TRADEMARK SECURITY AGREEMENT
This TRADEMARK SECURITY AGREEMENT is made this ___ day of March, 2002,
between FLEET NATIONAL BANK, a national banking association organized under the
laws of the United States, having an office at 0000 Xxxxxx xx xxx Xxxxxxxx, Xxx
Xxxx, XX 00000, as collateral agent for itself and Lenders (as hereinafter
defined) (together with its successors in such capacity, "Agent'), and CROSS
MEDIA MARKETING CORPORATION, a Delaware corporation having its principal place
of business at 000 Xxxxx Xxxxxx, 00xx Xxxxx, Xxx Xxxx, XX 00000 (the "Company").
RECITALS:
The Company and one or more of its affiliates ("Borrowers") desire to
obtain loans and other financial accommodations from certain financial
institutions ("Lenders") as are parties from time to time to that certain Credit
Agreement dated the date hereof by and among Borrowers, Agent and Lenders
(hereinafter referred to, together with all amendments thereto, as the "Credit
Agreement");
Lenders are willing to make loans and other financial accommodations to
Borrowers from time to time, pursuant to the terms of the Credit Agreement,
provided the Company executes this Agreement.
NOW, THEREFORE, for Ten Dollars ($10.00) and other valuable
consideration, and in consideration of the premises, the Company hereby agrees
with Agent as follows:
1. Capitalized terms used herein (including those used in the Recitals
hereto), unless otherwise defined, shall have the meanings ascribed to them in
the Credit Agreement.
2. To secure the prompt payment and performance of the Obligations, the
Company hereby pledges, assigns and grants to Agent, for its benefit and the pro
rata benefit of Lenders, a continuing security interest in and lien upon all of
the following property of the Company, whether now owned or existing or
hereafter created or acquired (the "Trademark Collateral"):
(a) all trademarks, trademark registrations, tradenames and
trademark applications, including, without limitation, the trademarks
and applications listed on Exhibit A attached hereto and made a party
hereof (as the same may be amended from time to time, and (i) all
renewals thereof, (ii) all income, royalties, damages and payments now
or hereafter due or payable with respect thereto, including, without
limitation, damages and payments for past or future infringements
thereof, (iii) the right to xxx for past, present and future
infringements thereof, and (iv) all rights corresponding thereto
throughout the world (all of the foregoing trademarks, trademark
registrations, tradenames and applications, together with the items
described in clauses (i)-(iv), are hereinafter collectively referred to
as the "Trademarks");
(b) the goodwill of the Company's business connected with and
symbolized by the Trademarks; and
(c) all proceeds of the foregoing.
3. The Company represents and warrants to Agent and Lenders that:
(a) Each of the Trademarks is subsisting and has not been
adjudged invalid or unenforceable;
(b) Upon filing of this Agreement in the United States Patent
and Trademark Office, and the filing of UCC-1 financing statements
against the Company in its state of incorporation listing "general
intangibles" among the collateral covered by such financing statement,
this Agreement will create a legal and valid perfected lien upon and
security interest in the Trademark Collateral (other than foreign
trademarks), enforceable against Company and all third Persons in
accordance with its terms;
(c) To the best of the Company's knowledge, no claim has been
made that the use of any of the Trademarks does or may violate the
rights of any third Person;
(d) The Company has the unqualified right to enter into this
Agreement and perform its terms;
(e) To the best of the Company's knowledge, each of the
Trademarks is valid and enforceable; and
(f) The Company is the sole and exclusive owner of the entire
right, title and interest in and to all of the Collateral, free and
clear of any liens, charges and encumbrances (other than Permitted
Liens), including, without limitation, pledges, assignments, licenses,
registered user agreements and covenants by the Company not to xxx
third Persons (other than licenses permitted under Section 8.07(b) of
the Credit Agreement).
4. The Company covenants and agrees with Agent and Lenders that:
(a) The Company will maintain the quality of the products
and/or services associated with the Trademarks, at a level consistent
with the quality at the time of this Agreement, and will, upon Agent's
request, provide Agent quarterly with a certificate to that effect in
the form attached hereto as Exhibit B executed by an officer of the
Company;
(b) The Company will not change the quality of the products
and/or services associated with the Trademarks without Agent's prior
written consent; and
(c) The Company has used and will continue to use for the
duration of this Agreement, proper statutory notice in connection with
its use of the Trademarks, including, without limitation, filing an
affidavit of use with the United States Patent and Trademark Office for
each Trademark as required by applicable law to maintain the
registration thereof without loss of protection therefore.
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5. Subject to the provisions of Section 7.07 of the Credit Agreement,
the Company hereby authorizes Agent, and its employees and agents (and any
Lender or Lenders and their respective employees and agents), the right to visit
the Company's plants and facilities which manufacture, inspect or store products
sold under any of the Trademarks and to inspect the products and quality control
records relating thereto. The Company shall do any and all acts required by
Agent to ensure the Company's compliance with paragraph 4(c) of this Agreement.
