TRADEMARK LICENSE AGREEMENT
TRADEMARK LICENSE AGREEMENT made as of this day of June, 1995 (the
"Agreement") by and between Xxxxxx X. Xxxxx, an individual with an address at
000 Xxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000 ("Xxxxx"), and Xxxxx Hotels & Casino
Resorts, Inc. with a principal place of business at Mississippi Avenue and Xxx
Xxxxxxxxx, Xxxxxxxx Xxxx, Xxx Xxxxxx 00000 ("Company").
WHEREAS, by virtue of advertising, promoting, and adhering to the
highest standards of service and marketing, Xxxxx has made the names and marks
"XXXXXX X. XXXXX," "XXXXXX XXXXX," X.X. XXXXX" and "X. XXXXX" (collectively, the
"Xxxxxx Name"), and "XXXXX" (the "Xxxxx Name" and together with the Xxxxxx Name,
the "Xxxxx Names") well known to the public and they enjoy among the trade and
the public a superior reputation and widespread goodwill with respect to the
style and quality of services and products bearing the Xxxxx Names; and
WHEREAS, Xxxxx is the exclusive owner o f all rights in the Xxxxx
Names in the United States or where Xxxxx has registered trademarks for Casino
Services and Products (as hereinafter defined) outside the United States for use
.. in connection with the Casino Services and Products and of each of the
trademarks, service marks and registrations and applications listed on Schedule
A annexed hereto (the Xxxxx Names with respect to the foregoing uses, together
with each of the marks, registrations and applications listed on Schedule A,
shall be referred to hereinafter, collectively, as the "Marks"); and
WHEREAS, the Marks are of unique character without an equivalent
substitute; and
WHEREAS, pursuant to a Contribution Agreement between Xxxxx and Xxxxx
Hotels a Casino Resorts Holdings, L.P. ("Xxxxx Holdings") dated as of the date
hereof (the "Contribution Agreement"), Xxxxx has agreed to pursue, develop and
conduct all mew Casino and Gaming Activities (as hereinafter defined) only on
behalf of the Company for a period ending on the later of (i) the twentieth
(20th) anniversary hereof, (ii) such date as Xxxxx (together with his
Affiliates) ceases to be a Significant Investor in the Company, or (iii) such
date as Xxxxx ceases to be employed or retained by the Company whether pursuant
to an employment, management, consulting or similar services agreement or
otherwise; and
WHEREAS, Xxxxx is granting to Company, pursuant to a Trademark
Security Agreement between Xxxxx and Company to be entered into simultaneously
herewith (the "Trademark Security agreement"). a first priority security
interest in and to the Licensed Marks and certain other Marks that issue
pursuant to this Agreement, and a security interest in the Licensed Marks for
use in connection with related hotel, bar and restaurant services;
WHEREAS, Company desires to acquire and Xxxxx is willing to grant
Company a license to use the Marks in connection with Casino and Gaming
Activities, subject to the terms and conditions herein; and
NOW, THEREFORE, in consideration of the mutual premises and covenants
contained herein, and other good and valuable consideration received by Xxxxx,
the receipt and sufficiency of which is hereby acknowledged, the parties agree
as follows:
1. Definitions.
1.1. "Affiliate" means, with respect to any Person, any other
Person directly or indirectly controlling or controlled by or under direct or
indirect common control. with such Person.
1.2. "Casino and Gaming Activities" shall mean the business of
owning, operating or managing a casino or similar facility for the taking or
receiving of any bet or wager upon the result of any game of chance or skill.
1.3. "Casino Services and Products" shall mean Casino and Gaming
Activities and activities, services and products conducted, provided or sold in
connection with Casino and Gaming Activities, including, hotel, dockside,
riverboat, cruise ship, transportation, entertainment, sports, resort, bar,
restaurant and retail store activities and services and merchandise sold in
connection with any of the foregoing activities and services.
1.4. "Effective Date" shall have the meaning set; forth in
paragraph 2.1 hereof.
1.5. "Entity" shall mean any general partnership: limited
partnership, limited liability company, corporation, joint venture, trust,
business trust, real estate investment trust, association or other entity.
1.6. "License" shall have the meaning as set for, in paragraph
2.1.
1.7. "Licensed Marks" shall mean the Marks, except for those
Marks associated with the Retained Casinos as set forth in schedule H.
1.8. "Marks" is defined in the Preamble.
1.9. "Nonconforming Activities" shall have the meaning set forth
in paragraph 4.2.
1.10. "Permitted Transferee" shall mean the spouse and
descendants of Xxxxx (including any related trusts controlled by, And
established and maintained for the sole benefit of, Xxxxx or such spouse or
descendants) and the estate of any of the foregoing.
1.11. "Person" shall mean any natural person or Entity.
1.12. "Retained Casinos" shall mean the Xxxxx Xxxxxx Casino
Resort ("Xxxxx Xxx Mahal") and Trump's Castle Hotel and Casino ("Trump's
Castle"), both located in Atlantic City, New Jersey.
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1.13. "Significant investor" shall mean a Person who
(collectively with such Person's Affiliates) owns beneficially fifteen (15)
percent or more of the voting power of ..-the equity securities of the Company
then outstanding and .regularly entitled to vote in the election of the
Company's Board of Directors ("Voting Stock").
1.14. "Special Committee" shall mean the committee of the
Company's Board of Directors composed of two or more directors none of whom is
an officer or employee of the Company or an Affiliate of Xxxxx or any of his
Affiliates; provided, however, that a Person shall not be deemed to be such an
Affiliate for purposes of this sentence solely by reason of being a member of
the Company's Board of Directors or that of any of its Subsidiaries.
