TRADEMARK SECURITY AGREEMENT
Exhibit 10.6
TRADEMARK SECURITY AGREEMENT dated as of May 15, 2023 (as amended, supplemented or otherwise modified from time to time in accordance with the provisions hereof, this “Agreement”), among each of the signatories hereto (collectively, the “Grantors”) and XXXXXX XXXXXX, as representative of the Purchasers named in the Purchase Agreement (as defined below) (in such capacity, the “Secured Party”).
Reference is made to (a) the Secured Note Purchase Agreement dated as of May 15, 2023 (collectively, as amended, supplemented or otherwise modified from time to time, the “Purchase Agreement”), among XXXXX XXXX, L.P., a Delaware limited partnership, XXXXX TECHNOLOGIES, INC., a Delaware corporation, JUPITER RESEARCH, LLC, an Arizona limited liability company, and COMMONWEALTH ALTERNATIVE CARE, INC., a Massachusetts corporation (collectively, the “Borrowers”), TILT HOLDINGS INC., a British Columbia corporation (the “Parent”), the Secured Party, as Noteholder Representative, and the Purchasers; and (b) the Security Agreement dated as of May 15, 2023 (as amended, supplemented or otherwise modified from time to time, the “Security Agreement”), among the Borrowers and certain subsidiaries of the Borrowers, as grantors, the other grantors from time to time party thereto, Parent, and the Secured Party. The Borrowers have agreed to sell and issue to the Purchasers certain promissory notes subject to the terms and conditions set forth in the Purchase Agreement. Each Grantor is a Borrower, an Affiliate of a Borrower, or the Parent, and is willing to execute and deliver this Agreement as a condition precedent to the consummation of the transactions contemplated by the Purchase Agreement. Accordingly, the parties hereto agree as follows:
1.Terms. Capitalized terms used in this Agreement and not otherwise defined herein have the meanings specified in the Purchase Agreement or the Security Agreement, as applicable. The rules of construction specified in Section 1 of the Security Agreement also apply to this Agreement.
2.Grant of Security Interest. As security for the payment or performance, as the case may be, in full of the Secured Obligations, each Grantor hereby grants to the Secured Party (for itself and for the benefit of the Purchasers) a lien and security interest (the “Security Interest”) in all of each such Grantor’s right, title and interest in, to and under all of its now owned or hereafter acquired or arising and filed (i) trademarks, trademark registrations, trade names and trademark applications, service marks, service mark registrations, service names and service mark applications, including, without limitation, the trademark registrations and trademark applications listed on Schedule I, attached hereto and made a part hereof, and (a) renewals thereof, (b) all income, royalties, damages and payments now and hereafter due and/or payable with respect thereto, including, without limitation, damages and payments for past or future infringements thereof, (c) the right to sue for past, present and future infringements thereof, and (d) any rights corresponding thereto throughout the world; and (ii)the entire goodwill of such Grantor's business including but not by way of limitation such goodwill connected with and symbolized by the Trademarks (all of the foregoing trademarks, service marks, trademark and service mark registrations, trade names, service names and applications, together with the items described in clauses (a) – (d) and (ii), are hereinafter individually and/or collectively referred to as the “Trademark Collateral”).
0.Xxxxxxxx Agreement. The Security Interest granted to the Secured Party herein is granted in furtherance, and not in limitation, of the security interests granted to the Secured Party pursuant to the Security Agreement. Each Grantor hereby acknowledges and affirms that the rights and remedies of the Secured Party with respect to the Trademark Collateral are more fully set forth in the Security Agreement, the terms and provisions of which are hereby incorporated herein by reference as if fully set forth herein. In the event of any conflict between the terms of this Agreement and the Security Agreement, the terms of the Security Agreement shall govern.
4.Termination. Upon the full performance of the Secured Obligations (other than indemnity obligations under the Loan Documents that are not then due and payable or for which any events or claims that would give rise thereto are not pending), the security interest granted herein shall terminate and the Secured Party shall execute, acknowledge, and deliver to the Grantors an instrument in writing in recordable form releasing the collateral pledge, grant, assignment, lien and security interest in the Trademark Collateral under this Agreement.
5.Counterparts. This Agreement may be executed in counterparts (and by different parties hereto on different counterparts), each of which shall constitute an original but all of which when taken together shall constitute a single contract. Delivery of an executed signature page to this Agreement by facsimile or other electronic transmission shall be effective as delivery of a manually signed counterpart of this Agreement.
[SIGNATURE PAGES FOLLOW]
2
IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement as of the day and year first above written.
| GRANTORS: | |
| | |
| TILT HOLDINGS INC., a British Columbia corporation | |
| | |
| By: | /s/ Xxx Xxxxxx |
| Name: | Xxx Xxxxxx |
| Title: | Interim CEO |
| | |
| JUPITER RESEARCH, LLC, an Arizona limited liability company | |
| | |
| By: | /s/ Xxx Xxxxxx |
| Name: | Xxx Xxxxxx |
| Title: | Chief Executive Officer |
Signature Page to Trademark Security Agreement
| NOTEHOLDER REPRESENTATIVE: |
| |
| /s/ Jordan Geotas |
| JORDAN GEOTAS |
Signature Page to Trademark Security Agreement
SCHEDULE I
TRADEMARK COLLATERAL
Trademark | Country | Serial No./ | Reg. No. / Reg. Date | Owner | Status |
|---|---|---|---|---|---|
STANDARD FARMS | U.S. | 97488878 07/05/2022 | N/A | Tilt | Refused, |
| U.S. | 97290939 03/02/2022 | N/A | Tilt | Refused, |
| U.S. | 97290936 03/02/2022 | N/A | Tilt | Refused, |
INNOVATE CULTIVATE ELEVATE | U.S. | 97290934 03/02/2022 | N/A | Tilt | Refused, |
LIQUID | U.S. | 87225056 11/03/2016 | 5326028 10/31/2017 | Jupiter | Registered |
LIQUID 9 | U.S. | 87224337 11/02/2016 | 5367649 01/02/2018 | Jupiter | Registered |
| U.S. | 87225146 11/03/2016 | 5218409 06/06/2017 | Jupiter | Registered |
KLIK | U.S. | 88163924 10/22/2018 | 5941427 12/24/2019 | Jupiter | Registered |
Trademark | Country | Serial No./ | Reg. No. / Reg. Date | Owner | Status |
LIQUID QUE | U.S. | 88713150 12/03/2019 | 6790076 07/12/2022 | Jupiter | Registered |
DOSE-CTI | U.S. | 90128914 08/21/2020 | 6609388 01/04/2022 | Jupiter | Registered |
INFINITY | U.S. | 88160937 10/18/2018 | N/A | Jupiter | Under Appeal |
LIQUID | U.S. | 97657135 11/01/2022 | N/A | Jupiter | Awaiting |
THREDZ | U.S. | 97685816 11/21/2022 | N/A | Jupiter | Awaiting |
INFINITY | EU | 018054132 04/18/2019 | 18054132 09/05/2019 | Jupiter | Registered |
INFINITY | Canada | 1958146 04/18/2019 | 1,154,585 12/01/2022 | Jupiter | Registered |
LOVO | U.S. | 97/911,107 04/27/2023 | N/A | Jupiter | Awaiting |
2
Trademark | Country | Serial No./ | Reg. No. / Reg. Date | Owner | Status |
THREDZ | EU | 1725054 03/20/2023 | 1725054 | Jupiter | Awaiting |
3
