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EXHIBIT 10.48
COLLATERAL ASSIGNMENT OF
PATENTS AND TRADEMARKS
THIS COLLATERAL ASSIGNMENT OF PATENTS AND TRADEMARKS (this
"Assignment"), dated as of August 16, 1996, is entered into by and between NBF,
Inc., a Georgia corporation ("Assignor") with its chief executive office
located at 000 Xxxx Xxxxxxx Xxxxxxx, Xxxxxx, Xxxxx 00000 and Foothill Capital
Corporation, a California corporation ("Assignee") with its chief executive
office 00000 Xxxxx Xxxxxx Xxxxxxxxx, Xxxxx 0000, Xxx Xxxxxxx, Xxxxxxxxxx
00000, in light of the following facts:
RECITALS
A. Assignor has requested that Assignee enter into that certain
Loan and Security Agreement, of even date herewith, with Assignor (the "Loan
Agreement"), pursuant to which Assignee will extend certain loans and financial
accommodations to Assignor as described therein.
B. In order to induce Assignee to enter into the Loan Agreement,
Assignor has agreed to assign to Assignee the rights to all of Assignor's
currently existing and hereafter acquired or arising patents and trademarks
pursuant to this Assignment.
NOW, THEREFORE, in consideration of the premises set forth herein, and
for other good and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, Assignor hereby agrees with Assignee as follows:
1. To secure the complete and timely satisfaction of any and all
debts, liabilities, obligations or undertakings owing by Assignor to Assignee
of any kind or description, arising under, advanced pursuant to, or evidenced
by the Loan Agreement, whether direct or indirect, absolute or contingent, due
or to become due, voluntary or involuntary, whether now existing or hereafter
arising, and including all interest not paid when due and all Lender Expenses
(as defined in the Loan Agreement) which Assignor is required to pay or
reimburse pursuant to the Loan Agreement or by law (collectively, the
"Obligations"), Assignor hereby grants, assigns and conveys to Assignee all of
Assignor's right, title and interest (but not the obligation to register) in
and to all presently existing and hereafter acquired or arising patents and
trademarks including, without limitation, the trademark applications and
trademarks listed in Schedule A attached hereto and trademark registrations
identified therein, and the patent applications and patents listed in Schedule
B attached hereto (all as may be amended pursuant hereto from time to time),
all proceeds of infringement suits thereof, the right (but not the obligation)
to xxx for past, present and future infringements thereof and all rights (but
not obligations) corresponding thereto, and all re-issues, divisions,
continuations, renewals, extensions and continuations-in-part thereof
(collectively, the "Patents and Trademarks" individually, the "Patents" and the
"Trademarks"), and in and to the goodwill and assets of the business to which
each of the Trademarks relate (the "Associated Goodwill").
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2. Assignor shall execute and deliver to Assignee concurrently
with Assignor's execution of this Assignment, and from time to time hereafter
at the request of Assignee, all assignments, powers of attorney, financing
statements, continuation financing statements, security agreements, chattel
mortgages, and all other documents that Assignee may reasonably request, in
form reasonably satisfactory to Assignee and its counsel, to perfect and
maintain perfected Assignee's interests in the Patents and Trademarks and the
Associated Goodwill, and in order to consummate fully all of the transactions
contemplated under this Assignment and the Loan Agreement.
3. Assignor covenants and warrants that:
a. The Patents and Trademarks are subsisting and have not been
adjudged invalid or unenforceable, in whole or in part;
b. To the best of Assignor's knowledge, each of the Patents
and Trademarks is valid and enforceable;
c. To the best of Assignor's knowledge, no claim has been made
that the use of any or all of the Patents or Trademarks does, or may, violate
the rights of any third person;
d. Assignor is the sole and exclusive owner of the entire and
unencumbered right, title and interest in and to each of the Patents and
Trademarks, free and clear of any voluntary or involuntary liens, charges and
encumbrances, including, without limitation, pledges, assignments, licenses,
registered user agreements and covenants by Assignor not to xxx third persons
(collectively, "Liens"), except as specifically set forth in the Loan Agreement
and those licenses and sublicenses which are existing as of the date hereof and
those licenses and sublicenses which may be entered into after the date hereof
in the ordinary course of Assignor's business;
e. Assignor has the unqualified right to enter into this
Assignment and perform its terms;
f. Assignor has used, and will continue to use for the
duration of this Assignment, proper statutory notice in connection with its use
of the Patents and Trademarks;
g. Assignor has used, and its permitted licensees and
sublicensees have used, and will continue to use for the duration of this
Assignment, consistent standards of quality in its provision of services and
manufacture of products sold under the Patents and Trademarks, which standards
shall be at least equivalent to the standards used by Assignor as of the date
of this Assignment, and Assignor shall provide to Assignee an officer's
certificate to that effect, and Assignor will make or permit no change with
respect thereto without the prior written consent of Assignee;
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h. The Patents and Trademarks listed in Schedules A and B,
respectively, constitute all Patents and Trademarks now owned by Assignor or in
which Assignor has an interest as of the date hereof;
i. During the term of the Loan Agreement, Assignor will herein
keep each and all of the Patents and Trademarks and the registrations with
respect thereto, free and clear of all Liens (except as specifically set forth
in the Loan Agreement or as otherwise permitted herein), and Assignor will take
all steps necessary to maintain in force and renew each and all of the Patents
and Trademarks.
4. Assignor hereby grants to Assignee and its employees and
agents, on behalf of itself and its permitted licensees and sublicensees, the
right to visit Assignor's and its permitted licensees and sublicensees offices
and facilities which provide services or manufacture, inspect or store products
sold under or covered by any of the Patents or Trademarks, and to audit and
inspect the products and quality control records relating thereto at reasonable
times during regular business hours and upon at least one (1) business day's
prior written notice to Assignor. Assignor shall do any and all acts required
by Assignee to ensure Assignor's compliance with paragraph 3(g).
5. Assignor agrees that, until all of the Obligations shall have
been satisfied indefeasibly and in full and the Loan Agreement terminated, it
will not enter into any agreement, except as otherwise permitted herein,
encumbering, transferring, permitting the use of, or affecting any of the
Patents or the Trademarks, or which is inconsistent with Assignor's obligations
under this Assignment, without Assignee's prior written consent, which shall
not be unreasonably withheld. Assignor further agrees that it will not take
any action, or permit any action to be taken by any affiliate of Assignor or
other person subject to Assignor's control, or fail to take any reasonable
action, if such action or failure would affect the validity or enforcement of
the rights transferred to Assignee under this Assignment.
6. If, before the Obligations shall have been satisfied
indefeasibly and in full, Assignor shall obtain rights to any new trademarks or
patentable inventions, or become entitled to the benefit of any new trademarks
or patents, including without limitation, any improvement on any Patents, the
provisions of paragraph 1 shall automatically apply thereto and Assignor shall
give Assignee prompt written notice thereof.
7. Assignor authorizes Assignee to modify this Assignment by
amending Schedule A and/or B, as applicable, to include any future trademarks
or patents and trademark or patent applications covered by paragraphs 1 and 6
hereof, and to re-record this Assignment from time to time as Assignee sees
fit.
8. Unless and until there shall have occurred and be continuing an
Event of Default (as defined in the Loan Agreement), Assignee hereby grants to
Assignor the exclusive, non-transferable right and license to make, have made,
use and sell the inventions disclosed and claimed in the Patents, and to use
the Trademarks and registrations with respect thereto on and in connection with
services provided or products sold by Assignor, for Assignor's own benefit and
account and for none other, except that Assignor shall be
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permitted to license and sublicense the Patents and Trademarks in the ordinary
course of Assignor's business. Assignor hereby indemnifies Assignee from any
claims, suits, losses and damages, including attorneys' fees, arising from
Assignor's use and permitted licensees' and sublicensees' use of the Patents
and Trademarks, and its operations conducted pursuant to this paragraph 8.
This indemnity shall survive termination of this Assignment. Except as
otherwise provided herein, Assignor agrees not to sell or assign its interest
in, or grant any license or sublicense under the license granted to Assignor in
this paragraph 8, without the prior written consent of Assignee, which shall
not be unreasonably withheld.
9. If any Event of Default shall have occurred and be continuing,
upon notice from Assignee to Assignor (as provided in the Loan Agreement),
Assignor's license under the Patents and Trademarks, as set forth in paragraph
8, shall terminate forthwith, and Assignee shall have, in addition to all other
rights and remedies given it by this Assignment, and the Loan Agreement, those
allowed by law and the rights and remedies of a secured party under the Uniform
Commercial Code as enacted in any jurisdiction in which the Patents and
Trademarks may be located and, without limiting the generality of the
foregoing, Assignee may immediately, without demand of performance and without
other notice (except as set forth next below) or demand whatsoever to Assignor,
all of which are hereby expressly waived and, within the discretion of
Assignee, with or without advertisement, sell at public or private sale or
otherwise realize upon all or from time to time any of the Patents, Trademarks
and the Associated Goodwill, or any interest which Assignor may have therein,
and after deducting from the proceeds of sale or other disposition of the
Patents and Trademarks all expenses (including all reasonable broker's fees and
attorneys' fees), shall apply the residue of such proceeds toward the payment
of the Obligations. Any remainder of the proceeds after full and indefeasible
payment of the Obligations shall be paid over to Assignor. Notice of any sale
or other disposition of the Patents and Trademarks shall be given to Assignor
at least five (5) days before the time of any intended public or private sale
or other disposition of the Patents and Trademarks is to be made, which
Assignor hereby agrees shall be reasonable notice of such sale or other
disposition. At any such sale or other disposition, Assignee may, to the
extent permissible under applicable law, purchase the whole or any part of the
Patents and Trademarks and the Associated Goodwill sold, free from any right of
redemption on the part of Assignor, which right is hereby waived and released.
