TRADEMARK SUBLICENSE AGREEMENT
THIS AGREEMENT, effective simultaneously upon the effectiveness of the
Affiliation Agreement between the parties hereto and Xxxxxx Communications
Corporation, is between WMC Partners, L.P., a limited partnership organized and
existing under the laws of the State of Delaware ("WMC") and Xxxxxx Cellular of
Arizona, Inc., an Oklahoma corporation ("Sublicensee").
WITNESSETH:
WHEREAS, WMC is a licensee of the marks AIRTOUCH and AIRTOUCH DESIGN which
are owned by AirTouch Communications, Inc. ("AirTouch");
WHEREAS, WMC has the right, pursuant to its Trademark License Agreement
from AirTouch, to grant a sublicense to Sublicensee for the marks, AIRTOUCH and
AIRTOUCH DESIGN;
WHEREAS, the parties hereto have entered into an Affiliation Agreement of
even date herewith (the "Affiliation Agreement") pursuant to which Operator's
System will offer Services (each as defined in the Affiliation Agreement or
herein) exclusively under the Licensed Marks;
WHEREAS, WMC believes that Sublicensee provides high quality goods and
services and further believes that Sublicensee will continue providing high
quality goods and services under the licensed marks; and
WHEREAS, WMC wishes to license to Sublicensee, and Sublicensee wishes to
obtain from WMC, the right to use certain trademarks subject to the restrictions
stated below;
NOW, THEREFORE, in consideration of the premises and of the mutual
promises, the parties hereto agree as follows:
I. DEFINITIONS
A. "LICENSED MARKS" means the trade name, "AirTouch Cellular", the
AIRTOUCH xxxx, and the AIRTOUCH DESIGN xxxx, as described in attached Exhibit 1.
B. "PRODUCTS" means subscriber equipment offered for sale or lease and
any goods and other property ancillary thereto.
C. "SERVICES" means commercial mobile radio services provided by Systems
(as defined in the Affiliation Agreement), including, without limitation, voice
and data transport, and the services ancillary thereto.
D. "TERRITORY" means the rural service area designated by the FCC as
Cellular Market No. Arizona 5 (Arizona RSA #5).
II. LICENSE GRANT
A. SCOPE. Effective as of the date hereof and subject to the terms and
conditions of this Agreement, WMC grants to Sublicensee a royalty-free,
nonexclusive, nontransferable, revocable sublicense to use the Licensed Marks in
connection with the Products and Services and the sale and marketing of the
Products and Services in the Territory. WMC and AirTouch retain the right to
concurrently use or license others to use the Licensed Marks in the Territory in
connection with any goods and/or services. Sublicensee is expressly prohibited
from adopting a corporate or partnership name that includes, or would be
confusingly similar to, the Licensed Marks. Sublicensee may, only if required
by Arizona law, file a fictitious business name statement using the words
AirTouch Cellular, but agrees to cancel and/or withdraw such filing when this
Agreement ends or is terminated.
B. QUALITY CONTROL. All uses of the Licensed Marks must appear
identical in substance to the Licensed Marks as they appear in Exhibit 1 and
the Manual as defined below. Sublicensee shall employ the guidelines stated
in the attached "Corporate Identity Program" (the "Manual"), and any other
reasonable standards that AirTouch may adopt from time to time and of which
Sublicensee has been notified, when preparing any materials in which the
Licensed Marks are displayed. Prior to adopting any use of the Licensed
Marks, including without limitation, the use of the Licensed Marks on
documents, including packaging and labels of any kind, Sublicensee shall
deliver, at its own expense, one sample of each manner in which the Licensed
Marks are to be used to: Xxxx Xxxxxxx, Senior Counsel, AirTouch
Communications, Inc., Xxx Xxxxxxxxxx Xxxxxx, 00xx Xxxxx, Xxx Xxxxxxxxx, XX
00000 ("AirTouch Quality Control"). For purposes of this Agreement, a sample
of a docu-
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ment means the document itself, and a sample of a Product means either the
Product or a very clear photograph of the Product. AirTouch Quality Control
shall have ten working days from the date it receives the samples to approve
or disapprove of the sample, unless otherwise mutually agreed. The method of
delivery shall be by overnight mail and the samples shall be deemed received
the next working day after Sublicensee sends them. In the event that
AirTouch Quality Control disapproves any sample, then Sublicensee shall not
employ that sample and shall immediately destroy all other like samples,
copies, and any other media bearing the disapproved manner of use of the
Licensed Marks.
