EXHIBIT 10.4
ASSIGNMENT OF TRADEMARK
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This ASSIGNMENT OF TRADEMARK is made as of this 14th day of January,
2004 ("Effective Date"), by and between XSTREAM BRANDS, INC., a Florida
corporation with its principal place of business at 0000 X.X. 00xx Xxxxxx, Xxx
0-X, Xx. Xxxxxxxxxx, XX 00000 ("Assignee") and SQUEEZE BEVERAGES, INC., a
Massachusetts corporation with its principal place of business at Xxxx Xxxxx
Xxx, X.X. Xxx 000, Xxxxxxxxxxxx, XX 00000 ("Assignor").
RECITALS
WHEREAS Assignor hereby agrees to sell, transfer and assign the Xxxx
"SQUEEZE" for carbonated flavored soft drinks and xxxxxxx water, and related
common law rights to that xxxx, subject to the terms and conditions of this
Agreement.
WHEREAS Assignee hereby agrees to purchase the Xxxx "SQUEEZE" for
carbonated flavored soft drinks and xxxxxxx water, subject to the terms and
conditions of this Agreement.
NOW, THEREFORE, for the good and valuable consideration, the receipt
and sufficiency of which is hereby acknowledged and described more particularly
herein, Assignor and Assignee, intending to be legally bound, agree as follows:
INCORPORATION OF RECITALS The recitals set forth above are expressly
incorporated herein by reference in their entireties to form part of the terms
and conditions of this Agreement.
ARTICLE I
ASSIGNMENT OF TRADEMARKS
SECTION 1.1 ASSIGNMENT. Assignor desires to transfer to Assignee all of
his rights and interests in the Xxxx "SQUEEZE" for carbonated flavored soft
drinks and xxxxxxx water, including all variations thereof such as any spelling,
formatives, phonetic variations and stylized designs of the same, and including,
but not limited to (i) Application Serial No. 74/489089 for the Xxxx "SQUEEZE"
for "carbonated flavored soft drinks and xxxxxxx water", now pending before the
United States Patent and Trademark Office, (ii) Registration No. 1,955,605 for
the Xxxx "SQUEEZE" for "carbonated flavored soft drinks and xxxxxxx water", now
registered in the United States Patent and Trademark Office, and (iii) all
goodwill associated therewith (the "Marks"). Assignor has agreed to sell and has
hereby sold, assigned, and transferred unto Assignee, including its successors,
assigns, heirs and administrators, all of Assignor's individual and jointly held
rights, title and interests in and to the Marks and the application thereof,
including any confusingly similar marks and the right to xxx for damages for all
past infringements occurring prior to the effective date of this Assignment, and
to any and all marks and registrations which may evolve therefrom; and including
all goodwill associated with the Marks transferred hereby. Assignee hereby
accepts the assignment of the Marks from Assignor.
Assignor also assigns all of its individual and jointly held rights,
title and interests in and to the Marks in all foreign countries, and all
applications for registration of the Marks in foreign
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countries and any registration(s) which may evolve therefrom, including the
right to claim International Convention priority.
SECTION 1.2 ABBREVIATED ASSIGNMENT EXHIBIT. Assignor shall execute the
abbreviated assignment document shown in Exhibit A to this Agreement, which will
permit Assignee to request recordal of the assignments made herein without
making of record the entire Agreement between the parties.
SECTION 1.3 WAIVER. Assignor shall not, at any time, contest the
validity of the Marks, or take any action that would impair the value of the
Marks. Without limitation of the foregoing, Assignor expressly represents and
warrants that it shall not resume use of the Marks, or any word or symbol that
is confusingly similar to the Marks or a colorable imitation thereof.
ARTICLE II
REPRESENTATIONS AND WARRANTIES
SECTION 2.1 TITLE TO ASSETS. Assignor has full power and authority to
own the Marks and Application ("Assets") and good and marketable title to the
Assets covered by this Agreement. Assignor's title to the Assets are free and
clear of any liens, encumbrances, or other defects.
SECTION 2.2 AUTHORITY TO SELL. Assignor has full power and authority to
own the Assets and has complied with all the requirements of any applicable law
of the States of Florida and Massachusetts relative to the sale of the Assets
described in this Agreement and of the consents and approvals that may be
required by law or by agreements to which Assignors may be a party will be
obtained.
SECTION 2.3 LIABILITIES. There are no other liabilities to which
Assignor or its Assets are subject.
