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Exhibit 10.5
TRADEMARK LICENSE AGREEMENT
Agreement executed as of the 25 day of May, 1994, by and between Aspect
Electronics, Inc., a California corporation ("Licensor"), and Aspect Medical
Systems, Inc., a Delaware corporation ("Licensee").
INTRODUCTION
Licensor is the owner of statutory and common law rights in, and the
goodwill associated with, the trademark "ASPECT" (the "Trademark") and U.S.
Trademark Registration No. 1,650,675 for the xxxx ASPECT for use in connection
with certain medical diagnostic equipment, namely video display monitors, video
hard copy images and multi-image cameras. Licensee desires to obtain a license
to manufacture, distribute and sell certain products under the Trademark and
Licensor is willing to grant to Licensee a license to use the Trademark under
the terms and conditions of this Agreement.
Accordingly, in consideration of the mutual covenants contained in this
Agreement, the parties agree as follows:
1. GRANT OF LICENSE. Subject to the terms and conditions specified in
this Agreement, Licensor hereby grants to Licensee a nonexclusive, perpetual,
paid-up right and license to use the Trademark in its name in connection with
the manufacture, distribution and sale of products used in connection with the
gathering, analysis and interpretation of biopotential signals, including EEG,
EMG and EKG, and in connection with patient monitoring, but specifically
excluding any medical imaging products (the "Licensed Products").
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2. LICENSE FEE. Licensee shall pay Licensor twenty-five thousand
dollars ($25,000) upon execution of this Agreement for the licenses granted
under this Agreement.
3. OWNERSHIP OF TRADEMARK. Licensee acknowledges the ownership of the
Trademark in Licensor, agrees that it will do nothing inconsistent with such
ownership, and that all use of the Trademark by Licensee shall inure to the
benefit of and be on behalf of Licensor. Licensee agrees that nothing in this
Agreement shall give Licensee any right, title or interest in the Trademark
other than the right to use the Trademark in accordance with this Agreement.
Licensee agrees that it will not attack the title of Licensor to the Trademark
or attack the validity of this Agreement. Licensee also acknowledges that
Licensor makes no warranties or representations concerning its rights to the
Trademark licensed hereunder, and Licensor shall have no obligation to indemnify
Licensee if any third party institutes any action challenging Licensees rights
to use the Trademark. Licensee shall assign all of its rights, title and
interest in U.S. Trademark Application Serial No. 74/212,746 promptly after
Licensee files an Amendment to Allege Use, and such xxxx shall thereafter be
considered part of the trademark licensed herein.
4. QUALITY CONTROL. Licensee agrees that all Licensed Products bearing
the Trademark shall be of a quality similar to the quality of the Licensed
Products sold by Licensee as of the date of this Agreement. To ensure the
continuation of such quality, Licensee agrees to cooperate with Licensor to
permit reasonable inspection of Licensee's manufacturing facility and to supply
Licensor with specimens of all uses of
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the Trademark upon request. Licensee shall comply with all applicable laws and
regulations and obtain all appropriate governmental approvals pertaining to the
sale, distribution and advertising of goods covered by this Agreement.
5. INFRINGEMENT PROCEEDINGS. Licensee agrees to notify Licensor of any
unauthorized use of the Trademark by another promptly after such use comes to
Licensee's attention. Licensor shall have the sole right and discretion to bring
infringement or unfair competition proceedings involving the Trademark, provided
that Licensee shall reasonably cooperate in such proceedings. If Licensee
requests Licensor to enforce its rights in the Trademark with respect to
Licensed Products, Licensor shall do so provided that Licensee shall promptly
reimburse Licensor for Licensor's reasonable legal and other out-of-pocket costs
related to prosecuting or defending against infringement and unfair competition
actions involving use of the Trademark by others on Licensed Products. Costs
associated with prosecuting or defending against infringement by use of the
Trademark on products other than Licensed Products shall be Licensor's
responsibility.
6. TERM AND TERMINATION. This Agreement shall continue in force and
effect for as long as Licensee continues to use the Trademark, unless sooner
terminated as provided herein. If Licensee discontinues use of the Trademark for
a period of greater than six (6) months, then Licensee shall be deemed to have
discontinued use of the Trademark. Licensor shall have the right to terminate
this Agreement upon written notice to Licensee if Licensee fails to completely
cure a default under this Agreement within 30 days after Licensee's receipt of
written notice
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of default from Licensor. Upon termination, Licensee agrees to immediately
discontinue all use of the Trademark and any term confusingly similar thereto,
to delete the Trademark from its corporate or business name, to cooperate with
Licensor or its appointed agent to apply to the appropriate governmental
authorities to cancel any registered entry of the license granted hereunder, to
destroy all printed materials bearing the Trademark, and to permanently cover or
remove the Trademark from Licensed Products. In no case shall any portion of the
license fee be returned to Licensee in the event of termination of this
Agreement.
7. MISCELLANEOUS.
(a) Integration. This Agreement contains the full
understanding of the parties with respect to the subject matter hereof. No
waiver, alteration or modification of any of the provisions hereof shall be
binding unless made in writing and signed by the parties by their respective
authorized officers.
(b) Governing Law. This Agreement shall be subject to and
interpreted in accordance with the law of the State of California. Any suit to
interpret or enforce this Agreement shall be brought in a state or federal court
in California. Licensee hereby submits to the jurisdiction of such courts.
(c) Assignment/Sublicensing. Licensor may assign this
Agreement upon written notice to Licensee. Licensee may not assign this
Agreement or sublicense the Trademark without the advance written consent of
Licensor except that Licensee may assign this Agreement in connection with a
sale of substantially all of
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its assets to any third party other than a competitor of Licensor as reasonably
determined by Licensor.
(d) Notice. Whenever notice is required to be given under the
terms of this Agreement, it shall be in writing and shall be personally
delivered, sent by certified mail, return receipt requested, or sent by other
means of receipted delivery (e.g., Federal Express) to the address below for to
the party to receive such notice. Such notices shall be effective upon receipt.
Any change of address of either party shall be effective upon receipt of written
notice of such change by the opposite party.
If to Licensor:
President Aspect Electronics, Inc.
00000 Xxxxxxx Xxxxxx
Xxxxxx, XX 00000
If to Licensee:
President
Aspect Medical Systems, Inc.
000 Xxxxxxxxxx Xxxx
Xxxxxxxxxx, XX 00000
(e) Waiver. No waiver of any breach of this Agreement shall
constitute a waiver of any other breach, whether of the same or any other
covenant, term or condition.
(f) Severability. If any provision of this Agreement is held
invalid, illegal or unenforceable, the validity, legality or enforceability of
the remaining provisions shall in no way be affected or impaired thereby, except
that if the
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collection or retention of the license fee designated in section 2 hereof is
held to be illegal, then this Agreement shall terminate.
(g) Binding Effect. Subject to the express limitations set
forth herein, this Agreement shall be binding upon and inure to the benefit of
Licensor and Licensee and their respective permitted successors and assigns.
IN WITNESS WHEREOF, the parties hereto have cause this Agreement to be
executed under seal in their names by their properly and duly authorized
officers or representatives as of the date set forth above.
ASPECT ELECTRONICS, INC.
By: /s/Xxxxx Xxxxxx
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Xxxxx Xxxxxx,
President
ASPECT MEDICAL SYSTEMS, INC.
By: /s/Xxxxxxx X. Xxxxxx
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Xxxxxxx X. Xxxxxx
President
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