C. RIGHT TO INSPECT. In addition to the foregoing, representatives of
WMC and AirTouch shall have the right, at all reasonable times, to inspect
the manner in which Sublicensee uses the Licensed Marks and the quality of
the Products on which the Licensed Marks are affixed. Such inspection may,
at the election of WMC or AirTouch, be by personal visit to Sublicensee or by
written request for information or samples. If the inspection is by request
for samples, then the entity conducting the inspection shall reimburse
Sublicensee for the cost of shipping said samples. Sublicensee agrees to
cooperate with such inspections. In the event that WMC or AirTouch
determines that one or more manners in which Sublicensee uses the Licensed
Marks are inconsistent with the Manual or other standards adopted by AirTouch
and of which Sublicensee has notice, or that the quality of any of the
Products on which the Licensed Marks are affixed is not consistent with
maintaining the goodwill inherent in the Licensed Marks, then WMC or AirTouch
shall so notify Sublicensee, and Sublicensee shall immediately cease use of
any such disapproved usage of the Licensed Marks and shall destroy all
copies, samples and other media that bear the disapproved usage. Within
thirty days of notice from WMC or AirTouch that a particular usage has been
disapproved, Sublicensee shall certify in writing to the person providing the
notice that Sublicensee has destroyed all media that bear said usage.
D. RECOGNITION OF OWNERSHIP. Sublicensee recognizes AirTouch's title
to the Licensed Marks, and shall not at any time do or suffer to be done any
act or thing which will in any way impair the rights of AirTouch in and to
the Licensed Marks or the goodwill inherent in said Licensed Marks. It is
understood that Sublicensee shall not acquire and shall not claim any title
to the Licensed Marks adverse to AirTouch by virtue of the license granted
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herein, or through Sublicensee's use of said Licensed Marks, it being the
intention of the parties that all use of the Licensed Marks by Sublicensee
shall at all times inure to the benefit of AirTouch. Sublicensee is estopped
from challenging the validity of the Licensed Marks or from setting up any
claim adverse to AirTouch.
E. SALES OUTSIDE TERRITORY. Sublicensee agrees not to sell any Products
bearing the Licensed Marks with knowledge that such products are to be resold
outside the Territory. Such sales shall constitute a breach of this Agreement
if made with Sublicensee's knowledge. If Sublicensee learns of any such sales,
it shall use its best efforts to obtain possession of said Products and to
prevent such sales in the future, including refusing to sell Products bearing
the Licensed Marks to the persons or entities responsible for the resale outside
the Territory.
III. INFRINGEMENTS
A. INFRINGEMENT BY OTHERS. Sublicensee shall review regularly the
market for Products and Services in the Territory and shall inform AirTouch
or WMC promptly of any possible infringement of, or unfair competition
affecting, the Licensed Marks which comes to the attention of Sublicensee.
In the event affirmative action is taken against any such possible
infringement or act of unfair competition, Sublicensee agrees to assist, in
whatever reasonable manner is requested, and at the expense of the requester.
Recovery of damages resulting from any such action shall be solely for the
account of AirTouch. Sublicensee shall have no right to initiate any action
to defend the Licensed Marks.