SECTION 2.4 LITIGATION. There is now no litigation pending against
either Assignor of which it or its officers are aware that will, might, or could
affect consummation of the transfer of title of the Assets in good and
marketable condition to Assignee and Assignor is not aware of any threatened
litigation which may affect the consummation of the conveyance described in this
Agreement.
SECTION 2.5 CORPORATE ACTION. All necessary corporate action has been
taken by Assignor to authorize the execution, delivery and performance of this
Assignment, which has been duly and validly authorized, executed and delivered
by Assignor and constitutes the valid and binding obligation of Assignor
enforceable against them.
SECTION 2.6 CONSENTS. All consents and approval required for
transferring the Assets hereunder have been obtained or will be obtained. No
consent of any court, governmental agency or other public authority is required
as a condition to the enforceability of this assignment.
SECTION 2.7 NO ENCUMBRANCE. Assignor acknowledges that the Assets being
transferred are not encumbered by any liens or the subject matter of any known
or anticipated
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litigation. Assignor further acknowledges and agrees that the consideration paid
by Assignee for the Assets is fair and adequate consideration.
SECTION 2.8 NO INFRINGEMENT. Assignor has not received any notice that
it is infringing upon the research, development, processes, methods, techniques,
inventions, know how, patents, patent rights, trade name, trademarks and service
marks of any other party.
SECTION 2.9 CONTINUED USE. Assignor represents that it, together with
and through its predecessors-in-interest, has adopted and continuously used the
Marks, since at least as early as October 31, 1937, to indentify carbonated
flavored soft drinks and xxxxxxx water.
SECTION 2.10 CONSENT TO REGISTRATION. Assignor acknowledges that it
entered into a Consent to Registration on January 17, 1995 with Xxxxxxx Xxxxxx
Water Company and this agreement is valid and in full force and effect. A copy
of the Consent to Registration Agreement is attached hereto and made a part
hereof as Exhibit "B".
ARTICLE III
FURTHER ACTIONS BY THE ASSIGNOR
SECTION 3.1 ACTIONS BY ASSIGNOR.Assignor, without the payment of any
additional consideration, agrees to execute any other documents or to provide
any further materials or documentation necessary in order to fulfill the
provisions of or the purpose of this Assignment or to substantiate Assignee's
use and ownership of the Marks.
ARTICLE IV
PURCHASE PRICE
SECTION 4.1 PURCHASE. At Closing, Assignee agrees to deliver four
hundred thousand (400,000) shares of restricted common stock ("Restricted
Stock") of Xstream Beverage Group, Inc. ("XSBG"), par value 0.001, to Assignor
in exchange for the assignment of the Marks, that are the subject of this
Agreement. Assignor agrees to execute the Investment Letter, a copy of which is
attached hereto and made a part hereof as Exhibit "C".
SECTION 4.2 PIGGY-BACK REGISTRATION. XSBG agrees to grant "piggy-back"
registration rights in connection with the Restricted Stock referenced in
Section 4.1 above as follows: If at any time or from time to time, XSBG shall
decide to register any of its common stock, either for its own account or the
account of a security holder or holders (except in an S-8 registration), in a
registration statement covering the sale of XSBG's common stock under the
Securities Act of 1933, as amended, XSBG will: (1) promptly give to Assignor
written notice thereof; and (2) include in such registration statement (and any
related qualification under blue sky laws) all the Restricted Stock specified in
a written request, made within fifteen (15) days after receipt of such written
notice from XSBG, except as set forth in Section 4.3 below.
SECTION 4.3 UNDERWRITING. In the event that the registration statement
filed pursuant to Section 4.2 shall be for an underwritten public offering, the
Assignor's piggy-back registration rights pursuant to Section 4.2 above shall be
conditioned upon the Assignor entering into an underwriting agreement in
customary form with the managing underwriter or underwriters
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selected for such underwriting by XSBG. Notwithstanding any other provision of
this Section 4.3, if the managing underwriter determines that marketing factors
require a limitation of the number of shares to be underwritten, the managing
underwriter may limit the number of Restricted Stock to be included in the
registration and underwriting, or may exclude the Restricted Stock entirely from
such registration and underwriting. XSBG shall so advise the Assognor and the
number of shares of Restricted Stock that may be included in the registration
and underwriting shall be allocated among the Assignor and any other selling
shareholders in proportion (excluding warrants or their equivalent issued to the
underwriter of a registered public offering which may be included in their
entirety), as nearly as practicable, to the respective amounts of securities
entitled to inclusion in such registration held by the Assignor and such selling
shareholders at the time of filing the registration statement. If the Assignor
disapproves of the terms of any such underwriting, it may elect to withdraw
therefrom by written notice to XSBG and the underwriter. Any Restricted Stock
excluded or withdrawn from such underwriting shall not be transferred in a
public distribution prior to 90 days after the effective date of the
registration statement relating thereto.
