AMENDED AND RESTATED TRADEMARK AND SYSTEM LICENSE AGREEMENT
AMENDED
AND RESTATED TRADEMARK AND SYSTEM LICENSE AGREEMENT (this “Agreement”),
dated
as of September 15, 2008, between Planet Beach Brands, LLC, a Louisiana Limited
Liability Company with its principal place of business at 000 Xxxxxxxxx, Xx.0,
Xxx Xxxxxxx, XX, 00000 (“Licensor”)
and
Planet Beach Franchising Corporation, a Nevada corporation (formerly a Louisiana
corporation) with its principal place of business at 0000 Xxxxxxxxx Xxxx,
Xxxxxxx, XX 00000 (“Licensee”).
Capitalized terms used and not otherwise defined herein shall have the meanings
ascribed to them in the Original Agreement (as defined below).
BACKGROUND
Licensor
and Licensee entered into a certain Trademark and System License Agreement
dated
as of April 10, 2007 (the “Original
Agreement”).
Under
the Original Agreement, Licensor licensed to Licensee a proprietary business
system for the distribution of Tanning and Spa Services and related products,
the distinguishing characteristics of which include recognized designs, color
schemes, copyrighted materials, management and operational procedures and
standards and specifications for product quality, store appearance and customer
services (collectively, the “System”).
Under
the Original Agreement, Licensor also licensed to licensee the xxxx “Planet
Beach” and other trademarks, service marks, logos and other indicia of origin
which Licensor has designated or may in the future designate for use in
connection with the System, including the marks listed on Attachment A hereto
(the “Proprietary
Marks”).
Licensor
and Licensee desire to amend and restate certain terms of the Original Agreement
to expand the rights granted to Licensee to use the Proprietary Marks and the
System in exchange for the issuance by Licensee to Licensor of 5,626,604 shares
of Series A Preferred Stock.
AGREEMENT
NOW,
THEREFORE,
in
consideration of the mutual premises and covenants contained herein, the
Original Agreement is amended and restated and the parties hereto agree as
follows:
1. Issuance
of Series A Preferred Stock; Investment Representations.
1.1 Issuance
of Series A Preferred Stock. In consideration of the expanded rights granted
to Licensee in this Agreement and for the additional payment by the Licensor
of
an amount equal to the par value for each share of Series A Preferred Stock
granted to the Licensor, Licensee shall immediately issue to the Licensor
5,626,604 shares (the “Shares”)
of the
Licensee’s Series A Preferred Stock.
1.2 Investment
Representations. Licensor represents and warrants to Licensee
that:
(a) Licensor,
or all of the Licensor’s stockholders, are “Accredited Investors” as defined in
Regulation D promulgated under the Securities Act of 1933, as amended (the
“Act”).
(b) The
Shares are being acquired by Licensor for its own account, for investment
purposes and not with a view to the sale or distribution of all or any part
of
the Shares, nor with any present intention to sell or in any way distribute
the
same, as those terms are used in the Act, and the rules and regulations
promulgated thereunder.
(c) Licensor
has sufficient knowledge and experience in financial matters so as to be capable
of evaluating the merits and risks of purchasing the Shares.
(d) Licensor
has reviewed copies of such documents and other information as Licensor has
deemed necessary in order to make an informed investment decision with respect
to its purchase of the Shares.
(e) Licensor
understands that the Shares may not be sold, transferred or otherwise disposed
of without registration under the Act or the availability of an exemption
therefrom and further understands that there are transfer restrictions contained
in the certificate of designations for the Shares that permit transfers only
in
very limited circumstances.
(f) Licensor
understands and has the financial capability of assuming the economic risk
of an
investment in the Shares for an indefinite period of time.
(g) Licensor
has been advised by the Licensee that Licensor will not be able to dispose
of
the Shares, or any interest therein, without first complying with the relevant
provisions of the Act and any applicable state securities laws and any other
applicable transfer restrictions.
(h) Licensor
understands that the provisions of Rule 144 promulgated under the Act,
permitting the routine sales of the securities of certain issuers subject to
the
terms and conditions thereof, are not currently, and may not hereafter be,
available with respect to the Shares.
(i) Licensor
acknowledges that the Seller is under no obligation to register the Shares
or to
furnish any information or take any other action to assist Licensor in complying
with the terms and conditions of any exemption which might be available under
the Act or any state securities laws with respect to sales of the Shares in
the
future.
2. Grant
of Rights.
