EXECUTION - 2
TRADEMARK LICENSE AND OPTION AGREEMENT
AGREEMENT made this 29th day of April, 1996 by and among XXXXX XXXX
PET FOOD COMPANY, INC., a Delaware corporation with its principal place of
business at Xxx Xxxxxxxx Xxxxx, Xxxxx 000, Xxxxxxxxx, Xxxxxxxxx 00000
("Licensee") and PROMARK INTERNATIONAL INC., an Idaho corporation with its
principal place of business at 000 X. Xxxx Xxxxxx, Xxxxx 000, Xxxxx, Xxxxx 00000
("Licensor").
WHEREAS, Licensor is the owner of (i) the name, trade name and
trademark KOZY KITTEN, which is registered as a trademark on the principal
register of the U.S. Patent and Trademark Office under Registration No.730,530
for cat food, and (ii) unregistered common law trademarks, trade dress and label
designs utilized solely therewith and good will associated therewith (the
"Xxxx"); and
WHEREAS, by agreement dated the 20th of June, 1995, Licensor has
granted to HEINZ PET PRODUCTS COMPANY, a division of Star-Xxxx Foods, Inc., a
California corporation with its principal place of business at Xxx Xxxxxxxxxx
Xxxxx, Xxxxxxx, Xxxxxxxx 00000 ("HPP") a non-exclusive five-year license (the
"ProMark License") to use, among other intellectual property, the Xxxx in the
United States, including its territories and possessions; and
WHEREAS, HPP has, by that certain letter agreement, dated as of
April 29, 1996, (i) waived any and all rights to the Xxxx in connection with the
Licensed Products (as defined in Section 1 below) under the ProMark License,
(ii) agreed to amend the same to provide that the Xxxx is no longer included in
the intellectual property covered by the ProMark License in relation to the
Licensed Products (as defined in Section 1 below) and (iii) immediately upon
Licensee's exercise of its Option (as defined in Section 9 below), HPP has
agreed to waive any and all rights to the Xxxx under the ProMark License and to
amend the same to provide that the Xxxx is no longer included in the
intellectual property covered by the ProMark License; and
WHEREAS, Licensor, Licensee, HPP and the other Sellers defined
therein, have entered into that certain Purchase Agreement dated April 17, 1996
(the "Purchase Agreement"), pursuant to which, among other things, Licensor has
agreed to grant to Licensee an exclusive license to use the Xxxx as provided
below; and
WHEREAS, Licensor desires to grant to Licensee and Licensee desires
to obtain the exclusive right to use the Xxxx in connection with the
manufacture, distribution or sale of dry and/or semi-moist pet food as more
particularly set forth in this Agreement; and
WHEREAS, Licensor also desires to grant to Licensee an irrevocable
option to purchase the Xxxx as more particularly set forth in this Agreement.
NOW, THEREFORE, in consideration of the premises and the mutual
promises herein contained, the parties agree as follows:
1. License Grant.
(a) During the Term (as defined in Section 8 below) and
subject to payment of the licensing fee in the amount of Two Million Two Hundred
Thousand Dollars ($2,200,000.00) as provided in Section 2.5 of the Purchase
Agreement, the receipt of which Licensor hereby acknowledges, Licensor hereby
grants to Licensee the exclusive right and license to use the Xxxx throughout
the world (the "Territory") on and in connection with the manufacture,
distribution or sale of dry and/or semi-moist pet food products (the "Licensed
Products"), including, but not limited to, on packaging, in trade materials, in
print, television and radio advertising and any and all other uses related to
the manufacture, distribution or sale of the Licensed Products. Without limiting
the foregoing, Licensee shall have the right to use the Xxxx either as a primary
brand, subbrand, maker's xxxx or otherwise in connection with Licensed Products
in any and all channels of distribution provided, however, Licensee agrees that
it will not use the Xxxx with any trademark owned by any entity other than
Licensor, except as a corporate identifier.
(b) Licensee shall have no right to the Xxxx or to make, use
or sell any products utilizing the Xxxx (or any reproduction, counterfeit, copy
or colorable imitation thereof) other than as expressly granted in this
Agreement. Furthermore, Licensee is aware that Licensor has no history of sale
or distribution of products using the Xxxx or any registration of the Xxxx in
any jurisdiction other than the United States and that conflicting use or
registrations of the Xxxx outside the United States may prevent the use or
registration of the Xxxx in jurisdictions outside the United States.
(c) Licensor and Licensee each expressly acknowledge and agree
that nothing in this Agreement gives the other any rights to or interest in any
product specifications, recipes or other proprietary materials related to any
products in connection with which the Xxxx is used by the other party and all
such information shall be considered confidential information subject to Section
12.
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2. Quality Standard; Inspections.
(a) Licensee shall maintain such quality standards for the
Licensed Products as it has maintained for products similar to the Licensed
Products prior to the date of this Agreement. Furthermore, Licensee shall take
such action as is reasonably necessary to maintain the quality and integrity of
the Xxxx. Licensee represents, warrants and agrees that the Licensed Products
bearing the Xxxx shall be in compliance with all applicable federal, state and
local laws, rules and regulations.
(b) Upon request, Licensee shall furnish to Licensor a
reasonable number of representative production samples of the Licensed Products,
in order for Licensor to assure itself that the provisions of this Agreement
are being observed. Upon introduction of a new Licensed Product, Licensee agrees
that upon request it shall furnish to Licensor a reasonable number of
representative production samples of the Licensed Products.
(c) During the Term, Licensor or its respective designees,
shall have the right to conduct annual inspections of the relevant portions of
Licensee's manufacturing facilities for compliance with the foregoing quality
standards; provided, however, Licensee may restrict access by Licensor's
representatives to only those areas where the Licensed Products and ingredients
and materials for the Licensed Products are processed, tested or stored.
Inspections also may be conducted at any time during the Term when Licensor has
reasonable belief that there are or may be quality problems with respect to the
Licensed Products. Any or all plant inspections shall be conducted only during
regular business hours and upon at least twenty-four (24) hours prior notice.
Notwithstanding such right of inspection, nothing herein shall relieve Licensee
from any liability or shift any liability to Licensor for Licensee's
nonconformance with federal, state or local laws or regulations.
3. Display; Legends. Licensee shall submit copies of use of the Xxxx
on packaging, labeling, promotional and advertising materials to Licensor prior
to use. Licensee shall be free to display the Xxxx on Licensed Products in such
forms or manners as Licensee may choose, provided that any such use shall be of
a kind and quality which does not materially detract from the value of the Xxxx.
Licensee shall cause to appear on all written materials on or in connection with
which the Xxxx is used, such legends, markings and notices as Licensor may
prescribe in order to give appropriate notices of any trademark or other rights.
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4. Restrictions On and Covenants Of Licensor.
