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EXHIBIT 10.7
TRADEMARK LICENSE AGREEMENT
AGREEMENT made this 4th day of September, 1997, by and among
XXXXXX, INC., a New Jersey corporation ("Xxxxxx"), and BDH TWO, INC., a
Delaware corporation ("BDH" and, together with Xxxxxx, "Licensor"), and
SOUTHERN FOODS GROUP, L.P., a Delaware limited partnership, and its permitted
assignees and successors in interest (collectively, "Licensee").
W I T N E S S E T H :
WHEREAS, Licensor owns the XXXXXX and XXXXX trademarks and
certain logotype design trademarks used in connection with milk and other dairy
products, fruit juices and drinks, and has obtained United States federal and
state trademark registrations therefor; and
WHEREAS, Licensee desires that Licensee and its permitted
sublicensees be allowed to process, sell and distribute the Products and
Additional Products (each as hereinafter defined) under the trademarks
developed by Licensor and seeks to have Licensor grant it the right to do so,
all on the terms and conditions hereinafter set out.
NOW, THEREFORE, the parties agree as follows:
ARTICLE I
DEFINITIONS
Section 1.1. The following terms shall have the meanings set
forth below:
"Additional Appendix C Products" shall mean, collectively,
milk or other dairy products or fruit juices not
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specifically listed on Appendix C that are currently manufactured or processed
by Holdings.
"Additional Appendix D Products" shall mean, collectively,
fruit drinks not specifically listed on Appendix D that are currently
manufactured or processed by Holdings.
"Additional Products" shall mean, collectively, the Additional
Appendix C Products and the Additional Appendix D Products.
"Holdings" shall mean, collectively, Xxxxxx/Meadow Gold
Dairies Holdings, Inc., a Delaware corporation, and its subsidiaries.
"Initial Term" shall have the meaning set forth in Article IX,
Section 9.1.
"Licensed Trademarks" shall mean (i) the trademarks listed and
described in Appendices A and B, attached hereto, including the federal and
state trademark registrations and applications therefor and all common law
rights in such trademarks and any trade dress or label designs associated with
such trademarks, and (ii) any such other marks and trade dress or label designs
as the parties may agree in writing to add to Appendices A and B during the
Term.
"Products" shall mean only those milk and other dairy products
and fruit juices specifically listed in Appendix C and those fruit drinks
specifically listed in Appendix D.
"Renewal Period" shall have the meaning set forth in Article
IX, Section 9.1.
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"State Marks" shall have the meaning set forth in Article VI,
Section 6.2.
"Term" shall mean the Initial Term and any Renewal Period.
"Territory" shall mean the United States and Mexico.
"United States" shall mean only the 50 states comprising the
United States of America, and the District of Columbia, excluding without
limitation any U.S. possessions and territories.
ARTICLE II
GRANT OF LICENSE
Section 2.1. (a) Subject to the terms and conditions herein,
Licensor hereby grants to Licensee during the Initial Term of this Agreement
and any Renewal Periods, and subject to the existing license agreements listed
in Appendix E attached hereto (the "Existing License Agreements"):
(i) an exclusive license to use the Licensed Trademarks
listed in Appendix A solely on or in connection with Products
manufactured or processed in the United States and listed in Appendix
C, for sale to customers in the United States;
(ii) a non-exclusive license to use the Licensed
Trademarks listed in Appendix A solely on or in connection with
Products manufactured or processed in the United States and listed in
Appendix C, for sale to customers in Mexico;
(iii) a non-exclusive license to use the Licensed
Trademarks listed in Appendix A solely on or in connection
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with Additional Appendix C Products currently sold under the Licensed
Trademarks listed in Appendix A, for sale to customers in the United
States or in Mexico;
(iv) an exclusive license to use the Licensed Trademarks
listed in Appendix B solely on or in connection with Products
manufactured or processed in the United States and listed in Appendix
D, for sale to customers in the United States;
(v) a non-exclusive license to use the Licensed
Trademarks listed in Appendix B solely on or in connection with
Products manufactured or processed in the United States and listed in
Appendix D, for sale to customers in Mexico; and
(vi) a non-exclusive license to use the Licensed
Trademarks listed in Appendix B solely on or in connection with
Additional Appendix D Products currently sold under the Licensed
Trademarks listed in Appendix B, for sale to customers in the United
States or in Mexico.
(b) Licensor and Licensee agree that $55 million of the
aggregate consideration being paid pursuant to the Stock Purchase and Merger
Agreement dated as of May 22, 1997, among Licensor, Mid-America Dairymen, Inc.
and Xxxxxx/Meadow Gold Dairies Holdings, Inc. (the "Acquisition Agreement"),
shall be allocated to the license granted under Section 2.1(a). No other
consideration shall be payable as consideration for the license granted
hereunder.
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Section 2.2. Subject to the terms and conditions herein,
Licensee may use the Licensed Trademarks on Product or Additional Product
containers, labels, packaging and shipping cases and on delivery vehicles and
in any other way suitable to promote or advertise the Licensed Trademarks and
Products or Additional Products.
