PATENT AND TRADEMARK SECURITY AGREEMENT
EXHIBIT-10.14
This Agreement, dated as of December 22, 2005, is made by and between GREAT LAKES ENERGY
TECHNOLOGIES, LLC, a Wisconsin limited liability company, having a business location at the address
set forth below under its signature (the “Debtor”), and XXXXX FARGO BANK, NATIONAL ASSOCIATION,
acting through its Xxxxx Fargo Business Credit operating division, having a business location at
the address set forth below under its signature (the “Secured Party”).
RECITALS:
The Debtor and Orion Energy Systems, Ltd., a Wisconsin corporation (collectively, the
“Borrower”), and the Secured Party are parties to a Credit and Security Agreement of even date
herewith (as the same may hereafter be amended, supplemented or restated from time to time, the
“Credit Agreement”) setting forth the terms on which the Secured Party may now or hereafter extend
credit to or for the account of the Borrower.
As a condition to extending credit to or for the account of the Borrower, the Secured Party
has required the execution and delivery of this Agreement by the Debtor.
ACCORDINGLY, in consideration of the mutual covenants contained in the Loan Documents and
herein, the parties hereby agree as follows:
1. Definitions All terms defined in the Recitals hereto or in the Credit Agreement
that are not otherwise defined herein shall have the meanings given to them therein. In addition,
the following terms have the meanings set forth below:
“Obligations” means each and every debt, liability and obligation of every type and
description arising under or in connection with any Loan Document (as defined in the Credit
Agreement) which the Borrower may now or at any time hereafter owe to the Secured Party, whether
such debt, liability or obligation now exists or is hereafter created or incurred and whether it is
or may be direct or indirect, due or to become due, absolute or contingent, primary or secondary,
liquidated or unliquidated, independent, joint, several or joint and several, and including
specifically, but not limited to, the Obligations (as defined in the Credit Agreement).
“Patents” means all of the Debtor’s right, title and interest in and to patents or
applications for patents, fees or royalties with respect to each, and including without limitation
the right to xxx for past infringement and damages therefor, and licenses thereunder, all as
presently existing or hereafter arising or acquired, including without limitation the patents
listed on Exhibit A.
“Security Interest” has the meaning given in Section 2.
“Trademarks” means all of the Debtor’s right, title and interest in and to: (i) trademarks,
service marks, collective membership marks, registrations and applications for registration for
each, and the respective goodwill associated with each, (ii) licenses, fees or royalties with
respect to each, (iii) the right to xxx for past, present and future infringement,
dilution and damages therefor, (iv) and licenses thereunder, all as presently existing or
hereafter arising or acquired, including, without limitation, the marks listed on Exhibit B.
2. Security Interest. The Debtor hereby irrevocably pledges and assigns to, and
grants the Secured Party a security interest (the “Security Interest”), with power of sale to the
extent permitted by law, in the Patents and in the Trademarks to secure payment of the Obligations.
As set forth in the Credit Agreement, the Security Interest is coupled with a security interest in
substantially all of the personal property of the Debtor. This Agreement grants only the Security
Interest herein described, is not intended to and does not affect any present transfer of title of
any trademark registration or application and makes no assignment and grants no right to assign or
perform any other action with respect to any intent to use trademark application, unless such
action is permitted under 15 U.S.C. §1060.
3. Representations, Warranties and Agreements. The Debtor represents, warrants and
agrees as follows:
(a) Existence; Authority. The Debtor is a limited liability company duly organized,
validly existing and in good standing under the laws of its state of , and this
Agreement has been duly and validly authorized by all necessary [limited liability company]
action on the part of the Debtor.
(b) Patents. Exhibit A accurately lists all Patents owned or controlled by the Debtor
as of the date hereof, or to which the Debtor has a right as of the date hereof to have
assigned to it, and accurately reflects the existence and status of applications and letters
patent pertaining to the Patents as of the date hereof. If after the date hereof, the
Debtor owns, controls or has a right to have assigned to it any Patents not listed on
Exhibit A, or if Exhibit A ceases to accurately reflect the existence and status of
applications and letters patent pertaining to the Patents, then the Debtor shall within
sixty (60) days provide written notice to the Secured Party with a replacement Exhibit A,
which upon acceptance by the Secured Party shall become part of this Agreement.
