EXHIBIT 10.7
[EXECUTION COPY]
THE LIEN OF THE COLLATERAL AGENT IN RESPECT OF THE COLLATERAL GRANTED HEREUNDER
AND THE EXERCISE BY THE COLLATERAL AGENT OF ITS RIGHTS HEREUNDER WITH RESPECT TO
SUCH COLLATERAL IS SUBJECT TO THE TERMS OF THE INTERCREDITOR AGREEMENT REFERRED
TO BELOW.
TRADEMARK SECURITY AGREEMENT
This TRADEMARK SECURITY AGREEMENT (this "AGREEMENT"), dated as of July
7, 2003, is made by XXXXXX'X OF CHICAGO, INC., an Illinois corporation
("DEBTOR"), in favor of THE BANK OF NEW YORK ("BNY"), as collateral agent
(together with its successor(s) thereto in such capacity, "COLLATERAL AGENT")
for the Trustee and the Noteholders, with reference to the following:
WHEREAS, Xxxxxx'x Restaurant Group, Inc., a Delaware corporation
("COMPANY"), certain Subsidiaries of the Company (including Debtor), as
guarantors ("Guarantors"), Collateral Agent and BNY, as Trustee ("TRUSTEE"),
have entered into an Indenture, dated as of July 7, 2003 (as amended, restated,
supplemented or otherwise modified from time to time, the "INDENTURE"), pursuant
to which Company incurred indebtedness for certain notes (such notes, together
with all additional notes and all other notes issued thereunder in exchange for
such notes and additional notes, the "NOTES") and Debtor and the other
Guarantors have guaranteed the payment of the Notes and the other Obligations
thereunder;
WHEREAS, Company and Xxxxx Fargo Foothill, Inc. (the "LENDER") have
entered into that certain Loan and Security Agreement dated as of July 7, 2003
(as amended, restated, supplemented, replaced or otherwise modified from time to
time, the "LOAN AGREEMENT"), pursuant to which Lender has agreed to make credit
extensions to the Company in an initial aggregate principal amount of up to
$15,000,000;
WHEREAS, Collateral Agent, Lender, Company, Debtor and the other
Guarantors have entered into that certain Intercreditor and Lien Subordination
Agreement, dated as of July 7, 2003 (as amended, restated, supplemented,
replaced or otherwise modified from time to time, the "INTERCREDITOR
AGREEMENT"), which agreement, among other things, sets forth, as between
Collateral Agent and Lender, the relative priority of their respective Liens in
the Collateral (as defined in the Intercreditor Agreement) and their rights with
respect thereto;
WHEREAS, Debtor desires to secure its Guarantee under the Indenture by
granting to Collateral Agent, for its benefit and for the benefit of the Trustee
and the Noteholders, security interests in the Trademark Collateral as set forth
herein;
WHEREAS, Debtor has executed that certain Security Agreement of even
date herewith, in favor of Collateral Agent (the "SECURITY AGREEMENT"), pursuant
to which Debtor has
granted to Collateral Agent, for the benefit of Collateral Agent, the
Noteholders and the Trustee, security interests in (among other things) all
general intangibles of Debtor;
WHEREAS, Debtor is a Subsidiary of the Company and will benefit from
the proceeds of the Notes;
WHEREAS, in accordance with the terms of the Indenture, Debtor has
agreed to execute and deliver this Agreement to Collateral Agent for filing with
the PTO and with any other relevant recording systems in any domestic or foreign
jurisdiction, and as further evidence of and to effectuate Collateral Agent's
existing security interests in the trademarks and other general intangibles
described herein.
NOW, THEREFORE, for valuable consideration, the receipt and adequacy
of which is hereby acknowledged, Debtor hereby agrees in favor of Collateral
Agent, for the benefit of Collateral Agent, the Noteholders and the Trustee, as
follows:
1. DEFINITIONS; INTERPRETATION.
(a) CERTAIN DEFINED TERMS. All capitalized terms used herein and
not otherwise defined herein shall have the meanings ascribed to them in the
Security Agreement. As used in this Agreement, the following terms shall have
the following meanings:
"AGREEMENT" has the meaning set forth in the preamble hereto.
"BNY" has the meaning set forth in the recitals hereto.
"COLLATERAL AGENT" has the meaning set forth in the preamble hereto.
"COLLATERAL AGENT'S LIENS" means the Liens granted by Debtor to
Collateral Agent under this Agreement or the other Indenture Documents to which
Debtor is a party.
