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EXHIBIT 10.4
FORM OF
TRADEMARK TRANSITION LICENSE AGREEMENT
THIS TRADEMARK TRANSITION LICENSE AGREEMENT (this "Trademark Transition
License Agreement") is made and entered into as of ______, 1999, (the "Effective
Date") by and between Tenneco Inc., a Delaware company to be renamed Tenneco
Automotive Inc., a corporation organized and existing under the laws of the
State of Delaware, whose principal place of business is located at 000 Xxxxx
Xxxxx Xxxxx, Xxxx Xxxxxx, XX 00000 ("Licensor"), and Tenneco Packaging Inc. (to
be renamed), a corporation organized under the laws of the State of Delaware,
whose principal place of business is located at 0000 Xxxx Xxxxx Xxxxx, Xxxx
Xxxxxx, XX 00000 ("Licensee").
WHEREAS, Pursuant to the terms of that certain Distribution Agreement
dated _____, 1999, (the "DISTRIBUTION AGREEMENT"), Licensee and Licensor have
agreed to cause this Trademark Transition License Agreement to be entered into
regarding the use of certain trademarks by Licensee.
WHEREAS, Licensor has adopted and is using the name and xxxx "Tenneco",
alone and in combination with other terms and/or symbols and variations thereof,
in the United States and elsewhere throughout the world and is the owner of the
U.S. Trademark Applications and the U.S. Trademark Registrations, listed on
Exhibit A of this Agreement, from the United States Patent and Trademark Office,
as well as their foreign counterparts, and other foreign trademarks listed on
Exhibit A (hereinafter individually and collectively referred to as the
"Trademark"); and
WHEREAS, Licensee previously has used the Trademark and is desirous of
continuing to use said Trademark with respect to the goods and services listed
on Exhibit B, to assist Licensee during its transition to a new identity and for
the limited purposes more fully described below;
NOW, THEREFORE, in consideration of the foregoing Recitals which are
hereby incorporated into the operative terms hereof, the mutual promises
contained in this Agreement and good and valuable consideration from the
Licensee to the Licensor, the receipt and sufficiency of which is hereby
acknowledged by said Licensor, the parties hereby agree as follows:
1. LICENSE. Licensor grants to Licensee and its Subsidiaries (as such
term is defined in the Distribution Agreement), the limited, non-exclusive right
to use the Trademark under the common law and under the auspices and privileges
provided by any of the registrations covering the same during the term of this
Agreement, and Licensee hereby undertakes to use the Trademark as follows:
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a. For a period of sixty (60) days following the Effective
Date of this Agreement, Licensee and its Subsidiaries may continue to use the
Trademark in their corporate names. After sixty (60) days following the
Effective Date of this Agreement, or as soon thereafter as reasonably practical
in non-U.S. jurisdictions, Licensee shall change or cause to be changed, if
necessary, such corporate names to delete the Trademark or any other word that
is confusingly similar to the Trademark.
b. For a period of nine (9) months following the Effective
Date of this Agreement, Licensee and its Subsidiaries shall be entitled to use
their supplies and documents which have imprinted thereon the Trademark to the
extent that such supplies and documents were existing inventory prior to the
Effective Date of this Agreement. Licensee shall not print or permit to be
printed any new supplies or documents bearing the Trademark from and after the
Effective Date of this Agreement.
c. For a period of eighteen (18) months from the Effective
Date of this Agreement, Licensee and its Subsidiaries may use the Trademark on
signs, displays or other identifications or advertising material (other than
supplies or documents, which shall be governed by paragraph b above), in each
case to the extent existing as of the date hereof. Licensee shall not, and shall
not permit its Subsidiaries to, prepare or install any new signs, displays or
other identifications or advertising material bearing the Trademark. Licensee
shall remove or cause to be removed any and all references to the Trademark from
any and all signs, displays or other identifications or advertising material by
the end of the eighteen (18) month period.
2. QUALITY OF SERVICES. Licensee agrees to maintain and cause its
Subsidiaries to maintain such quality standards as shall be prescribed by
Licensor in the conduct of the business operations with which the Trademark is
used. Licensee shall, and shall cause its Subsidiaries to, use the Trademark
only with goods and services listed in Exhibit B rendered by Licensee and/or its
Subsidiaries in accordance with the terms of this Agreement and with the
guidance and directions furnished to the Licensee by the Licensor, or its
authorized representatives or agents, from time to time, if any; but always the
quality of the goods and services shall be satisfactory to the Licensor or as
specified by it.