(a) During the Term, Licensee shall be the exclusive licensee
and/or authorized user of the Xxxx in the Territory in connection with the
Licensed Products and Licensor specifically agrees, on behalf of itself and its
successors and assigns, not to license the Xxxx to any third party or use the
Xxxx in any manner whatsoever in connection with the manufacture, distribution
or sale of either (i) the Licensed Products or (ii) any other products other
than canned cat food. Furthermore, Licensor covenants and agrees that at no time
during the Term (x) will the Licensor permit the Xxxx to be subject to any
liens, security interests or other encumbrances of any nature whatsoever
(provided that Licensor will not be held liable for any liens, claims or
encumbrances related to the Xxxx to the extent that the same arise through the
actions of Licensee), nor (y) will Licensor assign, transfer or delegate its
ownership in the Xxxx, this Agreement or any other rights with respect to the
Xxxx to a party other than its parent or an affiliate (provided such party
expressly agrees to be bound by the terms and conditions of this Agreement and
such assignment, transfer or delegation shall not effect the obligations of
Heinz as defined in and pursuant to Section 15 below) without complying with the
provision below. In the event that Licensor or any of the other Sellers (as
defined in the Purchase Agreement) intend to sell or otherwise transfer
ownership of the Xxxx, this Agreement or any other rights with respect to the
Xxxx as part of the sale of all or part of Licensor's or any of the other
Sellers' business other than to its parent or an affiliate, Licensor covenants
and agrees to give Licensee a minimum of thirty (30) days (the "Sale Notice
Period") written notice (the "Sale Notice") of the proposed sale, including, the
name of the proposed buyer or buyers. During the Sale Notice Period or at any
time after the delivery of a Sale Notice, Licensee shall have the irrevocable
right to exercise the Option as provided in Section 9. Licensor covenants and
agrees that neither it nor any of the other Sellers will consummate any sale or
other transfer of the Xxxx, this Agreement or any other rights with respect to
the Xxxx during a Sale Notice Period unless Licensee gives Licensor written
notice of its intent not to exercise the Option during the relevant Sale Notice
Period.
(b) Licensor shall be free to display the Xxxx on or in
relation to any of its canned cat food products bearing the Xxxx in such forms
or manners as Licensor may choose, provided that (i) any such use shall be of a
kind and quality which does not materially detract from the value of the Xxxx;
(ii) Licensor agrees it will not use the Xxxx with any trademark owned by any
entity other than Licensor; and (iii) all such forms of the Xxxx (and any
registrations thereof) automatically shall be covered by Licensee's Option (as
defined in Section 9 below).
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(c) Licensor covenants and agrees to maintain at all times
during the Term in full force and effect any and all registrations of the Xxxx
in the United States Patent and Trademark office. In the event Licensee desires
to use the Xxxx with any other xxxx or design Licensor, upon Licensee's request,
shall apply to register such xxxx or design in the United States and Canada and
Licensee shall be responsible for the reasonable costs of Licensor associated
with such registration and such xxxx(s) automatically shall become part of the
definition of the "Xxxx" for purposes of this License Agreement and shall be
covered by Licensee's Option (as defined in Section 9 below). Furthermore, in
the event that Licensee desires to have Licensor register the Xxxx or any other
xxxx used with the Xxxx in any other country (the "Foreign Registrations"),
Licensor will use all reasonable efforts to promptly do so and any Foreign
Registrations automatically shall become part of the definition of the "Xxxx"
for purposes of this License Agreement and shall be covered by Licensee's Option
(as defined in Section 9 below). Licensee shall be responsible for the
reasonable costs of Licensor associated with any Foreign Registrations of the
Xxxx requested by Licensee and actually applied for by Licensor; provided,
however, if Licensor decides to distribute canned cat food in any country in
which Licensee has covered the costs of registration of the Xxxx, Licensor
promptly will reimburse Licensee for fifty percent (50%) of the costs paid by
Licensee with respect to such Foreign Registration. Licensor may decide not to
apply for registration in any country requested by Licensee outside the United
States should Licensor, in its reasonable discretion, consider such application
or registration likely to lead to opposition or litigation which would adversely
affect the Xxxx. In addition, Licensor covenants and agrees to use its
reasonable efforts to maintain at all times during the Term in full force and
effect any and all Canadian or other Foreign Registrations of the Xxxx applied
for in the manner described above in those countries in the Territory in which
Licensee is using the Xxxx in a manner sufficient to meet the requirements for
continued registration of the Xxxx in the relevant country.
(d) In the event that Licensor shall fail to take any action
reasonably required by Licensor to effectuate the foregoing, Licensor hereby
appoints Licensee as its attorney-in-fact for such purpose (it being
acknowledged that such appointment is irrevocable and coupled with an interest)
with full power of substitution and delegation. Licensee shall supply Licensor
with copies of any such documents promptly after execution.
5. Dispute Resolution.
(a) Licensee and Licensor agree that, in the event that there
is a disagreement with regard to whether the quality of a product or a use of
the Xxxx materially detracts from the value of the Xxxx, senior management of
the parties will meet and negotiate in good faith in an attempt to resolve the
dispute.
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In the event that the parties are unable to resolve the dispute within thirty
(30) days from the date of written notice of disagreement, either party may
submit the dispute to binding arbitration, which shall be conducted as follows:
(i) the arbitration panel shall be composed of three parties, one appointed by
Licensee, one appointed by Licensor and one chosen by the arbitrators appointed
by Licensor and Licensee, provided, however, the third arbitrator shall be an
independent third party knowledgeable in marketing and pet food sales and
mutually satisfactory to Licensor and Licensee; (ii) the arbitrators, in
conducting such arbitration, shall have access to all relevant documents and
records of the parties; (iii) the arbitration shall be conducted in accordance
with the Commercial Arbitration Rules of the American Arbitration Association
(the "Rules") in effect on the date such arbitration is commenced and shall be
final and binding on the parties; and (iv) unless otherwise agreed, all
arbitration proceedings shall be conducted in New York City, New York in
English. In the event a mutually satisfactory third arbitrator is not appointed
within fifteen (15) days of submission of a dispute to binding arbitration,
appointment of the third arbitrator shall be as provided in the Rules.
Notwithstanding the foregoing, the arbitration panel shall have no power or
authority to order the termination of the license of this Agreement for any
reason whatsoever.
(b) If either party concludes in good faith that the quality
of a product being sold by the other party bearing the Xxxx presents a material
health hazard, such party shall have the right, notwithstanding the negotiation
and arbitration provisions set forth above, to seek an injunction in a court of
competent jurisdiction to cause the other party to cease manufacturing, sale or
distribution of the offending product, or to recall already distributed product.
