TRADEMARK LICENSE AGREEMENT
Exhibit 10.37
This TRADEMARK LICENSE AGREEMENT (“Agreement”) is effective on the 19th day of
April, 1995 among UGI Corporation, a Pennsylvania Corporation (“Licensor”), AmeriGas, Inc., a
Pennsylvania Corporation (“AmeriGas”), AmeriGas Propane, Inc., a Pennsylvania Corporation (“General
Partner”), AmeriGas Partners, L.P., a Delaware limited partnership (“Partnership”), and AmeriGas
Propane, L.P., a Delaware limited partnership (“Operating Partnership”). AmeriGas, the General
Partner, the Partnership, and the Operating Partnership may be referred to in this Agreement
individually as “License” or collectively as “Licensees.”
Introduction
1. Licensor owns all right, title and interest in the service xxxx AMERIGAS,
including the federal registration for this xxxx, Reg. No. 1,811,297 (the “Xxxx”), and the
goodwill associated with the Xxxx.
2. Licensor and/or its controlled affiliates have used the Xxxx in connection with
liquefied petroleum (“LP”) gas, LP gas products, LP gas equipment, and the sale,
distribution, transportation and storage of LP gas, LP gas products, and LP gas equipment,
including but not limited to those services covered by Reg. No. 1,811,297 (the “Goods and
Services”).
3. Licensor desires that Licensees, each of which is affiliated with Licensor, use
the
Xxxx in connection with the Goods and Services in accordance with the terms and conditions
of this Agreement.
4. Each Licensee desires to obtain from Licensor a license to use the Xxxx in
connection with the Goods and Services in accordance with the terms and conditions of this
Agreement.
NOW, THEREFORE, in consideration of the foregoing and the mutual covenants contained in
this Agreement, and for other good and valuable consideration, the receipt and sufficiency
of which the parties acknowledge the parties agree as follows:
Agreement
1. Grant of License. Subject to the other provisions of this Agreement, Licensor
grants to each Licensee an exclusive (except as otherwise provided in this Agreement),
royalty-free license during the term of this Agreement to use the Xxxx in connection with
the Goods and Services. Licensees acknowledge that Licensor and its assignees, designees
and licensees may use the Xxxx in connection with the Goods and Services and the business of
the Partnership and the Operating Partnership in the same territory as Licensees.
2. Limitations on Use. Licensees shall not use the Xxxx other than in connection
with the Goods and Services or use the Xxxx in their corporate, business or trade names
without the prior written consent of Licensor, provided that no prior approval is
required for the continued use of the Xxxx by AmeriGas, the General Partner, the Partnership
and the Operating Partnership in their respective corporate names in their current form, and
the General Partner’s use of the xxxx in the corporate name “AmeriGas Propane, Inc.”
3. Ownership of the Xxxx. Licensees acknowledge that Licensor owns all right, title
and interest in the Xxxx and the goodwill associated with the Xxxx, and that any use of the
Xxxx by Licensees and any goodwill associated with such use shall inure to the benefit of
Licensor. Each Licensee agrees not to attack or contest the Xxxx or Licensor’s rights in
the Xxxx, directly or indirectly. Each Licensee agrees not to register or attempt
to register the Xxxx, or cause the Xxxx to be registered, in any country, state or other
jurisdiction. Licensor agrees to take reasonable steps to maintain the Xxxx.
2
4. Quality Control.
(a) In order to comply with Licensor’s quality control standards, each
Licensee shall: (i) use its best efforts to maintain the quality of the Xxxx; (ii) use the
Xxxx only in a manner consistent with past uses of the Xxxx by Licensor and its affiliates;
(iii) adhere to such other specific reasonable quality control standards that Licensor may
from time to time promulgate and communicate to Licensees with respect to the Xxxx; (iv)
comply materially with all U.S. federal, state and local laws and regulations, and, where
applicable, Canadian laws and regulations, governing the use of the Xxxx and the provision
of the Goods and Services; and (v) not alter or modify the Xxxx in any way.
(b) In order to confirm that Licensee’s use of the Xxxx complies with this
Section 4, Licensor shall have the right, in its sole discretion, (i) to require that any
Licensee submit to Licensor representative samples of any materials bearing the Xxxx, and
(ii) to inspect, without prior advance notice, any Licensee’s facilities, products, records
and/or operations in connection with the use of the Xxxx.
(c) If any Licensee fails to comply with any of the provisions in this Section
4, such failure shall be deemed to be a material breach of Licensee’s obligations under this
Agreement for the purposes of the termination provisions of Section 6 below.
3
5. Assignment, Collateral Assignment and Sublicensing
(a) Except as provided in subsection (b) below, Licensees shall not assign or
sublicense any right or interest in the Xxxx or the license granted in this Agreement,
whether voluntarily or by operation by law, with out the prior written consent of
Licensor, which consent may be withheld in Licensor’s absolute discretion.