Licensor
hereby grants to Licensee, subject to the following terms and conditions, an
exclusive, worldwide, royalty free, license (with right to sublicense) to use
the Proprietary Marks and the System as now designated or designated in the
future, and to license others to use the Proprietary Marks and the System as
franchisees of Licensee.
2
3. Term
and Termination.
3.1 The
term
of this Agreement is ten (10) years and shall automatically renew for successive
ten (10) year terms until terminated pursuant to the provisions
herein.
3.2 Licensor
may terminate this Agreement, if Licensee breaches this Agreement and fails
to
cure such breach within sixty (60) days following the receipt of written notice
from Licensor specifying in detail the nature of the breach.
3.3 Licensee
may terminate this Agreement at any time, with or without cause, upon sixty
(60)
days written notice to Licensor.
Upon
termination of this Agreement by either party, Licensor shall assume all of
Licensee’s rights and obligations regarding the Proprietary Marks and the System
under any franchise agreements then in effect.
4. Quality
Control.
4.1 Licensee
agrees that all goods sold and services performed under the Proprietary Marks
and the System shall be of a quality equal to or higher than the products it
presently sells under any other trademark. Licensor and its agents have the
right, during Licensee’s normal business hours, to inspect the premises in which
any services are rendered under the Proprietary Marks and the System and to
inspect and evaluate such services, at Licensor’s sole expense, to determine
whether such services comply with the quality control standards set forth
herein.
4.2 Licensor
has the right to approve of any proposed uses of the Proprietary Marks and
the
Systems by Licensee and its franchisees.
4.3 Licensor
has the right to review and approve all labeling, advertising, displays and
other items on which the Proprietary Marks appear prior to the use of such
items
by Licensee or its franchisees. Licensor acknowledges that if it does not
exercise its approval rights within fifteen (15) business days of the estimated
launch of an applicable advertising or labeling campaign, such advertising
or
labeling shall be deemed approved. Licensee agrees that it will not use, nor
permit its franchisees to use, any items which have been disapproved by
Licensor.
5. Duties
of Licensor and Licensee.
5.1 Licensee
acknowledges that Licensor is the owner of all right, title and interest in
and
to the Proprietary Marks and the System, including without limitation the marks
identified in Attachment A to this Agreement, and that Licensee’s use of the
Proprietary Marks and the System creates in Licensee no rights in said xxxx
other than those set forth herein.
5.2 Licensor
shall execute and maintain all documents, registrations, updates, maintenance
and renewals reasonably necessary at any time now or in the future to maintain
the continued validity or enforceability of and to fully effect and perfect
ownership and license rights in and to the Proprietary Marks and the System.
3
5.3 Licensee
shall not challenge or, directly or indirectly, assert any right, title or
interest in or to the Proprietary Marks and the System or any application for
registration or registration thereof.
5.4 At
the
request of Licensor, Licensee shall execute and deliver all documents which
Licensor deems reasonably necessary or appropriate to maintain any registration
Licensor has or may obtain of the Proprietary Marks and the System, or to
facilitate the making or granting of an application for registration of said
xxxx.
6. Enforcement/Litigation.
6.1 Licensee
agrees to inform Licensor promptly in writing of (a) any infringement or
instance of unfair competition of which Licensee may become aware involving
the
Proprietary Marks and the System, (b) any challenge to Licensee's use of
the Proprietary Marks and the System, and (c) any claim of which Licensee may
become aware by any person to any right in the Proprietary Marks and the System.
6.2 Licensee
acknowledges that, notwithstanding any provision of any franchise agreement,
Licensor has the right to direct and control any negotiation, administrative
proceeding, or litigation involving the Proprietary Marks or the System,
including any settlement thereof.
6.3 Notwithstanding
the foregoing, Licensor shall, upon written request by Licensee, take action
against uses by others that may constitute infringement of the Proprietary
Marks
and the System. Licensee shall assist and cooperate with Licensor by, among
other things, furnishing such documentary evidence and oral testimony relating
to Licensee's use of the Proprietary Marks and the System as Licensor may
request.
6.4 Except
to
the extent that litigation arises out of Licensee’s or its franchisee’s use of
the Proprietary Marks and the System in a manner not authorized by this
Agreement, Licensor agrees to reimburse Licensee and its franchisee for all
costs incurred by such defense of its rights under this Agreement.
7. Compliance
with Laws.
The
parties shall comply with all governmental laws, regulations, decrees and their
equivalent pertaining to the manufacturing, offering for sale, sale, advertising
and distribution of the goods and services pursuant to this
Agreement.