6. Until all of the Obligations have been satisfied in full and the
Credit Agreement has been terminated, the Company shall not enter into any
license agreement relating to any of the Trademarks with any Person except as
permitted under Section 8.07(b) of the Credit Agreement, and shall not become a
party to any agreement with any Person that is inconsistent with the Company's
duties under this Agreement.
7. If, before the Obligations have been satisfied in full, the Company
shall obtain rights to any new trademarks, or become entitled to the benefit of
any trademark application or trademark or any renewal of any Trademark, the
provisions of paragraph 2 hereof shall automatically apply thereto, and the
Company shall give to Agent prompt notice thereof in writing.
8. The Company irrevocably authorizes and empowers Agent to modify this
Agreement by amending Exhibit A to include any future trademarks and trademark
applications within the definition of Trademarks under paragraph 2 or paragraph
7 hereof.
9. At any time after an Event of Default has occurred and is
continuing, Agent shall have, in addition to all other rights and remedies given
it by this Agreement, all rights and remedies under Applicable law and all
rights and remedies of a secured party under the UCC. Without limiting the
generality of the foregoing, Agent may immediately, for its benefit and the pro
rata benefit of Lenders, without demand of performance and without notice
(except as described in the next sentence, if required by Applicable law), or
demand whatsoever to the Company, each of which the Company hereby expressly
waives, collect directly any payments due the Company in respect of the
Trademark Collateral, or sell at public or private sale or otherwise realize
upon all or from time to time, any of the Trademark Collateral. The Company
hereby agrees that ten (10) days written notice to the Company of any public or
private sale or other disposition of any of the Trademark Collateral shall be
reasonable notice; provided, however, that no notice shall be required hereunder
if not otherwise required by Applicable law. At any such sale or disposition,
Agent may, to the extent permitted by law, purchase the whole or any part of the
Trademark Collateral sold, free from any right of redemption on the party of the
Company, which right the Company hereby waives and releases. After deducting
from the proceeds of such sale or other disposition of the Trademark Collateral
all costs and expenses incurred by Agent in enforcing its rights hereunder
(including, without limitation, all attorneys' fees), Agent shall apply the
remainder of such proceeds to the payment of the Obligations in such order and
manner as may be authorized or required by the Credit Agreement. Any remainder
of the proceeds after payment in full of the Obligations shall be paid over to
the Company. If any deficiency shall arise, the Company and each guarantor of
the Obligations shall remain jointly and severally liable to Agent and Lenders
therefore.
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10. The Company hereby makes, constitutes and appoints Agent and any
officer or agent of Agent as Agent may select, as the Company's true and lawful
attorney-in-fact, with full power to do any or all of the following if an Event
of Default shall occur and be continuing: to endorse the Company's name on all
applications, documents, papers and instruments necessary for Agent to continue
the registration of or to use the Trademarks, or to grant or issue any exclusive
or nonexclusive license under the Trademarks to any other Person, or to assign,
pledge, convey or otherwise transfer title in or dispose of any Trademark
Collateral to any other Person. The Company hereby ratifies all that such
attorney shall lawfully do or cause to be done by virtue hereof. This power of
attorney, being coupled with an interest, shall be irrevocable until all of the
Obligations shall have been satisfied in full and the Credit Agreement shall
have been terminated.
11. At such time as all of the Obligations shall have been satisfied
finally and in full and the Credit Agreement shall have been shall have been
terminated, Agent shall execute and deliver to the Company, without
representation, warranty or recourse and at the Company's expense, all releases
or other instruments necessary to terminate Agent's security interest in the
Trademark Collateral subject to any disposition thereof which may have been made
by Agent pursuant to the terms of this Agreement or any of the Facility
Documents.
12. The Company shall be responsible for and pay any and all fees,
costs and expenses, of whatever kind or nature (including, without limitation,
reasonable attorneys' fees and legal expenses) incurred by (a) the Agent in
connection with the preparation of this Agreement and any other documents
relating hereto and the consummation of this transaction and (b) the Agent and
the Lenders in connection with (i) the filing or recording of any documents
(including, without limitation, all taxes in connection therewith) with the
United States Patent and Trademark Office or in any other public offices, the
payment or discharge of any taxes, counsel fees, maintenance fees, Liens or
otherwise protecting, maintaining, or preserving the Trademark Collateral and
(ii) the enforcement of the Agent's or any Lenders' rights and remedies
hereunder, including defending or prosecuting any actions or proceedings arising
out of or related to the Trademark Collateral (it being the intent of the
Company and the Agent that the Company shall be responsible for the payment of
all such sums, fees, costs and expenses, including, without limitation, all
renewal fees with respect to the Trademarks) or, if paid by Agent (or any Lender
as provided above) in the Agent's (or such Lender's) sole discretion, shall be
reimbursed by the Company on demand by Agent (or such Lender) and until so paid
shall be added to the principal amount of the Obligations and shall bear
interest at the highest per annum rate in effect from time to time under the
Credit Agreement.