"COMPANY" has the meaning set forth in the recitals hereto.
"DEBTOR" has the meaning set forth in the preamble hereto.
"DEFEASANCE" means, with respect to any obligation, the defeasance
thereof pursuant to a Legal Defeasance or Covenant Defeasance as described under
SECTION 8.01 of the Indenture.
"EVENT OF DEFAULT" means any Event of Default under the Indenture.
"INDENTURE" has the meaning set forth in the recitals hereto.
"INTERCREDITOR AGREEMENT" has the meaning set forth in the recitals
hereto.
"LENDER" has the meaning set forth in the recitals hereto.
"LOAN AGREEMENT" has the meaning set forth in the recitals hereto.
2
"NOTES" has the meaning set forth in the recitals hereto.
"PROCEEDS" means whatever is receivable or received from or upon the
sale, lease, license, collection, use, exchange or other disposition, whether
voluntary or involuntary, of any Trademark Collateral, including "proceeds" as
such term is defined in the UCC, and all proceeds of proceeds. Proceeds shall
include (i) any and all accounts, chattel paper, instruments, general
intangibles, cash and other proceeds, payable to or for the account of Debtor,
from time to time in respect of any of the Trademark Collateral, (ii) any and
all proceeds of any insurance, indemnity, warranty or guaranty payable to or for
the account of Debtor from time to time with respect to any of the Trademark
Collateral, (iii) any and all claims and payments (in any form whatsoever) made
or due and payable to Debtor from time to time in connection with any
requisition, confiscation, condemnation, seizure or forfeiture of all or any
part of the Trademark Collateral by any Person acting under color of
governmental authority, and (iv) any and all other amounts from time to time
paid or payable under or in connection with any of the Trademark Collateral or
for or on account of any damage or injury to or conversion of any Trademark
Collateral by any Person.
"PTO" means the United States Patent and Trademark Office and any
successor thereto.
"RECORD" means information that is inscribed on a tangible medium or
which is stored in an electronic or other medium and is retrievable in
perceivable form.
"SECURED OBLIGATIONS" means, with respect to Debtor, all liabilities,
obligations, or undertakings owing by Debtor to Collateral Agent, Trustee or any
Noteholder of any kind or description arising out of or outstanding under,
advanced or issued pursuant to, or evidenced by the Indenture, this Agreement,
or any of the other Indenture Documents, irrespective of whether for the payment
of money, whether direct or indirect, absolute or contingent, due or to become
due, voluntary or involuntary, whether now existing or hereafter arising, and
including all interest, costs, indemnities, fees (including attorneys fees), and
expenses (including interest, costs, indemnities, fees, and expenses that, but
for the provisions of the Bankruptcy Code, would have accrued irrespective of
whether a claim therefor is allowed) and any and all other amounts which Debtor
is required to pay pursuant to any of the foregoing, by law, or otherwise.
"SECURITY AGREEMENT" has the meaning set forth in the recitals hereto.
"TRADEMARK COLLATERAL" and "COLLATERAL" have the meaning assigned to
the term "Trademark Collateral" in SECTION 2.
"TRADEMARKS" has the meaning set forth in SECTION 2.
"TRUSTEE" has the meaning set forth in the recitals hereto.
"UCC" means the Uniform Commercial Code as in effect from time to time
in the State of New York.
"UNITED STATES" and "U.S." each mean the United States of America.
3
"VOIDABLE TRANSFER" has the meaning set forth in SECTION 19 to this
Agreement.
(b) TERMS DEFINED IN UCC. Where applicable and except as
otherwise defined herein, terms used in this Agreement shall have the meanings
assigned to them in the UCC.