Section 2.3. Subject to the terms and conditions herein,
Licensee shall not have any right to export, purchase, distribute, receive,
take on consignment or sell the Products or Additional Products bearing the
Licensed Trademarks in areas outside of the Territory. Moreover, Licensee
shall require each of its customers selling over $500,000 a year of Products
and/or Additional Products to agree in writing not to directly or indirectly
export, distribute, resell or ship any Products or Additional Products bearing
the Licensed Trademarks to any customer or wholesale or retail outlet located
outside the Territory.
Section 2.4. Other than as expressly stated herein, Licensee
shall have no other right to use or interest in the Licensed Trademarks.
Specifically, Licensee may not use any of the Licensed Trademarks in its trade
name or as its business name or in connection with (i) any products, goods or
services of any kind or nature whatsoever, whether or not the same as or
similar to the Products or Additional Products, other than the Products or
Additional Products currently sold under the Licensed Trademarks, (ii) any
products, goods or services of any kind or nature whatsoever, whether or not
the same as or similar to the
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Products or Additional Products, and including the Products and Additional
Products, if such products, goods or services have been manufactured, processed
or conducted outside the United States, (iii) any cheese or cheese products not
listed on Appendix C hereto, including without limitation processed cheese
products, (iv) any liquid or powdered non-dairy coffee xxxxxxx product, (v) any
condensed milk, evaporated milk or powdered milk products, however packaged, or
(vi) any shelf stable eggnog, whether canned, in "brick pack" packages or in
any other aseptic form of packaging. Notwithstanding the foregoing, Licensee
shall have the right to use any pre-existing materials bearing the Licensed
Trademarks for a transitional phase-out period of 120 days, after which all use
of such materials must cease. Nothing contained in this Article or any other
provision of this Agreement shall restrict Licensor from the sale of other
products different from the Products or Additional Products bearing the
Licensed Trademarks anywhere in the world or the Products or Additional
Products anywhere in the world other than the United States.
Section 2.5. (a) Except as provided in Sections 2.5(c)(i)
and 2.5(d), Licensor hereby assigns to Licensee all right, title and interest
of Licensor in, to and under each of the Existing License Agreements.
(b) Except as provided in Section 2.5(c)(ii), Licensee hereby
assumes, and agrees to perform, pay and satisfy, all of Licensor's debts,
liabilities and obligations under, each of the Existing License Agreements.
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(c) (i) Notwithstanding Section 2.5(a), the assignment under
Section 2.5(a) shall not include any right, title or interest of Licensor in,
to or under any Existing License Agreement to the extent such Existing License
Agreement pertains to or covers any products other than the Products or any
trademarks other than the Licensed Trademarks.
(ii) Notwithstanding Section 2.5(b), the assumption by
Licensee under Section 2.5(b) shall not include any debts, liabilities or
obligations under any Existing License Agreement to the extent such Existing
License Agreement pertains to or covers any products other than the Products or
any trademarks other than the Licensed Trademarks.
(d) If the assignment provided for in Section 2.5(a)
conflicts with, or would result in the breach or termination of any provision
of, or constitute a default under, or result in the acceleration of the
performance of the obligations of Licensor or any of its subsidiaries or
affiliates under, any Existing License Agreement, then, notwithstanding Section
2.5(a), Licensor shall not assign to Licensee any of its right, title or
interest in, to or under such Existing License Agreement, but shall hold such
Existing License Agreement, to the extent provided in Section 2.5(c), for the
benefit and account of Licensee, with all gains, income, losses, taxes or other
items generated thereby to be for Licensee's account. Licensor shall remit to
Licensee promptly any amounts received by Licensor under any Existing License
Agreement that is not assigned under this Section 2.5, subject to the
limitation in Section 2.5(c).
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ARTICLE III
OWNERSHIP OF TRADEMARKS
Section 3.1. Licensee acknowledges that Licensor is the sole
owner of the Licensed Trademarks. Licensee shall not directly or indirectly
question, attack, contest, or in any other manner impugn the validity or
Licensor's ownership of the Licensed Trademarks, nor shall Licensee willingly
become an adverse party to Licensor in litigation contesting the validity of
Licensor's ownership and other rights in and to the Licensed Trademarks.
Section 3.2. Licensee shall be deemed a "related company"
under the U.S. Xxxxxx Act, such that any use of the Licensed Trademarks by
Licensee, and any goodwill generated thereby, shall inure to the sole benefit
of Licensor.
ARTICLE IV
FORM OF USE
Section 4.1. Licensee hereby acknowledges and agrees that its
use of the Licensed Trademarks shall be subject at all times during the Term to
the reasonable control of Licensor in order for Licensor to maintain the
consistent standard of quality associated with the Licensed Trademarks.
Licensee will preserve the good appearance of the Licensed Trademarks wherever
and whenever they are used and shall not use any Licensed Trademark in a manner
which is likely to derogate from the integrity, distinctiveness, goodwill,
value or strength of such Licensed Trademark.
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Section 4.2. From time to time, Licensor may determine that a
previously published use of the Licensed Trademarks by Licensee may threaten
the value of the Licensed Trademarks, or is otherwise inconsistent with
Licensor's quality standards. Upon written notice from Licensor, Licensee
shall implement Licensor's directions regarding the proper use of the Licensed
Trademarks as promptly as practicable using its best efforts and, in any event,
within thirty (30) days.
