TRADEMARK SECURITY AGREEMENT
Execution
Version
This
Agreement is dated the 28th day of September, 2007, among Diomed Holdings,
Inc.,
a Delaware corporation, Diomed, Inc., a Delaware corporation, each with its
chief executive office and principal place of business located at Xxx Xxxxxx
Xxxx, Xxxxxxx, Xxxxxxxxxxxxx 00000, (each, a “Grantor”
and
collectively, the “Grantors”
),
and
Hercules Technology Growth Capital, Inc., a Maryland corporation, with its
chief
executive office and principal place of business located at 000 Xxxxxxxx Xxxxxx,
Xxxxx 000, Xxxx Xxxx, Xxxxxxxxxx 00000 (“Secured
Party”).
RECITALS
A. Each
Grantor owns the Trademarks (as defined in the Loan Agreement), Trademark
registrations and Trademark applications and are party, whether individually
or
collectively, to the Trademark Licenses to which it is a party, all as listed
on
Schedule
1
hereto:
B. Grantors
and Secured Party are parties to a Loan and Security Agreement dated as of
September 28, 2007 and all ancillary documents entered into in connection with
such Loan and Security Agreement, all as may be amended from time to time
(hereinafter referred to collectively as the “Loan
Agreement”);
C. Pursuant
to the terms of the Loan Agreement, each Grantor has granted to Secured Party
a
first priority security interest in all tangible and intangible personal
property of such Grantor, including all right, title and interest of such
Grantor in, to and under all of such Grantor’s Trademarks, Trademark Licenses to
which it is a party (as such terms are defined in the Loan Agreement), and
all
products and proceeds thereof, including, without limitation, any and all causes
of action which may exist by reason of infringement or dilution thereof or
injury to the associated goodwill, to secure the payment of all amounts owing
under the Loan Agreement.
D. All
capitalized terms not defined herein shall have the meanings set forth in the
Loan Agreement.
NOW,
THEREFORE, in consideration of the premises, each Grantor hereby agrees with
Secured Party as follows:
1.
To
secure the complete and timely satisfaction of all Secured Obligations, each
Grantor hereby grants and conveys to Secured Party a continuing security
interest in and lien on all of such Grantor’s right, title and interest in and
to, whether presently existing or hereafter arising or acquired, the Trademarks
(including those listed on Schedule
1
hereto
(as the same may be amended pursuant hereto from time to time)), and Trademark
Licenses to which it is a party, including, without limitation, all renewals
thereof, all proceeds of infringement suits, the right to xxx for past, present
and future infringements and all rights corresponding thereto throughout the
world, and the goodwill of the business to which each of the Trademarks
relates.
2.
Each
Grantor represents, warrants and covenants that:
a)
Such
Grantor is the sole and exclusive owner of the entire and unencumbered right,
title and interest in and to each of the Trademarks owned by such Grantor,
free
and clear of any liens, charges and encumbrances, except for Permitted Liens,
including, without limitation, pledges, assignments, licenses, shop rights
and
covenants by such Grantor not to xxx third persons, except
for any
license disclosed in Schedule
1;
b)
The
Trademarks are subsisting and have not been adjudged invalid or
unenforceable;
c)
To the
best of such Grantor’s knowledge, each of the Trademarks is valid and
enforceable;
d)
No
claim has been made that the use of any of the Trademarks does or may violate
the rights of any third person;
e)
such
Grantor has the unqualified right to enter into this Trademark Security
Agreement and perform its terms;
f)
Each
Grantor has used, and will continue to use for the duration of this Trademark
Security Agreement, proper statutory notice in connection with its use of the
Trademarks; and
g)
Each
Grantor has used, and will continue to use for the duration of this Trademark
Security Agreement, consistent standards of quality of products sold under
the
Trademarks.
3.
Each
Grantor hereby grants to Secured Party the right to visit such Grantor’s
facilities to inspect the products at reasonable times during regular business
hours. Each Grantor shall do any and all acts reasonably required by Secured
Party to ensure such Grantor’s compliance with paragraph
2(g).
4.
Each
Grantor agrees that, until all of the Secured Obligations shall have been
satisfied in full in cash, such Grantor will not enter into any agreement
relating to such Grantor’s Trademarks (for example, a license agreement) which
is inconsistent with such Grantor’s obligations under this Trademark Security
Agreement, without Secured Party’s prior written consent; provided,
that so
long as no Default or Event of Default shall have occurred and be continuing,
such Grantor may grant licenses to third parties to use the Trademarks in the
ordinary course of business of such Grantor and such third party on arm’s length
and customary business terms.
5.
