TRADEMARK LICENSE AGREEMENT
Whereas, the U.S. Securities and Exchange Commission ("SEC") has adopted and is using the trademark XXXXX (the "Xxxx"), and has used the Xxxx continuously in commerce since September 24, 1984; and
Whereas, Secure Automated Filing Enterprises Inc. ("Licensee") desires to use the Xxxx as part of the xxxx(s) and name(s) listed on Schedule A hereto (the "Licensed Marks") in connection with Licensee's services listed on Schedule A hereto (the "Licensed Services").
Now, therefore, in consideration of the mutual promises herein contained, it is agreed that:
1. Grant of License
1.1 The SEC hereby grants to Licensee a non-exclusive, non-
assignable, royalty-free license to use the Licensed Marks in connection with the Licensed Services, subject to the terms of this Trademark License Agreement ("Agreement").
1.2 Nothing contained herein shall prevent the SEC from licensing
third-parties to use XXXXX-formative marks and names not identical to the Licensed Marks.
2. Quality Control
2.1 Before Licensee uses the Licensed Marks in connection with the offering, selling, rendering, promoting, or marketing of the Licensed Services, it shall send at its own expense a representative sampling of items showing each proposed use of the Licensed Marks to the SEC and obtain the SEC's approval of the proposed use. The SEC may from time to time thereafter request in writing samples of additional representative items showing Licensee's use of the Licensed Marks. Licensee shall provide such items at its own expense within ten (10) days following such request. In either case, the SEC shall review said items within twenty (20) days of receipt to determine if they comply with this Agreement. If the SEC has not objected in writing within twenty (20) days following receipt of any items provided as required herein, they shall be deemed approved.
2.2 The SEC shall have the right, at all reasonable times, to inspect
Licensee's Licensed Services and associated promotional and advertising materials employing the Licensed Marks to determine whether such use is of proper quality and otherwise consistent with the requirements of this Agreement.
2.3 The Licensed Services shall be offered, sold, advertised, promoted, rendered, and distributed in accordance with all applicable national, state, local, and other laws and regulations. The SEC's approval of any advertising or promotional material bearing the Licensed Marks shall not mean that the SEC has determined that such materials conform to the laws or regulations of any jurisdiction.
3. Duration, Termination, and Renewal
3.1 The initial term of this Agreement is five (5) years from the date of complete execution. This Agreement may be renewed for subsequent five (5)-year terms by the mutual written consent of both parties and the execution of a valid Renewal Agreement, provided Licensee has complied with the quality control provisions of this Agreement. Upon termination or expiration of this Agreement, all rights of Licensee to use the Licensed Marks shall immediately terminate, and Licensee shall voluntarily abandon or cancel as applicable all trademark applications and registrations and domain name applications and registrations listed on Schedule A hereto within 30 days after the termination or expiration of this Agreement.
3.2 This Agreement shall terminate immediately without notice if Licensee is sold, or if Licensee files a petition in bankruptcy or is adjudicated a bankrupt or insolvent, or makes an assignment for the benefit of creditors, or an arrangement pursuant to any bankruptcy law, or if the Licensee discontinues its business or a receiver is appointed for the Licensee or for the Licensee's business and such receiver is not discharged within thirty (30) days.
3.3 In the event of a breach of any of the terms and conditions of this Agreement by Licensee, the SEC shall give Licensee written notice of such breach. In the event Licensee does not cure such breach within thirty (30) days, the SEC may immediately terminate this Agreement and shall notify Licensee in writing of such termination within five (5) days of such termination.
4. Validity of Ownership of Xxxx
4.1 It is understood and agreed that the SEC is the sole and exclusive owner of all right, title, and interest in and to the Xxxx, and that all use of the Licensed Marks by Licensee shall inure to the benefit of the SEC. Licensee shall acquire no right, title, or interest of any kind or nature whatsoever in or to the Xxxx or the goodwill associated therewith. Licensee shall not file any trademark applications for the Licensed Marks without first obtaining the SEC's written consent. Licensee agrees that it shall not obtain any rights to the Xxxx by virtue of any trademark registrations obtained for the Licensed Marks pursuant to this provision.
4.2 Licensee agrees not to contest or otherwise challenge or attack the SEC's rights in or registrations for the Xxxx or the validity of the license granted herein during the term of this Agreement and thereafter. Licensee further agrees not to do anything, either by act of omission or commission or directly or indirectly, which might impair, jeopardize, infringe or violate the Xxxx, and agrees not to misuse or bring the Xxxx into disrepute.
4.3 Licensee agrees to cooperate with and assist the SEC in protecting and enforcing the SEC's rights to the Xxxx. Licensee shall promptly inform the SEC of any infringement or imitation of the Xxxx that comes to its attention, and cooperate with the SEC in any such matters. The SEC shall have the sole right at its own expense to determine whether or not any action shall be taken on account of any such violation. The SEC shall receive all amounts awarded as damages, profits, settlement proceeds or otherwise in connection with such claims or suits brought by the SEC.