Furthermore, except as set forth in subsection (a) above, nothing herein shall
prevent either party from exercising any other rights or remedies available at
law to enforce or preserve their rights under this License Agreement, including,
but not limited to, their respective rights to indemnification pursuant to
Section 10 of this Agreement.
6. Ownership. Licensee acknowledges Licensor's ownership of the Xxxx
subject to this License Agreement and Licensee agrees that all use by Licensee
of the Xxxx during the Term shall inure to Licensor's benefit. Licensee shall at
any time execute any documents reasonably required by Licensor to confirm
Licensor's ownership of all such rights.
7. Infringement Proceedings.
(a) During the Term, each party agrees to notify the other of
any unauthorized uses of the Xxxx by any third party as promptly as such matters
come to such party's attention. Either Licensee or Licensor shall have the right
and discretion to bring infringement or unfair competition proceedings involving
the
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Xxxx in the manner more specifically described below; provided, however, that
each party covenants and agrees to cooperate with and furnish full assistance to
one another in connection with the procurement, protection and maintenance of
the Xxxx and their rights associated therewith.
(b) Licensor shall have the initial right to determine whether
or not any demand, suit or other action shall be taken on account of or with
reference to any infringement or unfair competition in connection with the Xxxx
and shall have the right to take such action as it may determine. Licensee shall
not institute any suit or take any action on account of any such infringement or
unfair competition without first obtaining the express written consent of
Licensor to do so. Licensor's consent shall not be unreasonably withheld or
delayed. The parties agree to cooperate with each other in any manner which the
litigating party may reasonably request in connection with any such litigation;
provided, however, that the non-litigating party will be entitled to
reimbursement of its reasonable expenses directly related to such cooperation in
excess of $5000.00. In all instances, the party commencing the litigation shall
have the right to employ counsel of its choosing and to direct the handling of
the litigation and the settlement thereof. Notwithstanding the foregoing, no
action may be settled by Licensee without the prior consent of Licensor, which
consent shall not be unreasonably withheld or delayed. All amounts awarded as
damages, profits or otherwise in connection with such litigation shall be
divided among the parties as their interests may appear. Nothing herein shall be
construed as imposing any duty or obligation upon Licensor to take any action
against any alleged infringer.
8. Term/Post Termination Agreements. The term of this Agreement
shall be for a period of ten (10) years commencing on the date hereof and ending
on the tenth (10th) anniversary of such date (the "Term"). Upon expiration of
this Agreement, unless Licensee exercises its option to purchase the Xxxx as
provided in Section 9 below, Licensee shall destroy any molds, plates, packaging
or finished product bearing the Xxxx which are in its possession or control and
thereafter cease any and all use of the Xxxx.
9. Irrevocable Option to Purchase the Xxxx.
(a) Licensor agrees to and hereby does give and grant to
Licensee the exclusive and irrevocable option (the "Option") to purchase all of
Licensor's right, title and interest in and to the Xxxx and any and all
derivatives of the Xxxx, free of all liens, claims and encumbrances of
whatsoever nature (provided that Licensor will not be held liable for any liens,
claims or encumbrances related to the Xxxx to the extent that the same arise
through the actions of Licensee), for a purchase price of Fourteen Million Five
Hundred Thousand Dollars ($14,500,000.00) (the "Option Payment") at any time
either (i) on or after the fifth
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anniversary of the date of this Agreement and prior to the expiration of the
Term; (ii) at any time during the Term if Licensor has breached its covenants
regarding liens and assignments set forth in Section 4(a)(x) or 4(a)(y); (iii)
at any time during any Sale Notice Period; or (iv) at any time during the Term
after the delivery of a Sale Notice ((i)-(iv) are collectively referred to as
the "Option Period"). The Option may be exercised by Licensee at any time during
the Option Period by delivering to Licensor a minimum of ten (10) business days
written notice (the "Option Notice") of its intention to exercise the Option.
After such exercise, immediately upon receipt of written confirmation from the
Escrow Agent (as defined below) that Licensor has deposited the License Payment
(as defined below) with the Escrow Agent, Licensee shall deliver to Licensor
payment of the Option Payment by wire transfer of immediately available funds to
Licensor. Immediately upon receipt of the Option Payment, (i) Licensor shall
execute and deliver to Licensee an assignment of the Xxxx in the form of Exhibit
B and/or take such further action reasonably required by Licensee to effectuate
the assignment of the Xxxx, (ii) Licensor also shall execute and deliver to
Licensee assignments of any Foreign Registrations in form satisfactory to
Licensee and/or take such further action reasonably required by Licensee to
effectuate the assignment of the Foreign Registrations, (iii) Licensor also
shall deliver to Licensee a waiver in the form of Exhibit C duly executed by
Licensor and HPP pursuant to which HPP waives any and all rights to the Xxxx
under the ProMark License and the ProMark License is amended to provide that the
Xxxx (including any unregistered common law trademarks, trade dress and label
designs utilized solely therewith) is no longer included in the definition of
Licensed Property (as such term is defined in the ProMark License) and (iv)
Licensee shall license the Xxxx to Licensor or its successor in title as
provided in Section 9(b) below.
(b) In the event Licensee exercises the Option, Licensee
agrees to grant to Licensor and Licensor shall be obligated to accept a license
to use the Xxxx on the terms and conditions set forth in the form of license
agreement attached as Exhibit A to this Agreement. Furthermore, within ten (10)
business days of receipt by Licensor of the Option Notice, at a time and date
during such ten (10) business day period to be mutually agreed to by the
parties, Licensor shall deposit the payment required by the terms of such
license in the amount of Twelve Million Dollars ($12,000,000.00) (the "License
Payment") by wire transfer of immediately available funds with an escrow agent
(the "Escrow Agent") mutually satisfactory to Licensor and Licensee pursuant to
an escrow agreement mutually satisfactory to Licensor and Licensee or in such
other manner as Licensor and Licensee mutually agree. The License Payment shall
be released to Licensee by the Escrow Agent simultaneously with payment by
Licensee of the Option Payment. Immediately upon receipt of the License Payment,
Licensor and Licensee shall execute and Licensor shall receive delivery of a
license agreement in the form of Exhibit A.
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(c) Provided that Licensee complies with the provisions of
this Section 9, Licensee shall be unconditionally entitled to exercise the
Option, notwithstanding any claims by Licensor with respect to Licensee's use or
misuse of the Xxxx pursuant to this Agreement or otherwise or any other claims
of whatsoever nature by Licensor against Licensee, including, without
limitation, nonpayment of the Promissory Note (as defined in the Purchase
Agreement), or any breach or default by Licensee of the Purchase Agreement or
this Agreement, any agreement contemplated by, or executed in connection with,
the Purchase Agreement or any other agreement or arrangement between Licensee
and Licensor or any of their respective affiliates.