10. At such time as Assignor shall completely and indefeasibly
satisfy the Obligations, this Assignment shall terminate and Assignee shall
execute and deliver to Assignor all deeds, assignments and other instruments as
may be necessary or proper to re-vest in Assignor full title to the Patents,
Trademarks and the Associated Goodwill, subject to any disposition thereof
which may have been made by Assignee pursuant hereto or pursuant to the Loan
Agreement.
11. Any and all fees, costs and expenses, of whatever kind or
nature, including the reasonable attorneys' fees and expenses incurred by
Assignee in connection with the preparation of this Assignment and all other
documents relating hereto and the consummation of this transaction, the filing
or recording of any documents (including all taxes in connection therewith) in
public offices, the payment or discharge of any taxes, counsel fees,
maintenance fees, renewal fees and encumbrances, or otherwise in protecting,
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maintaining or preserving the Patents, Trademarks and the Associated Goodwill,
or in defending or prosecuting any actions or proceedings arising out of or
related to the Patents, Trademarks and the Associated Goodwill, shall be borne
and paid by Assignor on demand by Assignee and until so paid shall be added to
the principal amount of the Obligations and shall bear interest at the highest
rate prescribed in the Loan Agreement.
12. Assignor shall have the duty, through counsel acceptable to
Assignee, to prosecute diligently any patent and trademark applications of the
Patents and Trademarks pending as of the date of this Assignment or thereafter
until the Obligations shall have been paid in full, to make federal application
on registrable but unregistered Trademarks and patentable but unpatented
inventions, to file and prosecute opposition and cancellation proceedings, and
to do any and all acts which are necessary or desirable to preserve and
maintain all rights in the Patents, the Trademarks and the Associated Goodwill.
Any expenses incurred in connection with the Patents and Trademarks as provided
herein shall be borne by Assignor. Except as otherwise provided herein,
Assignor shall not abandon any right to file a patent or trademark application,
or any pending patent or trademark application, or any of the Patents and
Trademarks without the consent of Assignee, which consent shall not be
unreasonably withheld.
13. Assignee shall have the right, but shall in no way be
obligated, to bring any opposition proceedings, cancellation proceedings or
suit in its own name to enforce or protect the Patents and Trademarks, and any
license thereunder, in which event Assignor shall at the request of Assignee do
any and all lawful acts and execute any and all proper documents reasonably
required by Assignee in aid of such enforcement. Assignor shall promptly, upon
demand, reimburse and indemnify Assignee for all damages, costs and expenses,
including reasonable attorneys' fees and expenses, incurred by Assignee in the
fulfillment of the provisions of this paragraph 13.
14. In the event of the occurrence of an Event of Default under the
Loan Agreement, Assignor hereby authorizes and empowers Assignee to make,
constitute and appoint any officer or agent of Assignee as Assignee may select,
in its exclusive discretion, as Assignor's true and lawful attorney-in-fact,
with the power to endorse Assignor's name on all applications, documents,
papers and instruments necessary for Assignee to use or make use of the
Patents, the Trademarks and the Associated Goodwill, or to grant or issue any
exclusive or nonexclusive license under the Patents and Trademarks to anyone
else, or necessary for Assignee to assign, pledge, convey or otherwise transfer
title in or dispose of the Patents and Trademarks, registrations with respect
thereto, and the Associated Goodwill, to anyone else. Assignor hereby ratifies
all that such attorney shall lawfully do or cause to be done by virtue hereof.
This power of attorney shall be irrevocable for the life of this Assignment.
15. If Assignor fails to comply with any of its obligations
hereunder, Assignee may, upon notice to Assignor, perform such obligations, in
Assignor's name or in Assignee's name, but at Assignor's expense, and Assignor
hereby agrees to reimburse, and on demand to indemnify and hold harmless,
Assignee, its successors, assigns, agents and servants, in full for any and all
claims, damages, losses, liabilities, demands, causes of action, and any costs
and expenses, including reasonable attorneys' fees, incurred
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by Assignee in connection with this Assignment or in protecting, defending and
maintaining the Patents and Trademarks including, without limitation, the loss
of any Patents or Trademarks or registrations with respect thereto, the
Associated Goodwill, or other rights, whether as a result of the assignment to
Assignee hereunder, the exercise or nonexercise by Assignee of any rights,
remedies, including foreclosure and sale or licensing remedies, or privileges
granted to Assignee hereunder or by law, or otherwise.
16. Notwithstanding anything to the contrary contained in this
Assignment, Assignor shall have the right to abandon such Patents and
Trademarks which it deems to be immaterial or not useful to its business.
17. No course of dealing between Assignor and Assignee, or any
failure to exercise, or any delay in exercising, on the part of Assignee, any
right, power or privilege hereunder or under the Loan Agreement shall operate
as a waiver thereof; nor shall any single or partial exercise of any right,
power or privilege hereunder or thereunder preclude any other or further
exercise thereof or the exercise of any other right, power or privilege.
18. All of Assignee's rights and remedies with respect to the
Patents, the Trademarks and the Associated Goodwill, whether established hereby
or by the Loan Agreement, or by any other agreements or by law shall be
cumulative and may be exercised singularly or concurrently.
19. The provisions of this Assignment are severable, and if any
clause or provision shall be held invalid and unenforceable in whole or in part
in any jurisdiction, then such invalidity or unenforceability shall affect only
such clause or provision, or part thereof, in such jurisdiction, and shall not
in any manner affect such clause or provision in any other jurisdiction, or any
other clause or provision of this Assignment in any jurisdiction.
20. This Assignment cannot be changed, modified, amended, or
terminated except by a written document signed by both Assignor and Assignee,
except as provided in paragraph 7.
21. This Assignment shall bind and inure to the benefit of the
respective successors and assigns of Assignor and Assignee; provided, however,
Assignor may not assign this Assignment or any rights hereunder without
Assignee's prior written consent and any prohibited assignment shall be
absolutely void. No such consent to an assignment by Assignee shall release
Assignor from its Obligations to Assignee.
22. Assignee reserves the right, upon an Event of Default under the
Loan Agreement, to sell, assign, transfer, negotiate, or grant participations
in all or any part of, or any interest in the rights hereunder; provided that,
with respect to any sale, assignment, transfer or negotiation by Assignee of
less than all of the rights and benefits hereunder, Assignee shall cause such
title to the Patents and Trademarks as exists in the name of Assignee pursuant
to this Assignment to remain in Assignee's name. In connection with any such
sale, assignment, transfer, negotiation or participation, Assignee may disclose
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all documents and information which Assignee now or hereafter may have relating
to Assignor, Assignor's business, the Patents or the Trademarks to any such
prospective or permitted transferee, if such transferee agrees to be bound by
the confidentiality provisions of the Loan Agreement.
23. The validity of this Assignment, its construction,
interpretation, and enforcement and the rights of the parties hereto shall be
determined under, governed by, and construed in accordance with, the internal
laws of the State of California, without regard to principles of conflicts of
law. The parties agree that all actions or proceedings arising in connection
with this Assignment shall be tried and litigated only in the state and federal
courts located in the County of Los Angeles, State of California. ASSIGNOR AND
ASSIGNEE EACH WAIVES THE RIGHT TO TRIAL BY JURY OF ANY CLAIM, DEMAND, ACTION,
OR CAUSE OF ACTION ARISING UNDER THIS ASSIGNMENT, WHETHER NOW EXISTING OR
HEREAFTER ARISING, AND ANY RIGHT EITHER MAY HAVE TO ASSERT THE DOCTRINE OF
FORUM NON CONVENIENS, LACK OF PERSONAL JURISDICTION, OR TO OBJECT TO VENUE TO
THE EXTENT ANY PROCEEDING IS BROUGHT IN ACCORDANCE WITH THIS SECTION 23.
24. All notices or demands by any party hereto to the other party
and relating to this Assignment shall be made in the manner and to the
addresses set forth in the notices provision of the Loan Agreement.
25. Unless the context of this Assignment clearly requires
otherwise, references to the plural include the singular, the singular includes
the plural, the part includes the whole, "including" is not limiting, and "or"
has the inclusive meaning represented by the phrase "and/or". The words
"hereof", "herein", "hereunder" and similar terms in this Assignment refer to
this Assignment as a whole and not to any particular provision of this
Assignment. Article, section, subsection, exhibit, and schedule references are
to this Assignment unless otherwise specified.
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WITNESS the execution hereof under seal as of the day and year first
above written.
XXXXXXXXX INDUSTRIES, L.P.,
A Texas limited partnership
By: Xxxxxxxxx Operating Corp.,
general partner
By: /s/ XXXXX X. XXXXXXXXX
----------------------------
Its: Vice Chairman
---------------------------
FOOTHILL CAPITAL CORPORATION,
a California corporation
By: /s/ XXXXXXXX XxXXXXXXXX
-----------------------------------
Title: SVP
--------------------------------
[Attach appropriate notarial acknowledgement.]