(i) INTERPRETATION. Unless the context of this Agreement
clearly requires otherwise, references to the plural include the
singular, references to the singular include the plural, the term
"including" is not limiting, and the term "or" has, except where
otherwise indicated, the inclusive meaning represented by the phrase
"and/or." The words "hereof," "herein," "hereby," "hereunder," and
similar terms in this Agreement refer to this Agreement as a whole and
not to any particular provision of this Agreement. Section,
subsection, clause, schedule, and exhibit references are to this
Agreement unless otherwise specified. All of the exhibits or schedules
attached to this Agreement shall be deemed incorporated herein by
reference. Any reference in this Agreement or in any of the other
Indenture Documents to this Agreement or any of the other Indenture
Documents shall include all alterations, amendments, changes,
extensions, modifications, renewals, replacements, substitutions,
joinders, and supplements, thereto and thereof, as applicable (subject
to any restrictions on such alterations, amendments, changes,
extensions, modifications, renewals, replacements, substitutions,
joinders, and supplements set forth therein). In the event of a direct
conflict between the terms and provisions of this Agreement and the
Indenture, it is the intention of the parties hereto that both such
documents shall be read together and construed, to the fullest extent
possible, to be in concert with each other. In the event of any
actual, irreconcilable conflict that cannot be resolved as aforesaid,
the terms and provisions of the Indenture shall control and govern;
PROVIDED, HOWEVER, that the inclusion herein of additional obligations
on the part of Debtor and supplemental rights and remedies in favor of
Collateral Agent, in each case in respect of the Trademark Collateral,
shall not be deemed a conflict with the Indenture. Any reference
herein to the payment in full of the Secured Obligations shall mean
the payment in full in cash of all Secured Obligations other than
contingent indemnification Secured Obligations. Any reference herein
to any Person shall be construed to include such Person's successors
and assigns. Any requirement of a writing contained herein shall be
satisfied by the transmission of a Record and any Record transmitted
shall constitute a representation and warranty as to the accuracy and
completeness of the information contained therein. The captions and
headings are for convenience of reference only and shall not affect
the construction of this Agreement. References to statutes or
regulations are to be construed as including all statutory and
regulatory provisions consolidating, amending or replacing the statute
or regulation referred to.
2. SECURITY INTEREST.
(a) ASSIGNMENT AND GRANT OF SECURITY IN RESPECT OF THE SECURED
OBLIGATIONS. To secure the prompt payment and performance of the Secured
Obligations, Debtor
4
hereby grants, assigns, transfers and conveys to Collateral Agent, for the
benefit of Collateral Agent, the Noteholders and the Trustee, a continuing
security interest in all of Debtor's right, title and interest in and to the
following property, whether now existing or hereafter acquired or arising and
whether registered or unregistered (collectively, the "TRADEMARK COLLATERAL"):
(i) all state (including common law) and federal
trademarks, service marks and trade names, corporate names, company
names, business names, fictitious business names, trade styles, trade
dress, logos, other source or business identifiers, designs and
general intangibles of like nature, now existing or hereafter adopted
or acquired, together with and including all licenses therefor held by
Debtor, and all registrations and recordings thereof, and all
applications filed or to be filed in connection therewith, including
registrations and applications in the PTO, any State of the United
States (but excluding each application to register any trademark,
service xxxx, or other xxxx xxxxx to the filing under applicable law
of a verified statement of use (or the equivalent) for such trademark
or service xxxx) and all extensions or renewals thereof, including
without limitation any of the foregoing identified on SCHEDULE A
hereto (as the same may be amended, modified or supplemented from time
to time), and the right (but not the obligation) to register claims
under any state or federal trademark law or regulation and to apply
for, renew and extend any of the same, to xxx or bring opposition or
cancellation proceedings in Debtor's name or in the name of Collateral
Agent for past, present or future infringement or unconsented use
thereof, and all rights arising therefrom throughout the world
(collectively, the "TRADEMARKS");
(ii) all claims, causes of action and rights to xxx for
past, present or future infringement or unconsented use of any
Trademarks and all rights arising therefrom and pertaining thereto;
(iii) all general intangibles related to or arising out of
any of the Trademarks and all the goodwill of Debtor's business
symbolized by the Trademarks or associated therewith; and
(iv) all Proceeds of any and all of the foregoing.
(b) CONTINUING SECURITY INTEREST. Debtor hereby agrees that this
Agreement shall create a continuing security interest in the Trademark
Collateral which shall remain in effect until terminated in accordance with
SECTION 18.
(c) INCORPORATION INTO SECURITY AGREEMENT. This Agreement shall
be fully incorporated into the Security Agreement and all understandings,
agreements and provisions contained in the Security Agreement shall be fully
incorporated into this Agreement. Without limiting the foregoing, the Trademark
Collateral described in this Agreement shall constitute part of the Collateral
in the Security Agreement.
(d) LICENSES. Debtor may grant licenses of the Trademark
Collateral in accordance with the terms of the Indenture and the Security
Agreement.
