AMENDED AND RESTATED PATENT AND TRADEMARK SECURITY AGREEMENT
Exhibit 10.9
AMENDED AND RESTATED PATENT AND TRADEMARK SECURITY
AGREEMENT
This Amended and Restated Patent and Trademark Security Agreement dated as of March 31, 2010 (the “Patent and Trademark Security Agreement”) is made by Flotek Industries, Inc., a Delaware corporation (the “Debtor”) and each subsidiary of the Debtor signatory hereto (together with the Debtor, the “Grantors” and individually, a “Grantor”), in favor of the Secured Parties (as defined herein).
Preliminary Statement
Debtor is a party to the Amended and Restated Credit Agreement dated as of March 31, 2010 (as amended or otherwise modified from time to time, the “Credit Agreement”) among Debtor, the lenders party thereto from time to time (the “Lenders”), and Whitebox Advisors LLC, in its capacity as administrative agent (the “Administrative Agent”).
Grantors own the patents, patent registration, patent applications, trademarks, trademark registrations, and trademark applications, and are parties to the patent and trademark licenses listed on Schedule I attached hereto and by this reference incorporated herein.
In connection with the Credit Agreement, the Grantors entered into an Amended and Restated Pledge and Security Agreement of even date herewith (as amended or otherwise modified from time to time, the “Pledge and Security Agreement”) in favor of the Administrative Agent for the benefit of the Secured Parties (as defined in the Pledge and Security Agreement), pursuant to which the Grantors have granted to the Administrative Agent a security interest in all right, title and interest of the Grantors in and to the Intellectual Property Collateral, as such term is defined in the Pledge and Security Agreement, including, without limitation, all right, title and interest of Grantors, in, to, and under all now owned and hereafter acquired Patent Collateral and Trademark Collateral (each as defined in the Pledge and Security Agreement), set forth on Schedule I attached hereto, to secure the prompt payment, performance and observance of the Secured Obligations (as defined in the Pledge and Security Agreement).
Agreement
NOW, THEREFORE, for good and valuable consideration, receipt of which is hereby acknowledged, Grantors do hereby further confirm, and put on the public record, their grant to the Administrative Agent of a security interest in, to, and under the following, whether presently existing or hereafter created or acquired (collectively, the “Patent and Trademark Collateral”);
(a) (i) all inventions and discoveries, whether patentable or not, all letters patent and applications for letters patent throughout the world, including but not limited to all the property set forth as “Patents” on Schedule I hereto, and any patent applications in preparation for filing, (ii) all reissues, divisions, continuations, continuations-in-part, extensions, renewals and reexaminations of any of the items described in clause (i), and (iii) all patent licenses, and other agreements providing any Grantor with the right to use any items of the type referred to in clauses (i) and (ii) above;
(b) (i) all trademarks, trade names, corporate names, company names, business names, fictitious business names, trade styles, service marks, certification marks, collective marks, logos and other source or business identifiers, and all goodwill of the business associated therewith, now existing or hereafter adopted or acquired, including but not limited to all of the property set forth as “Trademarks” on Schedule I hereto, whether currently in use or not, all registrations and recordings thereof and all applications in connection therewith, whether pending or in preparation for filing, including registrations, recordings and applications in the United States Patent and Trademark Office or in any office or agency of the United States of America, or any State thereof or any other country or political subdivision thereof or otherwise, and all common-law rights relating to the foregoing, (ii) the right to obtain all reissues, extensions or renewals of the foregoing, (iii) all trademark licenses for the grant by or to any Grantor of any right to use any trademark, and (iv) all of the goodwill of the business connected with the use of, and symbolized by the items described in, clauses (i) and (ii), and to the extent applicable clause (iii); and
(c) all products and proceeds of the foregoing, and rights associated therewith, including, without limitation, licenses, royalties income, payments, claims, damages and proceeds of infringement suits, any claim by Grantors against third parties for past, present or future (i) infringement or dilution of any patent, trademark, or patent or trademark registrations or licenses referred to herein, the patent or trademark registrations issued with respect to the patent or trademark applications referred to herein and the trademarks licensed under any trademark license, or (ii) injury to the goodwill associated with any patent, trademark, patent or trademark registration, or patent or trademark licensed under any patent or trademark license.