(d) Under no circumstances whatsoever shall either Licensor or
Licensee be entitled to offset any portion of either the Option Payment or the
License Payment against any amounts payable on or with respect to any claims of
whatsoever nature between Licensor and Licensee, including, without limitation,
in connection with the Purchase Agreement, the Promissory Note, any agreement
contemplated by, or executed in connection with, the Purchase Agreement or any
other agreement or arrangement between Licensee and Licensor or any of their
respective affiliates. Notwithstanding the foregoing, in the event Licensor
fails to deposit the full amount of the License Payment as provided in Section
9(b) above Licensee shall be permitted to set-off the License Payment against
the Option Payment and deliver the net amount of Two Million Five Hundred
Thousand Dollars ($2,500,000.00) as payment in full of the Option Payment.
10. Indemnification. Licensee shall indemnify and agrees to defend
Licensor from any and all damages (but excluding any incidental or consequential
damages or claims for lost profits) resulting from or arising out of the
manufacture, packaging, distribution, selling, handling, consumption or
marketing of Licensed Products by Licensee except to the extent such damages are
the result of or caused by the negligence of Licensor or its agents or
employees, or the result of instructions or standards dictated by Licensor with
respect to the Licensed Products. Furthermore, each party indemnifies and agrees
to defend the other in the event of any breach of any covenant or provision of
this Agreement. The indemnifications set forth in this paragraph shall include
reasonable attorney's fees, settlement costs and any other expenses reasonably
related to the indemnification. Each party (a) shall provide the other with
reasonable notice of any such claims and cooperate with the defense of any such
claim, and (b) agrees that the provisions of this Section 10 shall survive the
expiration of this Agreement for the period of any applicable statute of
limitations.
11. Insurance. Licensee shall maintain throughout the Term a
reasonably adequate products liability insurance policy with limits of no less
than
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One Million Dollars ($1,000,000.00) combined single limit with a financially
responsible insurance carrier naming Licensor as an additional insured and
providing Licensor with thirty (30) days notice of cancellation or alteration.
12. Confidentiality. Any confidential information disclosed by
either party to the other, except as set forth below, shall be considered
confidential information, and shall be accorded the same treatment which the
receiving party gives to its own confidential information. The obligation of
confidentiality set forth in the preceding sentence shall not apply to
information which (a) was publicly available at the time of the disclosure to
the receiving party; (b) subsequently becomes publicly available through no
fault of the receiving party; (c) is rightfully acquired by the receiving party,
subsequent to disclosure by the other party, from a third party who to the
receiving party's knowledge is not in breach of a confidential relationship with
regard to such information; (d) is purchased by Licensee from Licensor pursuant
to the Purchase Agreement (but Licensor will keep confidential any such
information it sells or has sold to Licensee provided this obligation shall not
apply to information which falls under subsections (a), (b), (c) or (e) hereof)
or (e) is independently developed by the receiving party solely through the
efforts of individuals who did not have access to the confidential information.
13. Assignment. This Agreement and all of the provisions hereof
shall be binding upon and inure to the benefit of the parties hereto and their
permitted assigns. Notwithstanding the foregoing, neither party shall assign,
transfer or delegate any of its rights under this Agreement or delegate any of
its obligations under this Agreement to any entity which is not a parent or
affiliate of the assigning party without the other party's prior written
approval, and any such assignment, transfer or delegation made without such
approval shall be void ab initio; provided, however, (a) Licensee shall be
permitted to assign, transfer or delegate any of its rights and/or obligations
under this Agreement in connection with the sale of all or part of its business
to any third party and/or to any lender providing financing to Licensee and such
lender shall be permitted to assign this license to any third party without the
consent of Licensor and (b) Licensor shall be permitted to assign, transfer or
delegate any of its rights under this Agreement or to the Xxxx to the buyer
identified in the relevant Sale Notice in the event Licensee does not exercise
its Option during the relevant Sale Notice Period.
14. Force Majeure. Neither party to this Agreement shall be held
liable for failure to comply with any of the terms of this Agreement when such
failure has been caused by fire, flood, labor dispute, strike, war, energy
shortage, insurrection, government restrictions or regulations or force majeure
beyond the control of the party involved; provided, however, in no event shall
the foregoing be construed to relieve Licensor or Licensee of its obligations
pursuant to Section 9 above.
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15. Heinz Guaranty. X. X. Xxxxx Company, a Pennsylvania corporation
("Heinz"), hereby guarantees the prompt performance by Licensor of its covenants
and obligations hereunder. In the event of nonperformance by Licensor of any
such covenants or obligations, Heinz shall promptly perform or cause Licensor to
promptly perform such covenants and obligations. Heinz shall be entitled to the
benefit of any defenses to and limitations on the guaranteed covenants and
obligations to the same extent Licensor would have had such benefit, except that
in no event shall the validity of this guarantee or the obligations of Licensor
be in any way terminated, affected or impaired by its dissolution or the
rejection of such obligations under any bankruptcy, insolvency or similar laws,
now or hereafter enacted.
16. Miscellaneous.
(a) THIS AGREEMENT SHALL BE GOVERNED BY THE LAWS OF THE STATE
OF NEW YORK, WITHOUT REGARD TO ITS RULES OR CONFLICTS OF LAW.
(b) Nothing herein contained shall be deemed to create the
relationship of partnership or joint venture between the parties. Neither party
shall have the right to incur any obligation to third parties which shall be
binding upon the other and neither party shall have any interest whatever in the
profits and liabilities of the other arising out of or resulting from the
subject matter of this Agreement.
(c) Unless otherwise specified herein, notices to the parties
shall be sent by prepaid certified or registered mail, or by a national
overnight courier service, to the parties at the following addresses (or at such
other address as shall be specified by like notice):
(i) If to Licensee, to:
Xxxxx Xxxx Pet Food Company, Inc.
Xxx Xxxxxxxx Xxxxx, Xxxxx 000
Xxxxxxxxx, Xxxxxxxxx 00000
Attention: Xx. Xxxxx Xxxx, President
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with a copy to:
Xxxxxxxx & X'Xxxx, LLP
000 Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attn: Xxxxxx Xxxxxxx, Esq.
(ii) If to Licensor, to:
ProMark International Inc.
000 X. Xxxx Xxxxxx, Xxxxx 000
Xxxxx, Xxxxx 00000
Attention: President
with copies to:
X.X. Xxxxx Company
000 Xxxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxxxxxx 00000
Attn: Senior Vice President and General Counsel
Heinz Pet Products Company
Xxx Xxxxxxxxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000
Attn: Vice President Value Brands Marketing
(d) The failure of either party to insist on compliance with
any provision hereof shall not constitute a waiver or modification of such
provision or any other provision.
(e) If any provision hereof is held to be invalid or
unenforceable by any court of competent jurisdiction or any other authority
vested with jurisdiction, such holding shall not effect the validity or
enforceability of any other provision hereto.