4
8. Indemnification.
Licensor
agrees, at Licensor’s sole expense, to defend, indemnify and hold harmless
Licensee, its franchisees, agents, officers and affiliates against any and
all
actions, claims, costs, damages or expenses which may be brought against or
incurred by Licensee as a result of any claims that the Proprietary Marks or
the
System infringe upon the intellectual property rights of any third party.
Further, Licensor agrees to indemnify, defend and hold harmless Licensee, its
franchisees, agents, officers and affiliates against all actions, claims, costs,
damages or expenses arising out of Licensee’s use of the Proprietary Marks or
the System in accordance with the terms of this Agreement.
9. Assignment
and Transfer.
Except
for Licensee’s ability to sublicense as set forth in this Agreement, neither
party shall assign or transfer the license that is the subject of this Agreement
without the prior written consent of the other party, which shall not be
unreasonably withheld.
10. Modification;
Waiver.
10.1 This
Agreement constitutes the entire Agreement between Licensor and Licensee
concerning the subject matter hereof and supersedes any prior agreements. No
change, amendment or modification of any provision of this Agreement shall
be
valid unless set forth in a written instrument signed by both
parties.
10.2 Any
failure by either party to enforce any provision of this Agreement shall not
constitute a waiver of such party’s rights therein.
11. Governing
Law
This
Agreement shall be governed by and construed under the laws of the State of
Louisiana without regard to its conflicts of laws provisions. The exclusive
forum for any actions arising out of or relating to this Agreement shall be
the
appropriate state or federal court sitting in the State of
Louisiana.
12. Notice.
Any
and
all notices required or permitted under this Agreement shall be in writing
and
shall be personally delivered, sent by registered mail, or sent by other means
which affords the sender evidence of delivery or attempted delivery, by one
party to the other at its address as set forth above. Any notice by a means
which affords the sender evidence of delivery or attempted delivery shall be
deemed to have been given and received at the date and time of receipt or
attempted delivery.
13. Binding
Effect.
This
Agreement is binding upon the parties, their successors and
assigns.
5
14. Severability.
If
the
application of any provision or provisions of this Agreement to any particular
facts of circumstances is held to be invalid or unenforceable by any court
of
competent jurisdiction, then (a) the validity and enforceability of such
provision or provisions as applied to any other particular facts or
circumstances and the validity of other provisions of this Agreement will not
in
any way be affected or impaired thereby, and (b) such provision or provisions
will be reformed without further action by the parties hereto and only to the
extent necessary to make such provision or provisions valid and enforceable
when
applied to such particular facts and circumstances.
6
IN
WITNESS WHEREOF,
the
parties hereto have executed this Agreement as of the date first above
written.
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PLANET
BEACH BRANDS, LLC
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|
|
By:
/s/
Xxxxxxx
Xxxxx
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By:
/s/
Xxxxxxx
Xxxx
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Name:
Xxxxxxx
Xxxxx
|
Name:
Xxxxxxx
Xxxx
|
|
Title:
President
and
CEO
|
Title:
Senior
Vice
President
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7
ATTACHMENT
“A”
AMENDED
AND RESTATED TRADEMARK AND SYSTEM LICENSE AGREEMENT
As
of the
date of execution of the Agreement, the following trademarks have been
assigned:
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n
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Planet
Beach Tanning • Spa Our Solar System Revolves Around
You
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○
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Serial
Number 78634814
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○
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Registration
Number 3195152
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○
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Filing
Date May 23, 0000
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x
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Xxxxxx
Xxxxx (design xxxx)
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○
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Serial
Number 78375849
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○
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Registration
Number 2991967
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○
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Filing
Date February 28, 0000
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x
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Xxxxxx
Xxxxx (word xxxx)
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○
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Serial
Number 78065851
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○
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Registration
Number 2585483
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○
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Filing
Date May 25, 0000
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x
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Xxxxxx
Xxxxx (word xxxx)
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○
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Serial
Number 75174400
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○
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Registration
Number 2070046
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○
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Filing
Date September 30, 0000
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x
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Xxxxxx
Xxxxx (design xxxx)
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○
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Serial
Number 77123653
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○
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Registration
Number -
Pending
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○
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Filing
Date March 6, 2007
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n
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Contempo
Spa (word xxxx)
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○
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Serial
Number 78800194
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○
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Registration
Number 3299750
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○
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Filing
Date January 26, 2006
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n
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Luminous
Facial
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○
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Serial
Number 78819634
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○
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Registration
Number 3327379
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○
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Filing
Date February 21, 2006
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n
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Fusion
Facial
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○
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Serial
Number 78891350
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○
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Registration
Number -
Pending
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○
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Filing
Date May 24, 2006
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8
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Australia:
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○
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Planet
Beach (word xxxx)
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○
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Serial
Number
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○
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Registration
Number 871469
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○
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Filing
Date April 3, 2001
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○
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Owner:
Planet Beach Tanning Salons, Inc. (Has not been
assigned)
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○
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○
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European
Union
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○
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Planet
Beach (word xxxx)
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○
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Serial
Number 23254495
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○
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Registration
Number 2154995
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○
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Filing
Date March 30, 2001
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○
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○
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New
Zealand:
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○
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Planet
Beach (word xxxx)
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○
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Serial
Number
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○
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Registration
Number 635448
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○
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Filing
Date April 5, 2001
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○
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○
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Planet
Beach (word xxxx)
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○
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Serial
Number
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○