5
3. FURTHER ASSURANCES; APPOINTMENT OF COLLATERAL AGENT AS
ATTORNEY-IN-FACT. Debtor at its expense shall execute and deliver, or cause to
be executed and delivered, to Collateral Agent any and all documents and
instruments, in form and substance reasonably satisfactory to Collateral Agent,
and take any and all action, which Collateral Agent may reasonably request from
time to time, to perfect and continue the perfection or to maintain the priority
of, or provide notice of the security interest in the Trademark Collateral held
by Collateral Agent for the benefit of Collateral Agent, the Noteholders and the
Trustee and to accomplish the purposes of this Agreement. If Debtor refuses to
execute and deliver, or fails timely to execute and deliver, any of the
documents it is requested to execute and deliver by Collateral Agent in
accordance with the foregoing, Collateral Agent shall have the right, in the
name of Debtor, or in the name of Collateral Agent or otherwise, without notice
to or assent by Debtor, and Debtor hereby irrevocably constitutes and appoints
Collateral Agent (and any of Collateral Agent's officers or employees or agents
designated by Collateral Agent) as Debtor's true and lawful attorney-in-fact
with full power and authority, subject to the terms of the Intercreditor
Agreement, (i) to sign the name of Debtor on all or any of such documents or
instruments and perform all other acts that Collateral Agent reasonably deems
necessary in order to perfect or continue the perfection of, maintain the
priority or enforceability of or provide notice of the security interest in the
Trademark Collateral held by Collateral Agent for the benefit of Collateral
Agent, the Noteholders and the Trustee, and (ii) to execute any and all other
documents and instruments, and to perform any and all acts and things for and on
behalf of Debtor, which Collateral Agent may reasonably deem necessary or
advisable to maintain, preserve and protect the Trademark Collateral and to
accomplish the purposes of this Agreement, including (A) to defend, settle,
adjust or institute any action, suit or proceeding with respect to the Trademark
Collateral, (B) to assert or retain any rights under any license agreement for
any of the Trademark Collateral, and (C) to execute any and all applications,
documents, papers and instruments for Collateral Agent to use the Trademark
Collateral, to grant or issue any exclusive or non-exclusive license with
respect to any Trademark Collateral, and to assign, convey or otherwise transfer
title in or dispose of the Trademark Collateral. The power of attorney set forth
in this SECTION 3, being coupled with an interest, is irrevocable so long as
this Agreement shall not have terminated in accordance with SECTION 18; PROVIDED
that the foregoing power of attorney shall terminate when all of the Secured
Obligations have been fully and finally paid and performed in full or the
Defeasance thereof shall have been consummated.
4. REPRESENTATIONS AND WARRANTIES. Debtor represents and warrants to
Collateral Agent, in each case to the best of its knowledge, information, and
belief, as follows:
(a) NO OTHER TRADEMARKS. SCHEDULE A sets forth a true and correct
list of all of Debtor's existing Trademarks (other than abandoned Trademarks)
that are registered, or for which any application for registration has been
filed with the PTO or any corresponding or similar trademark office of any other
U.S. jurisdiction, and that are owned or held (whether pursuant to a license or
otherwise) and used by Debtor.
(b) TRADEMARKS SUBSISTING. Each of Debtor's Trademarks listed in
SCHEDULE A is subsisting and has not been adjudged invalid or unenforceable, in
whole or in part, and, to the best of Debtor's knowledge, each of the Trademarks
set forth on SCHEDULE A is valid and enforceable.
6
(c) OWNERSHIP OF TRADEMARK COLLATERAL; NO VIOLATION. To the best
of Debtor's knowledge, (i) Debtor has rights in and/or good and defensible title
to the Trademark Collateral listed on SCHEDULE A, (ii) Debtor is the sole and
exclusive owner of the Trademark Collateral listed on SCHEDULE A, free and clear
of any Liens and rights of others (other than Permitted Liens), including
licenses, registered user agreements and covenants by Debtor not to xxx third
persons, and (iii) with respect to any Trademarks for which Debtor is either a
licensor or a licensee pursuant to a license or licensing agreement regarding
such Trademark, each such license or licensing agreement is in full force and
effect, Debtor is not in material default of any of its obligations thereunder
and, (A) other than the parties to such licenses or licensing agreements, or (B)
in the case of any non-exclusive license or license agreement entered into by
Debtor or any such licensor regarding such Trademark, the parties to any other
such non-exclusive licenses or license agreements entered into by Debtor or any
such licensor with any other Person, no other Person has any rights in or to any
of the Trademark Collateral. To the best of Debtor's knowledge, the past,
present and contemplated future use of the Trademark Collateral by Debtor has
not, does not and will not infringe upon or violate any right, privilege or
license agreement of or with any other Person or give any such Person the right
to terminate any such right, privilege or license agreement.