Section 4.3. Except as required by law, Licensee agrees not
to use the Licensed Trademarks in connection or combination with any other
third-party trademarks, names or logotypes, without Licensor's prior written
approval, such approval not to be withheld unreasonably. Licensee shall at no
time adopt or use any variation of the Licensed Trademarks or any word or marks
confusingly similar thereto without Licensor's prior written approval.
Section 4.4. Licensee shall not take any action to cause an
abandonment or forfeiture of any of Licensor's rights in the Licensed
Trademarks and shall not take any action to cancel any registration in the
United States or elsewhere of any Licensed Trademark in the name of Licensor or
to interfere with any renewal of any such registration. Licensee shall
reasonably cooperate with and shall not oppose any application by or on behalf
of Licensor to register or renew any federal or state registration of any
Licensed Trademark in the United States or elsewhere.
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ARTICLE V
QUALITY CONTROL
Section 5.1. Licensee agrees that all Products bearing a
Licensed Trademark pursuant to the Agreement shall be of a high standard and of
such quality as to protect and enhance the Licensed Trademarks and the goodwill
and value pertaining thereto and shall meet Licensor's quality standards and
specifications as set out specifically in the current formulae, ingredients and
manufacturing specifications ("FIMS") for such Products, a copy of which has
been made available to Licensee, and/or such modified formulae as shall be
reasonably agreed in writing between Licensor and Licensee in the future.
Licensee and its Manufacturing Agents (as defined in Section 5.5 below) shall
manufacture, sell, distribute and promote the Products in accordance with all
applicable federal, state and local laws.
Section 5.2. In order to assure that Licensee meets
Licensor's quality standards and specifications, once each quarter of the Term
and/or for good cause shown, Licensee shall submit comprehensive affidavits
that meet with Licensor's reasonable approval from all of Licensee's quality
control department managers responsible for the quality standards of the
Products produced by that part of Licensee's or its Manufacturing Agents'
business for which they are responsible, attesting under oath that Licensor's
quality standards and Product specifications have been fully complied with
during the prior quarter, also submitting representative Product samples and
listing the number of customer complaints relating to Product quality during
that
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quarter and a summary of the actions taken by Licensee in response to such
complaints.
Section 5.3. Licensee also agrees that Licensor will submit
the quarterly Product samples provided for in Section 5.2 to an independent
testing laboratory to determine if the FIMS are being complied with, the
expense thereof being borne by Licensee. Licensor also reserves the right
periodically to conduct quality control inspections, upon reasonable notice and
during normal business hours, at Licensee's plants to determine if the
Licensor's FIMS for the Products and the processing thereof are being complied
with.
Section 5.4. In the event that Licensor or its agents shall
determine that any Products sold or distributed by Licensee and/or its
Manufacturing Agents bearing or using Licensed Trademarks do not conform to
Licensor's FIMS, and/or otherwise violate the provisions of this Article V,
Licensee agrees, at its expense, to take such action as Licensor directs in
writing, including, but not limited to, withdrawal and/or recall of such
Products from the market and to refrain and cause its Manufacturing Agents to
refrain from further sale and/or distribution of such Products under the
Licensed Trademarks unless and until Licensee and/or its Manufacturing Agents
have demonstrated to the reasonable satisfaction of Licensor that said Products
conform to said FIMS and/or the provisions of the Article V, as the case may
be.
Section 5.5. If Licensee enters into co-packing agreements
with suppliers or any other arrangement with respect
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to the processing or packaging of final Products by any person who is not a
subsidiary of Licensee, who will process or package final Products for the
Licensee, for sale in the Territory ("Manufacturing Agents"), Licensee must
submit such co-packing agreements in draft form to Licensor or an individual
designated by Licensor ("Licensor's License Coordinator") for prior approval to
ensure they include trademark protection and quality control provisions that
safeguard the rights of both the Licensor and Licensee under this Agreement.
Licensor agrees that such prior approval shall not be withheld or delayed
unreasonably, and that Licensor shall respond promptly to any request for
approval. If Licensor fails to respond to such request within thirty (30)
days, Licensor's approval shall be deemed given.
Section 5.6. On a semi-annual basis, Licensee shall review
with Licensor's License Coordinator and obtain prior approval for, all
advertising, promotional and point-of-purchase materials published or
distributed by Licensee in connection with Products bearing Licensed
Trademarks. Licensor agrees that such prior approval shall not be withheld or
delayed unreasonably, and that Licensor shall respond promptly to any request
for approval. If Licensor fails to respond to such request within thirty (30)
days, Licensor's approval shall be deemed given.
Section 5.7. If Licensee desires to adopt new cartons or
packaging bearing the Licensed Trademarks, which package designs or trade dress
are different from those presently used by Licensor, Licensee shall submit to
Licensor's License Coordinator at least one (1) representative sample of each
such new carton
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and packaging material and may not use any such materials in connection with
the Licensed Trademarks without Licensor's prior written approval. Licensor
agrees that such prior approval shall not be withheld or delayed unreasonably,
and that Licensor shall respond promptly to any request for approval. If
Licensor fails to respond to such request within thirty (30) days, Licensor's
approval shall be deemed given.