3. INSPECTION. Licensee will permit duly authorized representatives of
the Licensor to inspect the premises of Licensee and/or its Subsidiaries using
the Trademarks at all reasonable times, for the purpose of ascertaining or
determining compliance with Paragraphs 1 and 2 hereof.
4. USE OF TRADEMARK. When using the Trademark under this Agreement,
Licensee undertakes to, and shall cause its Subsidiaries to, comply with all
laws pertaining to the Trademark. This provision includes compliance with
marking requirements. Licensee represents and warrants that all goods and
services to be sold under the Trademark and the marketing, sales, and
distribution of them shall meet or exceed all federal, state, local and foreign
laws, ordinances, standards, regulations, and guidelines pertaining to such
products or activities, including, but not limited to those pertaining to
product safety, quality, labeling and propriety. Licensee agrees that it will
not package, market, sell, or distribute any goods or services or cause or
permit any goods or services to be
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packaged, marketed, sold or distributed in violation of any such federal, state,
local or foreign law, ordinance, standard, regulation or guideline.
5. EXTENT OF LICENSE. The license granted herein is for the sole
purpose of assisting Licensee in its transition to a new identity and is not
assignable or transferable in any manner whatsoever. Licensee has no right to
grant any sublicenses or to use the Trademark for any other purpose.
6. INDEMNITY. Licensee acknowledges that neither it nor its
Subsidiaries will have any claims against Licensor hereunder for any damage to
property or injury to persons arising out of the operation of their business.
Licensee agrees to indemnify, hold harmless, and defend Licensor and its
Subsidiaries, affiliates and authorized representatives with legal counsel
acceptable to Licensor from and against any and all demands, claims, injuries,
losses, damages, actions, suits, causes of action, proceedings, judgments,
liabilities and expenses, including attorneys' fees, court costs and other legal
expenses, arising out of or connected with:
a. the use of the Trademark by Licensee or any of its Subsidiaries or
affiliates; or
b. any breach by Licensee or any of its Subsidiaries of any provision
of this Agreement or of any warranty made by Licensee in this Agreement.
No approval by Licensor of any action by Licensee or any of its Subsidiaries or
affiliates shall affect any right of Licensor to indemnification hereunder.
7. TERMINATION. Except as otherwise provided herein, this Agreement
shall remain in full force and effect for the periods stated in Paragraph 1
above. However, Licensor retains the right to immediately terminate this
Agreement in the event of a material breach of any term of this Agreement by
Licensee or any of its Subsidiaries, upon written notice to the Licensee.
8. OWNERSHIP OF TRADEMARK. The Licensee acknowledges Licensor's
exclusive right, title and interest in and to the Trademark and will not at any
time do or cause or permit to be done any act or thing contesting or in any way
impairing or tending to impair any part or all of such right, title and
interest. In connection with the use of the Trademark, Licensee and each of its
Subsidiaries shall not in any manner represent that it has any ownership in the
Trademark or registrations thereof, and acknowledges that use of the Trademark
shall inure to the benefit of the Licensor. On termination of this Agreement or
any portion hereof in any manner provided herein, the Licensee will destroy or
cause to be destroyed all signs, displays or other identifications or
advertising material, supplies and documents, and any other materials bearing
the Trademark and will certify to Licensor in writing that it has done so.
Furthermore, Licensee and each of its Subsidiaries will not at any time adopt or
use without the Licensor's prior written consent, any word or xxxx which is
likely to be similar to or confusing with the Trademark.
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9. INFRINGEMENT OF TRADEMARK. If Licensee or any of its Subsidiaries
learns of any actual or threatened infringement of the Trademark or of the
existence, use, or promotion of any xxxx or design similar to the Trademark,
Licensee shall promptly notify Licensor. Licensor has the right to decide at its
sole discretion what legal proceedings or other action, if any, shall be taken,
by who, how such proceedings or other action shall be conducted, and in whose
name such proceedings or other action shall be performed. Any legal proceedings
instituted pursuant to this Section shall be for the sole benefit of Licensor
and all sums recovered in such proceedings whether by judgment, settlement, or
otherwise, shall be retained solely and exclusively by Licensor.