(d) NO INFRINGEMENT. To the best of Debtor's knowledge, (i) no
material infringement or unauthorized use presently is being made of any of the
Trademark Collateral by any Person, and (ii) the past, present, and contemplated
future use of the Trademark Collateral by Debtor has not, does not and will not
materially infringe upon or materially violate any right, privilege, or license
arrangement of or with any other Person or give such Person the right to
terminate any such license arrangement.
(e) POWERS. Debtor has the unqualified right, power and authority
to pledge and to grant to Collateral Agent, for the benefit of Collateral Agent,
the Noteholders and the Trustee, security interests in the Trademark Collateral
pursuant to this Agreement, and to execute, deliver and perform its obligations
in accordance with the terms of this Agreement, without the consent or approval
of any other Person except as already obtained.
(f) FILINGS, ETC. Other than the filing of a Uniform Commercial
Code financing statement in the jurisdiction in which Debtor is organized, the
filing of this Agreement with the PTO and such other consents or approvals that
have been obtained and that are still in force and effect, the execution,
delivery, and performance by Debtor of this Agreement and the Security Agreement
do not and will not require any registration with, consent, or approval of, or
notice to, or other action with or by, any Governmental Authority.
(g) BINDING OBLIGATIONS, ETC. This Agreement and the Security
Agreement are the legally valid and binding obligations of Debtor, enforceable
against Debtor in accordance with their respective terms, except as enforcement
may be limited by equitable principles or by bankruptcy, insolvency,
reorganization, moratorium, or similar laws relating to or limiting creditors'
rights generally.
(h) PERFECTION OF LIENS. On and after the date hereof, upon the
filing of the financing statements and the filing of this Agreement with the
PTO, the Collateral Agent's
7
Liens in the Trademark Collateral are validly created, perfected, and first
priority Liens, subject only to Permitted Liens.
5. COVENANTS. So long as any of the Secured Obligations remain
unsatisfied (other than contingent indemnification obligations) and the
Defeasance thereof shall not have been consummated, Debtor agrees: (i) that it
will comply in all material respects with all of the covenants, terms and
provisions of this Agreement, and (ii) that it will promptly give Collateral
Agent written notice of the occurrence of any event that could reasonably be
expected to have a material adverse effect on any of the Trademarks and the
Trademark Collateral, including any petition under the Bankruptcy Code filed by
or against any licensor of any of the Trademarks for which Debtor is a licensee.
6. FUTURE RIGHTS. For so long as any of the Secured Obligations shall
remain outstanding or the Defeasance thereof shall not have been consummated,
or, if earlier, until Collateral Agent shall have released or terminated, in
whole but not in part, its interest in the Trademark Collateral, if and when
Debtor shall obtain rights to any new Trademarks, or any reissue, renewal or
extension of any Trademarks, the provisions of SECTION 2 shall automatically
apply thereto and Debtor shall give to Collateral Agent prompt notice thereof.
Debtor shall do all things reasonably deemed necessary by Collateral Agent to
ensure the validity, perfection, priority and enforceability of the security
interests of Collateral Agent in such future acquired Trademark Collateral. If
Debtor refuses to execute and deliver, or fails timely to execute and deliver,
any of the documents it is requested to execute and deliver by Collateral Agent
in connection herewith, Debtor hereby authorizes Collateral Agent to modify,
amend or supplement the Schedules hereto and to re-execute this Agreement from
time to time on Debtor's behalf and as its attorney-in-fact to include any
future Trademarks which are or become Trademark Collateral and to cause such
re-executed Agreement or such modified, amended or supplemented Schedules to be
filed with the PTO.
7. DUTIES OF COLLATERAL AGENT. Notwithstanding any provision contained
in this Agreement, none of Collateral Agent, the Noteholders or the Trustee
shall have any duty to exercise any of the rights, privileges or powers afforded
to it and shall not be responsible to Debtor or any other Person for any failure
to do so or delay in doing so. None of Collateral Agent, the Noteholders or the
Trustee shall have any duty or liability to exercise or preserve any rights,
privileges or powers pertaining to the Trademark Collateral other than the
exercise of commercially reasonable behavior in accordance with applicable law.
8. EVENTS OF DEFAULT. The occurrence of any "Event of Default" under
the Indenture shall constitute an Event of Default hereunder.