1.15. "Subsidiary" of any Person means (i) a corporation a
majority of whose Voting Stock is at the time, directly or indirectly, owned by
such Person, by such Person and ire or more Subsidiaries of such Person or by
one or more Subsidiaries of such Person, (ii) any other Person (other than a
corporation) in which such Person, one or more Subsidiaries of Iubh Person, or
such Person and one or more Subsidiaries of such Person, directly or indirectly,
at the date of determination :hereof has at least a majority ownership interest,
or (iii) a, partnerships in which such Person or a Subsidiary of such Person is,
at the time, a general partner and has a majority ownership interest.
1.16. "Xxxxx Names" is defined in the Preamble.
2. License.
2.1. License to Company. As of the date of this Agreement (the
"Effective Date"), and until the later of (i) the twentieth (20th) anniversary
hereof, (ii) such date as Xxxxx (together with his Affiliates) ceases to be a
Significant Investor in the Company, or (iii) such date as Xxxxx ceases to be
employed or retained by the Company whether pursuant to an employment,
management, consulting or similar services agreement or otherwise, Xxxxx hereby
grants to Company and Company hereby accepts, upon the terms and conditions set
forth herein, the exclusive royalty-free right and license to use worldwide, the
Licensed marks (and any combination Marks that include any Licensed Marks), and
Xxxxx hereby consents to Company's use of, and grants Company the right to use,
his personal name (i.e., ''Xxxxx," "Xxxxxx Xxxxx" or "Xxxxxx X. Xxxxx") and his
likeness in connection with Casino Services and Products (hereinafter referred
to, collectively, as the "License"), subject to paragraph 2.2 hereof.
2.2. Rights Retained by Xxxxx. Nothing contained in this
Agreement shall restrict or restrain Xxxxx from the right to use, register
and/or further license the Xxxxx Names in connection with (i) the Retained
Casinos pursuant to the Amended and Restated License Agreement between Xxxxx and
Xxxxx Xxx Xxxxx Associates dated April 1, 1991 and the License Agreement between
Xxxxx and Trump's Castle Associates dated May 29, 1992, respectively, (ii)
services, products and activities other than Casino Services and Products
(including services, products and activities determined in accordance with
Section 2.2 (b) of the Contribution Agreement not to be Casino Services and
Products) or (iii) services, products and activities permitted to be undertaken
by Xxxxx or any of his Affiliates pursuant to clause (iii) of Section 2(c) of
the Contribution Agreement.
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2.3. Grand of Security Interest. Xxxxx hereby agrees to grant,
and is granting to Company pursuant to the Trademark Security Agreement a first
priority security interest in all of the Licensed Marks and in any additional
trademark registrations that issue pursuant to paragraph 6.2.3 hereof.
3. Representations and Warranties.
3.1. Representations and Warranties of Xxxxx. Xxxxx hereby
represents and warrants to Company that:
3.1.1 Xxxxx is authorized to enter into this Agreement, and
his entry into this Agreement is not and would not, with the passage
of time, be in breach or violation of any governmental order or law or
the contractual rights of any third party (by contract or otherwise);
3.1.2 The Marks constitute all of the trademarks, service
marks and trade names used by Xxxxx within the last five (5) years in
connection with any Casino Services and Products;
3.1.3 Xxxxx is the sole and exclusive owner of the Marks in
the United States or where Xxxxx has registered trademarks for Casino
Services and Products outside the United States, and his rights
therein are, free and clear of all liens and encumbrances and licenses
to third parties (other than the licenses granted by Xxxxx to the
Retained Casinos pursuant to the Amended and Restated License
Agreement between Xxxxx and Xxxxx Xxx Xxxxx Associates dated April 1,
1991 and the License Agreement between Xxxxx and Trump's Castle
Associates dated May 29, 1992, and the exclusive license of the xxxx
"Xxxxx Plaza Hotel and Casino" granted to Xxxxx Plaza Associates
pursuant to the Amended and Restated Services Agreement by and among
Xxxxx Plaza Associates, Xxxxx Plaza Management Corp. and Xxxxx dated
June 24, 1993, and the security interests in the registrations "Xxxxx
Castle" and "Xxxxx Plaza" as of October 3, 1990 in favor of Bankers
Trust Company), including without limitation any claims arising under
"community property" or similar laws;
3.1.4 To the best of Trump's knowledge, after due inquiry,
there is no material claim, suit, action or proceeding pending or
threatened, in the United States against Xxxxx or any entity owned or
controlled by Xxxxx with respect to the validity of any of the Marks,
Trump's ownership of any of the Marks, the infringement of any of the
marks by any third party or the infringement of the rights of any
third party arising out of the use of any of the Marks;
3.1.5 The Marks are valid and enforceable in the United
States, and to the best of Trump's knowledge, the Marks are valid and
enforceable elsewhere in the world;
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3.1.6 All renewal fees and other maintenance fees for
registrations of any of the Marks or applications therefore which have
fallen due on or prior to the Effective Date have been paid; and
3.1.7 To the best of Trump's knowledge no third party owns
or has asserted any rights in the Marks, and, to the best of Trump's
knowledge, the Marks do not infringe any rights of any third party.
3.2. Representations and warranties of Company. Company
represents and warrants that it is duly formed and validly subsisting under the
laws of Delaware, that it is authorized to enter into this Agreement, and that
its entry into. this Agreement is not and would not, with the passage of time,
be in breach or violation of any governmental order or law or the rights of any
third party (by contract or otherwise).
4. Quality Control.
4.1. Review. Xxxxx shall have the right to exercise quality
control over the Licensed Marks to a degree necessary to maintain the validity
of the Licensed Marks and to protect the goodwill associated therewith. To
accomplish the foregoing, Company shall adhere to a level of quality consistent
with the standards of quality associated with the Licensed Marks. In adhering to
these standards, Company shall be guided by the standards of quality established
for the marks prior to the Effective Date. Upon Trump's reasonable request,
Company will submit representative samples of proposed material usages of
Licensed Marks. Xxxxx and Company acknowledge that due to the nature of the
Casino Services and Products, any inspection of such services and products and
of Company's premises where activities relating to the Licensed Marks are
conducted, such as is necessary for Xxxxx to monitor Company's compliance with
the quality standards, can be conducted in publicly accessible facilities and
that Xxxxx shall be free to inspect such publicly accessible facilities or
publicly available products and materials; provided, however, that Xxxxx or his
representative(s) shall do so in a discrete manner without in any way disrupting
or interfering with the normal operations of such facilities.