ARTICLE V
MISCELLANEOUS
SECTION 5.1 NOTICES All notices relating to this Agreement must be in
writing and delivered either in person or by certified mail or registered mail,
postage prepaid, return receipt requested, to the person(s) and address
specified on the first page of this Agreement or such updated address as either
party may subsequently designate by notice in writing. Notice shall be effective
immediately upon receipt.
SECTION 5.2 ENTIRE AGREEMENT AND AMENDMENT This Agreement supersedes
all prior discussions and agreements between the parties with respect to the
subject matter hereof and contains the sole and entire agreement between the
parties hereto with respect to the subject matter hereof. This Agreement may be
amended, supplemented or modified only by a written instrument duly executed by
or on behalf of the Assignor and the Assignee. The terms and provisions of this
Agreement are intended solely for the benefit of each party hereto and their
respective successors or permitted assigns, and it is not the intention of the
parties to confer third-party beneficiary rights, and this Agreement does not
confer any such rights, upon any other person.
SECTION 5.3 EXPENSES Except as otherwise provided in this Agreement,
each party will pay its own costs and expenses incurred in connection with this
Agreement and the transactions contemplated hereby.
SECTION 5.4 CUMULATIVE REMEDIES The rights, remedies, powers and
privileges herein provided are cumulative and not exclusive of any rights,
remedies, powers and privileges provided by law.
SECTION 5.5 HEADINGS AND REFERENCES Headings are included solely for
convenience, are not themselves to be considered a part of the terms and
conditions of this Agreement and are
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not intended to be full and accurate descriptions of the contents thereof. Any
reference to a paragraph shall be construed to refer to all subparts and/or
other portions of that paragraph.
SECTION 5.6 WAIVER Any term or condition of this Agreement may be
waived at any time by the party that is entitled to the benefit thereof, but no
such waiver shall be effective unless set forth in a written instrument duly
executed by or on behalf of the party waiving such term or condition.
SECTION 5.7 BINDING EFFECT This Agreement nor any right, interest or
obligation hereunder may be assigned (by operation of law or otherwise) by the
Assignor or the Assignee without the prior written consent of the Assignor or
the Assignee, and any attempt to do so will be void. Subject to the preceding
sentence, this Agreement is binding upon, inures to the benefit of and is
enforceable by the parties hereto and their respective heirs, executors,
personal representatives, successors and assigns.
SECTION 5.8 SEVERABILITY If any provision of this Agreement is held to
be illegal, invalid or unenforceable under any present or future law, and if the
rights or obligations of any party hereto under this Agreement will not be
materially and adversely affected thereby, (a) such provision will be fully
severable, (b) this Agreement will be construed and enforced as if such illegal,
invalid or unenforceable provision had never comprised a part hereof, (c) the
remaining provisions of this Agreement will remain in full force and effect and
will not be affected by the illegal, invalid or unenforceable provision or by
its severance here from and (d) in lieu of such illegal, invalid or
unenforceable provision, there will be added automatically as a part of this
Agreement a legal, valid and enforceable provision as similar in terms to such
illegal, invalid or unenforceable provision as may be possible.
SECTION 5.9 GOVERNING LAW, JURISDICTION AND VENUE The validity,
construction and performance of this Agreement, and the legal relations between
the parties to this Agreement, each shall be governed by and construed in
accordance with the laws of the State of Florida (excluding that body of law
applicable to choice of laws). Each of the parties hereby agrees that, except
for any appeals, the sole and exclusive venue for any and all disputes relating
to this Agreement, its making, construction, validity, enforceability and/or
performance shall be in the state courts sitting in Broward County, Florida
and/or the United States District Court for the Southern District of Florida and
each hereby voluntarily consents to the personal jurisdiction of said courts and
waives any and all objections to such personal jurisdiction and/or venue.
