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Exhibit: 10.47FT
COLLATERAL ASSIGNMENT OF TRADEMARKS
THIS COLLATERAL ASSIGNMENT OF TRADEMARKS (the "Assignment"), dated as
of March 31, 1998 is by and between FUTECH INTERACTIVE PRODUCTS, INC., a
Minnesota corporation (the "Assignor") and U.S. BANCORP REPUBLIC COMMERCIAL
FINANCE, INC., a Minnesota corporation (the "Assignee").
WITNESSETH
WHEREAS, the Assignor and the Assignee have entered into a Financing
Agreement of even date herewith (the "Financing Agreement"), pursuant to which
the Assignee has agreed to extend certain credit accommodations to the Assignor
under the terms and conditions set forth therein (unless otherwise defined
herein, all capitalized term used herein shall have the meaning given such terms
in the Financing Agreement);
WHEREAS, the Assignor has pledged and granted to the Assignee a
security interest in the property described in a Security Agreement of even date
herewith (the "Security Agreement") by and between Assignor and Assignee which
property includes general intangibles, including, without limitation,
applications for patents, applications for trademarks, trade names, copyrights,
patents, inventions and trade secrets;
WHEREAS, the Assignor owns certain businesses which have adopted and
used the trademarks and trade names set forth in Exhibit A attached hereto, and
the trademarks so listed are registered or application has been made for such
registration as noted in Exhibit A in the United States Patent and Trademark
Office; and
WHEREAS, in order to induce the Assignee to enter into the Financing
Agreement and the Security Agreement and extend the credit accommodations to the
Assignor thereunder, and in order to secure the payment and performance of (a)
all indebtedness, liabilities and obligations of the Assignor to the Assignee of
every kind, nature or description under the Financing Agreement, (b) all
liabilities of the Assignor under this Agreement or any other Loan Document, and
(c) any and all liabilities and obligations of the Assignor to the Assignee of
every kind, nature and description, whether direct or indirect or hereafter
acquired by the Assignee from any Person, absolute or contingent, regardless of
how such liabilities arise or by what agreement or instrument they may be
evidenced, and in all of the foregoing cases whether due or to become due, and
whether now existing or hereafter arising or incurred (the "Liabilities"), the
Assignor is willing to enter into this Assignment.
NOW, THEREFORE, in consideration of the premises and to induce the
Assignee to extend credit accommodations under the Financing Agreement, the
parties hereto agree as follows:
1. The Assignor does hereby assign all of its right, title and interest
in and to all of the present trademarks, trade names and servicemarks and the
registrations and applications therefor owned by the Assignor (the
"Trademarks"), including but not limited to those set forth on Exhibit A, and
including, without limitation, all proceeds thereof together with the right to
recover for past, present and future infringements, all rights corresponding
thereto throughout the world and all renewals and extensions thereof, together
with the goodwill of the business associated with said Trademarks, said
Trademarks to be held and enjoyed by the Assignee for its own use and
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behalf, and for its legal representatives, successors and assigns, as fully and
entirely as the same would have been held by the Assignor had this Assignment
not been made. The foregoing assignment shall be effective only upon the
occurrence of an Event of Default under the Security Agreement and upon written
notice by the Assignee to the Assignor of the acceptance by the Assignee of this
Assignment; unless and until the acceptance of this Assignment, this Assignment
shall have no effect. After the occurrence and continuation of an Event of
Default under the Security Agreement, the Assignee shall be entitled to transfer
the Trademarks pursuant to an Assignment of Trademarks substantially in the form
of Exhibit B. The Assignor hereby irrevocably authorizes the Assignee to date
undated Assignments of Trademarks and otherwise complete such Assignment at the
time of transfer.