9. REMEDIES. From and after the occurrence and during the continuation
of an Event of Default, Collateral Agent shall have all rights and remedies
available to it under the Indenture and applicable law (which rights and
remedies are cumulative) with respect to the security interests in any of the
Trademark Collateral. Debtor hereby agrees that such rights and remedies include
the right of Collateral Agent as a secured party to sell or otherwise dispose of
the Trademark Collateral after the occurrence and during the continuance of an
Event of Default,
8
pursuant to the UCC. Debtor hereby agrees that Collateral Agent shall at all
times have such royalty-free licenses, to the extent permitted by law and the
Indenture Documents, for any Trademark Collateral that is reasonably necessary
to permit the exercise of any of Collateral Agent's rights or remedies upon or
after the occurrence of (and during the continuance of) an Event of Default with
respect to (among other things) any tangible asset of Debtor in which Collateral
Agent has a security interest, including Collateral Agent's rights to sell
inventory, tooling or packaging which is acquired by Debtor (or its successor,
assignee or trustee in bankruptcy). In addition to and without limiting any of
the foregoing, upon the occurrence and during the continuance of an Event of
Default, Collateral Agent shall have the right but shall in no way be obligated
to bring suit, or to take such other action as Collateral Agent reasonably deems
necessary, in the name of Debtor or Collateral Agent, to enforce or protect any
of the Trademark Collateral, in which event Debtor shall, at the request of
Collateral Agent, do any and all lawful acts and execute any and all documents
required by Collateral Agent necessary to such enforcement. To the extent that
Collateral Agent shall elect not to bring suit to enforce such Trademark
Collateral, Debtor, in the exercise of its reasonable business judgment, agrees
to use all reasonable measures and its diligent efforts, whether by action,
suit, proceeding or otherwise, to prevent the infringement, misappropriation or
violation thereof by others and for that purpose agrees diligently to maintain
any action, suit or proceeding against any Person necessary to prevent such
infringement, misappropriation or violation, except to the extent the Trademark
Collateral that is the subject of such infringement, misappropriation or
violation is not material to the Debtor's business, as determined in the good
faith business judgment of the Debtor.
10. BINDING EFFECT. This Agreement shall be binding upon and inure to
the benefit of and enforceable by Debtor and Collateral Agent for the benefit of
itself, the Trustee and the Noteholders and their respective successors and
assigns of each of the parties; PROVIDED, HOWEVER, that neither party may assign
this Agreement or any rights or duties hereunder except to the extent permitted
under the Indenture.
11. NOTICES. All notices and other communications hereunder shall be
in writing and shall be mailed, sent or delivered to each party hereto at its
address set forth on SCHEDULE B hereto in accordance with the Indenture.
12. GOVERNING LAW. THE VALIDITY OF THIS AGREEMENT, ITS CONSTRUCTION,
INTERPRETATION, AND ENFORCEMENT, AND THE RIGHTS OF THE PARTIES HERETO WITH
RESPECT TO ALL MATTERS ARISING HEREUNDER OR RELATED HERETO SHALL BE DETERMINED
UNDER, GOVERNED BY, AND CONSTRUED IN ACCORDANCE WITH THE LAWS OF THE STATE OF
NEW YORK, EXCEPT TO THE EXTENT THAT THE VALIDITY OR PERFECTION OF THE SECURITY
INTERESTS HEREUNDER IN RESPECT OF THE TRADEMARK COLLATERAL ARE GOVERNED BY
FEDERAL LAW, IN WHICH CASE SUCH CHOICE OF NEW YORK LAW SHALL NOT BE DEEMED TO
DEPRIVE COLLATERAL AGENT OF SUCH RIGHTS AND REMEDIES AS MAY BE AVAILABLE UNDER
FEDERAL LAW. THE PARTIES AGREE THAT ALL ACTIONS OR PROCEEDINGS ARISING IN
CONNECTION WITH THIS AGREEMENT AND THE OTHER INDENTURE DOCUMENTS SHALL BE TRIED
AND LITIGATED
9
ONLY IN THE STATE AND FEDERAL COURTS LOCATED IN THE BOROUGH OF MANHATTAN IN XXX
XXXX XX XXX XXXX, XXXXX XX XXX XXXX; PROVIDED, HOWEVER, THAT ANY SUIT SEEKING
ENFORCEMENT AGAINST ANY TRADEMARK COLLATERAL OR OTHER PROPERTY MAY BE BROUGHT,
AT COLLATERAL AGENT'S OPTION, IN THE COURTS OF ANY JURISDICTION WHERE COLLATERAL
AGENT ELECTS TO BRING SUCH ACTION OR WHERE SUCH TRADEMARK COLLATERAL OR OTHER
PROPERTY MAY BE FOUND. DEBTOR AND COLLATERAL AGENT WAIVE, TO THE EXTENT
PERMITTED UNDER APPLICABLE LAW, ANY RIGHT SUCH PARTY MAY HAVE TO ASSERT THE
DOCTRINE OF FORUM NON CONVENIENS OR TO OBJECT TO VENUE TO THE EXTENT ANY
PROCEEDING IS BROUGHT IN ACCORDANCE WITH THIS SECTION 12.