(b) Notwithstanding the foregoing, the Partnership or the Operating Partnership may
grant a sublicense to any “Subsidiary” for use in connection with the Goods and Services as
long as the Subsidiary agrees in writing to the terms and conditions of this Agreement and
any collateral assignment of this Agreement to any secured lenders or any person acting on
their behalf. For the purposes of this subsection, “Subsidiary” shall have the same meaning
as in the Amended and Restated Agreement of Limited Partnership of the Partnership or the
Operating Partnership, respectively. Any Licensee may also assign all of its right, title
and interest in and to its rights under this Agreement by way of collateral security to any
creditor of the Licensee (the “Secured Creditors”) and upon any realization on the
collateral afforded by such collateral assignment, such Secured Creditors (or their
authorized representative) shall have the right to assign Licensee’s rights and
responsibilities under this Agreement to any purchaser or purchasers of the Business with
respect to which the Xxxx has been used (a “Permitted Transferee”) provided only that such
Permitted Transferee shall agree in writing to be bound by the provisions of this Agreement.
A Permitted Transferee shall be a Licensee hereunder and shall have rights of transfer of
rights and responsibilities to additional parties succeeding to all or a portion of the
Business and who shall also be Permitted Transferees hereunder.
4
(c) Licensor may, upon prior written notice to Licensees, assign, transfer, delegate or
otherwise dispose of any and all its rights and/or responsibilities under this Agreement to
an “Affiliate” of the Partnership or Operating Partnership, subject to the
prior written consent of any collateral assignee if this Agreement is then subject to a
collateral assignment for security purposes. For the purposes of this subsection
“Affiliate” shall have the same meaning as in the Amended and Restated Agreement of Limited
Partnership of the Partnership or the Operating Partnership, respectively.
6. Term and Termination
(a) The license granted in this Agreement shall remain in effect unless terminated by
mutual agreement of the parties or by Licensor as provided below, provided that any
termination pursuant to this Section 6 shall be subject to the prior written consent of any
collateral assignee if this Agreement is then subject to a collateral assignment for
security purposes.
(b) Licensor may terminate this Agreement as to any Licensee if (i) the General Partner
ceases to be the sole general partner of the Partnership or the Operating Partnership, or
(ii) Licensor deems it necessary, in it sole discretion, to terminate the Agreement in order
to settle any claim of infringement, unfair competition or similar claim, against Licensor
and/or any Licensee, that arises out of or relates to the use of the Xxxx by Licensor or any
Licensee; provided that no such termination pursuant to subsection (b)(i) shall be
permitted with respect to any Licensee that is a Permitted Transferee. Termination of this
Agreement under subsection (b)(i) shall be effective upon 12 months’ prior notice to
Licensees. Termination pursuant to subsection (b)(ii) shall be effective immediately upon
receipt of written notice to the affected Licensee(s).
(c) Licensor may terminate this Agreement as to any Licensee that materially breaches
any of the provisions of this Agreement, provided that such Licensee shall have 15
days after receiving written notice from Licensor within which to cure such breach. If
such Licensee has not cured such breach to the satisfaction of Licensor, in Licensor’s
sole discretion, at the end of said 15 day period, then Licensor may terminate the Agreement
effective immediately upon further written notice to such Licensee.
5
(d) In the event of termination as to any Licensee, such Licensee shall promptly cease
all use of the Xxxx in any form. Such Licensee shall use all commercially reasonable
efforts to remove the Xxxx promptly from all property owned or controlled by Licensee,
including without limitation any signs, storage units, facilities, or promotional materials.
Any sublicenses granted pursuant to Section 5(b) of this Agreement shall automatically
terminate.
(e) If the General Partner has ceased to be the general partner of the Partnership or
the Operating Partnership for any reason except removal other than for cause, and Licensor
terminates this Agreement pursuant to subsection (b)(i), Licensor shall pay to the Operating
Partnership a fee equal to the fair market value of the Xxxx. Otherwise, Licensor shall not
owe any fee to any Licensee upon termination.
7. Indemnification. Each Licensee shall, jointly and severally with the other
Licensees, indemnify and hold Licensor, its successors and assigns, all of the their respective
directors, officers, employees, shareholders, principals, agents and legal representatives harmless
against any and all damages, losses, costs and expenses (including, without limitation, legal fees
and other expenses) that arise out of or relate to (i) any Licensee’s use of the Xxxx in a manner
other than as specifically contemplated by this Agreement, or (ii) any other breach of this
Agreement by any Licensee.
6
8. Infringement Proceedings
(a) Each Licensee shall promptly notify Licensor of any known, threatened or suspected
infringement, imitation or unauthorized use of the Xxxx by any third party brought to the
attention of any of its officers or in-house counsel. Licensor, in its sole discretion,
shall determine what action, if any, should be taken in response to any infringement,
imitation or unauthorized use of the Xxxx by a third party. Licensees shall cooperate with
Licensor in any action taken by Licensor to enforce Licensor’s rights in the Xxxx. No
Licensee shall itself take any action to prevent any infringement, imitation or unauthorized
use of the Xxxx without the prior written approval of Licensor, which Licensor may withhold
in its sole discretion.