4.2. Misuse; Cure Provisions; Termination. In the event that
Xxxxx, upon review of samples submitted by Company or inspection of the premises
of Company pursuant to paragraph 4.1 hereof, in his good faith reasonable
judgment, believes that Company, in its conduct of activities under the Licensed
Marks, has failed to meet the quality standards necessary to maintain the
validity of the Licensed Marks, Xxxxx shall provide Company with written notice
thereof. Such notice shall specify the activities that fail to comply with the
standards of quality associated with the Licensed Marks (the "Nonconforming
Activities") and the manner in which such Nonconforming Activities fail to meet
such standards. Company shall cooperate with Xxxxx to cure such non-compliance
within six (6) months from the date of the Trump's notice thereof. As Trump's
sole and exclusive remedy, if, after six months from the date of notice by Xxxxx
to Company, Company has failed to correct such Nonconforming Activities, Xxxxx
shall then be entitled to maintain an action in the district court for the
Southern district of New York or state court located in New York City for
declaratory judgment and/or injunctive relief seeking to compel Company to
comply with the quality control standards, and any such remedy shall be limited
to the Licensed Xxxx(s) that are the subject of the Nonconforming Activities.
The parties agree that, in the event that Xxxxx maintains such an action, each
party
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shall waive any right to a resolution of any issue in the dispute by jury
trial. Xxxxx shall not have the right to terminate this Agreement for any breach
or alleged breach of the quality control standard, unless a court determines
that Company has failed to homely with a court order or injunction respecting
quality standards obtained by Xxxxx in a proceeding brought by Xxxxx pursuant to
this paragraph 4.
5. Non-exclusive License Upon Termination of the .Agreement.
5.1. Non-exclusive License. Upon the termination of the License
pursuant to paragraph 2.1 hereof:
5.1.1 Xxxxx shall grant to Company a nonexclusive,
royalty-free, world-wide right and license to use the Licensed Marks
for a reasonable period of transition in connection with the Casino
Services and Products. Such license shall contain reasonable terms and
conditions to be mutually agreed upon by the parties.
5.1.2 The representations, warranties and indemnities made
by either party hereunder shall survive such termination;
6. Duties and Covenants of Parties.
6.1. Duties and Covenants of Company. Company shall assume and
fulfill the following obligations:
6.1.1 Company agrees that all uses, including display,
advertising and/or promotional activities relating to and/or
incorporating the Licensed Marks shall, as to theme, media, content,
standards and policies, be conducted in a dignified manner consistent
with the high reputation and importance of the Marks as in existence
as of the date hereof.
6.1.2 Company shall, at its own cost and expense, procure
and maintain with respect to any and all of the Licensed Marks, and
provide Xxxxx with certificates of insurance evidencing, liability
insurance (naming Xxxxx as an additional insured thereunder) against
claims for bodily and personal injury, death, and property damage
caused by or occurring in connection with the License with a combined
single limit, per occurrence, of not less than the amount of $10
million.
6.1.3 Company shall comply in material respects with all
applicable laws, regulations, orders, and other governmental and
regulatory requirements relating to the advertising, promotion, and
operation of Company.
6.1.4 Company agrees to execute additional documents or
instruments reasonably deemed necessary or appropriate, in the
reasonable judgment of Xxxxx, to confirm or record the license
contemplated herein.
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6.1.5 Company shall not, subject to the terms of the
Trademark Security Agreement: (i) challenge Xxxxx' present and/or
future use of the Marks to the extent such use made pursuant to rights
expressly retained by Xxxxx hereunder, except as provided hereunder;
(ii) contest the fact that Company's rights under this Agreement are
solely those of a licensee and will terminate as provided herein; and
(iii) represent, in any manner, that it has any title or right to the
ownership, registration, and/or use of the Marks, in any manner except
as set forth in this Agreement; (iv) challenge the license granted
hereunder or the legality of the terms hereof; (v) challenge Trump's
ownership of the Marks and (vi) not engage in any activity which would
reasonably, in Company's good faith discretion, be expected to
materially harm the reputation of the Marks or the Xxxxx Names.
6.1.6 Company acknowledges and agrees that nothing contained
in this Agreement and/or anything contemplated hereunder shall be
construed to confer upon Company any right to have the Marks
registered in the name of Company, unless authorized by Xxxxx, which
authorization shall be deemed granted if, with respect to any country
in which Company has requested Xxxxx to register any of the Licensed
Marks pursuant to paragraph 6.2.3 hereof, Xxxxx fails to take such
actions as are necessary to apply for registration within thirty (30)
days from Company's request that Xxxxx obtain registration of such
Licensed Xxxx. Company further acknowledges and agrees that nothing
contained herein shall be construed to vest in Company any right of
ownership to the Marks, and other than as provided herein, or in the
Trademark Security Agreement, Company shall not, directly or
indirectly, register or cause to be registered in any country or
governmental subdivision, any trademark, service xxxx or trade name
consisting of, related to, and/or constituting a colorable imitation
of the Marks.'
6.1.7 Company agrees and undertakes to use the Licensed
Marks only in accordance with all requirements of all governmental
authorities, foreign or domestic, having jurisdiction over Xxxxx
and/or Company or the use by Company of the Licensed Marks.
6.1.8 Company agrees that, in using the Xxxx, it will (if
Xxxxx shall request and shall be authorized to so request) add the
designation (R), "SM", or "TM", or other registration or trademark or
service xxxx notice, and (if Xxxxx shall reasonably request in
conformance with industry practice) a statement that the Xxxx is a
trademark or service xxxx of Xxxxx licensed by Xxxxx for use by
Company.