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SCHEDULE A
(List of Trademarks)
1. [Name of Xxxx]
Registration No:
Registration Date:
Serial No.:
Filing Date:
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SCHEDULE B
INTELLECTUAL PROPERTY STATUS REPORT
PATENTS OWNED BY XXXXXXXXX INDUSTRIES, LP
--------------------------------------------------------------------------------
SERIAL NO. ISSUE NO.
PATENT TITLE FILING DATE ISSUE DATE
--------------------------------------------------------------------------------
Spring Type Exercising Device 631,860 4,022,463
11/14/75
Hand Exercise Weights 579,062 4,556,215
2/10/84 12/3/85
Hand Exercise Weights 579,062 4,575,075
2/10/84 3/11/86
Cross Country Ski Exercise 7/122,459 4,804,178
Device (Easy Glider Exercise 11/19/87 2/14/89
Device)
Cross Country Ski Exerciser 7/183,179 D315,764
Easy Glider Exercise Device 04/19/88 03/26/91
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CALIFORNIA ALL-PURPOSE ACKNOWLEDGEMENT
================================================================================
STATE OF CALIFORNIA )
)
COUNTY OF LOS ANGELES )
On August 16, 1996 before me, Xxxxxx X. Xxxxxxxx, Notary Public, personally
appeared Xxxxx Xxxxxxxxx,
[ ] personally known to me - OR - [x] proved to me on the basis of
satisfactory evidence to be the
person whose name is subscribed to
[NOTARY STAMP] the within instrument and
acknowledged to me that he executed
the same in his authorized capacity,
and that by his signature on the
instrument the person, or the entity
upon behalf of which the person
acted, executed the instrument.
WITNESS my hand and official seal.
/s/ XXXXXX X. XXXXXXXX
-------------------------------------
SIGNATURE OF NOTARY
====================================OPTIONAL====================================
Though the data below is not required by law, it may prove valuable to persons
relying on the document and could prevent fraudulent reattachment of this form.
CAPACITY CLAIMED BY SIGNER DESCRIPTION OF ATTACHED DOCUMENT
[ ] INDIVIDUAL
[x] CORPORATE OFFICER(S)
COLLATERAL ASSIGNMENT OF PATENTS
AND TRADEMARKS
------------------------------------- ------------------------------------
TITLE(S) TITLE OR TYPE OF DOCUMENT
[ ] PARTNER(S) [ ] LIMITED
[ ] GENERAL ------------------------------------
NUMBER OF PAGES
[ ] ATTORNEY-IN-FACT
[ ] TRUSTEE(S)
August 16, 1996
[ ] GUARDIAN/CONSERVATOR ------------------------------------
DATE OF DOCUMENT
[ ] OTHER:
------------------------------------- ------------------------------------
SIGNER IS REPRESENTING: SIGNER(S) OTHER THAN NAMED ABOVE
(NAME OF PERSON(S) OR ENTITY(IES))
Xxxxxxxxx Operating Corp.
-------------------------------------
================================================================================
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CALIFORNIA ALL-PURPOSE ACKNOWLEDGEMENT
================================================================================
STATE OF CALIFORNIA )
)
COUNTY OF LOS ANGELES )
On August 16, 1996 before me, Xxxxxx X. Xxxxxxxx, Notary Public, personally
appeared Xxxxxxxx XxXxxxxxxx,
[ ] personally known to me - OR - [x] proved to me on the basis of
satisfactory evidence to be the
person whose name is subscribed to
[NOTARY STAMP] the within instrument and
acknowledged to me that her executed
the same in her authorized capacity,
and that by her signature on the
instrument the person, or the entity
upon behalf of which the person
acted, executed the instrument.
WITNESS my hand and official seal.
/s/ XXXXXX X. XXXXXXXX
-------------------------------------
SIGNATURE OF NOTARY
====================================OPTIONAL====================================
Though the data below is not required by law, it may prove valuable to persons
relying on the document and could prevent fraudulent reattachment of this form.
CAPACITY CLAIMED BY SIGNER DESCRIPTION OF ATTACHED DOCUMENT
[ ] INDIVIDUAL
[x] CORPORATE OFFICER(S)
COLLATERAL ASSIGNMENT OF PATENTS
AND TRADEMARKS
------------------------------------- ------------------------------------
TITLE(S) TITLE OR TYPE OF DOCUMENT
[ ] PARTNER(S) [ ] LIMITED
[ ] GENERAL ------------------------------------
NUMBER OF PAGES
[ ] ATTORNEY-IN-FACT
[ ] TRUSTEE(S)
August 16, 1996
[ ] GUARDIAN/CONSERVATOR ------------------------------------
DATE OF DOCUMENT
[ ] OTHER:
------------------------------------- ------------------------------------
SIGNER IS REPRESENTING: SIGNER(S) OTHER THAN NAMED ABOVE
(NAME OF PERSON(S) OR ENTITY(IES))
Foothill Capital Corporation
-------------------------------------
================================================================================
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COLLATERAL ASSIGNMENT OF
PATENTS AND TRADEMARKS
THIS COLLATERAL ASSIGNMENT OF PATENTS AND TRADEMARKS (this
"Assignment"), dated as of August 16, 1996, is entered into by and between
Xxxxxxxxx Industries, L.P., a Texas limited partnership ("Assignor") with its
chief executive office located at 000 Xxxx Xxxxxxx Xxxxxxx, Xxxxxx, Xxxxx 00000
and Foothill Capital Corporation, a California corporation ("Assignee") with
its chief executive office 00000 Xxxxx Xxxxxx Xxxxxxxxx, Xxxxx 0000, Xxx
Xxxxxxx, Xxxxxxxxxx 00000, in light of the following facts:
RECITALS
A. Assignor has requested that Assignee enter into that certain
Loan and Security Agreement, of even date herewith, with Assignor (the "Loan
Agreement"), pursuant to which Assignee will extend certain loans and financial
accommodations to Assignor as described therein.
B. In order to induce Assignee to enter into the Loan Agreement,
Assignor has agreed to assign to Assignee the rights to all of Assignor's
currently existing and hereafter acquired or arising patents and trademarks
pursuant to this Assignment.
NOW, THEREFORE, in consideration of the premises set forth herein, and
for other good and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, Assignor hereby agrees with Assignee as follows:
1. To secure the complete and timely satisfaction of any and all
debts, liabilities, obligations or undertakings owing by Assignor to Assignee
of any kind or description, arising under, advanced pursuant to, or evidenced
by the Loan Agreement, whether direct or indirect, absolute or contingent, due
or to become due, voluntary or involuntary, whether now existing or hereafter
arising, and including all interest not paid when due and all Lender Expenses
(as defined in the Loan Agreement) which Assignor is required to pay or
reimburse pursuant to the Loan Agreement or by law (collectively, the
"Obligations"), Assignor hereby grants, assigns and conveys to Assignee all of
Assignor's right, title and interest (but not the obligation to register) in
and to all presently existing and hereafter acquired or arising patents and
trademarks including, without limitation, the trademark applications and
trademarks listed in Schedule A attached hereto and trademark registrations
identified therein, and the patent applications and patents listed in Schedule
B attached hereto (all as may be amended pursuant hereto from time to time),
all proceeds of infringement suits thereof, the right (but not the obligation)
to xxx for past, present and future infringements thereof and all rights (but
not obligations) corresponding thereto, and all re-issues, divisions,
continuations, renewals, extensions and continuations-in-part thereof
(collectively, the "Patents and Trademarks" individually, the "Patents" and the
"Trademarks"), and in and to the goodwill and assets of the business to which
each of the Trademarks relate (the "Associated Goodwill").
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2. Assignor shall execute and deliver to Assignee concurrently
with Assignor's execution of this Assignment, and from time to time hereafter
at the request of Assignee, all assignments, powers of attorney, financing
statements, continuation financing statements, security agreements, chattel
mortgages, and all other documents that Assignee may reasonably request, in
form reasonably satisfactory to Assignee and its counsel, to perfect and
maintain perfected Assignee's interests in the Patents and Trademarks and the
Associated Goodwill, and in order to consummate fully all of the transactions
contemplated under this Assignment and the Loan Agreement.