2. The Assignor hereby covenants and warrants that:
(a) except for applications pending, to the best of the
Assignor's knowledge, the Trademarks listed on Exhibit A have been duly
issued and are registered and subsisting and have not been adjudged
invalid or unenforceable in whole or in part;
(b) to the best of the Assignor's knowledge, each of the
Trademarks and listed on Exhibit A is valid and enforceable;
(c) no claim has been made to the Assignor or, to the
knowledge of the Assignor, to any other person, that use of any of the
Trademarks does or may violate the rights of any third person and no
claim has been made by the Assignor that any other person is infringing
upon the rights of the Assignor under the Trademarks;
(d) the Assignor has the unqualified right to enter into this
Assignment and perform its terms;
(e) the Assignor will be, until the Liabilities shall have
been satisfied in full and the Loan Documents shall have been
terminated, in substantial compliance with statutory notice
requirements relating to its use of the Trademarks;
(f) to the best of the Assignor's knowledge, the Assignor is
the sole and exclusive owner of the entire and unencumbered right,
title and interest in and to each of the Trademarks listed on Exhibit
A, free and clear of any liens, charges and encumbrances, including
without limitation, licenses and covenants by the Assignor not to xxx
third persons;
(g) the Trademarks listed on Exhibit A are all of the United
States Trademarks Registrations and applications therefor now owned by
the Assignor; and
(h) the Assignor will, at any time upon request, communicate
to the Assignee, its successors and assigns, any facts relating to the
Trademarks or the history thereof as may be known to the Assignor or
its officers, employees and agents, and cause such officers, employees
and agents to testify as to the same in any infringement or other
litigation at the request of the Assignee.
3. The Assignor agrees that, until the rights of the Assignee
in the Trademarks are terminated pursuant to Section 6, it will not enter into
any agreement that is in conflict with its obligations under this Assignment.
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4. If, before the Liabilities shall have been satisfied in full, the
Assignor shall obtain rights to any new trademark, trade name or servicemark, or
become entitled to the benefit of any trademark application, registration,
trademark, trade name or servicemark or any renewal or extension of any
trademark registration, such shall be included in the definition of "Trademarks"
as used in this Assignment (except for purposes of Section 2 hereof), Section 1
hereof shall automatically apply thereto, and the Assignor shall give to the
Assignee prompt notice thereof in writing. The Assignor authorizes the Assignee
to modify this Assignment by amending Exhibit A to include any future trademark
or trade name.
5. The Assignor agrees not to sell, assign or encumber its interest in,
or grant any license with respect to, any of the Trademarks, except for the
licenses listed on Exhibit C attached hereto.
6. The Assignor agrees that it will authorize, execute and deliver to
Assignee all documents requested by Assignee to facilitate the purposes of this
Assignment, including, but not limited to, documents required to record
Assignee's interest in any appropriate office in any domestic or foreign
jurisdiction. At such time as the Financing Agreement and the other Loan
Documents shall have been terminated in accordance with their terms, the
Assignee shall on demand of the Assignor execute and deliver to the Assignor all
termination statements and other instruments as may be necessary or proper to
terminate this Assignment and assign to the Assignor all the Assignee's rights
in the Trademarks, subject to any disposition thereof which may have been made
by the Assignee pursuant hereto or pursuant to the Loan Documents.
7. The Assignor shall have the duty, through counsel reasonably
acceptable to the Assignee, (i) to prosecute diligently any pending Trademark
application as of the date of this Assignment or thereafter until the Financing
Agreement and the Loan Documents shall have been terminated in accordance with
their terms; provided, that the Assignor may abandon any such application upon
thirty days' written notice to the Assignee, (ii) to make application on those
trademarks and trade names which are unregistered but capable of being
registered and which a prudent person would reasonably cause to be registered
and (iii) to preserve and maintain all rights in all Trademarks which a prudent
person would reasonably preserve and maintain. Any expenses incurred in
connection with applications that constitute Trademarks shall be borne by the
Assignor. The Assignor shall not abandon any application presently pending that
constitutes a Trademark without the written consent of the Assignee.
8. The Assignee shall have the right but shall in no way be obligated
to bring suit in its own name to enforce or to defend the Trademarks and any
license thereunder if the Assignor has failed to bring such suit in
circumstances in which a prudent person would have brought such suit. The
Assignor shall at the request of the Assignee do any and all lawful acts and
execute any and all proper documents required by the Assignee in aid of such
enforcement or defense (including, without limitation, participation as a
plaintiff or defendant in any proceeding) and, if Assignor has failed to bring
such suit in circumstances in which a prudent person would have brought such
suit, the Assignor shall promptly, upon demand, reimburse and indemnify the
Assignee for all reasonable costs and expenses incurred by the Assignee in the
exercise of its rights under this Section.
