Exhibit 10.37
TRADEMARK LICENSE AGREEMENT
between
AUTOIMMUNE INC.
and
COLLORAL LLC
dated as of August 19, 2002
TRADEMARK LICENSE AGREEMENT
THIS AGREEMENT is made and entered into this 19/th/ day of August, 2002, by
and between AutoImmune Inc., a Delaware corporation ("AutoImmune") and COLLORAL
LLC, a Delaware limited liability company ("Company").
RECITALS:
A. AutoImmune is the owner of the trademark, COLLORAL(R), for use in
connection with pharmaceutical and neutraceutical preparations for use in the
treatment of autoimmune diseases and food supplements;
B. Pursuant to the terms of a certain License Agreement of even date
herewith between AutoImmune and Company, AutoImmune is licensing certain
technology to Company in order to enable Company to manufacture, market and sell
a non-prescription product for the treatment of arthritic conditions;
C. Company desires to use the trademark, COLLORAL, as the name of the
product being manufactured, marketed and sold under the Technology License; and
D. AutoImmune has agreed to license the trademark to Company on the terms
and conditions set forth in this Agreement;
NOW, THEREFORE, for valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, and in consideration of the promises made herein,
Company and AutoImmune hereby agree as follows:
1. DEFINITIONS
(a) "License" means the rights granted to Company in the first sentence of
Section 2.
(b) "Patent Rights" has the meaning set forth for such term in the
Technology License.
(c) "Product" means a non-prescription product for the treatment of
arthritic conditions that but for the license rights granted to Company in the
Technology License would be within a Valid Claim of a pending patent application
or issued patent included in the Patent Rights.
(d) "Technology License" means the License Agreement of even date herewith
between AutoImmune and the Company.
(e) "Trademark" means the word xxxx, COLLORAL.
(f) "Valid Claim" has the meaning set forth for such term in the Technology
License.
2. LICENSE GRANT
(a) Grant. Subject to the terms and conditions of this Agreement,
AutoImmune hereby grants to Company, and Company hereby accepts, an exclusive,
worldwide, royalty-free right and license to use the Trademark under the common
law and under the auspices and privileges provided by the registration(s)
covering the same in connection with the manufacture, marketing and sale of the
Product.
(b) Sublicenses. Company shall have the right to sublicense the License
with the prior written consent of AutoImmune. A copy of each sublicense granted
by Company under this Agreement shall be furnished to AutoImmune promptly after
execution thereof. Any such sublicense shall conform to the terms hereof, and
Company shall be responsible for the performance by its sublicensees of all
obligations imposed under the terms of this Agreement.
3. TITLE
(a) Title in AutoImmune. Company acknowledges AutoImmune's ownership of the
Trademark and that all use of the Trademark by Company and its sublicensees
shall inure to the benefit of AutoImmune. Company shall not do anything that is
inconsistent with such ownership and shall neither acquire nor claim any title
to the Trademark by virtue of the License or Company's use of the Trademark.
(b) Confusingly Similar Marks. Company shall not adopt or use any word,
name, xxxx or other designation which is likely to cause confusion with the
Trademark and shall not make any unlicensed use or file any application for
registration of the Trademark or any marks confusingly similar thereto in any
jurisdiction.
(c) Third Party Infringement.
(i) If Company knows or reasonably believes that any third party is
infringing the Trademark or using or promoting any xxxx or design similar
to the Trademark in connection with a product or products similar to the
Product, Company shall notify AutoImmune immediately, and the parties shall
consult with one another concerning the action to be taken.
(ii) AutoImmune shall have the right, but not the obligation, to
prosecute at its own expense any such infringement. After repayment to
AutoImmune of all of its costs and expenses, any recovery or damages
derived from such action shall be shared equally by AutoImmune and Company.