Section 5.8. Licensee shall notify Licensor promptly in
writing upon its determination that it intends to use any Licensed Trademark in
connection with an Additional Product, which notification shall include a
description of the Additional Product, and a certification of the Chief
Executive Officer of each of Licensee and Holdings that the Additional Product
was manufactured or processed by Holdings on the date of this Agreement. From
and after such notification, Licensor and Licensee shall mutually agree upon
the FIMS that will be applicable to such Additional Product and the provisions
of this Article V thereafter shall be applicable to such Additional Product as
if it were a "Product" hereunder.
ARTICLE VI
REPRESENTATIONS, WARRANTIES AND COVENANTS
Section 6.1. Subject to the limitations of Section 6.2,
Licensor represents that it is the owner of or has the exclusive right to
license the Licensed Trademarks for use in connection with the Products in the
Territory and is not aware of any other party with ownership rights in the
United States in any
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of the Licensed Trademarks, except for the Existing License Agreements.
Section 6.2. Notwithstanding Section 6.1, Licensee
acknowledges that Licensor makes no representation or warranty whatsoever as to
the ownership, existence or validity of the state trademark registrations
listed on Appendix A (the "State Marks"). The State Marks are hereby licensed
to Licensee on an "as is" basis, and Licensee shall bear the economic and legal
risk that the State Marks are valid and that their ownership by Licensor is
other than good and marketable and free from encumbrances.
Section 6.3. Licensor represents that during the Term, it
will not license any other party to use the Licensed Trademarks on the Products
in the Territory and will not itself sell Products identified by the Licensed
Trademarks in the United States. Licensor may use the Licensed Trademarks on
Products it sells anywhere in the world outside the United States. Nothing
herein shall restrict Licensor's right or ability to sell (or license others to
sell) goods or services other than the Products identified by the Licensed
Trademarks or similar marks anywhere in the world.
Section 6.4. Licensor agrees to use reasonable efforts to
prevent any of its present or future third- party licensees from trans-shipping
or otherwise selling Products bearing the Licensed Trademarks to accounts or
customers located within the United States.
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Section 6.5. Licensor shall take all steps necessary to
insure the continued registration of, including, but not limited to, filing all
timely renewals of registrations for, the United States trademarks and Mexican
trademarks listed on Appendix A. Licensor shall have no obligation under this
Section 6.5 with respect to the State Marks.
Section 6.6. Licensee shall cooperate with Licensor in the
protection of the Licensed Trademarks and in connection therewith shall:
(a) promptly inform Licensor of any third-party use of any
Licensed Trademarks or any infringement or encroachment upon or any misuse
whatsoever of any Licensed Trademarks which comes to Licensee's attention; and
(b) promptly inform Licensor of any claim against Licensee
that the use of any Licensed Trademark infringes the rights of others or of the
institution of any proceeding against Licensee predicated upon any such claimed
infringement.
Section 6.7. Without limiting the effect of Section 3.1
hereof, Licensor and Licensee shall both have the right to take action in
respect of any Products bearing the Licensed Trademarks for any alleged
infringements of, or other impairments to, such Products. The party taking any
such action shall bear all expenses, have complete control over, and recover
all proceeds, settlements and damages with respect to the action.
Notwithstanding the foregoing sentence, the other party retains the right to
join such action and share evenly all expenses, control, proceeds, settlements
and damages with respect thereto,
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if such other party joins such action within a reasonable time period following
its commencement.
ARTICLE VII
INDEMNIFICATION AND INSURANCE
Section 7.1. Licensor will hold Licensee harmless from and
against all suits, claims or actions by third parties against Licensee alleging
trademark infringement arising from Licensee's authorized use of any of the
Licensed Trademarks; provided that Licensee gives Licensor prompt written
notice of such suit, claim or action and cooperates fully with Licensor in
defending the same.
Section 7.2. Licensee hereby indemnifies and undertakes to
defend and hold Licensor harmless from and against any and all claims, suits,
losses, damages, fines, penalties, and/or expenses, including, but not limited
to, attorneys' fees, arising out of or based upon:
(a) Licensee's or its Manufacturing Agents' processing,
distribution or sale of Products or Additional Products bearing a Licensed
Trademark; or
(b) any breach by Licensee or its Manufacturing Agents of
their obligations hereunder; or
(c) any proceeding brought by any person, governmental agency
or consumer group in connection with the Products or Additional Products
processed, sold or distributed by Licensee or its Manufacturing Agents bearing
or using a Licensed Trademark; or
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(d) any violations of any applicable law or regulation or
civil claims relating to the manufacture, processing, sale, distribution,
promotion or advertising of Products or Additional Products bearing or using a
Licensed Trademark unless attributable to Licensor's breach of its obligations
under this Agreement. Licensor may participate in the defense of any such
litigation.
Section 7.3. Licensee shall be solely responsible for the
acts and omissions of those with whom it or its Manufacturing Agents contract
for any aspect of the processing, distribution or sale of Products or
Additional Products bearing or using a Licensed Trademark.