3. Assignor covenants and warrants that:
a. The Patents and Trademarks are subsisting and have not been
adjudged invalid or unenforceable, in whole or in part;
b. To the best of Assignor's knowledge, each of the Patents
and Trademarks is valid and enforceable;
c. To the best of Assignor's knowledge, no claim has been made
that the use of any or all of the Patents or Trademarks does, or may, violate
the rights of any third person;
d. Assignor is the sole and exclusive owner of the entire and
unencumbered right, title and interest in and to each of the Patents and
Trademarks, free and clear of any voluntary or involuntary liens, charges and
encumbrances, including, without limitation, pledges, assignments, licenses,
registered user agreements and covenants by Assignor not to xxx third persons
(collectively, "Liens"), except as specifically set forth in the Loan Agreement
and those licenses and sublicenses which are existing as of the date hereof and
those licenses and sublicenses which may be entered into after the date hereof
in the ordinary course of Assignor's business;
e. Assignor has the unqualified right to enter into this
Assignment and perform its terms;
f. Assignor has used, and will continue to use for the
duration of this Assignment, proper statutory notice in connection with its
use of the Patents and Trademarks;
g. Assignor has used, and its permitted licensees and
sublicensees have used, and will continue to use for the duration of this
Assignment, consistent standards of quality in its provision of services and
manufacture of products sold under the Patents and Trademarks, which standards
shall be at least equivalent to the standards used by Assignor as of the date
of this Assignment, and Assignor shall provide to Assignee an officer's
certificate to that effect, and Assignor will make or permit no change with
respect thereto without the prior written consent of Assignee;
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h. The Patents and Trademarks listed in Schedules A and B,
respectively, constitute all Patents and Trademarks now owned by Assignor or in
which Assignor has an interest as of the date hereof;
i. During the term of the Loan Agreement, Assignor will herein
keep each and all of the Patents and Trademarks and the registrations with
respect thereto, free and clear of all Liens (except as specifically set forth
in the Loan Agreement or as otherwise permitted herein), and Assignor will take
all steps necessary to maintain in force and renew each and all of the Patents
and Trademarks.
4. Assignor hereby grants to Assignee and its employees and
agents, on behalf of itself and its permitted licensees and sublicensees, the
right to visit Assignor's and its permitted licensees and sublicensees offices
and facilities which provide services or manufacture, inspect or store products
sold under or covered by any of the Patents or Trademarks, and to audit and
inspect the products and quality control records relating thereto at reasonable
times during regular business hours and upon at least one (1) business day's
prior written notice to Assignor. Assignor shall do any and all acts required
by Assignee to ensure Assignor's compliance with paragraph 3(g).
5. Assignor agrees that, until all of the Obligations shall have
been satisfied indefeasibly and in full and the Loan Agreement terminated, it
will not enter into any agreement, except as otherwise permitted herein,
encumbering, transferring, permitting the use of, or affecting any of the
Patents or the Trademarks, or which is inconsistent with Assignor's obligations
under this Assignment, without Assignee's prior written consent, which shall
not be unreasonably withheld. Assignor further agrees that it will not take
any action, or permit any action to be taken by any affiliate of Assignor or
other person subject to Assignor's control, or fail to take any reasonable
action, if such action or failure would affect the validity or enforcement of
the rights transferred to Assignee under this Assignment.
6. If, before the Obligations shall have been satisfied
indefeasibly and in full, Assignor shall obtain rights to any new trademarks or
patentable inventions, or become entitled to the benefit of any new trademarks
or patents, including without limitation, any improvement on any Patents, the
provisions of paragraph 1 shall automatically apply thereto and Assignor shall
give Assignee prompt written notice thereof.
7. Assignor authorizes Assignee to modify this Assignment by
amending Schedule A and/or B, as applicable, to include any future trademarks
or patents and trademark or patent applications covered by paragraphs 1 and 6
hereof, and to re-record this Assignment from time to time as Assignee sees
fit.
8. Unless and until there shall have occurred and be continuing an
Event of Default (as defined in the Loan Agreement), Assignee hereby grants to
Assignor the exclusive, non-transferable right and license to make, have made,
use and sell the inventions disclosed and claimed in the Patents, and to use
the Trademarks and registrations with respect thereto on and in connection with
services provided or products sold by Assignor, for Assignor's own benefit and
account and for none other, except that Assignor shall be
3
16
permitted to license and sublicense the Patents and Trademarks in the ordinary
course of Assignor's business. Assignor hereby indemnifies Assignee from any
claims, suits, losses and damages, including attorneys' fees, arising from
Assignor's use and permitted licensees' and sublicensees' use of the Patents
and Trademarks, and its operations conducted pursuant to this paragraph 8.
This indemnity shall survive termination of this Assignment. Except as
otherwise provided herein, Assignor agrees not to sell or assign its interest
in, or grant any license or sublicense under the license granted to Assignor in
this paragraph 8, without the prior written consent of Assignee, which shall
not be unreasonably withheld.
9. If any Event of Default shall have occurred and be continuing,
upon notice from Assignee to Assignor (as provided in the Loan Agreement),
Assignor's license under the Patents and Trademarks, as set forth in paragraph
8, shall terminate forthwith, and Assignee shall have, in addition to all other
rights and remedies given it by this Assignment, and the Loan Agreement, those
allowed by law and the rights and remedies of a secured party under the Uniform
Commercial Code as enacted in any jurisdiction in which the Patents and
Trademarks may be located and, without limiting the generality of the
foregoing, Assignee may immediately, without demand of performance and without
other notice (except as set forth next below) or demand whatsoever to Assignor,
all of which are hereby expressly waived and, within the discretion of
Assignee, with or without advertisement, sell at public or private sale or
otherwise realize upon all or from time to time any of the Patents, Trademarks
and the Associated Goodwill, or any interest which Assignor may have therein,
and after deducting from the proceeds of sale or other disposition of the
Patents and Trademarks all expenses (including all reasonable broker's fees and
attorneys' fees), shall apply the residue of such proceeds toward the payment
of the Obligations. Any remainder of the proceeds after full and indefeasible
payment of the Obligations shall be paid over to Assignor. Notice of any sale
or other disposition of the Patents and Trademarks shall be given to Assignor
at least five (5) days before the time of any intended public or private sale
or other disposition of the Patents and Trademarks is to be made, which
Assignor hereby agrees shall be reasonable notice of such sale or other
disposition. At any such sale or other disposition, Assignee may, to the
extent permissible under applicable law, purchase the whole or any part of the
Patents and Trademarks and the Associated Goodwill sold, free from any right of
redemption on the part of Assignor, which right is hereby waived and released.
10. At such time as Assignor shall completely and indefeasibly
satisfy the Obligations, this Assignment shall terminate and Assignee shall
execute and deliver to Assignor all deeds, assignments and other instruments as
may be necessary or proper to re-vest in Assignor full title to the Patents,
Trademarks and the Associated Goodwill, subject to any disposition thereof
which may have been made by Assignee pursuant hereto or pursuant to the Loan
Agreement.
11. Any and all fees, costs and expenses, of whatever kind or
nature, including the reasonable attorneys' fees and expenses incurred by
Assignee in connection with the preparation of this Assignment and all other
documents relating hereto, and the consummation of this transaction, the filing
or recording of any documents (including all taxes in connection therewith) in
public offices, the payment or discharge of any taxes, counsel fees,
maintenance fees, renewal fees and encumbrances, or otherwise in protecting,
4
17
maintaining or preserving the Patents, Trademarks and the Associated Goodwill,
or in defending or prosecuting any actions or proceedings arising out of or
related to the Patents, Trademarks and the Associated Goodwill, shall be borne
and paid by Assignor on demand by Assignee and until so paid shall be added to
the principal amount of the Obligations and shall bear interest at the highest
rate prescribed in the Loan Agreement.
12. Assignor shall have the duty, through counsel acceptable to
Assignee, to prosecute diligently any patent and trademark applications of the
Patents and Trademarks pending as of the date of this Assignment or thereafter
until the Obligations shall have been paid in full, to make federal application
on registrable but unregistered Trademarks and patentable but unpatented
inventions, to file and prosecute opposition and cancellation proceedings, and
to do any and all acts which are necessary or desirable to preserve and
maintain all rights in the Patents, the Trademarks and the Associated Goodwill.
Any expenses incurred in connection with the Patents and Trademarks as provided
herein shall be borne by Assignor. Except as otherwise provided herein,
Assignor shall not abandon any right to file a patent or trademark application,
or any pending patent or trademark application, or any of the Patents and
Trademarks without the consent of Assignee, which consent shall not be
unreasonably withheld.
13. Assignee shall have the right, but shall in no way be
obligated, to bring any opposition proceedings, cancellation proceedings or
suit in its own name to enforce or protect the Patents and Trademarks, and any
license thereunder, in which event Assignor shall at the request of Assignee do
any and all lawful acts and execute any and all proper documents reasonably
required by Assignee in aid of such enforcement. Assignor shall promptly, upon
demand, reimburse and indemnify Assignee for all damages, costs and expenses,
including reasonable attorneys' fees and expenses, incurred by Assignee in the
fulfillment of the provisions of this paragraph 13.
14. In the event of the occurrence of an Event of Default under the
Loan Agreement, Assignor hereby authorizes and empowers Assignee to make,
constitute and appoint any officer or agent of Assignee as Assignee may select,
in its exclusive discretion, as Assignor's true and lawful attorney-in-fact,
with the power to endorse Assignor's name on all applications, documents,
papers and instruments necessary for Assignee to use or make use of the
Patents, the Trademarks and the Associated Goodwill, or to grant or issue any
exclusive or nonexclusive license under the Patents and Trademarks to anyone
else, or necessary for Assignee to assign, pledge, convey or otherwise transfer
title in or dispose of the Patents and Trademarks, registrations with respect
thereto, and the Associated Goodwill, to anyone else. Assignor hereby ratifies
all that such attorney shall lawfully do or cause to be done by virtue hereof.
This power of attorney shall be irrevocable for the life of this Assignment.