6.2. Duties and Covenants of Xxxxx.
6.2.1 Xxxxx agrees that it (i) shall not challenge the
license granted hereunder or the legality of the terms hereof and (ii)
shall comply with all applicable laws, regulations, orders, and other
governmental and regulatory requirements relating to the advertising,
promotion, and operation of Company.
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6.2.2 Xxxxx agrees to execute additional documents or
instruments deemed necessary or appropriate, in the reasonable
judgment of Company, to confirm or record the license contemplated
herein.
6.2.3 Xxxxx hereby agrees upon the reasonable request of
Company to promptly execute all documents or instruments deemed
necessary by Company to permit Company to (i) secure registrations
(and all renewals thereof) and applications for registration of the
Licensed Marks, and (ii) file applications for registration of the
Licensed Marks anywhere in the world, and Company shall have the right
to secure and maintain such applications or registrations or file such
applications in Trump's name anywhere in the world at Company's
expense; provided that Company in the prosecution of such applications
or prosecutions shall not agree to any disclaimer of the Xxxxx Names
or other limitation with respect to the Licensed Marks nor shall
Company enter into any agreement regarding the Licensed Marks without
Trump's prior written consent, which shall: not be unreasonably
withheld, and provided, however, that Xxxxx shall file applications
for registration of the Licensed Marks and shall maintain all
registrations of the Licensed Marks in the United States at Trump's
expense including all maintenance and renewal fees. Without limiting
the foregoing, promptly following execution hereof, Xxxxx shall file
applications in the United States Patent and Trademark Office to
register the xxxx "XXXXX" for use in connection with Casino and Gaming
Activities, at Trump's expense.
6.2.4 As of the Effective Date, Xxxxx shall immediately
cease all use of the Marks, including all use of the Xxxxx Names, and
all use of his personal name and likeness in connection with any and
all Casino Services and Products, other than in connection with the
Retained Casinos, and subject to these interests in the Retained
Casinos, Xxxxx shall cause all entities which are owned or controlled
by Xxxxx to cease any and all uses of the Marks for use in connection
with Casino Services and Products not authorized hereunder. Xxxxx
further agrees not to interfere with Company's use of the Licensed
Marks, other than as necessary to maintain the standards of quality
associated with the Licensed Marks.
7. Protection of Marks.
7.1. Notification of Unauthorized Use of Marks. In the event that
Company shall become aware of any unauthorized use or infringement of any of the
Marks by any third party or act of unfair competition by any third party
relating to any of the Marks, Company shall promptly notify Xxxxx of such
unauthorized use, act of unfair competition or infringement. In the event that
Xxxxx shall became aware of any unauthorized use or infringement of any of the
Licensed marks by any third party or any act of unfair competition by any third
party relating to any of the Licensed Marks, Xxxxx shall promptly notify Company
such unauthorized use, act of unfair competition or infringement.
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7.2. Suits Related to Licensed Marks.
7.2.1 Company, at its sole cost and expense, may, but shall
not be obligated to, institute and prosecute infringement actions or
similar proceedings with respect to the unauthorized use or
infringement of any of the Licensed Marks by any third party or any
act of unfair competition by any third party relating to any of the
Licensed Marks. In such event, Xxxxx shall fully cooperate with
Company in the prosecution of such actions and shall, if requested by
Company and at Company's expense, join with Company as a party to any
action brought by Company for such purpose. Any recovery as a result
of any such infringement or other action instituted by Company with
respect to the unauthorized use or infringement of any of the Licensed
Marks by any third party or any act of unfair competition by any third
party relating to any of the Licensed Marks, shall belong solely to
Company, except that Xxxxx shall have the right to recover from such
third party losses and damages suffered as a direct consequence of
such infringement or other action. Should Company fail to take any
action within ninety (90) days of receiving notice thereof (or
otherwise notifies Xxxxx of its intent not to take any action), Xxxxx
may at Trump's expense, bring such action or proceeding and shall be
entitled to any recovery therefore.
7.2.2 In the event of the institution of any infringement
action by a third party against Company for use of any of the Licensed
Marks in accordance with the provisions of this Agreement, Company
shall promptly notify Xxxxx of such action in writing. Xxxxx may join
and/or control the defense of such action at Trump's expense, and
Xxxxx shall cooperate in such defense as reasonably requested by
Company, at Trump's expense. Any settlement of such suit shall be
subject to Trump's approval, such approval not unreasonably to be
withheld. If within such time as the situation may allow, Company
shall request Xxxxx to consent to the proposed settlement, and Xxxxx
shall neglect or decline to do so, Xxxxx shall, at Company's sole
option and upon notice by Company, immediately undertake to continue
the defense at his sole expense and, in any event, shall furnish
Company with security in the form of a surety company bond in the
amount as shall under all circumstances be in Company's judgment
adequate. In the event Xxxxx fails so to assume the defense, if so
requested, or to furnish such bond, Company shall have the right to
settle such matter upon terms Company thinks advisable or in Company's
discretion to continue the defense thereof.
7.3. Suits Related to Marks other than the Licensed Marks.
7.3.1 Xxxxx, at its sole cost and expense, may, but shall
not be obligated to, institute and prosecute infringement actions or
similar proceedings with respect to the unauthorized use or
infringement of any of the Marks other than the Licensed Marks by any
third party or any act of unfair competition by any third party
relating to any of the Marks other than the Licensed Marks. In such
event, Company shall fully cooperate with Xxxxx in the prosecution of
such actions, at Trump's expense, and shall, if reasonably requested
by Xxxxx and at Trump's expense, join with Xxxxx as a party to any
action brought by Xxxxx for such purpose. Any recovery as a result of
any such infringement or other action instituted by Xxxxx with respect
to the unauthorized use or infringement of any of
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the Marks other than the Licensed marks by any third party or any act
of unfair competition by any third party relating to any of the Marks
other than the Licensed Marks, shall belong solely to Xxxxx, provided
that Company is fully reimbursed for any reasonable costs it may rave
incurred in connection with such action.