SECTION 5.10 CONSTRUCTION The parties hereto intend that each
representation, warranty, and covenant contained herein shall have independent
significance. If any party has breached any representation, warranty or covenant
contained herein in any respect, the fact that there exists another
representation, warranty or covenant relating to the same subject matter
(regardless of the relative levels of specificity) that the party has not
breached shall not detract from or mitigate the fact that the party is in breach
of the first representation, warranty or covenant.
SECTION 5.11 COUNTERPARTS This Agreement may be executed by the parties
in one or more counterparts, each of which when so executed shall be deemed an
original hereof and all of
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which, individually and collectively, shall constitute one single contract
between the parties.This Agreement may be executed and delivered via facsimile
transmission.
SECTION 5.12 INDEMNIFICATION BY ASSIGNOR. Assignor shall defend,
indemnify and hold harmless Assignee under this Agreement from and against any
and all claims losses, costs, liabilities and expenses, including reasonable
fees of attorneys and other professionals, arising out of or related to any
breach or claimed breach of any of Assignor's representations and warranties
contained in Article II above. Assignee agrees to provide to Assignor prompt
written notice of any third party claim covered by the foregoing indemnity that
is made against and received by Assignee and to provide Assignor with such
reasonable cooperation and assistance as Assignor may request from time to time
in the defense or settlement thereof.
SECTION 5.13 FORCE MAJEURE Neither of the parties shall be responsible
for failure to fulfill its obligations under this Agreement due to causes beyond
its reasonable control, including but not limited to failure of non parties to
furnish equipment, software, parts or labor, war, sabotage, insurrection, riots,
civil disobedience and the like, acts of governments and agencies thereof, labor
disputes, accidents, fires or Acts of God. In such event, the delayed party
shall perform its obligations hereunder within a reasonable time after the cause
of the failure has been remedied, and the other party shall be obligated to
accept such delayed performance. During any period that performance of its
obligations by one party is delayed or suspended pursuant to this Paragraph
6.13, the performance of the obligations of the other party shall be similarly
delayed or suspended, including, without limitation, any obligation of a party
to pay money owed based on delayed performance of obligations of the other
party.
SECTION 5.14 VOLUNTARY AGREEMENT/REVIEW The parties each acknowledge,
represent and warrant that they have reviewed and understand this Agreement in
its entirety and that they have entered into this Agreement freely and
voluntarily.
SECTION 5.15 NO JOINT VENTURE Neither party is and neither party shall
represent itself to be the agent, employee, franchise, joint venturer, officer
or partner of the other party. Nothing herein contained shall be construed to
place the parties in the relationship of partners or joint venturers, and
neither party shall have the power to obligate or bind the other party in any
manner whatsoever.
SECTION 5.16 CONFIDENTIALITY OF AGREEMENT. Each party agrees to keep
confidential and not to disclose to any third party the terms and conditions of
this Agreement or the fact that the parties have entered into this Agreement;
provided, however, that each party may disclose the terms and conditions of this
Agreement (i) in confidence, to its banks, lawyers, accountants, other
professional advisors, and potential investors, (ii) in connection with its
enforcement of rights under this Agreement, and (iii) as may be required by law.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the day and year first above written.
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ASSIGNOR: SQUEEZE BEVERAGES, INC.
By:
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Print:
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Title:
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Date:
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Before me personally appeared the individual signing on behalf of
Assignor, known to me or proved to me on the basis of satisfactory evidence to
be the person who represents the Assignor subscribed to in this Agreement, and
acknowledged that he/she executed the same.
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Notary Public
ASSIGNEE: XSTREAM BRANDS, INC
By: S/s Xxxxx X Xxxxxxx
Print:
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Title:
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Date:
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Before me personally appeared the individual signing on behalf of
Assignee, known to me or proved to me on the basis of satisfactory evidence to
be the person who represents the Assignee subscribed to in this Agreement, and
acknowledged that he/she executed the same.
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Notary Public
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AS TO ARTICLE IV ONLY: XSTREAM BEVERAGE GROUP, INC
By: S/S Xxxxx X Xxxxxxx
Print:
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Title:
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Date:
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Before me personally appeared the individual signing on behalf of
Xstream Beverage Group, Inc., known to me or proved to me on the basis of
satisfactory evidence to be the person who represents Xstream Beverage Group,
Inc., subscribed to in this Agreement, and acknowledged that he/she executed the
same.
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Notary Public
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