9. This Assignment shall also serve to evidence the security interest
in the Trademarks granted by the Assignor to the Assignee pursuant to the
Security Agreement.
10. No course of dealing between the Assignor and the Assignee, failure
to exercise, nor any delay in exercising, on the part of the Assignee, with
respect to any right, power
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or privilege hereunder shall operate as a waiver thereof; nor shall any single
or partial exercise of any right, power or privilege hereunder preclude any
other or further exercise thereof or the exercise of any other right, power or
privilege.
11. All of the Assignee's rights and remedies with respect to the
Trademarks, whether established hereby, by any other agreements or by law shall
be cumulative and may be exercised singularly or concurrently.
12. This Assignment is subject to modification only by a writing signed
by the parties, except as provided in Section 4 hereof.
13. This Assignment shall inure to the benefit of and be binding upon
the respective successors and permitted assigns of the parties.
14. Upon payment in full of all Liabilities (other than Assignor's
unmatured indemnity obligations under any Loan Document) and the expiration of
any obligation of the Assignee to extend credit accommodations to the Assignor,
this Assignment shall terminate and all rights to the Trademarks shall revert to
the Assignor.
15. THIS ASSIGNMENT AND THE RIGHTS AND OBLIGATIONS OF THE PARTIES
HEREUNDER SHALL BE CONSTRUED IN ACCORDANCE WITH AND GOVERNED BY THE LAWS
(WITHOUT GIVING EFFECT TO THE CONFLICTS OF LAW PRINCIPLES THEREOF) OF (I) THE
UNITED STATES OF AMERICA AS TO RIGHTS AND INTERESTS HEREUNDER WHICH ARE
REGISTERED OR FOR THE REGISTRATION OF WHICH APPLICATION IS PENDING WITH THE
UNITED STATES PATENT AND TRADEMARK OFFICE AND (II) THE STATE OF MINNESOTA IN ALL
OTHER RESPECTS. WHENEVER POSSIBLE, EACH PROVISION OF THIS ASSIGNMENT AND ANY
OTHER STATEMENT, INSTRUMENT OR TRANSACTION CONTEMPLATED HEREBY OR RELATING
HERETO SHALL BE INTERPRETED IN SUCH MANNER AS TO BE EFFECTIVE AND VALID UNDER
APPLICABLE LAW, BUT IF ANY PROVISION OF THIS ASSIGNMENT OR ANY OTHER STATEMENT,
INSTRUMENT OR TRANSACTION CONTEMPLATED HEREBY OR RELATING HERETO SHALL BE HELD
TO BE PROHIBITED OR INVALID UNDER APPLICABLE LAW, SUCH PROVISION SHALL BE
INEFFECTIVE ONLY TO THE EXTENT OF SUCH PROHIBITION OR INVALIDITY, WITHOUT
INVALIDATING THE REMAINDER OF SUCH PROVISION OR THE REMAINING PROVISIONS OF THIS
ASSIGNMENT OR ANY OTHER STATEMENT, INSTRUMENT OR TRANSACTION CONTEMPLATED HEREBY
OR RELATING HERETO. IN THE EVENT OF ANY CONFLICT WITHIN, BETWEEN OR AMONG THE
PROVISIONS OF THIS ASSIGNMENT, ANY OTHER LOAN DOCUMENT OR ANY OTHER STATEMENT,
INSTRUMENT OR TRANSACTION CONTEMPLATED HEREBY OR THEREBY OR RELATING HERETO OR
THERETO, THOSE PROVISIONS GIVING THE ASSIGNEE THE GREATER RIGHT SHALL GOVERN.
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IN WITNESS WHEREOF, the Assignor has executed this instrument.
FUTECH INTERACTIVE PRODUCTS, INC.