(c) Trademarks. Exhibit B accurately lists all Trademarks owned or controlled by the
Debtor as of the date hereof and accurately reflects the existence and status of Trademarks
and all applications and registrations pertaining thereto as of the date hereof;
provided, however, that Exhibit B need not list common law marks (i.e.,
Trademarks for which there are no applications or registrations) which are not material to
the Debtor’s or any Affiliate’s business(es). If after the date hereof, the Debtor owns or
controls any Trademarks not listed on Exhibit B (other than common law marks which are not
material to the Debtor’s business), or if Exhibit B ceases to accurately reflect the
existence and status of applications and registrations pertaining to the Trademarks, then
the Debtor shall promptly provide written notice to the Secured Party with a replacement
Exhibit B, which upon acceptance by the Secured Party shall become part of this Agreement.
(d) Affiliates. As of the date hereof, no Affiliate owns, controls, or has a right to
have assigned to it any items that would, if such item were owned by the Debtor, constitute
Patents or Trademarks. If after the date hereof any Affiliate owns, controls, or
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has a right to have assigned to it any such items, then the Debtor shall promptly
either: (i) cause such Affiliate to assign all of its rights in such item(s) to the Debtor;
or (ii) notify the Secured Party of such item(s) and cause such Affiliate to execute and
deliver to the Secured Party a patent and trademark security agreement substantially in the
form of this Agreement.
(e) Title. The Debtor has absolute title to each Patent and each Trademark listed on
Exhibits A and B, free and clear of all Liens except Permitted Liens. The Debtor (i) will
have, at the time the Debtor acquires any rights in Patents or Trademarks hereafter arising,
absolute title to each such Patent or Trademark free and clear of all Liens except Permitted
Liens, and (ii) will keep all Patents and Trademarks free and clear of all Liens except
Permitted Liens.
(f) No Sale. Except as permitted in the Credit Agreement, the Debtor will not assign,
transfer, encumber or otherwise dispose of the Patents or Trademarks, or any interest
therein, without the Secured Party’s prior written consent.
(g) Defense. The Debtor will at its own expense and using commercially reasonable
efforts, protect and defend the Patents and Trademarks against all claims or demands of all
Persons other than those holding Permitted Liens.
(h) Maintenance. The Debtor will at its own expense maintain the Patents and the
Trademarks to the extent reasonably advisable in its business including, but not limited to,
filing all applications to obtain letters patent or trademark registrations and all
affidavits, maintenance fees, annuities, and renewals possible with respect to letters
patent, trademark registrations and applications therefor. The Debtor covenants that it
will not abandon nor fail to pay any maintenance fee or annuity due and payable on any
Patent or Trademark, nor fail to file any required affidavit or renewal in support thereof,
without first providing the Secured Party: (i) sufficient written notice, of at least thirty
(30) days, to allow the Secured Party to timely pay any such maintenance fees or annuities
which may become due on any Patents or Trademarks, or to file any affidavit or renewal with
respect thereto, and (ii) a separate written power of attorney or other authorization to pay
such maintenance fees or annuities, or to file such affidavit or renewal, should such be
necessary or desirable.
(i) Secured Party’s Right to Take Action. If the Debtor fails to perform or observe
any of its covenants or agreements set forth in this Section 3, and if such failure
continues for a period of ten (10) calendar days after the Secured Party gives the Debtor
written notice thereof (or, in the case of the agreements contained in subsection (h),
immediately upon the occurrence of such failure, without notice or lapse of time), or if the
Debtor notifies the Secured Party that it intends to abandon a Patent or Trademark, the
Secured Party may (but need not) perform or observe such covenant or agreement or take steps
to prevent such intended abandonment on behalf and in the name, place and stead of the
Debtor (or, at the Secured Party’s option, in the Secured Party’s own name) and may (but
need not) take any and all other actions which the Secured Party may reasonably deem
necessary to cure or correct such failure or prevent such intended abandonment.