15. If Assignor fails to comply with any of its obligations
hereunder, Assignee may, upon notice to Assignor, perform such obligations, in
Assignor's name or in Assignee's name, but at Assignor's expense, and Assignor
hereby agrees to reimburse, and on demand to indemnify and hold harmless,
Assignee, its successors, assigns, agents and servants, in full for any and all
claims, damages, losses, liabilities, demands, causes of action, and any costs
and expenses, including reasonable attorneys' fees, incurred
5
18
by Assignee in connection with this Assignment or in protecting, defending and
maintaining the Patents and Trademarks including, without limitation, the loss
of any Patents or Trademarks or registrations with respect thereto, the
Associated Goodwill, or other rights, whether as a result of the assignment to
Assignee hereunder, the exercise or nonexercise by Assignee of any rights,
remedies, including foreclosure and sale or licensing remedies, or privileges
granted to Assignee hereunder or by law, or otherwise.
16. Notwithstanding anything to the contrary contained in this
Assignment, Assignor shall have the right to abandon such Patents and
Trademarks which it deems to be immaterial or not useful to its business.
17. No course of dealing between Assignor and Assignee, or any
failure to exercise, or any delay in exercising, on the part of Assignee, any
right, power or privilege hereunder or under the Loan Agreement shall operate
as a waiver thereof; nor shall any single or partial exercise of any right,
power or privilege hereunder or thereunder preclude any other or further
exercise thereof or the exercise of any other right, power or privilege.
18. All of Assignee's rights and remedies with respect to the
Patents, the Trademarks and the Associated Goodwill, whether established hereby
or by the Loan Agreement, or by any other agreements or by law shall be
cumulative and may be exercised singularly or concurrently.
19. The provisions of this Assignment are severable, and if any
clause or provision shall be held invalid and unenforceable in whole or in part
in any jurisdiction, then such invalidity or unenforceability shall affect only
such clause or provision, or part thereof, in such jurisdiction, and shall not
in any manner affect such clause or provision in any other jurisdiction, or any
other clause or provision of this Assignment in any jurisdiction.
20. This Assignment cannot be changed, modified, amended, or
terminated except by a written document signed by both Assignor and Assignee,
except as provided in paragraph 7.
21. This Assignment shall bind and inure to the benefit of the
respective successors and assigns of Assignor and Assignee; provided, however,
Assignor may not assign this Assignment or any rights hereunder without
Assignee's prior written consent and any prohibited assignment shall be
absolutely void. No such consent to an assignment by Assignee shall release
Assignor from its Obligations to Assignee.
22. Assignee reserves the right, upon an Event of Default under the
Loan Agreement, to sell, assign, transfer, negotiate, or grant participations
in all or any part of, or any interest in the rights hereunder; provided that,
with respect to any sale, assignment, transfer or negotiation by Assignee of
less than all of the rights and benefits hereunder, Assignee shall cause such
title to the Patents and Trademarks as exists in the name of Assignee pursuant
to this Assignment to remain in Assignee's name. In connection with any such
sale, assignment, transfer, negotiation or participation, Assignee may disclose
6
19
all documents and information which Assignee now or hereafter may have relating
to Assignor, Assignor's business, the Patents or the Trademarks to any such
prospective or permitted transferee, if such transferee agrees to be bound by
the confidentiality provisions of the Loan Agreement.
23. The validity of this Assignment, its construction,
interpretation, and enforcement and the rights of the parties hereto shall be
determined under, governed by, and construed in accordance with, the internal
laws of the State of California, without regard to principles of conflicts of
law. The parties agree that all actions or proceedings arising in connection
with this Assignment shall be tried and litigated only in the state and federal
courts located in the County of Los Angeles, State of California. ASSIGNOR AND
ASSIGNEE EACH WAIVES THE RIGHT TO TRIAL BY JURY OF ANY CLAIM, DEMAND, ACTION,
OR CAUSE OF ACTION ARISING UNDER THIS ASSIGNMENT, WHETHER NOW EXISTING OR
HEREAFTER ARISING, AND ANY RIGHT EITHER MAY HAVE TO ASSERT THE DOCTRINE OF
FORUM NON CONVENIENS, LACK OF PERSONAL JURISDICTION, OR TO OBJECT TO VENUE TO
THE EXTENT ANY PROCEEDING IS BROUGHT IN ACCORDANCE WITH THIS SECTION 23.
24. All notices or demands by any party hereto to the other party
and relating to this Assignment shall be made in the manner and to the
addresses set forth in the notices provision of the Loan Agreement.
25. Unless the context of this Assignment clearly requires
otherwise, references to the plural include the singular, the singular includes
the plural, the part includes the whole, "including" is not limiting, and "or"
has the inclusive meaning represented by the phrase "and/or". The words
"hereof", "herein", "hereunder" and similar terms in this Assignment refer to
this Assignment as a whole and not to any particular provision of this
Assignment. Article, section, subsection, exhibit, and schedule references are
to this Assignment unless otherwise specified.
7
20
WITNESS the execution hereof under seal as of the day and year first
above written.
XXXXXXXXX INDUSTRIES, INC.,
a Delaware corporation
By: Xxxxxxxxx Operating Corp.,
general partner
By: /s/ XXXXX X. XXXXXXXXX
----------------------------
Its: Vice Chairman
---------------------------
FOOTHILL CAPITAL CORPORATION,
a California corporation
By: /s/ XXXXXXXX XxXXXXXXXX
-----------------------------------
Title: SVP
--------------------------------
[Attach appropriate notarial acknowledgement.]
8
21
SCHEDULE A
(List of Trademarks)
Owned by
Xxxxxxxxx Industries, Incorporated
a Delaware Corporation
1. XXXXXXXXX HEALTHCARE
Registration No.: 1884788
Registration Date: 19950321
Serial No.: 74-439570
Filing Date: 19930924
2. SOLAR
Registration No.: 1888545
Registration Date: 19950411
Serial No.: 74-439573
Filing Date: 19930924
3. CAMLOCK
Registration No.: 1853716
Registration Date: 19940913
Serial No.: 74-439574
Filing Date: 19930924
4. STARLOCK
Registration No.: 1873968
Registration Date: 19950117
Serial No.: 74-439608
Filing Date: 19930924
5. SATURN
Registration No.: 1933786
Registration Date: 19951107
Serial No.: 74-439778
Filing Date: 19930924
6. XXXXXXXXX FITNESS PRODUCTS FOR
EVERY BODY
Registration No.: 1849841
Registration Date: 19940816
Serial No.: 74-440054
Filing Date: 19930924
7. XXXXXXXXX FITNESS PRODUCTS FOR
EVERY BODY
Registration No.: 1879635
Registration Date: 19950221
Serial No.: 74-440174
Filing Date: 19930927
8. PROTEC
Registration No.: 1875358
Registration Date: 19950124
Serial No.: 74-440661
Filing Date: 19930927
9. SOFTSTEP
Registration No.: 1891222
Registration Date: 19950425
Serial No.: 74-517765
Filing Date: 19940428
10. ULTRAARM
Registration No.: 1895195
Registration Date: 19950523
Serial No.: 74-517766
Filing Date: 19940428
11. TONE-UP 1-2-3
Registration No.: Notice of Allowance
- Issued
Registration Date:
Serial No.: 74-518136
Filing Date: 19940428
12. AIRFLO
Registration No.: Non-Final action -
Mailed
Registration Date:
Serial No.: 74-663252
Filing Date: 19950419
13. POWERRING
Registration No.: Publication/
Registration review
complete
Registration Date:
Serial No.: 75-006076
Filing Date: 19951016
14. ULTRABOUNCE
Registration No.: Publication/
Registration review
complete
Registration Date:
Serial No.: 75-006077
Filing Date: 19951016
22
SCHEDULE B-1
INTELLECTUAL PROPERTY STATUS REPORT
PATENTS OWNED BY XXXXXXXXX INDUSTRIES, INC.
-------------------------------------------------------------------------------
SERIAL NO. ISSUE NO.
PATENT TITLE FILING DATE ISSUE DATE
-------------------------------------------------------------------------------
Adjustable seat assembly for 6-915,987 4,746,114
Exercise Apparatus 10/6/86 5/24/88
Starlock Nut Design 6/510,064 D278,029
07/01/83 03/19/85
Curling Bar 6/700,520 D290,485
02/11/85 06/23/87
Adjustable Exercise Bench 6/916,060 D300,045
10/06/86 02/28/89
Physical Exerciser 6/916,060 D300,048
10/06/86 02/28/89
Adjustable Exercise Bench 7/169,336 D300,485
03/17/88 04/04/89
23
SCHEDULE B-2
XXXXXXXXX INDUSTRIES, INC.-FITNESS
INTELLECTUAL PROPERTY STATUS REPORT
PATENTS LICENSED BY XXXXXXXXX INDUSTRIES
--------------------------------------------------------------------------------------------------------------------------
SERIAL NO. ISSUE NO. TYPE OF LICENSE
PATENT TITLE FILING DATE ISSUE DATE INVENTORS AND LICENSOR
--------------------------------------------------------------------------------------------------------------------------
Exercise Apparatus 389,360 5,004,227 Xxx Xxxxxxx Limited Exclusive License from Sports-Mitt
(Zoom Off Gloves) 8/25/89 04/02/91 International (assignee of record) for weight
lifting gloves, cross training gloves and all
purpose fitness gloves
Exercise Cuffs 627,275 4,602,784 Xxxxx X. Xxxxxx Non-Exclusive License from by Xxxxxxx X.