13. ENTIRE AGREEMENT; AMENDMENT. This Agreement and the other
Indenture Documents, together with the Schedules hereto and thereto, contains
the entire agreement of the parties with respect to the subject matter hereof
and supersede all prior drafts and communications relating to such subject
matter. Neither this Agreement nor any provision hereof may be modified, amended
or waived except by the written agreement of the parties to this Agreement. No
failure on the part of Collateral Agent to exercise, and no delay in exercising
any right under this Agreement, any other Indenture Document, or otherwise with
respect to any of the Secured Obligations, shall operate as a waiver thereof;
nor shall any single or partial exercise of any right under this Agreement, any
other Indenture Document, or otherwise with respect to any of the Secured
Obligations preclude any other or further exercise thereof or the exercise of
any other right. Notwithstanding the foregoing, Collateral Agent may reexecute
this Agreement or modify, amend or supplement the Schedules hereto as provided
in SECTION 6 hereof.
14. SEVERABILITY. If one or more provisions contained in this
Agreement shall be invalid, illegal or unenforceable in any respect in any
jurisdiction or with respect to any party, such invalidity, illegality or
unenforceability in such jurisdiction or with respect to such party shall, to
the fullest extent permitted by applicable law, not invalidate or render illegal
or unenforceable any such provision in any other jurisdiction or with respect to
any other party, or any other provisions of this Agreement.
15. COUNTERPARTS; TELEFACSIMILE EXECUTION. This Agreement may be
executed in any number of counterparts and by different parties hereto in
separate counterparts, each of which when so executed shall be deemed to be an
original and all of which taken together shall constitute but one and the same
agreement. Delivery of an executed counterpart of this Agreement by
telefacsimile shall be equally as effective as delivery of an original executed
counterpart of this Agreement. Any party delivering an executed counterpart of
this Agreement by telefacsimile also shall deliver an original executed
counterpart of this Agreement but the failure to deliver an original executed
counterpart shall not affect the validity, enforceability, and binding effect of
this Agreement.
10
16. SECURITY AGREEMENT. Debtor acknowledges that the rights and
remedies of Collateral Agent with respect to the security interest in the
Trademark Collateral granted hereby are more fully set forth in the Security
Agreement and the other Indenture Documents and all such rights and remedies are
cumulative.
17. NO INCONSISTENT REQUIREMENTS. Debtor acknowledges that this
Agreement and the other Indenture Documents may contain covenants and other
terms and provisions variously stated regarding the same or similar matters, and
Debtor agrees that all such covenants, terms and provisions are cumulative and
all shall be performed and satisfied in accordance with their respective terms.
18. TERMINATION. Upon the payment and performance in full of the
Secured Obligations or the Defeasance thereof, this Agreement shall terminate,
and Collateral Agent shall execute and deliver such documents and instruments
without recourse, representation or warranty and take such further action
reasonably requested by Debtor, at Debtor's expense, as Debtor shall reasonably
request to evidence termination of the security interest granted by Debtor to
Collateral Agent for the benefit of Collateral Agent, the Noteholders and the
Trustee hereunder, including cancellation of this Agreement by written notice
from Collateral Agent to the PTO.
19. REVIVAL AND REINSTATEMENT OF OBLIGATIONS. If the incurrence or
payment of the Secured Obligations by Debtor or the transfer by Debtor to
Collateral Agent of any property of Debtor should for any reason subsequently be
declared to be void or voidable under any state or federal law relating to
creditors' rights, including provisions of the Bankruptcy Code relating to
fraudulent conveyances, preferences, and other voidable or recoverable payments
of money or transfers of property (collectively, a "VOIDABLE TRANSFER"), and if
Collateral Agent is required to repay or restore, in whole or in part, any such
Voidable Transfer, or elects to do so upon the reasonable advice of its counsel,
then, as to any such Voidable Transfer, or the amount thereof that Collateral
Agent is required or elects to repay or restore, and as to all reasonable costs,
expenses, and attorneys' fees of Collateral Agent related thereto, the liability
of Debtor automatically shall be revived, reinstated, and restored and shall
exist as though such Voidable Transfer had never been made.