13. The Company shall use all reasonable efforts to detect any
infringers of the Trademarks and shall notify Agent in writing of infringements
detected. The Company shall have the duty, through counsel acceptable to Agent,
to prosecute diligently any trademark application for a Trademark pending as of
the date of this Agreement or thereafter until the Obligations shall have been
paid in full and the Credit Agreement terminated, to make federal application on
registrable but unregistered Trademarks (subject to Company's reasonable
discretion in the ordinary course of the Business or, after the occurrence of a
Default or an Event of Default and during the continuance thereof, promptly upon
Agent's request), to file and prosecute opposition and cancellation proceedings,
to file and prosecute lawsuits to enforce the Trademarks and to do any and all
acts which are deemed necessary or desirable by Agent to
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preserve and maintain all rights in the Trademarks. Any expenses incurred in
connection with such applications or proceedings shall be borne by the Company.
The Company shall not abandon any right to file a trademark application, or any
trademark application or trademark without the consent of Agent.
14. Notwithstanding anything to the contrary contained in paragraph 13
hereof, Agent shall have the right, but shall in no way be obligated, to bring
suit instead in its own name to enforce to protect the Trademarks or any license
hereunder, in either of which events the Company shall at the request of Agent
do any and all lawful acts (including bringing suit) and execute any and all
proper documents required by Agent to aid such enforcement, or defense, and the
Company shall promptly, upon demand, reimburse and indemnify Agent for all costs
and expenses incurred in the exercise of Agent's rights under this paragraph 14.
15. If the Company fails to comply with any of its obligations
hereunder, to the extent permitted by applicable law, Agent may do so in the
Company's name and in Agent's name, in Agent's sole discretion, but at the
Company's expense, and the Company agrees to reimburse Agent in full for all
expenses, including, without limitation, reasonable attorneys' fees, incurred by
Agent in prosecuting, defending or maintaining the Trademarks or Agent's
interest therein pursuant to this Agreement.
16. No course of dealing between the Company and Agent or any Lender,
nor any failure to exercise, nor any delay in exercising, on the part of Agent
or any Lender, any right, power or privilege hereunder or under any of the other
Facility Documents 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.
17. All of Agent's rights and remedies with respect to the Trademark
Collateral, whether established hereby or by any of the other Facility
Documents, or by any other agreements or by applicable law shall be cumulative
and may be exercised singularly or concurrently.
18. The provisions of this Agreement 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 Agreement in any jurisdiction.
19. This Agreement, together with the other Facility Documents,
constitutes and expresses the entire understanding of the parties hereto with
respect to the subject matter hereof, and supercedes all prior agreements and
understandings, inducements or conditions, whether expressed or implied, oral or
written. This Agreement is subject to modification only by a writing signed by
the parties, except as provided in paragraph 8 hereof.
20. The benefits and burdens of this Agreement shall inure to the
benefit of and be binding upon the successors and assigns of the Agent and of
each Lender and upon the
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successors of the Company. The Company shall not assign its rights or delegate
its duties hereunder without the prior written consent of Agent.
21. The Company hereby waives notice of Agent's acceptance hereof.
22. All notices, requests and demands to or upon the Company or Agent
shall be given in accordance with Section 12.06 of the Credit Agreement to the
address set forth therein, or, if not set forth therein, to the address set
forth next to the signature block of such party.
23. EACH OF THE COMPANY AND THE AGENT HEREBY IRREVOCABLY SUBMITS TO THE
JURISDICTION OF ANY NEW YORK STATE OR UNITED STATES FEDERAL COURT SITTING IN NEW
YORK COUNTY OVER ANY ACTION OR PROCEEDING ARISING OUT OF OR RELATING TO THIS
AGREEMENT OR ANY OTHER FACILITY DOCUMENT, AND EACH OF THE COMPANY AND THE AGENT
HEREBY IRREVOCABLY AGREES THAT ALL CLAIMS IN RESPECT OF SUCH ACTION OR
PROCEEDING MAY BE HEARD AND DETERMINED IN SUCH NEW YORK STATE OR FEDERAL COURT.
EACH OF THE COMPANY AND THE AGENT AGREES THAT A FINAL JUDGMENT IN ANY SUCH
ACTION OR PROCEEDING SHALL BE CONCLUSIVE AND MAY BE ENFORCED IN OTHER
JURISDICTIONS BY SUIT ON THE JUDGMENT OR IN ANY OTHER MANNER PROVIDED BY LAW.