(iii) If, within sixty (60) days after AutoImmune first becomes aware
of any infringement of the Trademark, AutoImmune declines to prosecute such
infringement or fails to cause such infringement to terminate or to bring
or diligently prosecute a suit or action to compel termination, Company
shall have the right, but not the obligation to bring such suit or action
to compel termination at the sole expense of Company. In such event,
Company shall have the right, if AutoImmune is a legally indispensable
party, to bring such suit or action in the name of AutoImmune. AutoImmune
shall have the right to join any such suit or action brought by Company at
AutoImmune's expense. Any
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recovery or damages derived from such action shall first be used to
reimburse the parties for all legal expenses relating to the suit and
thereafter shall belong entirely to the Company if the infringement
involves a nutraceutical product, otherwise entirely to AutoImmune. No
settlement, consent, judgment or other voluntary final disposition of the
suit may be entered into without the consent of AutoImmune, which consent
shall not unreasonably be withheld.
4. QUALITY CONTROL
(a) Specifications. Company acknowledges that AutoImmune has the right to
establish specifications and enforce quality control standards for the use of
the Trademark. From time to time, AutoImmune may notify Company of the
specifications and quality control standards that will apply to use of the
Trademark. Company will use the Trademark only in compliance with the then most
recent version of such specifications and standards.
(b) Quality Control. The quality of the Product marketed or sold under the
Trademark shall be satisfactory to AutoImmune, which satisfaction shall be in
AutoImmune's sole discretion. Company will cooperate with AutoImmune in
facilitating AutoImmune's control over the quality of such Product and, upon
request, will supply AutoImmune with specimens of the Product. Upon seven days
prior notice, AutoImmune and/or its authorized representatives shall have the
right to inspect, during regular business hours, any facility used to
manufacture the Product and any marketing collateral or advertisements used to
promote the Product to determine satisfaction with the quality of the Product
and compliance with the then current version of the specifications and standards
for use of the Trademark.
5. TERM AND TERMINATION
(a) Term. Unless earlier terminated in the manner set forth in this Section
5, this Agreement shall be in effect from the date hereof until the Technology
License terminates.
(b) Early Termination. AutoImmune may terminate this Agreement by providing
notice to Company in the event that (i) Company commits a material breach of any
of the provisions of this Agreement or fails to comply with any material
condition hereof, (ii) AutoImmune gives notice to Company specifying the nature
of the breach alleged to have occurred and (iii) Company fails to remedy such
breach within 30 days of notice thereof; provided, however, that AutoImmune may
not terminate this Agreement if the Company's breach hereof or the failure to
remedy such breach is caused by AutoImmune by reason of its being a member, and
having the right as such to appoint a manager, of the Company.
(c) Effect of Termination. Upon termination of this Agreement, Company will
cease and desist from any use of the Trademark and the provisions of Sections 3,
6, 7 and 8 will survive termination of this Agreement.
6. INDEMNITY
Company shall indemnify and defend AutoImmune, its affiliates and their
respective directors, officers, employees and agents against all liability,
damages, losses, costs and expenses (including without limitation, reasonable
attorneys' fees) arising out of any claims, suits, actions
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or proceedings brought by third parties against AutoImmune based upon the
quality or nature of Company's goods and services sold under the Trademark or
upon Company's use of the Trademark outside of the scope of the License and this
Agreement. Section 6.3 of the Technology License sets forth the procedures
applicable to claims for indemnification under this Section.
7. NOTICE
Any notice required or permitted to be given or made under this Agreement
by one of the parties hereto to the other shall be in writing and shall be
delivered personally, by facsimile (and promptly confirmed by telephone,
personal delivery or courier) or by overnight courier, addressed to such other
party at its address indicated below, or to such other address as the addressee
shall have last furnished in writing to the addressor and shall be effective
upon receipt by the addressee.
If to AutoImmune:
AutoImmune Inc.
0000 Xxxxx Xxxxxx
Xxxxxxxx, XX 00000-0000
Attn: Xxxxxx X. Xxxxxx, Ph.D.