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(j) Costs and Expenses. Except to the extent that the effect of such payment would be
to render any loan or forbearance of money usurious or otherwise illegal under any
applicable law, the Debtor shall pay the Secured Party on demand the amount of all moneys
expended and all costs and expenses (including reasonable attorneys’ fees and disbursements)
incurred by the Secured Party in connection with or as a result of the Secured Party’s
taking action under subsection (i) or exercising its rights under Section 6, together with
interest thereon from the date expended or incurred by the Secured Party at the Default
Rate.
(k) Power of Attorney. To facilitate the Secured Party’s taking action under
subsection (i) and exercising its rights under Section 6, the Debtor hereby irrevocably
appoints (which appointment is coupled with an interest) the Secured Party, or its delegate,
as the attorney-in-fact of the Debtor with the right (but not the duty) from time to time to
create, prepare, complete, execute, deliver, endorse or file, in the name and on behalf of
the Debtor, any and all instruments, documents, applications, financing statements, and
other agreements and writings required to be obtained, executed, delivered or endorsed by
the Debtor under this Section 3, or, necessary for the Secured Party, after an Event of
Default, to enforce or use the Patents or Trademarks or to grant or issue any exclusive or
non-exclusive license under the Patents or Trademarks to any third party, or to sell,
assign, transfer, pledge, encumber or otherwise transfer title in or dispose of the Patents
or Trademarks to any third party. The Debtor hereby ratifies all that such attorney shall
lawfully do or cause to be done by virtue hereof. The power of attorney granted herein
shall terminate upon the termination of the Credit Agreement as provided therein and the
payment and performance of all Obligations.
4. Debtor’s Use of the Patents and Trademarks. The Debtor shall be permitted to
control and manage the Patents and Trademarks, including the right to exclude others from making,
using or selling items covered by the Patents and Trademarks and any licenses thereunder, in the
same manner and with the same effect as if this Agreement had not been entered into, so long as no
Event of Default occurs and remains uncured.
5. Events of Default. Each of the following occurrences shall constitute an event of
default under this Agreement (herein called “Event of Default”): (a) an Event of Default, as
defined in the Credit Agreement, shall occur; or (b) the Debtor shall fail promptly to observe or
perform any covenant or agreement herein binding on it; or (c) any of the representations or
warranties contained in Section 3 shall prove to have been incorrect in any material respect when
made.
6. Remedies. Upon the occurrence of an Event of Default and at any time thereafter,
the Secured Party may, at its option, take any or all of the following actions:
(a) The Secured Party may exercise any or all remedies available under the Credit
Agreement.
(b) The Secured Party may sell, assign, transfer, pledge, encumber or otherwise dispose
of the Patents and Trademarks.
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(c) The Secured Party may enforce the Patents and Trademarks and any licenses
thereunder, and if Secured Party shall commence any suit for such enforcement, the Debtor
shall, at the request of Secured Party, do any and all lawful acts and execute any and all
proper documents required by Secured Party in aid of such enforcement.
7. Miscellaneous. This Agreement can be waived, modified, amended, terminated or
discharged, and the Security Interest can be released, only explicitly in a writing signed by the
Secured Party. A waiver signed by the Secured Party shall be effective only in the specific
instance and for the specific purpose given. Mere delay or failure to act shall not preclude the
exercise or enforcement of any of the Secured Party’s rights or remedies. All rights and remedies
of the Secured Party shall be cumulative and may be exercised singularly or concurrently, at the
Secured Party’s option, and the exercise or enforcement of any one such right or remedy shall
neither be a condition to nor bar the exercise or enforcement of any other. All notices to be given
to Debtor under this Agreement shall be given in the manner and with the effect provided in the
Credit Agreement. The Secured Party shall not be obligated to preserve any rights the Debtor may
have against prior parties, to realize on the Patents and Trademarks at all or in any particular
manner or order, or to apply any cash proceeds of Patents and Trademarks in any particular order of
application. This Agreement shall be binding upon and inure to the benefit of the Debtor and the
Secured Party and their respective participants, successors and assigns and shall take effect when
signed by the Debtor and delivered to the Secured Party, and the Debtor waives notice of the
Secured Party’s acceptance hereof. The Secured Party may execute this Agreement if appropriate for
the purpose of filing, but the failure of the Secured Party to execute this Agreement shall not
affect or impair the validity or effectiveness of this Agreement. A carbon, photographic or other
reproduction of this Agreement or of any financing statement signed by the Debtor shall have the
same force and effect as the original for all purposes of a financing statement. This Agreement
shall be governed by the internal law of Wisconsin without regard to conflicts of law provisions.