Section 7.4. In order to assure its ability to discharge its
obligations to Licensor, Licensee agrees that it will maintain throughout the
Term at its expense, comprehensive general liability insurance, including
product liability insurance and contractual liability coverage specifically
endorsed to cover the indemnity provisions in this Agreement, from a carrier
satisfactory to Licensor, in a minimum amount of Five Million Dollars
($5,000,000) combined single limit for each single occurrence, for bodily
injury and property damage, which shall designate Licensor as an additional
insured therein. The policy shall provide for thirty (30) days prior written
notice to Licensor from the insurer in the event of any material modification,
cancellation or termination. Licensee shall deliver certificates of such
insurance coverage to Licensor prior
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to the sale and/or distribution of any Products or Additional Products bearing
a Licensed Trademark.
ARTICLE VIII
RELATIONSHIP
Section 8.1. The relationship between Licensor and the
Licensee is that of licensor and licensee; the Licensee, its contractors,
agents and employees shall under no circumstances be deemed agents,
franchisees, representatives, employees or partners of Licensor.
ARTICLE IX
TERM AND TERMINATION
Section 9.1. Subject to the provisions of Sections 9.2 and
9.3 hereof, the term of this Agreement shall be a period of five (5) years from
the date hereof (the "Initial Term") and for continuous subsequent five (5)
year terms (the "Renewal Period(s)"), provided that, for the Licensed
Trademarks listed on Appendix B and the Products listed on Appendix D and the
Additional Appendix D Products, the licenses granted under Sections 2.1(a)(iv),
(v) and (vi) herein shall expire after three (3) years from the date hereof and
cannot be renewed.
Section 9.2. Licensee may cancel this Agreement upon no less
than one (1) year's written notice delivered to Licensor prior to the end of
the Initial Term or the then-effective Renewal Period, provided that, if
Licensee does not give the required notice of termination, the Agreement shall
be automatically renewed for a subsequent Renewal Period.
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Section 9.3. Licensor shall have the right to cancel and
terminate this Agreement immediately by written notice to Licensee upon the
occurrence of any one (1) or more of the following events:
(a) Licensee fails to deliver to Licensor or to maintain in
full force and effect the insurance referred to in Section 7.4; or
(b) Except as provided in 9.3(c), Licensee or its
Manufacturing Agents fail to commence and diligently pursue the cure of any
breach by them of a material provision of this Agreement within ten (10) days
of receipt of Licensor's written notice of such breach or to effect such cure
within twenty (20) days of receipt of such written notice; or
(c) The failure or refusal of Licensee or its Manufacturing
Agents:
(i) to, within ten (10) days of receipt of Licensor's
reasonable written instructions issued regarding the quality standards
of the Licensed Trademarks and Products or Additional Products,
respond to such instructions and commence a diligent attempt at cure,
or to effect such cure within twenty (20) days of receipt of such
instructions; or
(ii) to perform, or comply with, any provision contained
in Article V which failure results in the production for sale of
Products or Additional Products that are unsafe or unfit for human
consumption; or
(d) The insolvency of Licensee; an assignment by Licensee for
the benefit of creditors; the failure of Licensee to
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obtain the dismissal of any involuntary bankruptcy or reorganization petition
filed against it within sixty (60) days from the date of such filing; the
failure of Licensee to vacate the appointment of a receiver for all or any part
of its business within sixty (60) days from the date of such appointment; or
the dissolution of Licensee; or
(e) An involuntary recall of Products or Additional Products
bearing the Licensed Trademarks for reasons directly or indirectly related to
the safety of such Products or Additional Products and attributable to the
negligence or intentional wrongdoing of Licensee or its Manufacturing Agents;
provided that Licensor determines in its reasonable judgment that such event
has had or is reasonably likely to have a material adverse effect on the
integrity, goodwill, value or strength of any of the Licensed Trademarks;
provided, further, that Licensor may terminate this license under this Section
9.3(e) without regard to the immediately preceding proviso upon or after the
third occurrence within any 12-month period of an event referred to in this
Section 9.3(e).
Section 9.4. In the event that this Agreement is terminated
or expires, Licensee shall, and shall cause its Manufacturing Agents to,
immediately cease all use of the Licensed Trademarks, provided that Licensee
may dispose of inventory on hand of Products and Additional Products in the
ordinary course of business, which shall be no longer than 120 days, if
Licensee complies with its obligations under this Agreement. Upon the request
of Licensor, Licensee will
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immediately remove or obliterate any Licensed Trademark from all signs,
billboards, vehicles and from each and every other place and medium in which
they appear and destroy or surrender to Licensor all other materials of
whatever nature which bear or refer in any way to the Licensed Trademarks.
Section 9.5. Licensee hereby acknowledges and agrees that in
the event it breaches or otherwise defaults under Articles IV, V or X of this
Agreement, Licensor shall suffer immediate and irreparable harm for which there
is not an adequate remedy at law. Licensee agrees that Licensor shall be
entitled to equitable relief by way of injunction, in addition to any other
remedy available at law or in equity.
ARTICLE X
ASSIGNMENTS AND SUBLICENSES
Section 10.1. This Agreement shall not be assigned by
Licensee, in whole or in part, without the prior written consent of Licensor.
From and after any permitted assignment pursuant to this Section 10.1, the
assignee shall be deemed to be a Licensee for all purposes hereof.