7.3.2 In the event of the institution of infringement action
by a third party against Xxxxx for, use of any of the Marks other than
the Licensed Marks in accordance with the provisions of this
Agreement, Xxxxx shall promptly notify Company of such action in
writing. Company shall cooperate in such defense as reasonably
requested by Xxxxx, at. Xxxxx'x expense.
7.4. Suits Related to the Licensed Marks and M other than the
Licensed Marks.
7.4.1 Xxxxx may, but shall not be obligated to, institute
and prosecute infringement actions or similar proceedings with respect
to unauthorized use or infringement of both the Licensed Marks and the
Marks other than the Licensed Marks, by any third party or any act of
unfair competition by any third party relating to both the Licensed
Marks and the Marks other than the Licensed Marks. Company may, but
unless deemed a necessary party shall not be obligated to, fully
cooperate with Xxxxx in the prosecution of such actions and shall, if
reasonably requested by Xxxxx, at Trump's expense, join with Company
as a party to any action brought by company for such purpose. Xxxxx
shall control such prosecution and each party shall share in the costs
of such prosecution proportionate to the degree to which such
prosecution relates to the Marks other than the Licensed Marks or
Licensed Marks, respectively. Any recovery as a result of any such
infringement or other action with respect to unauthorized use or
infringement of both the Licensed Marks and the Marks other than the
Licensed Marks by any third party or any act of unfair competition by
any third party relating to both the Licensed Marks and the Marks
other than the Licensed Marks, respectively, shall be divided between
Xxxxx and Company proportionate to the degree to which such suit or
prosecution relates to the Marks other than the Licensed Marks or
Licensed Marks, respectively. Should Xxxxx fail to take any action
within ninety (90) days of receiving notice thereof (or otherwise
notifies Company of its intent not to take any action), Company may at
Company's expense, bring such action or proceeding and shall be
entitled to any recovery therefore.
7.4.2 In the event of the institution of any infringement
action by a third party against both Company and Xxxxx for use of any
of the Licensed Marks and any of the Marks other than the Licensed
Marks, both parties shall cooperate in the defense of such action.
Xxxxx shall control such defense and each party shall share in the
costs of such defense proportionate to the degree to which such
prosecution relates to the Marks other than the Licensed Marks or
Licensed Marks, respectively. Any settlement of such suit shall be
subject to Company's approval, such approval not unreasonably to be
withheld. If within
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such time as the situation may allow, Xxxxx shall request Company to
consent to the proposed settlement, and Company shall neglect or
decline to do so, Company shall, at Trump's sole option and upon
notice by Xxxxx, immediately undertake to continue the defense at his
sole expense and, in any event, shall furnish Xxxxx with security in
the form of a surety company bond in the amount as shall under all
circumstances be in Trump's judgment adequate. In the event Company
fails so to assume the defense, if so requested, or to furnish such
bond, Xxxxx shall have the right to settle such matter upon terms
Xxxxx thinks advisable or in Trump's discretion to continue the
defense thereof.
7.5. Trump's Duty to Indemnify Company.
7.5.1 Notwithstanding the provisions of paragraph 7.6
hereof, Xxxxx hereby agrees to indemnify Company, its officers,
agents. and employees, and to hold each of them harmless from and
against any damages, liability, cost, claim, fee, obligation or
expense, including reasonable attorneys' fees and expenses incurred in
defense of any of the foregoing ("Losses"), in connection with the use
by Company of the Licensed Marks in accordance with this Agreement;
provided, however that the obligation to indemnify and hold harmless
hereunder shall not include any losses suffered by Company arising out
of the gross negligence, bad faith or willful misconduct of Company
7.5.2 Xxxxx shall indemnify, defend, and hold Company, its
Affiliates and their respective officers, directors and employees
harmless from and against any Losses arising out of Trump's breach of
and representation, warranty, obligation, covenant or other provision
of this Agreement.
7.6. Company's Duty to Indemnify Xxxxx.
7.6.1 Company agrees to indemnify and hold Xxxxx free and
harmless from and against any Losses arising out of or in connection
with any Nonconforming Activity; provided, however, that the
obligation to indemnify and hold harmless hereunder shall not include
any Losses suffered by Xxxxx arising out of the gross negligence, bad
faith or willful misconduct of Xxxxx.
7.6.2 Company shall indemnify, defend and hold harmless
Xxxxx, his Affiliates and their respective officers, and directors and
employees from and against any and all claims, losses, damages and
associated legal expenses arising out of Company's breach of any
representation, warranty, obligation, covenant or other provision of
this Agreement.
8. Rights Upon Termination. Upon the termination of this Agreement
for any reason other than the expiration of this Agreement pursuant to the terms
hereof, neither Company nor its receivers, representatives, agents, successors
or assigns shall have any right to exploit or in any way use the Marks. Upon
such termination, Company shall forthwith take (or cause to be taken) any and
all such action as may be required to discontinue use of the Licensed Marks (and
any
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variation or simulation thereof, or any xxxx or marks confusingly similar
thereto) as soon as is reasonably possible (but not, in any event, in excess of
one (1) year); and Company shall thereby irrevocably release and disclaim any
right or interest in or to the Licensed Marks, and shall forthwith have no right
to make any use whatsoever of the Licensed Marks.