(f) The paragraph order and heading are for convenience only
and shall not be deemed to affect in any way the language, obligations or the
provisions to which they refer.
(g) This Agreement sets forth the entire understanding of the
parties with respect to the subject matter hereof, and may be amended or
modified only in writing executed by each party hereto.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the date first above written.
XXXXX XXXX PET FOOD COMPANY, PROMARK INTERNATIONAL INC.
Inc.
By: /s/ X. Xxxx By: /s/ Xxxx X. Xxxxxxx
---------------------------- ----------------------------
Name: X. Xxxx Name: Xxxx X. Xxxxxxx
Title: V.P. Finance Title: President
X.X. XXXXX COMPANY as to HEINZ PET PRODUCTS COMPANY,
Section 15 only a division of Star-Xxxx Foods, Inc.
as to Section 9(a)(iii) only
By: By: /s/ Xxxxxxx Xxx Xxxxxxxx
---------------------------- ----------------------------
Name: Name: Xxxxxxx Xxx Xxxxxxxx
--------------------------- Title: Chief Cost Officer
Title:
--------------------------
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the date first above written.
XXXXX XXXX PET FOOD COMPANY, PROMARK INTERNATIONAL INC.
Inc.
By: By: /s/ Xxxx X. Xxxxxxx
---------------------------- ----------------------------
Name: Name: Xxxx X. Xxxxxxx
--------------------------- Title: President
Title:
--------------------------
X.X. XXXXX COMPANY as to HEINZ PET PRODUCTS COMPANY,
Section 15 only a division of Star-Xxxx Foods, Inc.
as to Section 9(a)(iii) only
By: /s/ Xxxxx X. Xxxxxxxx By:
---------------------------- ----------------------------
Name: Xxxxx X. Xxxxxxxx Name:
Title: Senior Vice President ---------------------------
Title:
--------------------------
EXHIBIT A
TRADEMARK LICENSE AGREEMENT
AGREEMENT made this ___ day of ______, 19__ between XXXXX XXXX PET
FOOD COMPANY, INC., a Delaware corporation with its place of business at Xxx
Xxxxxxxx Xxxxx, Xxxxx 000, Xxxxxxxxx, Xxxxxxxxx 00000 ("Licensor") and PROMARK
INTERNATIONAL INC., an Idaho corporation with its place of business at 000 X.
Xxxx Xxxxxx, Xxxxx 000, Xxxxx, Xxxxx 00000 ("Licensee").
WHEREAS, Licensor is the owner of (i) the name, trade name and
trademark KOZY KITTEN, which is registered as a trademark on the principal
register of the U.S. Patent and Trademark Office under Registration No.730,530
for cat food and (ii) unregistered common law trademarks, trade dress and label
designs utilized solely therewith and good will associated therewith (the
"Xxxx");
WHEREAS, Licensor, Licensee and the other Sellers defined therein
have entered into that certain Purchase Agreement, dated April 17, 1996,
pursuant to which among other things, Licensor agreed to grant to Licensee an
exclusive royalty-free license to use the Xxxx as provided below; and
WHEREAS, by Agreement, dated June 20, 1995, Licensee has granted to
Heinz Pet Products Company, a division of Star-Xxxx Foods Inc. ("HPP") a
non-exclusive five-year license (the "ProMark License") to use, among other
intellectual property, the Xxxx in the United States, including its territories
and possessions; and
WHEREAS, Licensee and HPP have, by that certain letter agreement,
dated April __, 1996 expressly (i) waived any and all rights to the Xxxx under
the ProMark License and (ii) amended the same to provide that the Xxxx is not
longer included in the intellectual property covered by the ProMarK License; and
WHEREAS, Licensor desires to grant to Licensee and Licensee desires
to obtain the exclusive right to use the Xxxx in connection with the
manufacture, distribution or sale of canned cat food as more particularly set
forth in this Agreement.
NOW, THEREFORE, in consideration of the premises and the mutual
promises herein contained, the parties agree as follows:
1. License Grant.
(a) Subject to payment of the License Payment as provided in
Section 9, Licensor hereby grants to Licensee the exclusive, perpetual right and
license to use the Xxxx throughout the world (the "Territory") on and in
connection with the manufacture, distribution or sale of canned cat food (the
"Licensed Products"), including, but not limited to, on packaging, in trade
materials, in print, television and radio advertising and any and all other uses
related to the manufacture, distribution or sale of the Licensed Products.
Without limiting the foregoing, Licensee shall have the right to use the Xxxx
either as a primary brand, subbrand, maker's xxxx or otherwise in connection
with Licensed Products in any and all channels of distribution provided,
however, Licensee agrees that it will not use the Xxxx with any trademark owned
by any entity other than Licensor, except as a corporate identifier.
(b) Licensee shall have no right to the Xxxx or to make, use
or sell any products utilizing the Xxxx (or any reproduction, counterfeit, copy
or colorable imitation thereof) other than as expressly granted in this
Agreement. Furthermore, Licensee is aware that in the event Licensor has no
history of sale or distribution of products using the Xxxx or any registration
of the Xxxx in any jurisdiction other than the United States that conflicting
use or registrations of the Xxxx outside the United States may prevent the use
or registration of the Xxxx in jurisdictions outside the United States.
(c) Licensor and Licensee each expressly acknowledge and agree
that nothing in this Agreement gives the other any rights to or interest in any
product specifications, recipes or other proprietary materials related to any
products in connection with which the Xxxx is used by the other party and all
such information shall be considered confidential information subject to Section
12.
(d) Subject to the prior written approval of Licensor, which
shall not be unreasonably withheld, Licensee may sublicense the Xxxx or utilize
the services of third party manufacturers to produce the Licensed Products to be
sold by Licensee or its approved sublicensees; provided, however, no consent of
Licensor is necessary to grant a sublicense to a parent or affiliate of Licensee
or to use a parent of affiliate of Licensee as a third party manufacturer.
However, in the event Licensee desires to grant a sublicense to a third party
who is a major branded competitor or affiliated to a major branded competitor of
Licensor, its subsidiaries or its affiliates, Licensee shall notify Licensor in
writing of the proposed sublicensee and the material terms of the proposed
sublicense and Licensor shall have a right of first refusal to enter into an
agreement with Licensee on substantially the same terms and conditions. Within
ten (10) business days of receipt of the relevant notice, Licensor shall either
notify Licensee of its intention to exercise its right of first refusal or
consent to the proposed sublicense and sublicensee on the terms
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contained in the relevant notice from Licensee. Subject to Licensor's written
approval, Licensee will assure that there are adequate quality control
provisions in any third party manufacturer agreement or sublicense. Subject to
Licensor's written approval, Licensee shall take all steps reasonably necessary
to enforce and implement such quality control provisions. Licensee will not
distribute or permit any of its sublicensees to distribute any Licensed Products
which are not produced in compliance with the standards and procedures set forth
in Section 2 below.
