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EXHIBIT 10.4
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement (the "Agreement") made and entered
into this 20th day of October, 1999, by and between STAFF BUILDERS, INC., a
Delaware corporation ("LICENSOR"), and TENDER LOVING CARE HEALTH CARE SERVICES,
INC., a Delaware corporation (("LICENSEE").
W I T N E S S E T H:
WHEREAS, Licensee is the assignor of certain rights in the service
marks set forth on Schedule 1 hereto (collectively the "MARKS"); and
WHEREAS, Licensor is the assignee of the rights of Assignor in said
Marks by way of an Assignment executed contemporaneously herewith; and
WHEREAS, pursuant to the term of the Distribution Agreement, by and
between Licensor and Licensee, dated the date hereof (the "DISTRIBUTION
AGREEMENT"), Licensor will grant an exclusive license to Licensee to use the
Marks in connection with Licensee's home health care business (the "HOME HEALTH
CARE BUSINESS"), subject to the terms and conditions below
NOW, THEREFORE, in consideration of the premises and the mutual
promises set forth herein and in the Distribution Agreement, and other good and
valuable consideration, receipt of which the parties acknowledge, the parties
agree as follows:
1. License Grant Subject to the terms and conditions of this Agreement,
Licensor hereby grants to Licensee an exclusive, royalty-free, license to use
the Marks worldwide solely in connection with Licensee's services offered as
part of its Home Health Care Business, including related advertising and
promotion. All rights licenses and privileges not specifically granted herein
are excluded from this Agreement and reserved by Licensor. Licensor hereby
represents and warrants to Licensee that, except as set forth on Schedule 2
attached hereto, Licensor owns the marks free and clear of any and all liens,
licenses or other encumbrances.
2. Sublicense. Licensee may sublicense its rights hereunder to any of
its subsidiaries in existence on the date hereof and, with the prior written
consent of Licensor, to any subsidiaries hereafter established or acquired. No
such sublicense shall relieve Licensee from any of its obligations hereunder.
3. Costs. Subject to Section 10 hereof, all registration and
maintenance costs of the Marks, insofar as such costs relate to the Home Health
Care Business, shall be born by Licensee.
4. Quality Standards.
(a) Licensee shall take such action as is reasonably
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necessary to maintain the high-quality, value and integrity of the marks and to
refrain from taking any action likely to diminish or detract from any Mark's
value. Licensee shall insure that its use of the Marks does not tarnish or bring
into dispute the Marks.
(b) Without limiting the foregoing, Licensee represents, warrants, and
agrees that it will, at all times, operate its business and sell, offer,
advertise, distribute or otherwise exploit the Marks in compliance with all
laws, rules and regulations, including without limitation any decision, order or
administrative action or guidance of any governmental or regulatory authority.
5. Display. Licensee shall be free to display the Marks in such forms
or manners as Licensee may choose, provided that any such use shall be of a kind
and quality which does not materially detract from the value of the Marks.
Licensee shall cause to appear on all written materials on or in connection with
which the marks are used, such legends, markings and notices as Licensor may
reasonable prescribe in order to give appropriate notices of any trademark
usage, registration or ownership rights.
6. Ownership. As between the parties, Licensor, or its successors or
assigns shall own all right, title and interest, including the goodwill related
thereto, in and to the Marks. Licensee shall not acquire any ownership interest
in the Marks whatsoever and Licensee's use of the Marks shall inure to
Licensor's benefit. Licensee shall fully cooperate with Licensor in connection
with any matters pertaining to the protection or enforcement of Licensor's
rights in the Marks, including, without limitation, providing access to and
copies of any records, files or other information pertaining to the exploitation
of the Marks. Licensee shall promptly execute any documents reasonably requested
by Licensor to confirm or establish Licensor's ownership of all rights in the
Marks, failing which Licensor is hereby appointed, as Licensee's
attorney-in-fact to execute such documents. Licensee agrees that it shall not,
register or attempt to register the Marks (or a logo, xxxx or other design
confusingly similar to the marks) without the prior written consent of Licensor.
Licensee further agrees that it shall not contest or assist any other party in
contesting the validity of Licensor's ownership of the Marks anywhere in the
world.
7. Infringement Proceedings.
(a) Licensee shall promptly notify Licensor of any Infringement,
imitation or unauthorized use of the Marks or any xxxx substantially similar to
a xxxx in connection with a business substantially similar to the Home Health
Care Business which comes to its attention. Licensor shall take such action as
it deems advisable, and Licensee shall fully cooperate with Licensor.
(b) If Licensor does not take such action to stop an infringement,
imitation or unauthorized use within 30 days of receipt of a Licensee's
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initial notice regarding the same, then Licensee may take such action, in which
case Licensor shall cooperate with Licensee, but all expenses shall be born by
Licensee. In the event Licensee takes any action, Licensor shall have the right
to take control of such action upon notice to Licensee.