Section 10.2. The licenses granted under Article II, Section
2.1(a) of this Agreement shall not be sublicensed by Licensee, in whole or in
part, without the prior written consent of Licensor, which consent shall not be
unreasonably withheld. Notwithstanding the preceding sentence, Licensee may
sublicense such licenses in whole or in part, to any Permitted Assignee under
the Acquisition Agreement or any subsidiary thereof, provided that such
sublicense is pursuant to a written instrument
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that explicitly binds the sublicensee to all pertinent provisions of this
Agreement governing Licensee's own use of the Licensed Trademarks. In no event
shall any sublicense under this section relieve Licensee of any of its
obligations under this Agreement.
ARTICLE XI
NOTICE
All notices pursuant to this Agreement shall be in writing and
delivered personally or sent by registered or certified mail, postage prepaid,
return receipt requested, as follows:
If to Licensee: Xxx Xxxx
Assistant Secretary
c/o SFG Management Limited
Liability Company,
General Partner
0000 Xxxxx Xxxxxxx
Xxxxxx, Xxxxx 00000
With copies thereof to: Xxxxx X. Xxxxxxx, Esq.
Vice President - Legal
Mid-America Dairymen, Inc.
0000 Xxxx Xxxxxxxx Xxxxxxxxxx
Xxxxxxxxxxx, Xxxxxxxx 00000
and
Xxxxxxx X. Xxxx, President and
Chief Executive Officer
Xxxxxx/Meadow Gold Dairies, Inc.
0000 X. Xxxxxxx Xxxxx Xxxxx
Xxxxx 000
Xxxxx, Xxxx 00000
and
Xxxxxx X. Xxxxx, Esq.
General Counsel
Xxxxxx/Meadow Gold Dairies, Inc.
0000 X. Xxxxxxx Xxxxx Xxxxx
Xxxxx 000
Xxxxx, Xxxx 00000
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If to Licensor: Xxxxxxx X. Xxxxxxx, Assistant
Secretary
BDH Two, Inc.
Xxxxx 000
Xxx Xxxxxx Xxxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxx 00000
With a copy thereof to: Xxxxxxx X. Xxxxx, General Counsel
Xxxxxx, Inc.
000 Xxxx Xxxxx Xxxxxx
Xxxxxxxx, Xxxx 00000
Any notice delivered personally shall be deemed to have been given on the date
it is so delivered, and any notice delivered by registered or certified mail
shall be deemed to have been given on the date it is received. Either party by
notice in writing delivered or mailed to the other may change the name or
address or both to which future notices to such party shall be delivered.
ARTICLE XII
MISCELLANEOUS
Section 12.1. This Agreement and each of the appendices and
exhibits thereto constitute the entire understanding of the parties with
respect to the subject matter hereof, and supersede and merge all prior
agreements and discussions between the parties relating hereto. No changes in
the terms of this Agreement shall be valid, except when and if reduced to
writing and signed by both Licensee and Licensor.
Section 12.2. All rights and remedies which Licensor or
Licensee may have hereunder or by operation of law are cumulative, and the
pursuit of one right or remedy shall not be deemed an election to waive or
renounce any other right or remedy. Licensor or Licensee's failure to enforce
any provision hereof on any occasion shall not be deemed to waive any other
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breach of any provision hereof. Any waiver of any provision of this Agreement
must be in writing and executed by the waiving party. No waiver of any breach
or default under this Agreement shall waive any other breach or default.
Section 12.3. The parties agree that each provision of this
Agreement shall be construed as separable and divisible from every other
provision. Enforceability of any one provision shall not limit the
enforceability, in whole or in part, of any other provision hereof. If any
term or provision of this Agreement (or the application thereof to any party or
set of circumstances) shall be held invalid or unenforceable in any
jurisdiction and to any extent, it shall be ineffective only to the extent of
such invalidity or unenforceability and shall not invalidate or render
unenforceable any other terms or provisions of this Agreement (or such
applicability thereof).
Section 12.4. Licensee and Licensor agree to execute such
further documentation and perform such further actions as may be reasonably
requested by the other party hereto to evidence and effectuate further the
purposes and intents set forth in this Agreement.
Section 12.5. All representations, warranties and indemnities
contained in this Agreement shall survive any independent investigation made by
the benefiting party and the suspension, expiration or termination of this
Agreement.
Section 12.6. This Agreement, irrespective of place of
execution or performance, shall be construed and enforced in accordance with
the laws of the State of Delaware applicable to
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25
contracts executed and wholly performed therein. Any and all actions or
proceedings concerning this Agreement shall, if brought by any party hereto, be
instituted and resolved in the courts of the State of Delaware or any federal
court sitting in the State of Delaware. Each party hereby consents to
jurisdiction and service of process in such locale.
Section 12.7. Article and section headings and captions are
for convenience only and shall not be used in the construction or
interpretation of this Agreement or any terms herein.
Section 12.8. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original and all of which taken
together constitute one and the same instrument.
Section 12.9. From and after the date hereof, the Trademark
License Agreement dated as of October 21, 1996 between BDH and Xxxxxx/Meadow
Gold Dairies, Inc. is terminated and of no further force or effect.
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26
IN WITNESS WHEREOF, the parties hereto have duly executed this
Agreement as of the day and year first above written.