4.4 Licensee shall not take any legal action against any XXXXX- formative marks or names that Licensee believes violate its rights in the Licensed Marks without the prior written consent of the SEC. Should the SEC grant such consent, the SEC shall have the right to participate in the litigation and shall have the right to approve any settlements.
5. Use of the Licensed Marks
5.1 In using the Licensed Marks, Licensee shall clearly indicate that the Xxxx is the property of the SEC. Licensee shall display this notice conspicuously, in the form shown below, where possible, but at a minimum shall display it in conjunction with Licensee's initial use of the Licensed Marks within each of its products, services, or advertising or promotional materials (e.g., on the first or welcome screen of any on-line computer service or software product, on the cover or first page of any user manual or promotional material, and after the first reference to the xxxx in any advertisement or promotional piece):
"XXXXX" is a trademark of the U.S. Securities and Exchange Commission. Secure Automated Filing Enterprises Inc. is not affiliated with or approved by the U.S. Securities and Exchange Commission."
5.2 Licensee's use of the Licensed Marks shall not be portrayed, directly or indirectly, as an endorsement or recommendation by the SEC of Licensee or any of Licensee's products or services.
6. Governing Law
6.1 This Agreement shall be interpreted in accordance with the federal common law as interpreted by the U.S. District Court for the District of Columbia and its reviewing courts.
7. Indemnification
7.1 Licensee agrees to indemnify and hold the SEC harmless from any and all claims, demands, causes of action, damages, judgments and attorney's fees and costs arising from Licensee's offering, selling, promoting, advertising, rendering and/or distribution of the Licensed Services and from Licensee's use of the Licensed Marks.
8. Notice
8.1 All notices, requests, demands and other communications that are required or permitted to be given to the parties under this Agreement shall be in writing, delivered personally or sent by overnight courier or registered mail, return receipt requested, postage prepaid, to the addresses set forth below or as such other addresses specified by the parties, and shall be deemed to have been given upon the delivery thereof:
If to the SEC: U.S. Securities and Exchange Commission
000 Xxxxx Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000-0000
Attn: Associate General Counsel
for Litigation and Administrative Practice
If to Licensee: Secure Automated Filing Enterprises Inc.
000-0000 Xxxxx Xxxxxx
Xxxxxxxxx, XX X0X 0X0
Attn: Xxxx X'Xxxxx, President
9. Authority to Bind
9.1 Each of the parties hereto warrants and represents that the person(s) executing this Agreement on its behalf has full authority to execute this Agreement and to bind it as a party to this Agreement.
10. Assignability
10.1 This Agreement shall be binding in all respects upon the parties hereto, their subsidiaries, related companies, officers, directors, stockholders, successors, permitted assigns, employees, agents, and all parties in privity with or claiming under them. Licensee shall not assign or sublicense any of its rights under this Agreement without the prior written consent of the SEC.
11. Amendment
This Agreement and Schedule A hereto express the entire understanding between the parties concerning its subject matter, and may not be modified except by a written instrument signed by all parties. The failure of a party to insist upon adherence to any term of this Agreement shall not be considered a waiver or deprive the party of the right thereafter to insist upon strict adherence to that term or any other term in this Agreement.
12. Representations
12.1 This Agreement is executed voluntarily and without any duress or undue influence on the parties or their officers, employees, agents, or attorneys and no party is relying on any inducement, promises, or representations made by any other party or any of its officers, employees, agents, or attorneys other than as set forth in this Agreement.
12.2 Licensee acknowledges that it selected, adopted, and cleared the Licensed Marks, and that the SEC was not involved in any way in the selection, adoption, or clearance of the Licensed Marks. By granting a license to Licensee to use the Licensed Marks, the SEC is not making any determination, rendering any opinion, or making any representation or warranty as to the availability of the Licensed Marks, for use or registration in the United States or any other country. Licensee uses and registers the Licensed Marks solely at its own risk.
13. Headings
13.1 All headings used in this Agreement are for reference purposes only and shall not be deemed to have any substantive effect.
| U.S. SECURITIES AND | LICENSEE |
| EXCHANGE COMMISSION | |
| /s/ XXXXXXX X. XXXXXX | /s/ Xxxx X'Xxxxx |
| XXXXXXX X. XXXXXX | Name: Xxxx X'Xxxxx |
| Office of Information Technology | Title: President |
| DATED: 4/23/04 | DATED: April 20, 04 |
SCHEDULE A TO TRADEMARK LICENSE AGREEMENT
1. List of Licensed Marks
xxx.xxxxxxxxxxxxxxx.xxx
2. List of Licensed Services