(c) The party prosecuting the action shall be entitled to the proceeds
from any settlement or damages award. If both parties prosecute such action,
then such settlement or award shall be shared equally, after first deducting
both parties' legal expenses.
8. Term and Termination.
(a) This Agreement shall automatically terminate in the event Licensee
ceases using the Marks in connection with the Home Health Care Business for
longer than one year. Without limiting the foregoing, this Agreement shall
Determinate as follows:
upon 30 days' prior written notice to Licensee, if Licensee commits a material
breach of this Agreement which is not cured to the reasonable satisfaction of
Licensor within the 30-day period following delivery of the notice. The notice
must describe in reasonable detail the alleged breach; or
upon 30 days' prior written notice to Licensor, if Licensor commits a material
breach of this Agreement which such breach is not cured to the reasonable
satisfaction of Licensee within the 30-day period following delivery of the
notice. The notice must describe in reasonable detail alleged breach.
(b) Upon termination of this Agreement, Licensee agrees to lease any
and all use of the Marks, and all rights granted to Licensee shall revert to
Licensor. Licensee shall cease exploiting, including without imitation,
printing, manufacturing, distributing or selling, any materials bearing the
Marks. Upon Licensor's request, Licensee shall destroy or efface any Materials
bearing the Marks which are in the possession of Licensee. Licensee shall
provide Licensor with a certificate signed by an officer of Licensee attesting
to such destruction or effacement.
9. Remedies. Licensee acknowledges that a breach of any of its
covenants, agreements of undertakings hereunder or its failure to cease all use
of the Marks upon the termination or expiration of this Agreement will cause
immediate and irreparable damage to Licensor and the rights of any subsequent
licensee of Licensor. Licensee acknowledges that no adequate remedy at law
exists for failure to cease such activities and Licensee agrees that in the
event of such failure, Licensor shall be entitled to injunctive relief and such
other relief as any court with jurisdiction may deem just and proper.
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10. Indemnification.
(a) Licensee agrees to indemnify, hold harmless and defend Licensor,
its affiliates and its and their officers, directors and employees from and
against all suits, actions, claims, damages, liabilities, costs and expenses
(including but not limited to claims of infringement of any intellectual
property right, and including without limitation, settlement costs and legal and
accounting and other expenses incurred in connection therewith), or other
damages of any kind or nature arising out of or connected with (i) the use of
the Marks by Licensee or its sublicensees, (ii) the use of goods or services
bearing the Marks, including any advertising, promotion or distribution of such
goods or services, or (iii) any breach by Licensee of any covenant,
representation, warranty or other provision of this Agreement.
(b) Licensor agrees to indemnify, hold harmless and defend Licensee,
its affiliates and its and their officers, directors and employees from and
against all suits, actions, claims, damages, liabilities, costs and expenses
(including, without limitation, settlement costs and legal and accounting and
other expenses incurred in connection therewith), or other damages of any kind
or nature arising out of or connected with-any breach by Licensor of any
covenant, representation, warranty or other provision of this Agreement.
(c) If any party entitled to indemnification hereunder (an
"INDEMNITEE") shall receive notice or otherwise learn of the assertion of any
claim or of the commencement of any action (collectively, a "THIRD PARTY CLAIM")
with respect to which any party (an "INDEMNIFYING PARTY") may be obligated to
provide indemnification to such Indemnitee pursuant to Section 10(a) or 10(b),
the Indemnitee shall give such Indemnifying Party written notice thereof within
twenty (20) days after becoming aware of such Third Party Claim. Any such notice
shall describe the Third Party Claim in reasonable detail. Notwithstanding the
foregoing, the failure of any Indemnitee to give notice as provided in this
Section 10(c) shall not relieve the Indemnifying Party of its obligations under
this Section 10, except to the extent that such Indemnifying Party is actually
prejudiced by such failure to give notice.
(d) An Indemnifying Party may elect to defend (and, unless the
Indemnifying Party has specified any reservations or exceptions, to seek to
settle or compromise), at such Indemnifying Party's own expense and by such
Indemnifying Party's own counsel, any Third Party Claim. Within thirty (30) days
after the receipt of notice from an Indemnitee in accordance with Section 10(c)
(or sooner, if the nature of such Third Party Claim so requires), the
Indemnifying Party shall notify the Indemnitee of its election whether or not to
defend such Third Party Claim, which election shall specify any reservations or
exceptions. After notice from an Indemnifying Party to an Indemnitee of its
election to assume the defense of a Third Party Claim, such Indemnitee shall
have the right to employ separate counsel and to participate in (but not
control) the defense, compromise, or settlement thereof, but the fees and
expenses of such counsel shall be the expense of such Indemnitee except as set
forth in Section 10(e).