By /s/ Xxxxxxx X. Xxxxx
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Title CEO
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EXHIBIT A TO
COLLATERAL ASSIGNMENT
OF TRADEMARKS
UNITED STATES TRADEMARKS
Xxxx Serial/Registration No. Registration Date Filing Date
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Talking Pages 75/432,307 2/11/98
International Class 28
Supplemental Register 1,923,092 9/26/95 8/30/93
Class 28
Futech 75/431,875 2/10/98
International Class 16
75/382,546 (Pending) 10/31/97
Class 16
Our Technology 75/199,891 (Pending) 11/15/96
Speaks For Itself Class 16
75/199,890 (Pending) 11/15/96
Class 28
Better Than A 2,082,289
Letter
Kinda Like A Card 75/212,891 Notice Of Allowance 12/13/96
10/21/97
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EXHIBIT B TO
COLLATERAL ASSIGNMENT OF TRADEMARKS
ASSIGNMENT OF TRADEMARKS
This Assignment having an effective date of _____________, 19_ is made
by and between FUTECH INTERACTIVE PRODUCTS, INC., located and doing business at
0000 Xxxxx 00xx, Xxxxx 000, Xxxxxxx, Xxxxxxx 00000-0000 ("Assignor") and
_______________________, a ____________________ corporation, located and doing
business at __________________ ("Assignee").
WHEREAS, Assignor has adopted and owns certain trademarks which are
registered in the U.S. Patent and Trademark Office or which are the subject of a
pending application in the U.S. Patent and Trademark Office (hereinafter the
"Marks") and,
WHEREAS, Assignee is desirous of acquiring the Marks and registration
therefor.
NOW THEREFORE, in consideration of and in exchange for good and
valuable consideration, the receipt of which is hereby acknowledged, Assignor
does hereby sell, assign and transfer unto Assignee, and its successors and
assigns, all of its right, title and interest in and to the Marks, and the
registrations and applications therefor, together with that part of the good
will of the business connected with the use of and symbolized by the Marks, and
including Assignor's entire right, title and interest in and to any and all
causes of action and rights of recovery for past infringement of the Marks.
Assignor hereby covenants that it has full right to convey the entire interest
herein assigned, and that it has not executed, and will not execute, any
agreements inconsistent herewith. Assignor hereby irrevocably authorizes U.S.
Bancorp Republic Commercial Finance, Inc. to date this undated Assignment and
otherwise complete this Assignment at the time of transfer.
IN WITNESS WHEREOF, the parties have executed this assignment as of the
dates identified below.
FUTECH INTERACTIVE PRODUCTS, INC.
Date:______________________________ By_______________________________
Title____________________________
_______________________(Assignee)
Date:______________________________ By_______________________________
Title:___________________________
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EXHIBIT C TO
COLLATERAL ASSIGNMENT
OF TRADEMARKS
EXISTING LICENSES
Licensee Date License Expires
None
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ASSIGNMENT OF TRADEMARKS
This Assignment having an effective date of March 31, 1998 is made by
and between FUTECH INTERACTIVE PRODUCTS, INC., located and doing business at
0000 Xxxxx 00xx, Xxxxx 000, Xxxxxxx, Xxxxxxx 00000-0000 ("Assignor")
and , a corporation, located and
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doing business at ("Assignee").
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WHEREAS, Assignor has adopted and owns certain trademarks which are
registered in the U.S. Patent and Trademark Office or which are the subject of a
pending application in the U.S. Patent and Trademark Office (hereinafter the
"Marks") and,
WHEREAS, Assignee is desirous of acquiring the Marks and registration
therefor.
NOW THEREFORE, in consideration of and in exchange for good and
valuable consideration, the receipt of which is hereby acknowledged, Assignor
does hereby sell, assign and transfer unto Assignee, and its successors and
assigns, all of its right, title and interest in and to the Marks, and the
registrations and applications therefor, together with that part of the good
will of the business connected with the use of and symbolized by the Marks, and
including Assignor's entire right, title and interest in and to any and all
causes of action and rights of recovery for past infringement of the Marks.
Assignor hereby covenants that it has full right to convey the entire interest
herein assigned, and that it has not executed, and will not execute, any
agreements inconsistent herewith. Assignor hereby irrevocably authorizes U.S.
Bancorp Republic Commercial Finance, Inc. to date this undated Assignment and
otherwise complete this Assignment at the time of transfer.
IN WITNESS WHEREOF, the parties have executed this assignment as of the
dates identified below.
FUTECH INTERACTIVE PRODUCTS, INC.
Date: 3/31/98 By /s/ Xxxxxxx X. Xxxxx
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Title CEO
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(Assignee)
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Date: By
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Title
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