EACH OF THE COMPANY AND THE AGENT FURTHER WAIVES ANY OBJECTION TO VENUE IN SUCH
STATE AND ANY OBJECTION TO AN ACTION OR PROCEEDING IN THE STATE ON THE BASIS OF
FORUM NON-CONVENIENS. THE COMPANY FURTHER AGREES THAT ANY ACTION OR PROCEEDING
BROUGHT AGAINST THE AGENT OR ANY LENDER SHALL BE BROUGHT ONLY IN A NEW YORK
STATE OR UNITED STATES FEDERAL COURT SITTING IN NEW YORK COUNTY.
EACH OF THE COMPANY AND THE AGENT WAIVES ANY RIGHT IT MAY HAVE TO TRIAL
BY JURY.
Nothing in this Section 23 shall affect the right of the Agent or any
Lender to serve legal process in any other manner permitted by law or affect the
right of the Agent or any Lender to bring any action or proceeding against the
Company in the courts of any other jurisdictions.
To the extent that the Company has or hereafter may acquire any
immunity from jurisdiction of any court or from any legal process (whether from
service or notice, attachment prior to judgment, attachment in aid of execution,
execution or otherwise) with respect to itself or any of its assets, including
the Trademark Collateral, the Company hereby irrevocably waives such immunity in
respect of its obligations under this Agreement and the other Facility
Documents.
24. THIS AGREEMENT SHALL BE GOVERNED BY, AND INTERPRETED AND CONSTRUED
IN ACCORDANCE WITH, THE LAW OF THE STATE OF NEW YORK, WITHOUT GIVING EFFECT TO
THE CONFLICTS OF LAW PRINCIPLES THEREOF.
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25. This Agreement may be executed in any number of counterparts, all
of which taken together shall constitute one and the same instrument, and any
party hereto may execute this Agreement by signing any such counterpart.
26. Notwithstanding anything to the contrary contained in this
Agreement, the Company may abandon and shall not be required to make filings or
take any other actions to maintain or preserve or enforce or protect, and shall
not be liable for any costs of suits brought by Agent with respect to, any
Trademark which in the reasonable business judgment of the Company is no longer
useful or of any material value to the conduct of the Business.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
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WITNESS, the execution hereof under seal as of the day and year first
above written.
CROSS MEDIA MARKETING CORPORATION
By:
------------------------------------
Name:
----------------------------------
Title:
---------------------------------
ATTEST:
----------------------------
, Secretary
[Corporate Seal]
ACCEPTED:
FLEET NATIONAL BANK, as Agent ("Agent")
By:
------------------------------------
Name:
----------------------------------
Title:
---------------------------------
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STATE OF NEW YORK )
)
COUNTY OF NEW YORK )
BEFORE ME, the undersigned authority, on this day personally appeared
________________________________ of CROSS MEDIA MARKETING CORPORATION, to me
known to be the person whose name is subscribed to the foregoing instrument, and
acknowledged to me that he executed the same for the purposes and consideration
therein expressed, in the capacity therein stated, and as the act and deed of
said corporation.
GIVEN UNDER MY HAND AND SEAL OF OFFICE on this __ day of March, 2002.
----------------------------
Notary Public
STATE OF )
)
COUNTY OF )
BEFORE ME, the undersigned authority, on this day personally appeared
_________________________ of FLEET NATIONAL BANK, known to me to be the person
whose name is subscribed to the foregoing instrument, and acknowledged to me
that he executed the same for the purposes and consideration therein expressed,
in the capacity therein stated, and as the act and deed of said corporation.
GIVEN UNDER MY HAND AND SEAL OF OFFICE on this __ day of March, 2002.
----------------------------
Notary Public
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EXHIBIT A
TRADEMARKS
TRADEMARK JURISDICTION REGISTRATION NO.
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EXHIBIT B
CERTIFICATE
The undersigned officer of CROSS MEDIA MARKETING CORPORATION (the
"Company") DOES HEREBY CERTIFY to FLEET NATIONAL BANK ("Agent") as agent for
itself and certain other financial institutions ("Lenders") as are parties from
time to time to the Credit Agreement among Agent, the Company, the other
borrowers noted therein and Lenders, that the quality of the products and/or
services associated with the Trademarks listed on Exhibit A of the Trademark
Security Agreement dated March 19, 2002 between the Company and Agent (as
amended from time to time to include future trademarks and trademark
applications) (the "Agreement"), has been maintained at a level consistent with
the quality of such products and/or services at the time of the execution of the
Agreement. IN WITNESS WHEREOF, the undersigned has executed this Certificate
this ___ day of March, 2002.
CROSS MEDIA MARKETING CORPORATION
By:
------------------------------------
Name:
----------------------------------
Title:
---------------------------------
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