XXXXXX, INC.
By: /s/
-------------------------------------
Title:
BDH TWO, INC.
By: /s/
-------------------------------------
Title:
SOUTHERN FOODS GROUP, L.P.
By: SFG Management Limited
Liability Company, its general
partner
By: /s/ XXXX XXXXXXXX
-------------------------------------
Title:
The undersigned hereby agrees to be bound by the foregoing
Agreement and to be obligated to the Licensor named in the foregoing Agreement
as if the undersigned were the Licensee named therein.
MID-AMERICA DAIRYMEN, INC.
By: /s/ XXXXXX X. XXX
-------------------------------------
Title:
The undersigned hereby agrees to the termination of the
Trademark License Agreement dated as of October 21, 1996 between BDH and
Xxxxxx/Meadow Gold Dairies, Inc. from and after the date of the foregoing
Agreement pursuant to Section 12.9 of the foregoing Agreement.
XXXXXX/MEADOW GOLD DAIRIES, INC.
By: /s/
-------------------------------------
Title:
-26-
00
Xxxxxxxx X - Xxxxxxxx Xxxxxxxxxx
XXXXXX XXXXXX TRADEMARK U.S. REG. NO.
----------------------- -------------
XXXXXX Corporate Logo 921,370
XXXXXX (Corporate Logo) &
Cow's Head (Xxxxx) Design 969,728
Xxxxxx Logotype with Cow's Head 1,859,074
Design of Cow's Head
(Elsie's Head with Flowers) 1,860,207
Design of Cow's Head -
Xxxxx Design (Daisy) 397,158
Design of Cow's Head -
Xxxxx (Design Plus Oval) 405,706
Design of Cow's Head 529,468
Xxxxx Design 810,861
Xxxxx 1,857,137
Xxxx Xxxxxx Signature 1,689,184
IF IT'S XXXXXX, IT'S GOT TO BE GOOD 1,042,420
IF IT'S XXXXXX, IT'S GOT TO BE GOOD 1,504,138
LADY XXXXXX 572,693
LADY XXXXXX & DESIGN 1,893,711
STATE TRADEMARK STATE REG. NO.
--------------- --------------
Xxxxxx (Alabama) 103,326
Xxxxxx (Arizona) 25,318
Xxxxxx (Arkansas) 124-87
Xxxxxx (California) 085,407
Xxxxxx (Colorado) T33167
Xxxxxx (Connecticut) 6,783
Xxxxxx (Delaware) 170-62
28
Xxxxxx (Florida) T07258
Xxxxxx (Georgia) T-7593
Xxxxxx (Xxxxx) 00000
Xxxxxx (Illinois) 60328
Borden (Indiana) 5009-8037
Xxxxxx (Xxxx) 0000
Xxxxxx (Kansas) 10588
Xxxxxx (Kentucky) 07288
Xxxxxx (Louisiana) 45-0849
Xxxxxx (Maine) 19880138M
Xxxxxx (Maryland) 87-6805
Xxxxxx (Xxxxxxxxxxxxx) 00000
Xxxxxx (Michigan) X00-000
Xxxxxx (Xxxxxxxxx) 00000
Xxxxxx (Mississippi) N/A
Xxxxxx (Missouri) 9541
Xxxxxx (Montana) 14,965
Xxxxxx (Nebraska) 69,516
Xxxxxx (New Hampshire) N/A
Xxxxxx (New Jersey) 7522
Xxxxxx (New Mexico) TK87051105
Xxxxxx (New York) R-24433
Xxxxxx (North Carolina) 0000
Xxxxxx (Xxxxx Xxxxxx) 12,390
Xxxxxx (Oklahoma) 21,492
Xxxxxx (Oregon) 21,597
Xxxxxx (Pennsylvania) 976092
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29
Xxxxxx (Rhode Island) 00-0-0
Xxxxxx (South Carolina) N/A
Xxxxxx (South Dakota) N/A
Borden (Tennessee) 686-2060
Xxxxxx (Texas) 47,355
Xxxxxx (Utah) 28,516
Xxxxxx (Vermont) 5615
Xxxxxx (Virginia) N/A
Xxxxxx (West Xxxxxxxx) N/A
Borden (Wisconsin) X/X
Xxxxxxx Xxxx (Xxxxxxx) 0000-000
Glacier Club (Iowa) 3255
Glacier Club (Vermont) 4,439
Glacier Club (Wisconsin) 18054
Home Treat (Louisiana) N/A
Home Treat (Mississippi) X-000
Xxxxxx Xxxx (Xxxxxxx) 000,000
Xxxxxx Xxxx (Xxxxxxx) 00000
Meadow Gold (Arkansas) 000-00
Xxxxxx Xxxx (Xxxxxxxxxx) 000000
Meadow Gold (Colorado) X00000
Xxxxxx Xxxx (Xxxxx) 00000
Meadow Gold (Illinois) 00000
Xxxxxx Xxxx (Xxxxxxx) 0000-0000
Xxxxxx Xxxx (Xxxx) 0000
Xxxxxx Xxxx (Xxxxxx) X/X
Xxxxxx Xxxx (Xxxxxxxx) 00000
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30
Meadow Gold (Louisiana) X/X
Xxxxxx Xxxx (Xxxxxxxx) 00-0000
Meadow Gold (Michigan) X00-000
Xxxxxx Xxxx (Xxxxxxxxxxx) X/X
Xxxxxx Xxxx (Xxxxxxxx) 0000
Xxxxxx Xxxx (Xxxxxxxx) 00000
Meadow Gold (Nevada) N/A
Meadow Gold (New Jersey) X/X
Xxxxxx Xxxx (Xxx Xxxx) X00000
Meadow Gold (North Carolina) N/A
Meadow Gold (Oklahoma) 21354
Meadow Gold (South Carolina) N/A
Meadow Gold (Tennessee) X/X
Xxxxxx Xxxx (Xxxxx) 00000
Meadow Gold (Virginia) N/A
MEXICAN TRADEMARK REG. NO.