Chairman of the Board, President
and Chief Executive Officer
Telephone: 000 000-0000
Telecopy: 000 000-0000
with a copy to:
Xxxxxx, XxXxxxxxx & Fish, LLP
Xxx Xxxxxxxxxxxxx Xxxxx
Xxxxxx, XX 00000-0000
Attention: Xxxxxxxxxxx Xxxxxxxxx, Esq.
Telephone: 000 000-0000
Telecopy: 000 000-0000
If to Company:
Xxxxx X. Xxxxxx or Xxxx X. Xxxxxx
Deseret Laboratories, Inc.
0000 Xxxx 0000, Xxxxx
Xx. Xxxxxx, Xxxx 00000
Telephone: 000-000-0000
Telecopy: 000-000-0000
8. MISCELLANEOUS
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(a) Amendment. This Agreement may be amended, or any term hereof, modified,
only by a written instrument duly executed by both parties hereto.
(b) Applicable Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of Delaware, without giving effect to the
choice of laws provisions thereof.
(c) Assignment. This Agreement may not be assigned or otherwise transferred
by Company without the prior written consent of AutoImmune. Any purported
assignment in violation of the preceding sentence shall be void.
(d) Binding Effect. This Agreement shall be binding upon and inure to the
benefit of the parties and their respective successors and permitted assigns.
(e) Counterparts. This Agreement may be executed in two or more
counterparts each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
(f) Entire Agreement. This Agreement contains the entire understanding of
the parties with respect to the subject matter hereof. All express or implied
agreements and understandings, either oral or written, heretofore made are
expressly merged in and made a part of this Agreement.
(g) Headings. All section headings contained in this Agreement are for
convenience of reference only, do not form a part hereof and do not in any way
affect the meaning or interpretation of this Agreement.
(h) Severability. Each party hereby agrees that it does not intend to
violate any public policy, statutory or common laws, rules, regulations, treaty
or decision of any government agency or executive body thereof of any country or
community or association of countries. Should one or more provisions of this
Agreement be or become invalid, the parties hereto shall substitute, by mutual
consent, valid provisions for such invalid provisions which valid provisions in
their economic effect are sufficiently similar to the invalid provisions that it
can be reasonably assumed that the parties would have entered into this
Agreement with such valid provisions. In case such valid provisions cannot be
agreed upon, the invalidity of one or several provisions of this Agreement shall
not affect the validity of this Agreement as a whole, unless the invalid
provisions are of such essential importance to this Agreement that it is to be
reasonably assumed that the parties would not have entered into this Agreement
without the invalid provisions.
(i) Limitation. Nothing in this Agreement shall be construed as a warranty
or representation as to the validity or scope of the Trademark or that use of
the Trademark will not infringe the rights of a third party.
(j) Waiver. The waiver by either party hereto of (i) any right hereunder,
(ii) the failure to perform an obligation or (iii) a breach by the other party
shall not be deemed a waiver of any other right hereunder or of any other
failure or breach by said other party, whether of a similar nature or otherwise.
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(k) Interpretation. The parties acknowledge and agree that (i) each party
and its counsel reviewed and negotiated the terms and provisions of this
Agreement and contributed to its revision; (ii) the rule of construction to the
effect that any ambiguities are resolved against the drafting party shall not be
employed in the interpretation of this Agreement; and (iii) the terms and
provisions of this agreement shall be construed fairly as to all parties hereto
and not in favor of or against any party, regardless of which party was
generally responsible for the preparation of this Agreement.
IN WITNESS WHEREOF, the parties have caused this Agreement to be signed by their
respective duly authorized officers.
AUTOIMMUNE INC.
By: /s/ Xxxxxx X. Xxxxxx
-----------------------------------------
Its: Xxxxxx X. Xxxxxx, Ph.D.
Chairman of the Board, President and
Chief Executive Officer
COLLORAL LLC
By: /s/ Xxxxx X. Xxxxxx
-----------------------------------------
Its: Manager August 06, 2002
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