(b) Licensor shall have the sole right, at its expense, to defend and settle, for
monetary and/or other damages, any claim made against Licensor or any Licensee by a third
party alleging that the use of the Xxxx infringes upon any rights of others. Licensor
expressly reserves the right to terminate this Agreement, pursuant to Section 6(b)(ii)
above, to settle any such claim. If Licensor decides to defend against any such claim,
Licensees shall cooperate with Licensor to a reasonable extent, at Licensor’s expense.
9. Waiver. Waiver by Licensor of any breach of any condition or covenant of this
Agreement by any Licensee shall not be deemed a waiver of any subsequent breach of the same or any
other condition of this Agreement. No waiver shall be effective unless made in writing.
10. Entire Agreement. This Agreement contains all agreements of the parties with
respect to the subject matter of this Agreement. No prior agreement or understanding pertaining to
any such matter shall be effective. This agreement may only be modified in a written instrument
executed by the pertinent parties. Each Licensee acknowledges that Licensor might later agree to
modify this Agreement with respect to an individual Licensee and has no
obligation to so modify this Agreement with respect to any other Licensee. Each party acknowledges
that no representations, inducements, promises or agreements have been made, orally or otherwise,
by any party, or anyone acting on behalf of any party, which are not expressly embodied in this
Agreement.
7
11. Governing Law. This Agreement shall be governed by, and construed in accordance
with, applicable federal law and the laws of the Commonwealth of Pennsylvania without giving effect
to the choice of law provisions thereof.
12. Successors. Subject to Section 5 above, this Agreement shall be binding upon and
shall inure to the benefit of the parties to this Agreement and their permitted respective
successors, representatives and assigns.
13. Notices. All notices that are required or may be given pursuant to the terms of
this Agreement shall be in writing and shall be sufficient in all respects if (1) delivered or
mailed by registered or certified mail, postage prepaid; (2) sent by fax (in each case promptly
confirmed by registered or certified mail, postage prepaid); (3) sent by overnight courier as
follows:
If to Licensor, to:
|
UGI Corporation | |
| 000 Xxxxx Xxxxx Xxxx | ||
| Xxxx xx Xxxxxxx, XX 00000 | ||
| Attention: General Counsel | ||
| Fax: (000) 000-0000 | ||
If to AmeriGas, to:
|
AmeriGas, Inc. | |
| 000 Xxxxx Xxxxx Xxxx | ||
| Xxxx xx Xxxxxxx, XX 00000 | ||
| Attention: General Counsel | ||
| Fax: (000) 000-0000 | ||
If to General Partner, to:
|
AmeriGas Propane, Inc. | |
| 000 Xxxxx Xxxxx Xxxx | ||
| Xxxx xx Xxxxxxx, XX 00000 | ||
| Attention: General Counsel | ||
| Fax: (000) 000-0000 |
8
If to Partnership, to:
|
AmeriGas Partners, L.P. | |
| 000 Xxxxx Xxxxx Xxxx | ||
| Xxxx xx Xxxxxxx, XX 00000 | ||
| Attention: General Counsel | ||
| Fax: (000) 000-0000 | ||
If to Operating Partnership, to:
|
AmeriGas Propane, L.P. | |
| 000 Xxxxx Xxxxx Xxxx | ||
| Xxxx xx Xxxxxxx, XX 00000 | ||
| Attention: General Counsel | ||
| Fax: (000) 000-0000 |
or to such other address as any party shall have designated by notice in writing to the other
parties. Unless otherwise provided in this Agreement, all notices, demands and requests sent in
the manner provided in this Agreement shall be effective upon the earlier of (1) delivery thereof;
(2) three days after the mailing of such notice, demand or request by registered or certified mail;
(3) or the next business day if sent by overnight courier.
14. No Rights by Implication. Licensees acknowledge that Licensor does not grant any
rights or licenses with respect to the Xxxx other than those rights or licenses expressly granted
in this Agreement.
9
IN WITNESS WHEREOF, the parties have caused this Agreement to be duly executed and delivered
by their respective duly authorized representatives as of the date above written.
| UGI Corporation | ||||||
| By: | ||||||
Name:
|
||||||
| Title: | ||||||
| AmeriGas, Inc. | ||||||
| By: | ||||||
Name:
|
||||||
| Title: | ||||||
| AmeriGas Propane, Inc. | ||||||
| By: | ||||||
Name:
|
||||||
| Title: | ||||||
| AmeriGas Partners, L.P. | ||||||
| By: | AmeriGas Propane, Inc., as its | |||||
| General Partner | ||||||
| By: | ||||||||
Name:
|
||||||||
| Title: | ||||||||
| AmeriGas Propane, L.P. | ||||||||
| By: | AmeriGas Propane, Inc., as its | |||||||
| General Partner | ||||||||
| By: | ||||||||
Name:
|
||||||||
| Title: | ||||||||
10