9. Survival of Certain Terms Upon Termination. Notwithstanding the
termination of this Agreement, Company, until such time as it discontinues all,
use of the Licensed Marks, and Xxxxx, until such time as Company shall, pursuant
to the terms hereof, be required to discontinue all use of the Licensed Marks,
be obligated to comply with the provisions of paragraphs 6.1, 7.5, 8, and 9
hereof, applicable to Temp and Company, respectively. The termination of this
Agreement for any reason whatsoever shall not relieve (i) Company of any of its
rights or obligations pursuant co paragraphs 3.2, 7.6, 8, and 9 hereof; (ii)
Xxxxx of any of his rights or obligations pursuant to paragraphs 3.1, 7.5, and
9; and (iii) either Company or Xxxxx of their respective obligations, if any,
arising prior to the termination of this Agreement.
10. Assignments and Sublicenses.
10.1. Assignment by Xxxxx. Xxxxx may not assign any of his rights
or obligations under this Agreement or in and to the Marks without the prior
written consent of the Special Committee of the Company; provided, however, that
nothing herein shall prohibit Xxxxx from assigning his rights and obligations
under this Agreement to a Permitted Transferee who agrees to be bound by the
terms and conditions herein.
10.2. Assignment by Company. Except as otherwise provided in any
agreement or instrument to which Xxxxx and Company are parties, without the
prior written consent of Xxxxx, in his sole and absolute discretion, Company may
not assign, sublicense or pledge any of its rights under this Agreement, except
(i) Company may sublicense its rights relating to the Licensed Marks under this
Agreement to an Affiliate or Subsidiary, provided such Subsidiary or Affiliate
agrees, in writing, to be bound by all of the terms and conditions of this
Agreement, with said sublicense terminating if and when such sublicensee no
longer is a Subsidiary or Affiliate, (ii) to a successor to all or to
substantially all of Company's business which agrees, in writing, to be bound by
all of the terms and conditions hereof. No assignment, sublicense or pledge by
Company of any of its rights under this Agreement, if permitted by Xxxxx, shall
relieve or release Company or Xxxxx from any of their obligations hereunder
arising or accruing before or after such assignment or sublicense.
11. Miscellaneous.
11.1. Amendments; Extension; Waiver. Subject to compliance with
applicable law, this Agreement may not be amended, altered or modified except by
written instrument executed by Xxxxx and Company. Failure of a party to enforce
any one or more of the provisions of this Agreement, or to exercise any option
or other right hereunder, or to require, at any time, performance of any of the
obligations hereof, shall not be construed to be a waiver of such provisions by
such party, shall not affect, in any way, the validity of this Agreement or
12
such party's right thereafter to enforce each and every provision of this
Agreement, and shall not preclude such party from taking any other action, at
any time, which it is legally entitled to take.
11.2. Entire Agreement. This Agreement (including the Schedules
and Attachments referred to herein) constitutes the entire agreement of the
parties hereto, except as provided herein and supersedes all prior agreements
and understandings, written and oral, among the parties with respect to the
subject matter hereof.
11.3. Relationship of the Parties. This Agreement shall not be
construed to constitute a joint venture between Xxxxx and Company, and does not
constitute Company as the agent or legal representative of Xxxxx. Neither
Company nor Xxxxx shall have any right or authority to assume or create any
obligation or responsibility, express or implied, on behalf of o in the name of
the other, or to bind the other in any manner.
11.4. Rights Upon Default. Except as provided is paragraph 4
hereof, in the event that either Company or Xxxxx shall default in its
performance of any of the terms and provisions hereof, or shall breach or
violate any of their respective covenants contained in this Agreement, the other
pa shall be entitled to exercise any right or remedy available to i either at
law or in equity. Such rights and remedies shall include, but shall not be
limited to, termination of this Agreement, damages and/or injunctive relief
provided, however, that neither party shall be liable to the other party for any
consequential damages resulting from a breach hereof. Other than as provided in
Paragraph 4, the exercise of any right or remedy available to Xxxxx or to
Company shall not preclude the concurrent or subsequent exercise by such party
of any other right or remedy, and all rights and remedies shall be cumulative.
11.5. Interpretation. When a reference is made in this Agreement
to paragraphs or Schedules, such reference shall be to a paragraph or Schedule
to this Agreement unless otherwise indicated. The headings contained in this
Agreement are for reference purposes only and shall not affect in any way the
meaning or interpretation of this Agreement. Whenever the words "include,"
"includes" or "including" are used in this Agreement, they shall be deemed to be
followed by the words "without limitation." The phrase "the date of this
Agreement" and terms of similar import, unless the context otherwise requires,
shall be deemed to refer to the date set forth in the first paragraph of this
Agreement.
11.6. Severability. Any term or provision of this Agreement which
is invalid or unenforceable in any jurisdiction shall, as to that jurisdiction,
be ineffective to the extent of such invalidity or unenforceability without
rendering invalid or unenforceable the remaining terms and provisions of this
Agreement or affecting the validity or enforceability of any of the terms or
provisions of this Agreement in any other Jurisdiction. If any provision of this
Agreement is .so broad as to be unenforceable, the provision shall be
interpreted to be only so broad as is enforceable.
11.7. Other Rights. Nothing herein shall affect the rights and
remedies provided under the Contribution Agreement.
11.8. Notices. All notices and other communications hereunder
shall be in writing and shall be deemed given if (a) delivered in person,
(b) transmitted by telecopy (with
13
confirmation), (c) mailed by certified or registered mail (return receipt
requested) or (d) delivered by an express courier (with confirmation) to the
parties at the following addresses (or at such other address for a party as
shall be specified by like notice):
If to Company: Xxxxx Hotels & Casino Resorts, Inc.
Mississippi Avenue and Xxx Xxxxxxxxx
Xxxxxxxx Xxxx, Xxx Xxxxxx 00000
Telecopy: (000) 000-0000
Attention: Chief Executive Officer
If to Xxxxx: Xxxxxx X. Xxxxx
000 Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Telecopy: (000) 000-0000
11.9. Binding Effect; Persons Benefitting. This Agreement shall
inure to the benefit of and be binding upon the parties hereto and the
respective successors and assigns of the parties and such persons. Nothing in
this Agreement is intended or shall be construed to confer upon any entity or
person other than the parties hereto and their respective successors and
permitted assigns any right, remedy or claim under or by reason of this
Agreement or any part hereof.