10. INJUNCTIVE RELIEF. Licensee acknowledges that any breach or
threatened breach of any of Licensee's covenants in this Agreement relating to
the Trademark, including, without limitation, Licensee's and/or any of its
Subsidiaries' failure to cease the manufacture, sale, marketing, or distribution
of the goods bearing the Trademark at the termination or expiration of this
Agreement will result in immediate and irreparable damage to Licensor and to the
rights of any subsequent licensee of them. Licensee acknowledges and admits that
there is no adequate remedy at law for failure to cease such activities, and
Licensee agrees that in the event of such breach or threatened breach, Licensor
shall be entitled to temporary and permanent injunctive relief and such other
relief as any court with jurisdiction may deem just and proper.
11. SEVERABILITY. If any provision of this Agreement shall be
determined to be illegal and unenforceable by any court of law or any competent
government or other authority, the remaining provisions shall be severable and
enforceable in accordance with their terms so as this Agreement without such
terms or provisions does not fail of its essential purpose or purposes. The
parties will negotiate in good faith to replace any such illegal or
unenforceable provision or provisions with suitable substitute provisions which
maintain the economic purposes and intentions of this Agreement.
12. NOTICE. Any notices required or permitted to be given under this
Agreement shall be deemed sufficiently given if mailed by registered mail,
postage prepaid, addressed to the party to be notified at its address shown
above (followed by facsimile) or at such other address as may be furnished in
writing to the notifying party.
13. MISCELLANEOUS.
a. CAPTIONS. The captions for each Section have been inserted
for the sake of convenience and shall not be deemed to be binding upon the
parties for the purpose of interpretation of this Agreement.
b. INTERPRETATION. The parties agree that each party and its
counsel has reviewed this Agreement and the normal rule of construction that any
ambiguities are to be resolved against the drafting party shall not be employed
in the interpretation of this Agreement.
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c. WAIVER. The failure of Licensor to insist in any one or
more instance upon the performance of any term, obligation, or condition of this
Agreement by Licensee or any of its Subsidiaries or to exercise any right or
privilege herein conferred upon Licensor shall not be construed as thereafter
waiving such term, obligation, or condition, or relinquishing such right or
privilege, and the acknowledged waiver or relinquishment by Licensor of any
default or right shall not constitute waiver of any other default or right. No
waiver shall be deemed to have been made unless expressed in writing.
d. TIME OF ESSENCE. Time is of the essence with respect to the
obligations to be performed under this Agreement, and Licensee shall use its
best efforts to cause the transition of all existing materials, including signs
and displays, bearing the Trademark to a new name and xxxx.
e. RIGHTS CUMULATIVE. Except as expressly provided in this
Agreement, and to the extent permitted by law, any remedies described in this
Agreement are cumulative and not alternative to any other remedies available at
law or in equity.
f. GOVERNING LAW. ALL QUESTIONS OR DISPUTES CONCERNING THE
CONSTRUCTION, VALIDITY AND INTERPRETATION OF THIS AGREEMENT AND THE SCHEDULES
AND EXHIBITS HERETO SHALL BE GOVERNED BY THE INTERNAL LAWS, AND NOT THE LAW OF
CONFLICTS, OF THE STATE OF DELAWARE. EACH OF THE PARTIES TO THIS AGREEMENT
HEREBY IRREVOCABLY AND UNCONDITIONALLY (i) AGREES TO BE SUBJECT TO, AND HEREBY
CONSENTS AND SUBMITS TO, THE JURISDICTION OF THE COURTS OF THE STATE OF DELAWARE
AND OF THE FEDERAL COURTS SITTING IN THE STATE OF DELAWARE, (ii) TO THE EXTENT
SUCH PARTY IS NOT OTHERWISE SUBJECT TO SERVICE OF PROCESS IN THE STATE OF
DELAWARE, HEREBY APPOINTS THE CORPORATION TRUST COMPANY, AS SUCH PARTY'S AGENT
IN THE STATE OF DELAWARE FOR ACCEPTANCE OF LEGAL PROCESS AND (iii) AGREES THAT
SERVICE MADE ON ANY SUCH AGENT SET FORTH IN (ii) ABOVE SHALL HAVE THE SAME LEGAL
FORCE AND EFFECT AS IF SERVED UPON SUCH PARTY PERSONALLY WITHIN THE STATE OF
DELAWARE.
Attest: LICENSOR
By:
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Attest: LICENSEE
By:
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EXHIBIT "A"
REGISTRATION EXPIRATION
TRADEMARK NO. DATE
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APPLICATION APPLICATION
TRADEMARK NO. NO.
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EXHIBIT "B"
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