
|
CANADA |
|
1,617,026 |
|
|
|
878,196 |
|
5/20/14 |
|
|
|
|
|
|
|
|
|
|
|
|
|
STYLE ENCORE (and design) Color |
|
USA |
|
85,901,630 |
|
35 |
|
4,450,612 |
|
12/17/13 |
|
|
|
|
|
|
|
|
|
|
|
|
|
STYLE ENCORE |
|
EUROPE |
|
012459061 |
|
25,35 |
|
012459061 |
|
4/25/14 |
|
|
|
|
|
|
|
|
|
|
|
|
|
FASHION THAT FITS YOUR LIFE |
|
USA |
|
86,173,524 |
|
35 |
|
4,572,474 |
|
7/22/14 |
*License Agreement with former franchisees expires 2021.
On August 30, 2000, the Company (f/k/a Grow Biz International, Inc.) signed a Trademark License Agreement (“Agreement”) with Xxxxxx Technologies, Inc., a Florida limited liability company (“Xxxxxx”), granting Xxxxxx the use of the COMPUTER RENAISSANCE AND DESIGN trademarks (U.S. Reg. No. 1,875,949, Canada TM 474,198 and Japan trademark No. 4,313,894) for term of twenty (20) years, with automatic successive renewals of ten (10) years each. In addition, per the Agreement, Xxxxxx may request, and the Company will grant to Xxxxxx, a license for the use of the CIRCULAR ARROWS DESIGN trademark under the same terms and conditions.
In 2001 and 2002, the Company entered into Trademark License Agreements with 14 former ReTool® franchises and a former employee of Winmark for the license of the RETOOL (U.S. Reg. No. 2,304,808) and RETOOL AND DESIGN (U.S. Reg. No. 2,267,043) trademarks for a period of 10 years with an option to renew for an additional ten (10) year period.