11.10. Counterparts. This Agreement may be executed in two or
more counterparts, each of which shall be deemed an original, but all of which
taken together shall constitute one and the same agreement, it being understood
that all of the parties need not sign the same counterpart.
11.11. Governing Law. THIS AGREEMENT, THE LEGAL RELATIONS BETWEEN
THE PARTIES AND THE ADJUDICATION AND THE ENFORCEMENT THEREOF, SHALL BE GOVERNED
BY AND INTERPRETED AND CONSTRUED IN ACCORDANCE WITH THE SUBSTANTIVE LAWS OF THE
STATE OF=. NEW YORK WITHOUT REGARD TO APPLICABLE CONFLICT OF LAW, EXCEPT THAT
ANY QUESTIONS GOVERNED BY THE TRADEMARK STATUTES OF THE UNITED STATES OF AMERICA
SHALL BE GOVERNED BY AND DETERMINED PURSUANT TO AND/OR UNDER SUCH STATUTES.
11.12. Convenience of Firm Consent to Jurisdiction. The parties
to this Agreement, acting for themselves and for their respective successors and
assigns, without regard to domicile, citizenship or residence, hereby expressly
and irrevocably elect as the sole judicial forum for the adjudication of any
matters arising under or in connection with this Agreement, and consent and
subject themselves to the jurisdiction of, the courts of the State of New York
and federal court located in New York, in respect of any matter arising and this
Agreement. Service of process, notices and demands of such, courts may be made
upon any party to this Agreement by personal service at any place where it may
be found or giving notice to such party as provided in paragraph 11.8 hereof.
14
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be executed as of the date first above written.
XXXXXX X. XXXXX
/s/
---------------------------------------
XXXXX HOTELS & CASINO RESORTS, INC.
By:/s/
------------------------------------
Name: Xxxxxx X. Xxxxxx
Title: Executive Vice President
15
Schedule A
MARKS
I. U.S. Registrations.
Xxxx Reg. Date Reg. No. Goods/Services
---- --------- -------- --------------
OYSTERS XXXXX 1/18/94 1,817,558 Hotel restaurant services
XXXXX PLAZA 10/30/90 1,620,477 Casino services; hotel,
bar and restaurant services
XXXXX XXX XXXXX CASINO-RESORT 3/8/94 1,825,666 See Attachment A hereto
XXXXX XXX MAHAL CASINO RESORT 3/2/93 1,755,971 Casino services; hotel
services
XXXXX XXX XXXXX CASINO RESORT 1/26/93 1,749,119 Casino services; hotel
AND DESIGN services
XXXXX CASTLE 10/3/89 1,559,355 Hotel services
XXXXX CASTLE 9/19/89 1,557,303 Entertainment services,
namely providing casino
services
II. New Jersey State Trademark Registration.
XXXXX XXX MAHAL 8/5/88 8/137 Casino - Hotel services;
bar and restaurant services
III. U.S. Application.
Xxxx Filing Date Serial No. Goods/Services
---- ----------- ---------- --------------
TRUMP'S CASTLE 3/23/94 74/-504,262 Entertainment services,
namely providing casino
services and hotel and
restaurant services
16
Schedule B
RETAINED CASINO MARKS
I. U.S. Registrations.
Xxxx Reg. Date Reg. No. Goods/Services
---- --------- -------- --------------
XXXXX XXX MAHAL CASINO - RESORT 3/8/94 1,825,666 See Attachment A hereto
XXXXX XXX XXXXX CASINO RESORT 3/2/93 1,755,971 Casino Services; hotel
services
XXXXX XXX MAHAL CASINO RESORT 1/26/93 1,749,119 Casino Services; hotel
AND DESIGN services
XXXXX CASTLE 10/3/89 1,559,355 Hotel services
XXXXX CASTLE 9/19/89 1,557,303 Entertainment services,
namely providing casino
services
II. New Jersey State Trademark Registration.
XXXXX XXX XXXXX 8/5/88 8,137 Casino - Hotel services;
bar and restaurant services
III. U.S. Application.
Xxxx Filing Date Serial No. Goods/Services
---- ----------- ---------- --------------
TRUMP'S CASTLE 3/23/94 74/504/262 Entertainment services,
namely providing casino
services and hotel and
restaurant services
17
Attachment A
Goods/Services for Registration No. 1,825,666: (Int. C1. 8) Spoons; (Int. Cl. 9)
Sunglasses, Signal Bells, and Magnets; Ant. Cl. 14) Jewelry; (Int. Cl. 16)
Adhesive Backed Note Paper Pads, Playing Cards, Posters, Pencils, Bail Point
Pens, and Stationery; (Int. Cl. 18) Umbrellas, Luggage, Up Packs, Tote Bags and
Carry-on Bags; (Int. C1. 20) Non-Metallic Money Clips, Plastic Keys Chains, and
ornamental Novelty Pins; (Int. Cl. 21) Mugs, Beer Steins, and Glasses for
Drinking Liquor; (Int. Cl. 24) Towels; (Int. Cl. 25) Clothing; namely, T-Shirts,
Jackets, Sweatshirts, Sweatpants, Sweaters, Hats, Visors, Socks, Boxer Shorts,
Robes, Shorts, Golf-Shirts, Night Shirts, and Beach Cover-ups; (Int. C1. 28)
Plush Toys, Board, Card and Parlor Games, Dice, and Gaming Equipment; namely,
Gaming Wheels; (Int. C1. 34) Ash Trays and Cigarette Lighters.