This Patent and Trademark Security Agreement constitutes an amendment to, and a complete restatement of, the Patent and Trademark Security Agreement dated as of March 31, 2008, between the Borrower and certain Secured Parties (as defined therein and herein referred to as the “Original Secured Parties”). All right, title and interest of the Original Secured Parties in and to the Patent and Trademark Collateral was assigned by the Original Secured Parties to the Administrative Agent and certain other Lenders and/or Affiliates of the Administrative Agent pursuant to the Nonrecourse Assignment Agreement (Syndicated Facility) dated March 17, 2010.
This security interest is granted in conjunction with the security interests granted to Secured Parties pursuant to the Pledge and Security Agreement. Grantors hereby acknowledge and affirm that the rights and remedies of Secured Parties with respect to the security interest in the Patent and Trademark Collateral made and granted hereby are more fully set forth in the Pledge and Security Agreement, the terms and provisions of which are incorporated by reference herein as if fully set forth herein.
[Signatures on following page]
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IN WITNESS WHEREOF, each of the parties hereto has caused this Patent and Trademark Security Agreement to be duly executed and delivered by its authorized officer as of the date first above written.
GRANTORS: | ||
FLOTEK INDUSTRIES, INC. | ||
By | /s/ Xxxx Xxxxxxxx | |
Xxxx Xxxxxxxx | ||
President | ||
TELEDRIFT COMPANY FLOTEK PAYMASTER, INC. MATERIAL TRANSLOGISTICS, INC. PETROVALVE, INC. TURBECO, INC. USA PETROVALVE, INC. FLOTEK INTERNATIONAL, INC. PADKO INTERNATIONAL INCORPORATED FLOTEK ECUADOR MANAGEMENT, LLC FLOTEK ECUADOR INVESTMENTS, LLC |
By | /s/ Xxxx Xxxxxxxx | |
Xxxx Xxxxxxxx | ||
President | ||
CESI CHEMICAL, INC. CESI MANUFACTURING, LLC SOONER ENERGY SERVICES, LLC |
By | /s/ Xxxx Xxxxxxxx | |
Xxxx Xxxxxxxx | ||
Chief Executive Officer | ||
FLOTEK INDUSTRIES FZE |
By | /s/ Xxxx Xxxxxxxx | |
Xxxx Xxxxxxxx | ||
President |
Signature Page to Amended and Restated Patent and Trademark Security Agreement
SCHEDULE I
TO
PATENT AND TRADEMARK SECURITY AGREEMENT
Item A. | Patent Collateral |
Issued Patents
Country |
Serial No. |
Filing Date |
Inventor(s) |
Title | ||||
USA |
6,533,034 | 3/18/2003 | Xxxx Xxxxxx | Centralized Stop Collar for Floating Centralizer | ||||
USA |
5,829,952 | 11/3/1998 | Xxxxxx X. Xxxxxxx | Check Valve with Reversible Valve Ball and Seat | ||||
Canada |
2,017,405 | 2/21/1995 | Ball and Seat-Type Valve for Downhole Rod Pump | |||||
Canada |
2,478,433 | 12/8/2009 | Xxxx X. Xxxxxxx, Xxxxx X. Xxxxxxx and Xxxxx X. Xxxxx | Composition and Process for Well Cleaning | ||||
Venezuela |
52500 | 10/7/1994 | Ball and Seat-Type Valve for Downhole Rod Pump | |||||
USA |
6,761,215 | 7/13/2004 | Xxxxx Xxxx Xxxxxxxx and Xxx Xxxxxxxx, III | Downhole Separator Method | ||||