2. Quality Standard; Inspections.
(a) Licensee shall maintain such quality standards for the
Licensed Products as it has maintained for products similar to the Licensed
Products prior to the date of this Agreement. Furthermore, Licensee shall take
such action as is reasonably necessary to maintain the quality and integrity of
the Xxxx. Licensee represents, warrants and agrees that the Licensed Products
bearing the Xxxx shall be in compliance with all applicable federal, state and
local laws, rules and regulations.
(b) Upon request, Licensee shall furnish to Licensor a
reasonable number of representative production samples of the Licensed Products,
in order for Licensor to assure itself that the provisions of this Agreement are
being observed. Upon introduction of a new Licensed Product, Licensee agrees
that without request it shall furnish to Licensor a reasonable number of
representative production samples of the Licensed Products.
(c) During the term of this License Agreement, Licensor or its
respective designees, shall have the right to conduct annual inspections of the
relevant portions of Licensee's manufacturing facilities for compliance with the
foregoing quality standards; provided, however, Licensee may restrict access by
Licensor's representatives to only those areas where the Licensed Products and
ingredients and materials for the Licensed Products are processed, tested or
stored. Inspections also may be conducted at any time during the Term when
Licensor has reasonable belief that there are or may be quality problems with
respect to the Licensed Products. Any or all plant inspections shall be
conducted only during regular business hours and upon at least twenty-four (24)
hours prior notice. Notwithstanding such right of inspection, nothing herein
shall relieve Licensee from any liability or shift any liability to Licensor for
Licensee's nonconformance with federal, state or local laws or regulations.
3. Display; Legends. Licensee shall submit copies of use of the Xxxx
on packaging, labeling, promotional and advertising materials to Licensor prior
to use. Licensee shall be free to display the Xxxx on Licensed Products in such
forms or manners as Licensee may choose, provided that any such use shall be of
a kind and quality which does not materially detract from the value of the Xxxx.
A-3
Licensee shall cause to appear on all written materials on or in connection with
which the Xxxx is used, such legends, markings and notices as Licensor may
prescribe in order to give appropriate notices of any trademark or other rights.
4. Restrictions On and Covenants Of Licensor.
(a) So long as this Agreement is in effect, as between
Licensor and Licensee, Licensee shall be the exclusive licensee and/or
authorized user of the Xxxx in the Territory in connection with the Licensed
Products and Licensor specifically agrees, on behalf of itself and its
successors and assigns, not to license the Xxxx to any third party or use the
Xxxx in any manner whatsoever in connection with the manufacture, distribution
or sale of the Licensed Products.
(b) Licensor shall be free to display the Xxxx on or in
relation to any of its products bearing the Xxxx in such forms or manners as
Licensor may choose, provided that any such use shall be of a kind and quality
which does not materially detract from the value of the Xxxx. Licensor agrees
that it will not use the Xxxx with any trademark owned by an entity other than
Licensor.
(c) Licensor covenants and agrees that, so long as this
Agreement is in effect, it will maintain in full force and effect any and all
registrations of the Xxxx in the United States Patent and Trademark Office. In
the event Licensee desires to use the Xxxx with any other xxxx, Licensor, upon
Licensee's request, shall apply to register such xxxx in the United States and
Licensee shall be responsible for the reasonable costs of Licensor associated
with such registration and such xxxx(s) automatically shall become part of the
definition of the "Xxxx" for purposes of this License Agreement. Furthermore, in
the event that Licensee desires to have Licensor register the Xxxx or any other
xxxx used with the Xxxx in any other country (the "Foreign Registrations"),
Licensor will use all reasonable efforts to promptly do so and such Foreign
Registrations automatically shall become part of the definition of the "Xxxx"
for the purposes of this License Agreement. Licensee shall be responsible for
the reasonable costs of Licensor associated with any Foreign Registrations of
the Xxxx requested by Licensee and actually applied for by Licensor; provided,
however, if Licensor decides to distribute products under the Xxxx in any
country in which Licensee has covered the costs of registration of the Xxxx,
Licensor promptly will reimburse Licensee for fifty percent (50%) of the costs
paid by Licensee with respect to such Foreign Registration. Licensor may decide
not to apply for registration in any country requested by Licensee outside the
United States should Licensor, in its reasonable discretion, consider such
application or registration likely to lead to opposition or litigation which
would adversely affect the Xxxx. In addition, Licensor covenants and agrees to
use its reasonable efforts to maintain at all times during the term of this
Agreement in full force and effect any and all Foreign
A-4
Registrations of the Xxxx applied for in the manner described above in those
countries in the Territory in which Licensee is using the Xxxx in a manner
sufficient to meet the requirements for continued registration of the Xxxx in
the relevant country.
5. Dispute Resolution.
(a) Licensee and Licensor agree that, in the event that there
is a disagreement with regard to whether the quality of a product or a use of
the Xxxx materially detracts from the value of the Xxxx, senior management of
the parties will meet and negotiate in good faith in an attempt to resolve the
dispute. In the event that the parties are unable to resolve the dispute within
thirty (30) days from the date of written notice of disagreement, either party
may submit the dispute to binding arbitration, which shall be conducted as
follows: (i) the arbitration panel shall be composed of three parties, one
appointed by Licensee, one appointed by Licensor and one chosen by the
arbitrators appointed by Licensor and Licensee, provided, however, the third
arbitrator shall be an independent third party knowledgeable in marketing and
pet food sales and mutually satisfactory to Licensor and Licensee; (ii) the
arbitrators, in conducting such arbitration, shall have access to all relevant
documents and records of the parties; (iii) the arbitration shall be conducted
in accordance with the Commercial Arbitration Rules of the American Arbitration
Association (the "Rules") in effect on the date such arbitration is commenced
and shall be final and binding on the parties; and (iv) unless otherwise agreed,
all arbitration proceedings shall be conducted in New York City, New York in
English. In the event a mutually satisfactory third arbitrator is not appointed
within fifteen (15) days of submission of a dispute to binding arbitration,
appointment of the third arbitrator shall be as provided in the Rules.
(b) If either party concludes in good faith that the quality
of a product being sold by the other party bearing the Xxxx presents a material
health hazard, such party shall have the right, notwithstanding the negotiation
and arbitration provisions set forth above, to seek an injunction in a court of
competent jurisdiction to cause the other party to cease manufacturing, sale or
distribution of the offending product, or to recall already distributed product.
Furthermore, except as set forth in subsection (a) above, nothing herein shall
prevent either party from exercising any other rights or remedies available at
law to enforce or preserve their rights under this License Agreement, including,
but not limited to their respective rights to indemnification pursuant to
Section 10 of this Agreement.