B. ACTIONS AGAINST SUBLICENSEE OR WMC. Should either party be involved
as a defendant in judicial action under the trademark laws or with regard to an
act of unfair competition in the Territory with regard to the Licensed Marks,
the parties agree to cooperate with each other to the greatest possible extent
in defending such an action.
IV. TERM AND TERMINATION
A. TERM. This Agreement will have an initial term of 20 years from
the date hereof. Thereafter, the term will automatically be extended for
additional five-year periods unless either
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party makes a valid election not to renew this Agreement. An election not to
renew will be valid only if in writing and delivered to the other party at
least one year prior to the expiration of the then current term. In the
event of a termination under this Paragraph, Sublicensee shall immediately
cease implementation of any new or expanded uses of the Licensed Marks and
shall discontinue existing uses of the Licensed Marks in accordance with the
procedure stated in Paragraph IV E below.
B. OPTIONAL TERMINATION. If Sublicensee fails to use one or more of
the Licensed Marks in the Territory within any given term that this Agreement
is in effect, then WMC may, in its sole discretion, terminate this Agreement
as to the unused Licensed Xxxx or Marks. In the event of a termination under
this Paragraph, Sublicensee shall immediately cease implementation of any new
or expanded uses of the Licensed Marks and shall discontinue existing uses of
the Licensed Marks in accordance with the procedure stated in Paragraph IV E
below.
C. TERMINATION FOR UNAUTHORIZED USE. If Sublicensee uses the Licensed
Marks for purposes other than the sale of Products and Services or promoting
the sale of Products and Services within the Territory or if Sublicensee
fails to use the Licensed Marks in accordance with Section II above or any
other requirements of this Agreement, then WMC shall notify Sublicensee of
such failure by written notice sent by overnight courier or facsimile,
including a detailed statement of the improper use. If Sublicensee fails to
correct such improper use within ten days after the date of such notice, then
WMC or AirTouch may seek an injunction to compel Sublicensee to discontinue
the specific unauthorized use of the Licensed Marks and/or terminate this
Agreement by written notice sent by overnight courier or facsimile to
Sublicensee. In the event of such termination, Sublicensee shall immediately
cease implementation of any new or expanded uses of the Licensed Marks and
shall discontinue existing uses of the Licensed Marks in accordance with the
procedure stated in Paragraph IV E below.
D. TERMINATION OF AFFILIATION AGREEMENT. If the Affiliation Agreement
terminates pursuant to Paragraph 9 thereof, then WMC may, in its sole
discretion, provide written notice of termination of this Trademark
Sublicense Agreement sent by overnight courier or facsimile. The provisions
of Paragraph IV E below shall govern Sublicensee's transition away from the
Licensed Marks.
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E. PROCEDURE UPON TERMINATION; LICENSED MARKS REMOVAL PERIOD. Upon
termination of this Agreement pursuant to Paragraphs IV A through D above,
Sublicensee shall have three months in which to remove the Licensed Marks
from all advertisements, packaging, labels or other documentation created by
Sublicensee. Within six months after termination of this Agreement pursuant
to Paragraphs IV A through D above, Sublicensee shall remove the Licensed
Marks from all Products and any other tangible items on which the Licensed
Marks have been affixed or used by Sublicensee. At the end of each such
period, WMC shall be allowed reasonable access to Sublicensee's premises to
observe and inspect to insure that Sublicensee is in compliance with the
above requirements and that the Licensed Marks are no longer in use.
Continued use of the Licensed Marks beyond the above specified removal
periods shall constitute infringement of the Licensed Marks by Sublicensee
and shall give rise to AirTouch's remedy of specific performance in
accordance with Paragraph IV F. Sublicensee shall not adopt any trade name,
trademarks, or service marks that are confusingly similar to the Licensed
Marks in the event of termination of this Agreement. Sublicensee may not,
after termination of this Agreement, use the Licensed Marks in any manner,
including without limitation, indicating that Sublicensee was formerly called
"AirTouch" or "AirTouch Cellular."