20. DEBTOR REMAINS LIABLE. Anything herein to the contrary
notwithstanding:
(a) Debtor will remain liable under the contracts and agreements
included in the Trademark Collateral to the extent set forth therein, and will
perform all of its duties and obligations under such contracts and agreements to
the same extent as if this Agreement had not been executed;
(b) the exercise by Collateral Agent of any of its rights hereunder
will not release Debtor from any of its duties or obligations under any such
contracts or agreements included in the Trademark Collateral; and
11
(c) none of Collateral Agent, the Trustee or any Noteholder will have
any obligation or liability under any contracts or agreements included in the
Trademark Collateral by reason of this Agreement, nor will any such Person be
obligated to perform any of the obligations or duties of Debtor thereunder or to
take any action to collect or enforce any claim for payment assigned hereunder.
21. POSTPONEMENT OF SUBROGATION. Debtor hereby agrees that it will not
exercise any rights which it may acquire by reason of any payment made
hereunder, whether by way of subrogation, reimbursement or otherwise, until the
prior payment in full of all Secured Obligations or the Defeasance thereof. Any
amount paid to Debtor on account of any payment made hereunder prior to the
payment in full of all Secured Obligations or the Defeasance thereof shall be
held in trust for the benefit of Collateral Agent, the Noteholders and the
Trustee and shall immediately be paid to Collateral Agent, to be distributed to
the Trustee for application against the Secured Obligations, whether matured or
unmatured, in accordance with the terms of the Indenture. In furtherance of the
foregoing, for so long as any Secured Obligations remain outstanding or the
Defeasance thereof shall not have been consummated, Debtor shall refrain from
taking any action or commencing any proceeding against Company or any other
Guarantor (or any of their respective successors or assigns, whether in
connection with a bankruptcy proceeding or otherwise) to recover any amounts in
respect of payments made under this Agreement to Collateral Agent, the Trustee
or any Noteholder.
22. SECURITY INTEREST ABSOLUTE. To the maximum extent permitted by
law, all rights of Collateral Agent, all security interests hereunder, and all
obligations of Debtor hereunder, shall be absolute and unconditional
irrespective of:
(a) any lack of validity or enforceability of any of the Secured
Obligations or any other agreement or instrument relating thereto, including any
of the Indenture Documents;
(b) any change in the time, manner, or place of payment of, or in
any other term of, all or any of the Secured Obligations, or any other amendment
or waiver of or any consent to any departure from any of the Indenture
Documents, or any other agreement or instrument relating thereto;
(c) any exchange, release, or non-perfection of any other
collateral, or any release or amendment or waiver of or consent to departure
from any guaranty for all or any of the Secured Obligations; or
(d) any other circumstances that might otherwise constitute a
defense available to, or a discharge of, Debtor.
To the maximum extent permitted by law, Debtor hereby waives any right to
require Collateral Agent to: (A) proceed against or exhaust any security held
from Debtor; or (B) pursue any other remedy in Collateral Agent's power
whatsoever.
23. INTERCREDITOR AGREEMENT.
12
(a) The Liens granted hereunder in favor of Collateral Agent for
the benefit of itself, the Trustee and the Noteholders in respect of the
Trademark Collateral and the exercise of any right related thereto thereby shall
be subject, in each case, to the terms of the Intercreditor Agreement.
(b) In the event of any direct conflict between the express terms
and provisions of this Agreement and of the Intercreditor Agreement, the terms
and provisions of the Intercreditor Agreement shall control.
[Signature page follows]
13
IN WITNESS WHEREOF, the parties hereto have duly executed this
Agreement, as of the date first above written.
XXXXXX'X OF CHICAGO, INC.,
By: /s/ Xxxxxx X. Xxxxxxx
--------------------------
Name: Xxxxxx X. Xxxxxxx
Title: EVP & CFO
THE BANK OF NEW YORK, AS
COLLATERAL AGENT
By: /s/ Xxxxx Xxxxxxxxx-Xxxxxx
-----------------------------
Name: Xxxxx Xxxxxxxxx-Xxxxxx
Title: Vice President