6. Ownership. Licensee acknowledges Licensor's ownership of the Xxxx
subject to this License Agreement and Licensee agrees that all use by Licensee
of the Xxxx shall inure to Licensor's benefit. Licensor and Licensee further
agree that any and all alterations or new packaging, label designs or trade
dress used on or in connection with the Licensed Products will become part of
the
A-5
Xxxx and shall be deemed owned from their inception by Licensor without the need
for additional or future assignments. Licensee shall at any time execute any
documents reasonably required by Licensor to confirm Licensor's ownership of all
such rights. In the event that Licensee shall fail to execute and return to
Licensor any documents reasonably required by Licensor to confirm Licensor's
ownership of such rights, Licensee hereby appoints Licensor as its
attorney-in-fact for such purpose (it being acknowledged that such appointment
is irrevocable and coupled with an interest) with full power of substitution and
delegation. Licensor shall supply Licensee with copies of any such documents
promptly after execution.
7. Infringement Proceedings.
(a) So long as this Agreement is in effect, each party agrees
to notify the other of any unauthorized uses of the Xxxx by any third party as
promptly as it comes to such party's attention. Either Licensee or Licensor
shall have the right and discretion to bring infringement or unfair competition
proceedings involving the Xxxx in the manner more specifically described below;
provided, however, that each party covenants and agrees to cooperate with and
furnish full assistance to one another in connection with the procurement,
protection and maintenance of the Xxxx and their rights associated therewith.
(b) Licensor shall have the initial right to determine whether
or not any demand, suit or other action shall be taken on account of or with
reference to any infringement or unfair competition in connection with the Xxxx
and shall have the right to take such action as it may determine. Licensee shall
not institute any suit or take any action on account of any such infringement or
unfair competition without first obtaining the express written consent of
Licensor to do so. Licensor's consent shall not be unreasonably withheld or
delayed. The parties agree to cooperate with each other in any manner which the
litigating party may reasonably request in connection with any such litigation;
provided, however, that the non-litigating party will be entitled to
reimbursement of its reasonable expenses directly related to such cooperation in
excess of $5000.00. In all instances, the party commencing the litigation shall
have the right to employ counsel of its choosing and to direct the handling of
the litigation and the settlement thereof. Notwithstanding the foregoing, no
action may be settled by Licensee without the prior consent of Licensor, which
consent shall not be unreasonably withheld or delayed. All amounts awarded as
damages, profits or otherwise in connection with such litigation shall be
divided among the parties as their interests may appear. Nothing herein shall be
construed as imposing any duty or obligation upon Licensor to take any action
against any alleged infringer.
8. Termination. Notwithstanding anything herein to the contrary,
Licensor shall have the right to terminate this Agreement effective upon ninety
(90) days written notice to Licensee in the event (i) Licensee commits a
material breach
A-6
of this Agreement which is not cured to comply with the terms of this Agreement
within such ninety (90) day notice period or (ii) Licensee ceases to use the
Xxxx in connection with the manufacture, distribution or sale of the Licensed
Products, either as a primary brand, subbrand, maker's xxxx or otherwise in the
ordinary course of business, in connection with Licensed Products for a period
in excess of twelve (12) months and does not commence use of the Xxxx in
connection with Licensed Products in the ordinary course of business within the
ninety (90) day notice period. Upon termination of this Agreement, Licensee
agrees to destroy any molds, plates, packaging or finished product bearing the
Xxxx which are in its possession or control and thereafter cease any and all use
of the Xxxx.
9. License Payment. As payment in full of all fees for use of the
Xxxx as provided in this Agreement, Licensee shall pay to Licensor,
simultaneously with the execution of this Agreement, the sum of Twelve Million
Dollars ($12,000,000.00) (the "License Payment") by wire transfer of immediately
available funds.
10. Indemnification. Licensee shall indemnify and agrees to defend
Licensor from any and all damages (but excluding any incidental or consequential
damages or claims for lost profits) resulting from or arising out of the
manufacture, packaging, distribution, selling, handling, consumption or
marketing of Licensed Products by Licensee except to the extent such damages are
the result of or caused by the negligence of Licensor or its agents or
employees, or the result of instructions or standards dictated by Licensor with
respect to the Licensed Products. Furthermore, each party indemnifies and agrees
to defend the other in the event of any breach of any covenant or provision of
this Agreement. Each party (a) shall provide the other with reasonable notice of
any such claims and cooperate with the defense of any such claim, and (b) agrees
that the provisions of this Section 10 shall survive the expiration of this
Agreement for the period of any applicable statute of limitations. The
indemnifications set forth in this paragraph shall include reasonable attorney's
fees, settlement costs and any other expenses reasonably related to the
indemnification.
11. Insurance. Licensee shall maintain throughout the Term a
reasonably adequate products liability insurance policy with limits of no less
than One Million Dollars ($1,000,000.00) combined single limit with a
financially responsible insurance carrier naming Licensor as an additional
insured and providing Licensor with thirty (30) days notice of cancellation or
alteration.
12. Confidentiality. Any confidential information disclosed by
either party to the other, except as set forth below, shall be considered
confidential information, and shall be accorded the same treatment which the
receiving party gives to its own confidential information. The obligation of
confidentiality set forth in the preceding sentence shall not apply to
information which (a) was publicly
A-7
available at the time of the disclosure to the receiving party; (b) subsequently
becomes publicly available through no fault of the receiving party; (c) is
rightfully acquired by the receiving party, subsequent to disclosure by the
other party, from a third party who to the receiving party's knowledge is not in
breach of a confidential relationship with regard to such information; or (d) is
independently developed by the receiving party solely through the efforts of
individuals who did not have access to the confidential information.
13. Assignment. This Agreement and all of the provisions hereof
shall be binding upon and inure to the benefit of the parties hereto and their
permitted assigns. Notwithstanding the foregoing, neither party shall assign,
transfer or delegate any of its rights under this Agreement or delegate any of
its obligations under this Agreement to any entity which is not a parent or
affiliate of the assigning party without the other party's prior written
approval, and any such assignment, transfer or delegation made without such
approval shall be void ab initio; provided, however, (i) Licensor and Licensee
shall be permitted to assign, transfer or delegate any of its rights and/or
obligations under this Agreement in connection with the sale of all or part of
its business to any third party without the consent of the other party provided
such third party expressly agrees to be bound by the terms and conditions of
this Agreement and (ii) Licensee shall be permitted to assign, transfer or
delegate any of its rights and/or obligations under this Agreement or to the
Xxxx to any lender providing financing to Licensor without the consent of
Licensee provided such assignment, transfer or delegation is expressly subject
to the terms and conditions of this Agreement.