F. AIRTOUCH'S REMEDY OF SPECIFIC PERFORMANCE. Sublicensee
acknowledges that its failure to cease use of the Licensed Marks in
accordance with the provisions of this Agreement after termination thereof
will result in immediate and irreparable harm to AirTouch for which there is
no adequate remedy at law. AirTouch shall be entitled to bring an action or
proceeding for specific performance, injunctive relief and/or other equitable
relief to compel Sublicensee to discontinue the infringement of the Licensed
Marks, to cease and desist all unauthorized use of the Licensed Marks, to
take all affirmative acts necessary to ensure discontinuance of use of the
Licensed Marks after termination of this Agreement, and to obtain such relief
as may be necessary and proper.
G. BREACH. If Sublicensee breaches any provision of this Agreement,
WMC may immediately give written notice of intention to terminate within
thirty days of the date of the writing, and, unless Sublicensee notifies WMC
in writing of a correction of such breach within said period, this Agreement
shall automatically terminate at the expiration of the thirty day notice
period. WMC
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may inspect Sublicensee's premises during the period sixty to ninety days
after this Agreement has terminated to ensure that Sublicensee is no longer
using the Licensed Marks. WMC and AirTouch retain all of its rights and
remedies to prevent Sublicensee from continuing to use the Licensed Marks
after termination of this Agreement due to breach.
H. NO DAMAGES. Notwithstanding any other provision in this or any
other agreement between the parties, should this Trademark Sublicense
Agreement be terminated for any reason, neither party shall be able to claim
from the other party any actual, consequential or incidental damages.
I. CONTINUING OBLIGATIONS. Termination of this Agreement for any
reason shall not affect those obligations which, from the context hereof, are
intended to survive termination of this Agreement.
J. NO WAIVER. Any waiver by either party of a breach of any term or
condition of this Agreement shall not be considered as a waiver of any
subsequent breach of the same or any other term or condition thereof.
K. ATTORNEYS' FEES. The prevailing party in any action arising under
this Agreement shall be entitled to collect its reasonable attorneys' fees
from the non-prevailing party. In the event that any such action is resolved
by a settlement agreement, then neither party shall be deemed the "prevailing
party" and each party shall be responsible for its own attorneys' fees. In
the event of bankruptcy of one of the parties hereto, the attorneys' fees of
the nondebtor party, incurred in dealing with a bankruptcy, shall be
considered actual pecuniary loss under 11 USC section 365(b)(1).
V. MISCELLANEOUS
A. PARAGRAPH HEADINGS. The paragraph headings are for convenience
only and shall not be deemed to affect in any way the language of the
provisions to which they refer.
B. GOVERNING LAW. This Agreement shall be governed by and construed
in accordance with the laws of the State of California without reference to
choice of law provisions. Selection of California law as the governing law
shall not be deemed to invoke
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any provision of California law which would not otherwise be applicable to
the relationship contemplated hereunder. All actions arising under this
Agreement, including without limitation, actions regarding the interpretation
or breach of the Agreement, shall be brought in the federal or state courts
of California.
C. NOTICES. All notices or other communications hereunder to WMC, except
as otherwise specified above, shall be sent to:
WMC Partners, L.P.
Legal Department
0000 Xxx Xxxx
Xxxxxx Xxxxx, XX 00000
Attn: Vice President - Legal
and if to Sublicensee, shall be sent to:
Xxxxxx Communications Corporation
00000 X. Xxxxxxxx Xxxxxxxxx
Xxxxxxxx Xxxx, XX 00000
Attn: Xxxxxxx Xxxxxx, President
with a copy to:
Xxxxxxx & Xxxxxx
0000 Xxxxxxxx Xxxxx Xxxxx
Xxxxxxxxxx, XX 00000
Attn: Xxxxx X. Xxxxxxx, Esq.