If any provision or application of this Agreement is held unlawful or unenforceable in any respect,
such illegality or unenforceability shall not affect other provisions or applications which can be
given effect and this Agreement shall be construed as if the unlawful or unenforceable provision or
application had never been contained herein or prescribed hereby. All representations and
warranties contained in this Agreement shall survive the execution, delivery and performance of
this Agreement and the creation and payment of the Obligations.
THE PARTIES WAIVE ANY RIGHT TO TRIAL BY JURY IN ANY ACTION OR PROCEEDING BASED ON OR
PERTAINING TO THIS AGREEMENT.
IN WITNESS WHEREOF, the parties have executed this Patent and Trademark Security Agreement as
of the date written above.
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XXXXX FARGO BANK, NATIONAL
|
GREAT LAKES ENERGY TECHNOLOGIES, LLC | |
ASSOCIATION, acting through its XXXXX |
||
FARGO BUSINESS CREDIT operating |
||
division |
||
By: /s/ Xxxxxxx X. Xxxxxxxxxx
|
By: /s/ Xxxx X. Xxxxxxxxx | |
Its: Vice President
|
Its: President | |
Xxxxx Fargo Business Credit
|
Great Lakes Energy Technologies, LLC | |
000 Xxxx Xxxxxxxxx Xxxxxx
|
0000 Xxxxx Xxxxx | |
XXX X0000-000
|
Xxxxxxxxx, Xxxxxxxxx 00000 | |
Milwaukee, Wisconsin 00000 |
XXXXX XX XXXXXXXXX
|
) | |
| ) | ||
COUNTY OF MILWAUKEE
|
) |
The foregoing instrument was acknowledged before me this 22nd day of December, 2005, by Xxxx
X. Xxxxxxxxx, the President of Great Lakes Energy Technologies, LLC, a Wisconsin limited liability
company, on behalf of the limited liability company.
/s/ Xxxx von Estorff
Notary Public
Notary Public
STATE OF WISCONSIN
|
) | |
| ) | ||
COUNTY OF MILWAUKEE
|
) |
The foregoing instrument was acknowledged before me this 22nd day of December, 2005, by
Xxxxxxx X. Xxxxxxxxxx, a Vice President of Xxxxx Fargo Bank, National Association, acting through
its Xxxxx Fargo Business Credit operating division, on behalf of the bank.
/s/ Xxxx von Estorff
Notary Public
Notary Public
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EXHIBIT A
UNITED STATES ISSUED PATENTS
NONE
FOREIGN ISSUED PATENTS
NONE
EXHIBIT B
UNITED STATE TRADEMARKS
| FILING | ||||||||
| SERIAL | DATE/REG. | |||||||
| XXXX | NO./REG. NO. | DATE | STATUS | OWNER | ||||
FAST LITE |
78/543,917 | 01/07/2005 | Pending | Great Lakes | ||||
| Energy | ||||||||
| Technologies, | ||||||||
| LLC |
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FOREIGN TRADEMARKS
| FILING | ||||||||||
| SERIAL | DATE/REG. | |||||||||
| XXXX | COUNTRY | NO./XXX.XX. | DATE | STATUS | OWNER | |||||
FAST LITE |
Canada | 1243,175 | 01/11/2005 | Pending | Great Lakes | |||||
| Energy | ||||||||||
| Technologies, | ||||||||||
| LLC |
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