14. Force Majeure. Neither party to this Agreement shall be held
liable for failure to comply with any of the terms of this Agreement when such
failure has been caused by fire, flood, labor dispute, strike, war, energy
shortage, insurrection, government restrictions or regulations or force majeure
beyond the control of the party involved.
15. Miscellaneous.
(a) THIS AGREEMENT SHALL BE GOVERNED BY THE LAWS OF THE STATE
OF NEW YORK, WITHOUT REGARD TO ITS RULES OR CONFLICTS OF LAW.
(b) Nothing herein contained shall be deemed to create the
relationship of partnership or joint venture between the parties. Neither party
shall have the right to incur any obligation to third parties which shall be
binding upon the other and neither party shall have any interest whatever in the
profits and liabilities of the other arising out of or resulting from the
subject matter of this Agreement.
A-8
(c) Unless otherwise specified herein, notices to the parties
shall be sent by prepaid certified or registered mail, or by a national
overnight courier service, to the parties at the following addresses (or at such
other address as shall be specified by like notice):
(i) If to Licensee, to:
ProMark International Inc.
000 X. Xxxx Xxxxxx, Xxxxx 000
Xxxxx, Xxxxx 00000
with copies to:
X.X. Xxxxx Company
000 Xxxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxxxxxx 00000
Attn: Senior Vice President and General Counsel
Heinz Pet Products Company
Xxx Xxxxxxxxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000
Attention: Vice President Value Brands Marketing
(ii) If to Licensor, to:
Xxxxx Xxxx Pet Food Company, Inc.
Xxx Xxxxxxxx Xxxxx, Xxxxx 000
Xxxxxxxxx, Xxxxxxxxx 00000
Attention: Xx. Xxxxx Xxxx, President
with a copy to:
Xxxxxxxx & X'Xxxx, LLP
000 Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attn: Xxxxxx Xxxxxxx, Esq.
(d) The failure of either party to insist on compliance with
any provision hereof shall not constitute a waiver or modification of such
provision or any other provision.
(e) If any provision hereof is held to be invalid or
unenforceable by any court of competent jurisdiction or any other authority
vested
A-9
with jurisdiction, such holding shall not effect the validity or enforceability
of any other provision hereto.
(f) The paragraph order and heading are for convenience only
and shall not be deemed to affect in any way the language, obligations or the
provisions to which they refer.
(g) This Agreement sets forth the entire understanding of the
parties with respect to the subject matter hereof; and may be amended or
modified only in writing executed by each party hereto.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the date first above written.
XXXXX XXXX PET FOOD PROMARK INTERNATIONAL INC.
COMPANY, INC.
By: By:
---------------------------- ----------------------------
Name: Name:
--------------------------- ---------------------------
Title: Title:
-------------------------- --------------------------
A-10
EXHIBIT B
ASSIGNMENT OF U.S. TRADEMARK
WHEREAS, PROMARK INTERNATIONAL INC., an Idaho corporation, whose
principal address is 000 X. Xxxx Xxxxxx, Xxxxx 000, Xxxxx, Xxxxx 00000
(hereinafter "Assignor") is the owner of and has adopted, licensed and/or is
otherwise using (i) the name, trade name and/or trademark KOZY KITTEN which is
the subject of U.S. Registration Number 730,530, and (ii) any unregistered
common law trademarks, trade dress and label designs utilized solely therewith
and good will associated therewith (hereinafter referred to as the "Xxxx"); and
WHEREAS, XXXXX XXXX PET FOOD COMPANY, INC., a Delaware corporation,
whose principal address is Xxx Xxxxxxxx Xxxxx, Xxxxx 000, Xxxxxxxxx, Xxxxxxxxx
00000 (hereinafter "Assignee") desires to acquire any and all rights that
Assignor may have in and to the Xxxx (including the registration issued by the
United States Patent and Trademark Office identified above and all renewals and
extensions thereof), together with the goodwill of the business in connection
with which the Xxxx is used and which is symbolized by the Xxxx;
NOW, THEREFORE, for good and valuable consideration, receipt of
which is hereby acknowledged, Assignor does hereby assign unto Assignee all of
Assignor's right, title and interest in and to the Xxxx throughout the world
(including without limitation, any and all related registrations issued by the
United States Patent and Trademark Office, all renewals and extensions thereof
and any unregistered common law trademarks, trade dress and/or label designs
utilized solely therewith), together with the goodwill of the business in
connection with which the Xxxx is used and which is symbolized by the Xxxx and
the right to recover for damages and profits for past infringements thereof.
Assignor agrees to execute and deliver, at the request of the
Assignee, such additional papers, instruments, and assignments, as the Assignee
may reasonably require in order to vest Assignor's right, title, and interest in
and to the Xxxx in the Assignee and/or to carry out the intent of this
Assignment.
IN WITNESS WHEREOF, Assignor has executed this Assignment this
______ day of _____,19__.
PROMARK INTERNATIONAL INC.
By:
----------------------------
Name:
---------------------------
Title:
--------------------------
Corporate Acknowledgment Form
STATE OF )
)ss.:
COUNTY OF )
On this __ day of_________ 19__, before me personally came
_______________________ to me known, who being by me duly sworn did depose and
say that he/she is the ______________________ of ProMark International Inc., the
corporation described in and which executed the foregoing instrument; and that
he/she signed his/her name thereto by order of the Board of Directors of said
corporation.
---------------------------------
Notary Public
-B-2-
EXHIBIT C
WAIVER
Re: Trademark License Agreement between ProMark International, Inc. and
Xxxxx Xxxx Pet Food Company, Inc.
Pursuant to this Letter Agreement and in consideration of and as
provided in the Asset Purchase Agreement, dated April 17, 1996, made between
Heinz Pet Products Company, a division of Star-Xxxx Foods, Inc. ("HPP"), ProMark
International Inc., Perk Foods Co. Incorporated, X.X. Xxxxx Company, Xxxxx Xxxx
Pet Food Holdings, Inc. and Xxxxx Xxxx Pet Food Company, Inc., HPP agrees to and
hereby does waive any and all rights to the KOZY KITTEN trademark (including any
unregistered common law trademarks, trade dress and label designs utilized
solely therewith) under that certain License Agreement, dated June 20, 1995
("ProMark License"). Furthermore, the definition of Licensed Property in the
ProMark License is hereby amended to provide that the KOZY KITTEN trademark
(including any unregistered common law trademarks, trade dress and label designs
utilized solely therewith) is no longer included in the definition of Licensed
Property (as such term is defined in the ProMark License).
PROMARK INTERNATIONAL INC.
By:
----------------------------
Name:
---------------------------
Title:
--------------------------
Agreed and Accepted this ___ day of _______________, 1996.
Heinz Pet Products Company,
a division of Star-Xxxx Foods, Inc.
By:
----------------------------
Name:
---------------------------
Title:
--------------------------