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Registration
Number 635449
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○
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Filing
Date April 5, 2001
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○
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○
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Planet
Beach (word xxxx)
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○
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Serial
Number
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○
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Registration
Number 635450
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○
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Filing
Date April 5, 2001
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○
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○
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Planet
Beach (design xxxx)
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○
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Serial
Number
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○
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Registration
Number
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○
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Application
Number 788963
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○
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Filing
Date May 9, 2008
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○
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○
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Argentina:
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○
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Planet
Beach (word xxxx)
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○
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Serial
Number 2.335.481
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○
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Awaiting
application details
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○
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○
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Planet
Beach (word xxxx)
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○
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Serial
Number 2.335.482
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○
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Awaiting
application details
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○
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○
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Planet
Beach (design xxxx)
|
9
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○
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Application
Numbers: 2824657
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2824658
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| ○ |
2824659
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○
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Filing
Date:
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○
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Canada
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○
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Planet
Beach (word xxxx)
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○
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Serial
Number 0836152
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○
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Registration
Number TMA 505772
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○
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Filing
Date February 10, 1997
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○
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○
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Contempo
Spa
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○
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Serial
Number 1391123
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○
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Registration
Number
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○
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Filing
Date April 11, 2008
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○
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○
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Planet
Beach (design xxxx)
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○
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Serial
Number 1395123
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○
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Registration
Number
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○
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Filing
Date May 12, 2008
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○
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○
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Japan
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○
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Planet
Beach (word xxxx)
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○
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Serial
Number
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○
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Registration
Number
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○
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Application
# 2008-012826
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○
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Filing
Date February 22, 2008
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○
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○
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Contempo
Spa (word xxxx)
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○
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Serial
Number
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○
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Registration
Number
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○
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Application
# 2008-012827
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○
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Filing
Date February 22, 2008
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○
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○
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Mexico
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○
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Planet
Beach (word xxxx)
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○
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Serial
Number
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○
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Registration
Number 711278
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○
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Filing
Date April 18, 2001
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○
|
Has
not been assigned to PBB, LLC
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○
|
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○
|
Planet
Beach (word xxxx)
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○
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Serial
Number
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○
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Registration
Number 709069
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○
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Filing
Date April 18, 2001
|
10
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○
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Has
not been assigned to PBB, LLC
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○
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○
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Venezuela:
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○
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Planet
Beach (word xxxx)
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○
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Serial
Number 17519-01
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○
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Registration
Number
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○
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Filing
Date September 27, 2001
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○
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Has
not been assigned to PBB, LLC
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○
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○
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Planet
Beach (word xxxx)
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○
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Serial
Number 2942-02
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○
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Registration
Number
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○
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Filing
Date February 27, 2002
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○
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Has
not been assigned to PBB,LLC
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○
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○
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Planet
Beach (design xxxx)
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○
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Serial
Number
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○
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Registration
Number
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○
|
Application
Number(s):
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| ○ |
8963-08
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| ○ |
8964-08
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| ○ |
8965-08
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○
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Filing
Date
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Vietnam:
Planet
Beach (word xxxx)
Serial
Number
Registration
Number
Application
Number 0-0000-00000
Filing
Date March 24, 2008
Contempo
Spa (word xxxx)
Serial
Number
Registration
Number
Application
Number 0-0000-00000
Filing
Date March 24, 2008
South
Africa
Planet
Beach (design xxxx)
Serial
Number
Registration
Number
Application
Number(s)
2008/10632
2008/10633
2008/10634
Filing
Date
11