(Softone Weights) 7/2/84 7/29/86 Jo Xxxx Xxxxxx Xxxxxxx
Power Forearm 7,710,535 Exclusive License
Developer Taiwan Manufacturing Purchase Agreement
Patent
Ziplock Collars 163,131 Non-Exclusive License
wrong no. Distribution Agreement
Universal Ankle Support 7,477,058 5,090,404 Xxxxxxx Kellassy Exclusive License from Kellassy. For sale in
02/07/90 02/25/92 U.S. only.
Softone Weights 610,777 D287,525 Xxxxxxx X. Non-Exclusive License from by Xxxxxxx
05/16/84 12/30/87 Xxxxxxx
Pushovers 8/236/484 Xxxx Xxxxxxxx
24
CALIFORNIA ALL-PURPOSE ACKNOWLEDGEMENT
================================================================================
STATE OF CALIFORNIA )
)
COUNTY OF LOS ANGELES )
On August 16, 1996 before me, Xxxxxx X. Xxxxxxxx, Notary Public, personally
appeared Xxxxx Xxxxxxxxx,
[ ] personally known to me - OR - [x] proved to me on the basis of
satisfactory evidence to be the
person whose name is subscribed to
[NOTARY STAMP] the within instrument and
acknowledged to me that he executed
the same in his authorized capacity,
and that by his signature on the
instrument the person, or the entity
upon behalf of which the person
acted, executed the instrument.
WITNESS my hand and official seal.
/s/ XXXXXX X. XXXXXXXX
-------------------------------------
SIGNATURE OF NOTARY
====================================OPTIONAL====================================
Though the data below is not required by law, it may prove valuable to persons
relying on the document and could prevent fraudulent reattachment of this form.
CAPACITY CLAIMED BY SIGNER DESCRIPTION OF ATTACHED DOCUMENT
[ ] INDIVIDUAL
[ ] CORPORATE OFFICER(S)
COLLATERAL ASSIGNMENT OF PATENTS
AND TRADEMARKS
------------------------------------- ------------------------------------
TITLE(S) TITLE OR TYPE OF DOCUMENT
[ ] PARTNER(S) [ ] LIMITED
[ ] GENERAL ------------------------------------
[ ] ATTORNEY-IN-FACT NUMBER OF PAGES
[ ] TRUSTEE(S)
AUGUST 16, 1996
[ ] GUARDIAN/CONSERVATOR ------------------------------------
DATE OF DOCUMENT
[ ] OTHER:
------------------------------------- ------------------------------------
SIGNER IS REPRESENTING: SIGNER(S) OTHER THAN NAMED ABOVE
(NAME OF PERSON(S) OR ENTITY(IES))
XXXXXXXXX OPERATING CORP.
-------------------------------------
================================================================================
25
CALIFORNIA ALL-PURPOSE ACKNOWLEDGEMENT
================================================================================
STATE OF CALIFORNIA )
)
COUNTY OF LOS ANGELES )
On August 16, 1996 before me, Xxxxxx X. Xxxxxxxx, Notary Public, personally
appeared Xxxxxxxx XxXxxxxxxx,
[ ] personally known to me - OR - [x] proved to me on the basis of
satisfactory evidence to be the
person whose name is subscribed to
[NOTARY STAMP] the within instrument and
acknowledged to me that she executed
the same in her authorized capacity,
and that by her signature on the
instrument the person, or the entity
upon behalf of which the person
acted, executed the instrument.
WITNESS my hand and official seal.
/s/ XXXXXX X. XXXXXXXX
-------------------------------------
SIGNATURE OF NOTARY
====================================OPTIONAL====================================
Though the data below is not required by law, it may prove valuable to persons
relying on the document and could prevent fraudulent reattachment of this form.
CAPACITY CLAIMED BY SIGNER DESCRIPTION OF ATTACHED DOCUMENT
[ ] INDIVIDUAL
[ ] CORPORATE OFFICER(S)
COLLATERAL ASSIGNMENT OF PATENTS
AND TRADEMARKS
------------------------------------- ------------------------------------
TITLE(S) TITLE OR TYPE OF DOCUMENT
[ ] PARTNER(S) [ ] LIMITED
[ ] GENERAL ------------------------------------
[ ] ATTORNEY-IN-FACT NUMBER OF PAGES
[ ] TRUSTEE(S)
AUGUST 16, 1996
[ ] GUARDIAN/CONSERVATOR ------------------------------------
DATE OF DOCUMENT
[ ] OTHER:
------------------------------------- ------------------------------------
SIGNER IS REPRESENTING: SIGNER(S) OTHER THAN NAMED ABOVE
(NAME OF PERSON(S) OR ENTITY(IES))
FOOTHILL CAPITAL CORPORATION
-------------------------------------
================================================================================
26
COLLATERAL ASSIGNMENT OF
PATENTS AND TRADEMARKS
THIS COLLATERAL ASSIGNMENT OF PATENTS AND TRADEMARKS (this
"Assignment"), dated as of August 16, 1996, is entered into by and between
Xxxxxxxxx Industries, Inc., a Delaware corporation ("Assignor") with its chief
executive office located at 000 Xxxx Xxxxxxx Xxxxxxx, Xxxxxx, Xxxxx 00000 and
Foothill Capital Corporation, a California corporation ("Assignee") with its
chief executive office 00000 Xxxxx Xxxxxx Xxxxxxxxx, Xxxxx 0000, Xxx Xxxxxxx,
Xxxxxxxxxx 00000, in light of the following facts:
RECITALS
A. Assignor has requested that Assignee enter into that certain
Loan and Security Agreement, of even date herewith, with Assignor (the "Loan
Agreement"), pursuant to which Assignee will extend certain loans and financial
accommodations to Assignor as described therein.
B. In order to induce Assignee to enter into the Loan Agreement,
Assignor has agreed to assign to Assignee the rights to all of Assignor's
currently existing and hereafter acquired or arising patents and trademarks
pursuant to this Assignment.
NOW, THEREFORE, in consideration of the premises set forth herein, and
for other good and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, Assignor hereby agrees with Assignee as follows:
1. To secure the complete and timely satisfaction of any and all
debts, liabilities, obligations or undertakings owing by Assignor to Assignee
of any kind or description, arising under, advanced pursuant to, or evidenced
by the Loan Agreement, whether direct or indirect, absolute or contingent, due
or to become due, voluntary or involuntary, whether now existing or hereafter
arising, and including all interest not paid when due and all Lender Expenses
(as defined in the Loan Agreement) which Assignor is required to pay or
reimburse pursuant to the Loan Agreement or by law (collectively, the
"Obligations"), Assignor hereby grants, assigns and conveys to Assignee all of
Assignor's right, title and interest (but not the obligation to register) in
and to all presently existing and hereafter acquired or arising patents and
trademarks including, without limitation, the trademark applications and
trademarks listed in Schedule A attached hereto and trademark registrations
identified therein, and the patent applications and patents listed in Schedule
B attached hereto (all as may be amended pursuant hereto from time to time),
all proceeds of infringement suits thereof, the right (but not the obligation)
to xxx for past, present and future infringements thereof and all rights (but
not obligations) corresponding thereto, and all re-issues, divisions,
continuations, renewals, extensions and continuations-in-part thereof
(collectively, the "Patents and Trademarks" individually, the "Patents" and the
"Trademarks"), and in and to the goodwill and assets of the business to which
each of the Trademarks relate (the "Associated Goodwill").
27
2. Assignor shall execute and deliver to Assignee concurrently
with Assignor's execution of this Assignment, and from time to time hereafter
at the request of Assignee, all assignments, powers of attorney, financing
statements, continuation financing statements, security agreements, chattel
mortgages, and all other documents that Assignee may reasonably request, in
form reasonably satisfactory to Assignee and its counsel, to perfect and
maintain perfected Assignee's interests in the Patents and Trademarks and the
Associated Goodwill, and in order to consummate fully all of the transactions
contemplated under this Assignment and the Loan Agreement.
3. Assignor covenants and warrants that:
a. The Patents and Trademarks are subsisting and have not been
adjudged invalid or unenforceable, in whole or in part;
b. To the best of Assignor's knowledge, each of the Patents
and Trademarks is valid and enforceable;
c. To the best of Assignor's knowledge, no claim has been made
that the use of any or all of the Patents or Trademarks does, or may, violate
the rights of any third person;
d. Assignor is the sole and exclusive owner of the entire and
unencumbered right, title and interest in and to each of the Patents and
Trademarks, free and clear of any voluntary or involuntary liens, charges and
encumbrances, including, without limitation, pledges, assignments, licenses,
registered user agreements and covenants by Assignor not to xxx third persons
(collectively, "Liens"), except as specifically set forth in the Loan Agreement
and those licenses and sublicenses which are existing as of the date hereof and
those licenses and sublicenses which may be entered into after the date hereof
in the ordinary course of Assignor's business;
e. Assignor has the unqualified right to enter into this
Assignment and perform its terms;
f. Assignor has used, and will continue to use for the
duration of this Assignment, proper statutory notice in connection with its use
of the Patents and Trademarks;
g. Assignor has used, and its permitted licensees and
sublicensees have used, and will continue to use for the duration of this
Assignment, consistent standards of quality in its provision of services and
manufacture of products sold under the Patents and Trademarks, which standards
shall be at least equivalent to the standards used by Assignor as of the date
of this Assignment, and Assignor shall provide to Assignee an officer's
certificate to that effect, and Assignor will make or permit no change with
respect thereto without the prior written consent of Assignee;
2
28
h. The Patents and Trademarks listed in Schedules A and B,
respectively, constitute all Patents and Trademarks now owned by Assignor or in
which Assignor has an interest as of the date hereof;
i. During the term of the Loan Agreement, Assignor will herein
keep each and all of the Patents and Trademarks and the registrations with
respect thereto, free and clear of all Liens (except as specifically set forth
in the Loan Agreement or as otherwise permitted herein), and Assignor will take
all steps necessary to maintain in force and renew each and all of the Patents
and Trademarks.