China (Peoples Republic) |
ZL03824239.7 | 7/18/2007 | Downhole Separator and Method | |||||
Eurasian Patent Organization |
007040 | 8/18/2006 | Downhole Separator and Method |
Schedule I to Amended and Restated Patent and Trademark Security Agreement
Country |
Serial No. |
Filing Date |
Inventor(s) |
Title | ||||
USA |
7,122,509 | 10/17/2006 | Xxxx Xxxx Xxxxxx, Xxxxx X. Xxxxx and Xxxxx Xxxxxxx | High Temperature Foamer Formulations for Downhole Injection | ||||
USA |
7,544,639 | 6/9/2009 | Xxxx X. Xxxxxxx, Xxxxx X. Xxxxxxx and Xxxxx X. Xxxxx | Composition and Process for the Treatment of Hydrogen Sulfide | ||||
USA |
7,380,606 | 6/3/2008 | Xxxx X. Xxxxxxx, Xxxxx X. Xxxxxxx and Xxxxx X. Xxxxx | Composition and Process for Well Cleaning | ||||
Australia |
2003278716 | 1/8/2009 | Downhole Separator and Method |
Pending Patent Applications
Country |
Serial No. |
Filing Date |
Inventor(s) |
Title | ||||
Patent Cooperation Treaty |
PCTUS9602445 | 2/23/1996 | Improved Valve Plunger for a Ball and Seat-Type Check Valve | |||||
Canada |
2,497,929 | 8/20/2003 | Downhole Separator and Method |
Schedule I to Amended and Restated Patent and Trademark Security Agreement
Country |
Serial No. |
Filing Date |
Inventor(s) |
Title | ||||
Patent Cooperation Treaty/European Patent Office |
03716227.8 | 2/28/2003 | Xxxx X. Xxxxxxx, Xxxxx X. Xxxxxxx and Xxxxx X. Xxxxx | Composition and Process for Well Cleaning | ||||
Patent Cooperation Treaty/Norwegian National |
2004 4148 | 2/28/2003 | Xxxx X. Xxxxxxx, Xxxxx X. Xxxxxxx and Xxxxx X. Xxxxx | Composition and Process for Well Cleaning | ||||
USA |
339,248
Abandoned |
1/25/2006 | Xxxxxxx X. Xxxxxxxxx | Method of Treating a Subterranean Formation in the Presence of Ferric Ions and/or Sulfide Ions | ||||
USA |
518,648 | 9/11/2006 | Xxxxx Xxxxxxx and Xxxxxxx X. Xxx | Measurement While Drilling Apparatus and Method of Using the Same | ||||
Patent Cooperation Treaty |
Publication No. WO/2007/033126 | 9/12/2006 | Measurement While Drilling Apparatus and Method of Using the Same | |||||
USA |
Application No. 12/156,201 | 5/30/2008 | Process for Well Cleaning | |||||
USA |
Application No. 12/268,408 | 11/10/2008 | Drag-Reducing Copolymer Compositions | |||||
USA |
Application No. 61/174,617 | 5/1/2009 | Low Friction Centralizer |
Schedule I to Amended and Restated Patent and Trademark Security Agreement
Country |
Serial No. |
Filing Date |
Inventor(s) |
Title | ||||
USA |
Application No. 12/618,535
Priority No. 61/114,125 |
11/13/2009 | Water-in-Oil Microemulsions for Oilfield Applications |
Patent Applications in Preparation
NONE.
Item B. | Trademark Collateral |
Trademarks
Country |
Trademark |
Registration No. |
Issue Date | |||
USA |
STIMLUBE | 3,620,715 | 5/12/2009 |
Trademark Applications in Preparation
Country |
Trademark | |
USA |
FLOTEK | |
USA |
PETROVALVE | |
USA |
CESI | |
USA |
“OPEN CIRCLE” SYMBOL |
Schedule I to Amended and Restated Patent and Trademark Security Agreement