Any such notice or communication shall be in writing and shall be deemed to
have been received on the day of delivery if sent via facsimile with
confirmation of valid transmission, or after seven calendar days from mailing
if sent via certified mail, postage prepaid or on the next business day if
sent by overnight courier. Either party may designate a new address to which
notices or other communications may be sent by giving notice to the other
party.
D. SEVERABILITY. If any provision of this Agreement shall be held
illegal or invalid by any court, this Agreement shall be construed and
enforced as if such illegal or invalid provision had not been contained
herein, and this Agreement shall be deemed an agreement of the parties to the
full extent permitted by law.
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If any provision shall be declared invalid or unenforceable because of its
breadth, scope or duration, such provision shall be severed from the rest of
this Agreement, and the remaining portions of the Agreement shall remain
valid and enforceable.
E. ASSIGNABILITY. Sublicensee may not assign or sublicense any of its
rights or delegate any of its duties under this Agreement. Any attempted
assignment, sublicense, or delegation by Sublicensee shall be null and void.
F. COMPLETE AGREEMENT. This Agreement, together with the Affiliation
Agreement, embodies all of the terms and conditions of the agreement between
the parties with respect to the matters set forth herein. There are no
statements, terms, conditions, representations, or warranties which have not
been embodied herein.
G. MODIFICATIONS. This Agreement may not be modified or amended,
except in a writing signed on behalf of both parties by their duly authorized
representatives which refers specifically to this Agreement.
H. FORCE MAJEURE. Neither party shall be in default under this
Agreement by reason of its delay in the performance of or failure to perform
any of its obligations herein if such delay or failure is caused by strikes,
acts of God or the public enemy, riots, incendiaries, interference by civil
or military authorities, compliance with governmental laws, rules, and
regulations, delays in transit or delivery, or any fault beyond its control
or without its fault or negligence.
I. WAIVER. The failure of either party at any time to require
performance of any provision of this Agreement by the other party shall not
be deemed a waiver and shall not deprive that party of its full right to
require such performance in a particular instance or at any other time. Any
waiver must be in a writing executed by a duly authorized representative of
the waiving party.
J. DISPUTE RESOLUTION. Any dispute regarding this Agreement,
including without limitation, the interpretation, performance, or termination
of this Agreement, shall be handled pursuant to the dispute resolution
provisions stated in Paragraph 13(n) of the Affiliation Agreement.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
and delivered by their duly authorized representatives as of the day and year
first set forth above.
WMC PARTNERS, L.P.
By /SIGNED/
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Print Name
-----------------------
Title
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XXXXXX CELLULAR OF ARIZONA, INC.
By /SIGNED/
-------------------------------
Print Name
-----------------------
Title
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EXHIBIT 1
LICENSED MARKS
1. The AIRTOUCH xxxx referred to in Paragraph I A above shall be used
only in the following manner:
AIRTOUCH-TM- or AirTouch-TM-
Sublicensee must use fonts from the Times or Univers families when this xxxx is
used on Products or in advertising for Products.
2. The AIRTOUCH DESIGN xxxx referred to in Paragraph IA above shall
conform to the Manual referred to in Paragraph II B above. Sublicensee shall
always place the letters "TM" as a superscript directly behind the letter "H"
in the AIRTOUCH DESIGN or such other designation as WMC or AirTouch may
direct. Sublicensee may not vary the typeface, spacing, or general structure
or configuration of the AIRTOUCH DESIGN xxxx. Sublicensee may employ
different sizes' of the AIRTOUCH DESIGN xxxx so long as those different sizes
conform the Manual. Use of color in connection with the AIRTOUCH DESIGN must
also conform to the Manual.
3. The "AirTouch Cellular" trade name referred to in Paragraph I A above
shall be used on in the following manner:
AIRTOUCH CELLULAR or AirTouch Cellular
Sublicensee must use fonts from the Times or Univers families when this trade
name is used on Products or in advertising for Products.