4. Assignor hereby grants to Assignee and its employees and
agents, on behalf of itself and its permitted licensees and sublicensees, the
right to visit Assignor's and its permitted licensees and sublicensees offices
and facilities which provide services or manufacture, inspect or store products
sold under or covered by any of the Patents or Trademarks, and to audit and
inspect the products and quality control records relating thereto at reasonable
times during regular business hours and upon at least one (1) business day's
prior written notice to Assignor. Assignor shall do any and all acts required
by Assignee to ensure Assignor's compliance with paragraph 3(g).
5. Assignor agrees that, until all of the Obligations shall have
been satisfied indefeasibly and in full and the Loan Agreement terminated, it
will not enter into any agreement, except as otherwise permitted herein,
encumbering, transferring, permitting the use of, or affecting any of the
Patents or the Trademarks, or which is inconsistent with Assignor's obligations
under this Assignment, without Assignee's prior written consent, which shall
not be unreasonably withheld. Assignor further agrees that it will not take
any action, or permit any action to be taken by any affiliate of Assignor or
other person subject to Assignor's control, or fail to take any reasonable
action, if such action or failure would affect the validity or enforcement of
the rights transferred to Assignee under this Assignment.
6. If, before the Obligations shall have been satisfied
indefeasibly and in full, Assignor shall obtain rights to any new trademarks or
patentable inventions, or become entitled to the benefit of any new trademarks
or patents, including without limitation, any improvement on any Patents, the
provisions of paragraph 1 shall automatically apply thereto and Assignor shall
give Assignee prompt written notice thereof.
7. Assignor authorizes Assignee to modify this Assignment by
amending Schedule A and/or B, as applicable, to include any future trademarks
or patents and trademark or patent applications covered by paragraphs 1 and 6
hereof, and to re-record this Assignment from time to time as Assignee sees
fit.
8. Unless and until there shall have occurred and be continuing an
Event of Default (as defined in the Loan Agreement), Assignee hereby grants to
Assignor the exclusive, non-transferable right and license to make, have made,
use and sell the inventions disclosed and claimed in the Patents, and to use
the Trademarks and registrations with respect thereto on and in connection with
services provided or products sold by Assignor, for Assignor's own benefit and
account and for none other, except that Assignor shall be
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29
permitted to license and sublicense the Patents and Trademarks in the ordinary
course of Assignor's business. Assignor hereby indemnifies Assignee from any
claims, suits, losses and damages, including attorneys' fees, arising from
Assignor's use and permitted licensees' and sublicensees' use of the Patents
and Trademarks, and its operations conducted pursuant to this paragraph 8.
This indemnity shall survive termination of this Assignment. Except as
otherwise provided herein, Assignor agrees not to sell or assign its interest
in, or grant any license or sublicense under the license granted to Assignor in
this paragraph 8, without the prior written consent of Assignee, which shall
not be unreasonably withheld.
9. If any Event of Default shall have occurred and be continuing,
upon notice from Assignee to Assignor (as provided in the Loan Agreement),
Assignor's license under the Patents and Trademarks, as set forth in paragraph
8, shall terminate forthwith, and Assignee shall have, in addition to all other
rights and remedies given it by this Assignment, and the Loan Agreement, those
allowed by law and the rights and remedies of a secured party under the Uniform
Commercial Code as enacted in any jurisdiction in which the Patents and
Trademarks may be located and, without limiting the generality of the
foregoing, Assignee may immediately, without demand of performance and without
other notice (except as set forth next below) or demand whatsoever to Assignor,
all of which are hereby expressly waived and, within the discretion of
Assignee, with or without advertisement, sell at public or private sale or
otherwise realize upon all or from time to time any of the Patents, Trademarks
and the Associated Goodwill, or any interest which Assignor may have therein,
and after deducting from the proceeds of sale or other disposition of the
Patents and Trademarks all expenses (including all reasonable broker's fees and
attorneys' fees), shall apply the residue of such proceeds toward the payment
of the Obligations. Any remainder of the proceeds after full and indefeasible
payment of the Obligations shall be paid over to Assignor. Notice of any sale
or other disposition of the Patents and Trademarks shall be given to Assignor
at least five (5) days before the time of any intended public or private sale
or other disposition of the Patents and Trademarks is to be made, which
Assignor hereby agrees shall be reasonable notice of such sale or other
disposition. At any such sale or other disposition, Assignee may, to the
extent permissible under applicable law, purchase the whole or any part of the
Patents and Trademarks and the Associated Goodwill sold, free from any right of
redemption on the part of Assignor, which right is hereby waived and released.
10. At such time as Assignor shall completely and indefeasibly
satisfy the Obligations, this Assignment shall terminate and Assignee shall
execute and deliver to Assignor all deeds, assignments and other instruments as
may be necessary or proper to re-vest in Assignor full title to the Patents,
Trademarks and the Associated Goodwill, subject to any disposition thereof
which may have been made by Assignee pursuant hereto or pursuant to the Loan
Agreement.
11. Any and all fees, costs and expenses, of whatever kind or
nature, including the reasonable attorneys' fees and expenses incurred by
Assignee in connection with the preparation of this Assignment and all other
documents relating hereto and the consummation of this transaction, the filing
or recording of any documents (including all taxes in connection therewith) in
public offices, the payment or discharge of any taxes, counsel fees,
maintenance fees, renewal fees and encumbrances, or otherwise in protecting,
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30
maintaining or preserving the Patents, Trademarks and the Associated Goodwill,
or in defending or prosecuting any actions or proceedings arising out of or
related to the Patents, Trademarks and the Associated Goodwill, shall be borne
and paid by Assignor on demand by Assignee and until so paid shall be added to
the principal amount of the Obligations and shall bear interest at the highest
rate prescribed in the Loan Agreement.
12. Assignor shall have the duty, through counsel acceptable to
Assignee, to prosecute diligently any patent and trademark applications of the
Patents and Trademarks pending as of the date of this Assignment or thereafter
until the Obligations shall have been paid in full, to make federal application
on registrable but unregistered Trademarks and patentable but unpatented
inventions, to file and prosecute opposition and cancellation proceedings, and
to do any and all acts which are necessary or desirable to preserve and
maintain all rights in the Patents, the Trademarks and the Associated Goodwill.
Any expenses incurred in connection with the Patents and Trademarks as provided
herein shall be borne by Assignor. Except as otherwise provided herein,
Assignor shall not abandon any right to file a patent or trademark application,
or any pending patent or trademark application, or any of the Patents and
Trademarks without the consent of Assignee, which consent shall not be
unreasonably withheld.
13. Assignee shall have the right, but shall in no way be
obligated, to bring any opposition proceedings, cancellation proceedings or
suit in its own name to enforce or protect the Patents and Trademarks, and any
license thereunder, in which event Assignor shall at the request of Assignee do
any and all lawful acts and execute any and all proper documents reasonably
required by Assignee in aid of such enforcement. Assignor shall promptly, upon
demand, reimburse and indemnify Assignee for all damages, costs and expenses,
including reasonable attorneys' fees and expenses, incurred by Assignee in the
fulfillment of the provisions of this paragraph 13.
14. In the event of the occurrence of an Event of Default under the
Loan Agreement, Assignor hereby authorizes and empowers Assignee to make,
constitute and appoint any officer or agent of Assignee as Assignee may select,
in its exclusive discretion, as Assignor's true and lawful attorney-in-fact,
with the power to endorse Assignor's name on all applications, documents,
papers and instruments necessary for Assignee to use or make use of the
Patents, the Trademarks and the Associated Goodwill, or to grant or issue any
exclusive or nonexclusive license under the Patents and Trademarks to anyone
else, or necessary for Assignee to assign, pledge, convey or otherwise transfer
title in or dispose of the Patents and Trademarks, registrations with respect
thereto, and the Associated Goodwill, to anyone else. Assignor hereby ratifies
all that such attorney shall lawfully do or cause to be done by virtue hereof.
This power of attorney shall be irrevocable for the life of this Assignment.