18
AMENDMENT TO TRADEMARK LICENSE AGREEMENT
AMENDMENT, dated as of April 17, 1996 (the "Amendment"), to the Trademark
License Agreement, dated as of June 12, 1995, by and between Xxxxxx X. Xxxxx, an
individual with an address at 000 Xxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000
("Xxxxx"), and Xxxxx Hotels & Casino Resorts, Inc., a Delaware corporation, with
a principal place of business at Mississippi Avenue and Xxx Xxxxxxxxx, Xxxxxxxx
Xxxx, Xxx Xxxxxx 00000 (the "Company").
W I T N E S S E T H
WHEREAS, Xxxxx and the Company are parties to that certain Trademark
License Agreement, dated as of June 12, 1995 (as the same may be amended,
modified or supplemented from time to time, the "License Agreement"); and
WHEREAS, as a result of the merger (the "Merger") of THCR Merger Corp., a
Delaware corporation ("Merger Sub") and a wholly owned subsidiary of the
Company, with and into Taj Mahal Holding Corp., a Delaware corporation ("Taj
Holding"), pursuant to the Agreement and Plan of Merger, dated as of January 8,
1996, among the Company, Taj Holding and Merger Sub, as amended by Amendment to
Agreement and Plan of Merger, dated as of January 31, 1996, and certain related
transactions, Xxxxx Hotels & Casino Resorts Holdings, L.P., a Delaware limited
partnership and a subsidiary of the Company, indirectly wholly owns Xxxxx Xxx
Mahal Associates, the owner and operator of the Xxxxx Xxx Xxxxx Casino Resort.
WHEREAS, Xxxxx and the Company have agreed that from and after the date
hereof, the License Agreement be amended subject to and upon the terms and
conditions set forth herein;
NOW, THEREFORE, the parties hereto hereby agree as follows:
1. Definitions. As used herein, all terms that are defined in the License
Agreement (except as modified hereby) shall have the same meanings herein.
2. Amendments.
2.1 The License Agreement is hereby amended by deleting the term
"Retained Casinos" each time such term appears therein and inserting in lieu
thereof the term "Retained Casino."
2.2 The definition of the term "Retained Casinos" set forth in
paragraph 1.12 of the License Agreement is hereby amended and restated in its
entirety to read as follows:
"1.12 "Retained Casino" shall mean Trump's Castle Hotel and
Casino ("Trump's Castle") located in Atlantic City, New Jersey."
2.3 Paragraph 2.2 of the License Agreement is hereby amended by
deleting the phrase "the Amended and Restated License Agreement between Xxxxx
and Xxxxx Xxx Xxxxx Associated dated April 1, 1991 and" and the word
"respectively," set forth therein.
2.4 Paragraph 3.1.3 of the License Agreement is hereby amended by
deleting the phrases "the Amended and Restated License Agreement between Xxxxx
and Xxxxx Xxx Xxxxx Associates dated April 1, 1991 and" and ", and the security
interests in the registrations "Xxxxx Castle" and "Xxxxx Plaza" as of October 3,
1990 in favor of Bankers Trust Company" set forth therein.
2.5 Schedule A to the License Agreement is hereby amended by adding
the following:
THE XXXXX XXX MAHAL filed 10/18/94 74/587,101 perfume and cologne
XXXXX XXX XXXXX filed 10/18/94 74/587,102 perfume and cologne
TAJ MAHAL filed 10/18/94 74/587,103 perfume and cologne
TAJ MAHAL filed 12/22/95 75,036,021 Perfume, toilet water
and cologne
2.6 Schedule B to the License Agreement is hereby amended and restated in
its entirety to read as follows:
Schedule B
RETAINED CASINO MARKS
I. U.S. Registrations
Xxxx Reg. Date Reg. No. Goods/Service
XXXXX CASTLE 10/3/89 1,559,355 Hotel services
XXXXX CASTLE 9/19/89 1,557,303 Entertainment services, namely
providing casino services
II. U.S. Application
Xxxx Reg. Date Reg. No. Goods/Service
TRUMP'S CASTLE 3/23/94 74-504,262 Entertainment services, namely
providing casino services and
hotel and restaurant services
3. License Agreement Ratified. Except to the extent hereby amended, the
License Agreement remains in full force and effect and is hereby ratified and
affirmed.
4. Effect of Amendment. This Amendment shall be limited precisely as
written and shall not be deemed (a) to be a consent granted pursuant to, or a
waiver or modification of, any other term or condition of the License Agreement
or any of the instruments or agreements referred to therein or (b) to prejudice
any right or rights which the parties hereto may now have or have in the future
under or in connection with the License Agreement or any of the instruments or
agreements referred to therein. Whenever the License Agreement is referred to in
the License Agreement or any of the instruments, agreements or other documents
or papers executed or delivered in connection therewith, such reference shall be
deemed to mean the License Agreement as modified by this Amendment.
5. Counterparts. This Amendment may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which taken
together shall constitute one and the same agreement, it being understood that
all of the parties need not sign the same counterpart.
6. Governing Law. THIS AMENDMENT, THE LEGAL RELATIONS BETWEEN THE PARTIES
AND THE ADJUDICATION AND THE ENFORCEMENT THEREOF, SHALL BE GOVERNED BY AND
INTERPRETED AND CONSTRUED IN ACCORDANCE WITH THE SUBSTANTIVE LAWS OF THE STATE
OF NEW YORK WITHOUT REGARD TO APPLICABLE CONFLICT OF LAW RULES OR PRINCIPLES,
EXCEPT THAT ANY QUESTIONS GOVERNED BY THE TRADEMARK STATUTES OF THE UNITED
STATES OF AMERICA SHALL BE GOVERNED BY AND DETERMINED PURSUANT TO AND/OR UNDER
SUCH STATUTES.
IN WITNESS WHEREOF, the parties hereto have caused this Amendment to be
duly executed as of the day and the year first above written.
/s/
------------------------------------
XXXXXX X. XXXXX
XXXXX HOTELS & CASINO RESORTS, INC.
By:/s/
--------------------------------
Name: Xxxxxx X. Xxxxxx
Title: Executive Vice President
