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EXHIBIT 10.4
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement (the "AGREEMENT") made and entered
into this [__] day of [_______], 199[_], 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 terms of the Distribution Agreement, by and
between Licensor and Licensee, dated [ ], 1999 (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.
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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 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
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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 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
be terminated as follows:
(i) 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
(ii) 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
the alleged breach.
(b) Upon termination of this Agreement, Licensee agrees to
cease any and all use of the Marks, and all rights granted to Licensee shall
revert to Licensor. Licensee shall cease exploiting, including without
limitation, 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.
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9. Remedies. Licensee acknowledges that a breach of any of its
covenants, agreements or 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.
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
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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).
(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
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Xxxx Xxxxxxx, XX 00000
Attention: Xxxx X. Xxxxx, President
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:
-----------------------------------
Name:
Title:
TENDER LOVING CARE HEALTH CARE
SERVICES, INC.
By:
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Name:
Title:
.
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SCHEDULE 1
REGISTERED TRADEMARKS
TRADEMARKS
REGISTRATION DATE OF EXPIRATION
TRADEMARK OWNERSHIP NUMBER REGISTRATION DATE
--------- --------- ------------ ------------ -------
Staff Builders Staff Builders, Inc. #1,524,789 02/14/89 02/14/09
Outline of Human Figures Staff Builders, Inc. #849,595 08/16/88 08/16/08
X-0-0
0
XXXXXXXX 0
XXXXX
Xxxxxxxx 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.
S-3-1