15. If Assignor fails to comply with any of its obligations
hereunder, Assignee may, upon notice to Assignor, perform such obligations, in
Assignor's name or in Assignee's name, but at Assignor's expense, and Assignor
hereby agrees to reimburse, and on demand to indemnify and hold harmless,
Assignee, its successors, assigns, agents and servants, in full for any and all
claims, damages, losses, liabilities, demands, causes of action, and any costs
and expenses, including reasonable attorneys' fees, incurred
5
31
by Assignee in connection with this Assignment or in protecting, defending and
maintaining the Patents and Trademarks including, without limitation, the loss
of any Patents or Trademarks or registrations with respect thereto, the
Associated Goodwill, or other rights, whether as a result of the assignment to
Assignee hereunder, the exercise or nonexercise by Assignee of any rights,
remedies, including foreclosure and sale or licensing remedies, or privileges
granted to Assignee hereunder or by law, or otherwise.
16. Notwithstanding anything to the contrary contained in this
Assignment, Assignor shall have the right to abandon such Patents and
Trademarks which it deems to be immaterial or not useful to its business.
17. No course of dealing between Assignor and Assignee, or any
failure to exercise, or any delay in exercising, on the part of Assignee, any
right, power or privilege hereunder or under the Loan Agreement shall operate
as a waiver thereof; nor shall any single or partial exercise of any right,
power or privilege hereunder or thereunder preclude any other or further
exercise thereof or the exercise of any other right, power or privilege.
18. All of Assignee's rights and remedies with respect to the
Patents, the Trademarks and the Associated Goodwill, whether established hereby
or by the Loan Agreement, or by any other agreements or by law shall be
cumulative and may be exercised singularly or concurrently.
19. The provisions of this Assignment are severable, and if any
clause or provision shall be held invalid and unenforceable in whole or in part
in any jurisdiction, then such invalidity or unenforceability shall affect only
such clause or provision, or part thereof, in such jurisdiction, and shall not
in any manner affect such clause or provision in any other jurisdiction, or any
other clause or provision of this Assignment in any jurisdiction.
20. This Assignment cannot be changed, modified, amended, or
terminated except by a written document signed by both Assignor and Assignee,
except as provided in paragraph 7.
21. This Assignment shall bind and inure to the benefit of the
respective successors and assigns of Assignor and Assignee; provided, however,
Assignor may not assign this Assignment or any rights hereunder without
Assignee's prior written consent and any prohibited assignment shall be
absolutely void. No such consent to an assignment by Assignee shall release
Assignor from its Obligations to Assignee.
22. Assignee reserves the right, upon an Event of Default under the
Loan Agreement, to sell, assign, transfer, negotiate, or grant participations
in all or any part of, or any interest in the rights hereunder; provided that,
with respect to any sale, assignment, transfer or negotiation by Assignee of
less than all of the rights and benefits hereunder, Assignee shall cause such
title to the Patents and Trademarks as exists in the name of Assignee pursuant
to this Assignment to remain in Assignee's name. In connection with any such
sale, assignment, transfer, negotiation or participation, Assignee may disclose
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all documents and information which Assignee now or hereafter may have relating
to Assignor, Assignor's business, the Patents or the Trademarks to any such
prospective or permitted transferee, if such transferee agrees to be bound by
the confidentiality provisions of the Loan Agreement.
23. The validity of this Assignment, its construction,
interpretation, and enforcement and the rights of the parties hereto shall be
determined under, governed by, and construed in accordance with, the internal
laws of the State of California, without regard to principles of conflicts of
law. The parties agree that all actions or proceedings arising in connection
with this Assignment shall be tried and litigated only in the state and federal
courts located in the County of Los Angeles, State of California. ASSIGNOR AND
ASSIGNEE EACH WAIVES THE RIGHT TO TRIAL BY JURY OF ANY CLAIM, DEMAND, ACTION,
OR CAUSE OF ACTION ARISING UNDER THIS ASSIGNMENT, WHETHER NOW EXISTING OR
HEREAFTER ARISING, AND ANY RIGHT EITHER MAY HAVE TO ASSERT THE DOCTRINE OF
FORUM NON CONVENIENS, LACK OF PERSONAL JURISDICTION, OR TO OBJECT TO VENUE TO
THE EXTENT ANY PROCEEDING IS BROUGHT IN ACCORDANCE WITH THIS SECTION 23.
24. All notices or demands by any party hereto to the other party
and relating to this Assignment shall be made in the manner and to the
addresses set forth in the notices provision of the Loan Agreement.
25. Unless the context of this Assignment clearly requires
otherwise, references to the plural include the singular, the singular includes
the plural, the part includes the whole, "including" is not limiting, and "or"
has the inclusive meaning represented by the phrase "and/or". The words
"hereof", "herein", "hereunder" and similar terms in this Assignment refer to
this Assignment as a whole and not to any particular provision of this
Assignment. Article, section, subsection, exhibit, and schedule references are
to this Assignment unless otherwise specified.
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WITNESS the execution hereof under seal as of the day and year first
above written.
NBF, INC.,
a Georgia corporation
By: Xxxxxxxxx Operating Corp.,
general partner
By: /s/ XXXXX X. XXXXXXXXX
---------------------------
Its: Vice Chairman
--------------------------
FOOTHILL CAPITAL CORPORATION,
a California corporation
By: /s/ XXXXXXXX XxXXXXXXXX
-----------------------------------
Title: SVP
--------------------------------
[Attach appropriate notarial acknowledgement.]
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SCHEDULE A
(List of Patents)
1. Trampoline having safety features
Serial No: 07/847,302
Filing Date: 03/06/92
Issue No:
Issue Date: 10/25/95
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35
SCHEDULE B
Not applicable.
36
CALIFORNIA ALL-PURPOSE ACKNOWLEDGEMENT
================================================================================
STATE OF CALIFORNIA )
)
COUNTY OF LOS ANGELES )
On August 16, 1996 before me, Xxxxxx X. Xxxxxxxx, Notary Public, personally
appeared Xxxxx Xxxxxxxxx,
[ ] personally known to me - OR - [x] proved to me on the basis of
satisfactory evidence to be the
person whose name is subscribed to
[NOTARY STAMP] the within instrument and
acknowledged to me that he executed
the same in his authorized capacity,
and that by his signature on the
instrument the person, or the entity
upon behalf of which the person
acted, executed the instrument.
WITNESS my hand and official seal.
/s/ XXXXXX X. XXXXXXXX
-------------------------------------
SIGNATURE OF NOTARY
====================================OPTIONAL====================================
Though the data below is not required by law, it may prove valuable to persons
relying on the document and could prevent fraudulent reattachment of this form.
CAPACITY CLAIMED BY SIGNER DESCRIPTION OF ATTACHED DOCUMENT
[ ] INDIVIDUAL
[ ] CORPORATE OFFICER(S)
COLLATERAL ASSIGNMENT OF PATENTS
AND TRADEMARKS
------------------------------------- ------------------------------------
TITLE(S) TITLE OR TYPE OF DOCUMENT
[ ] PARTNER(S) [ ] LIMITED
[ ] GENERAL ------------------------------------
[ ] ATTORNEY-IN-FACT NUMBER OF PAGES
[ ] TRUSTEE(S)
AUGUST 16, 1996
[ ] GUARDIAN/CONSERVATOR ------------------------------------
DATE OF DOCUMENT
[ ] OTHER:
------------------------------------- ------------------------------------
SIGNER IS REPRESENTING: SIGNER(S) OTHER THAN NAMED ABOVE
(NAME OF PERSON(S) OR ENTITY(IES))
XXXXXXXXX OPERATING CORP.
-------------------------------------
================================================================================
11
37
CALIFORNIA ALL-PURPOSE ACKNOWLEDGEMENT
================================================================================
STATE OF CALIFORNIA )
)
COUNTY OF LOS ANGELES )
On August 16, 1996 before me, Xxxxxx X. Xxxxxxxx, Notary Public, personally
appeared Xxxxxxxx XxXxxxxxxx,
[ ] personally known to me - OR - [x] proved to me on the basis of
satisfactory evidence to be the
person whose name is subscribed to
[NOTARY STAMP] the within instrument and
acknowledged to me that she executed
the same in her authorized capacity,
and that by her signature on the
instrument the person, or the entity
upon behalf of which the person
acted, executed the instrument.
WITNESS my hand and official seal.
/s/ XXXXXX X. XXXXXXXX
-------------------------------------
SIGNATURE OF NOTARY
====================================OPTIONAL====================================
Though the data below is not required by law, it may prove valuable to persons
relying on the document and could prevent fraudulent reattachment of this form.
CAPACITY CLAIMED BY SIGNER DESCRIPTION OF ATTACHED DOCUMENT
[ ] INDIVIDUAL
[ ] CORPORATE OFFICER(S)
COLLATERAL ASSIGNMENT OF PATENTS
AND TRADEMARKS
------------------------------------- ------------------------------------
TITLE(S) TITLE OR TYPE OF DOCUMENT
[ ] PARTNER(S) [ ] LIMITED
[ ] GENERAL ------------------------------------
[ ] ATTORNEY-IN-FACT NUMBER OF PAGES
[ ] TRUSTEE(S)
AUGUST 16, 1996
[ ] GUARDIAN/CONSERVATOR ------------------------------------
DATE OF DOCUMENT
[ ] OTHER:
------------------------------------- ------------------------------------
SIGNER IS REPRESENTING: SIGNER(S) OTHER THAN NAMED ABOVE
(NAME OF PERSON(S) OR ENTITY(IES))
FOOTHILL CAPITAL CORPORATION
-------------------------------------
================================================================================
12