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(e) If an Indemnifying Party elects not to assume responsibility for
defending a Third Party Claim, or fails to notify an Indemnitee of its election
as provided in Section 10(d), such Indemnitee may defend such Third Party Claim
at the cost and expense (including allocated costs of in-house counsel and other
personnel) of the Indemnifying Party.
(f) An Indemnitee may not settle or compromise any Third Party Claim
without the consent of the Indemnifying Party (not to be unreasonably withheld
if the settlement or compromise relates to money damages only). Without limiting
the forgoing, an Indemnifying Party shall not consent to entry of any judgment
or enter into any settlement of the Third Party Claim without the consent of the
Indemnitee if the effect thereof is to permit any injunction, declaratory
judgment, other order or other nonmonetary relief to be entered, directly or
indirectly, against any Indemnitee.
(g) This Section 10 shall survive any termination of this Agreement.
11. Assignment. This Agreement shall be binding upon and inure to the
benefit of the parties hereto and their successors and permitted assigns. Except
as provided in Section 2 hereof, Licensee may not assign, transfer or delegate
any of its rights or obligations under this Agreement without the prior written
approval of Licensor. Any assignment, transfer or delegation, including as a
result of a change in control, stock transfer or merger, that occurs without
Licensor's prior written consent shall be void ab initio and deemed a material
breach of this Agreement.
12. Notices. Notices between the parties must be in writing. A notice
shall be deemed duly given upon receipt if it is sent by personal delivery,
prepaid certified or registered mail, by a nationally known overnight courier
service (e.g., Federal Express), or by facsimile with receipt confirmed by
written return facsimile to the parties at the following addresses (or at such
other address as shall be specified by like notice):
If to Licensor:
STAFF BUILDERS, INC.
0000 Xxxxxx Xxxxxx
Xxxx Xxxxxxx, XX 00000
Attention: Xxxxx Xxxxxxxx, President
If to Licensee:
Tender Loving Care Health Care Services, Inc.
0000 Xxxxxx Xxxxxx
Xxxx Xxxxxxx, XX 00000
Attention: Xxxx X. Xxxxx, President
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13. Waiver. The failure of either party to insist upon strict
compliance with any provision hereof shall not constitute a waiver or
modification of such provision or any other provision.
14. Severability. If any provision, in part or in whole, of this
Agreement is held to be void or unenforceable by a court of competent
jurisdiction, the remaining provisions and the remaining portion of any
provision held void or unenforceable in part will continue in full force and
effect.
15. Governing Law. This Agreement is governed by New York law. United
States state or Federal courts situated in New York, New York shall have sole
jurisdiction and venue for the resolution of all disputes arising hereunder and.
the parties hereto irrevocably submit to such jurisdiction and venue. Each party
irrevocably waives any objection it may have to the venue or any action, suit or
proceeding brought in such courts or to the convenience of the forum or the
right to proceed in any other jurisdiction.
16. Entire Agreement. This Agreement constitutes the entire agreement,
and supersede all prior Agreements (oral or written), between the parties with
respect to the use of the Marks by Licensee. This Agreement may only be amended
or modified by a writing signed by the party against whom enforcement of the
amendment or modification is sought.
17. Counterparts. This Agreement may be executed in counterparts, all
of which, taken together shall constitute one agreement.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement on
the date first written above.
STAFF BUILDERS, INC.
By: /s/ Xxxxxxx Xxxxxxxx
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Name: Xxxxxxx Xxxxxxxx
Title: Chairman of the
Board and Chief
Executive Officer
TENDER LOVING CARE HEALTH
CARE SERVICES, INC.
By: /s/ Xxxx X. Xxxxx
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Name: Xxxx X. Xxxxx
Title: President and
Chief Operating
Officer
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SCHEDULE 1
REGISTERED TRADEMARKS
TRADEMARKS
---------------------------------- -------------------- -------------------- -------------------- --------------------
TRADEMARK OWNERSHIP REGISTRATION DATE OF EXPIRATION
NUMBER REGISTRATION DATE
---------------------------------- -------------------- -------------------- -------------------- --------------------
Staff Builders Staff Builders, 1,524,789 02/14/89 02/14/09
Inc.
---------------------------------- -------------------- -------------------- -------------------- --------------------
Outline of Human Figures Staff Builders, 849,595 08/16/88 08/16/08
Inc.
---------------------------------- -------------------- -------------------- -------------------- --------------------
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SCHEDULE 2
LIENS
Pursuant to the terms of Licensor's current credit facility with Mellon
Bank, the bank holds a lien all assets of Licensor, including all rights and
interests in the Marks.
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