----------------- --------
Xxxxxx Label (milk carton) 379,964
Xxxxxx Corporate Logo 452,152
Xxxxxx Corporate Logotype 349,338
Xxxxxx and Design of Cow's Head
(Elsie's Head with Flowers in "New" Logo) 459,630
Xxxxxx and Design of Cow's Head
(Elsie's Head with Flowers in "New" Logo) 459,629
Xxxxxx Label (milk carton) 400,509
Xxxxxx and Design of Cow's Head
(Elsie's Head with Flowers in "New" Logo) 459,628
Cow's Head Design 379,768
Cow's Head Design 383,926
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31
Cow's Head Design 400,235
Elsie's Market & Cow's Head Design
(Service Xxxx) 457,129
Lady Xxxxxx 417,418
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Appendix B - Licensed Trademarks
XXXXXX
XXXXXX LOGOTYPE
XXXXXX (Corporate Logo & Cow's Head (Xxxxx) Design)
Xxxxxx Logotype with Cow's Head
Design of Cow's Head (Elsie's Head with Flowers)
Design of Cow's Head - Xxxxx Design (Daisy)
Design of Cow's Head - Xxxxx (Design Plus Oval)
Design of Cow's Head - Xxxxx Design
Xxxxx Design
XXXXX
IF IT'S XXXXXX, IT'S GOT TO BE GOOD
33
Appendix C - Products
MILKS
Fluid fresh homogenized milk
Fluid fresh 1% and 2% low fat milk
Fluid fresh nonfat skimmed milk
Fluid fresh 1% and 2% chocolate milk
Fluid fresh whole chocolate milk
Fresh skim chocolate milk
Fresh buttermilk
Lactose reduced & lactose free fresh milk
Ultra-pasteurized, shelf stable, aseptically packaged fluid fresh milk
BUTTER
"Country Store" butter (in quarters)
Spreadable light butter
EGGNOGS
Regular fresh eggnog
Light fresh eggnog
Fat free fresh eggnog
CREAMS
Fresh heavy cream
Fresh light cream
Fresh half & half cream
Fresh fat free cream
ICE CREAMS, FROZEN YOGURTS AND SHERBETS
Frozen ice cream - full fat
Frozen ice cream - fat free
Frozen ice cream - low fat
Frozen confections - Juice pops on sticks
Frozen confections - Regular ice cream pops on sticks
Frozen confections - Reduced sugar ice cream pops
Frozen confections - No sugar-added ice cream pops
Frozen confections - ice cream bars
Frozen confections - ice cream sandwiches
Frozen confections - ice cream cups
Frozen confections - ice cream cones containing bulk
ice cream packed inside a foil container
Frozen sherbets or sorbets in various flavors
Frozen yogurt in various flavors
34
COTTAGE CHEESES
Regular fresh cottage cheese
Low fat fresh cottage cheese
Fat free fresh cottage cheese
SOUR CREAMS
Regular fresh sour cream
Low fat fresh sour cream
Fat free fresh sour cream
FRESH YOGURTS
Regular yogurt
Low fat yogurt
Fat free yogurt
CREAM CHEESES
Regular cream cheese
Reduced fat cream cheese
FRUIT JUICES - From 100% Concentrate
Orange, apple and a variety of other flavors
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Appendix D - Products
FRUIT DRINKS
Refrigerated fruit drinks, namely, orange and other flavor drinks
36
Appendix E - Pre-Existing Licenses
Affiliated Funding, Inc. (d/b/a/ Plains Dairy Products),
May 1, 1997 through May 1, 2002
Xxxxxx Dairies, Inc., March 24, 1997 through March 24, 1998
Xxxx Foods Co., April 5, 1997 through April 5, 1998
Xxxxxx Dairy, Inc. (Xxxx Foods Co.), October 30, 1995 through
October 29, 2000
Country Fresh, Inc., January 1, 1991 through December 31, 1993
(with one year renewals)
H.P. Hood, Inc., August 26, 1996 through August 25, 2005
Modern Dairy of Champaign, Inc., November 20, 1995 through
November 20, 1998
Rich Foods, Inc., May 31, 1996 through November 30, 1998
Sunnydale Farms, Inc., July, 1996 through December 31, 2001
Xxxxxx Dairies, Inc., June 14, 1996 through June 13, 1999
United Dairy, Inc., June 30, 1995 through June 29, 1998