If,
before the Secured Obligations shall have been satisfied in full in cash, any
Grantor shall obtain rights to any new Trademarks, the provisions of
paragraph
1
shall
automatically apply thereto and such Grantor shall give Secured Party prompt
written notice thereof.
6.
Each
Grantor authorizes Secured Party to unilaterally modify this Trademark Agreement
by amending Schedule
1
to
include any future Trademarks covered by paragraphs
1
and
5
hereof.
7.
If any
Event of Default shall have occurred and be continuing, Secured Party shall
have, in addition to all other rights and remedies given it by this Trademark
Security Agreement or the Loan Agreement, those allowed by law and the rights
and remedies of a secured party under the Uniform Commercial Code as enacted
in
any jurisdiction in which the Trademarks may be located and, without limiting
the generality of the foregoing, the Secured Party may immediately, without
demand of performance and without other notice (except as set forth below)
or
demand whatsoever to any Grantor, all of which are hereby expressly waived,
and
without advertisement, sell at public or private sale or otherwise realize
upon,
all or from time to time any of the Trademarks, or any interest which the
applicable Grantor may have therein, and after deducting from the proceeds
of
sale or other disposition of the Trademarks all expenses (including all
reasonable expenses for brokers’ fees and legal services), shall apply the
residue of such proceeds toward the payment of the Secured Obligations. Any
remainder of the proceeds after payment in full in cash of the Secured
Obligations shall be paid over to the Grantors. Notice of any sale or other
disposition of the Trademarks shall be given to the Lead Borrower at least
ten
(10) days before the time of any intended public or private sale or other
disposition of the Trademarks is to be made, which each Grantor hereby agrees
shall be reasonable notice of such sale or other disposition. At any such sale
or other disposition Secured Party or its assignee may, to the extent
permissible under applicable law, purchase the whole or any part of the
Trademarks sold, free from any right of redemption on the part of Grantors,
which right is hereby waived and released.
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8.
At any
time and from time to time, upon the written request of Secured Party, and
at
the sole expense of Grantors, each Grantor will promptly and duly execute and
deliver such further instruments and documents and take such further action
as
Secured Party may reasonably request for the purpose of obtaining or preserving
the full benefits of this Agreement and the Loan Agreement, and of the rights
and powers herein and therein granted, including, without limitation, the filing
of any additional, supplemental, or amended Trademark Security Agreements,
or
the filing of any financing statements or continuation statements under the
Uniform Commercial Code in effect in any jurisdiction with respect to the Liens
created hereby or in any of the Loan Agreements.
9.
At
such time as Grantors shall completely satisfy all of the Secured Obligations
(other than inchoate indemnity obligations) in cash, this Trademark Security
Agreement shall terminate and Secured Party shall execute and deliver to the
Grantors all terminations, or other instruments as may be necessary or proper
to
terminate the security interest granted herein and to terminate the applicable
Grantor’s obligations hereunder, subject to any disposition thereof which may
have been made by Secured Party pursuant hereto.
10.
Any
and all reasonable fees, costs and expenses, of whatever kind or nature,
including the reasonable attorneys’ fees and legal expenses incurred by Secured
Party in connection with the preparation of this Trademark Security Agreement
and all other documents relating hereto and the consummation of this
transaction, the filing or recording of any documents (including all taxes
in
connection therewith) in public offices, the payment or discharge of any taxes,
counsel fees, maintenance fees, encumbrances or otherwise protecting,
maintaining or preserving the Trademarks, or in defending or prosecuting any
actions or proceedings arising out of or related to the Trademarks, shall be
borne and paid by Grantors jointly and severally on demand by Secured Party
and
shall be added to the principal amount of the Secured Obligations and shall
bear
interest at the highest applicable Default Rate.
11.
Each
Grantor shall have the duty, through counsel reasonably acceptable to Secured
Party, to prosecute diligently any Trademark applications pending as of the
date
of this Trademark Security Agreement or thereafter until the Secured Obligations
shall have been paid in full in cash, to make federal application on registrable
but unregistered Trademarks (provided that such application will not
significantly compromise such Grantor’s competitive position), to file and
prosecute opposition and cancellation proceedings and to do any and all acts
which are necessary or desirable to preserve and maintain all rights in the
Trademarks. Any expenses incurred in connection with the Trademarks shall be
borne by Grantors. The Grantors shall only abandon a Trademark if, while
exercising good faith and reasonable business judgment, such Grantor determines
it is prudent.
12.
Each
Grantor shall have the right, with the prior written consent of Secured Party,
which will not be unreasonably withheld, to bring any opposition proceedings,
cancellation proceedings or lawsuit in its own name to enforce or protect the
Trademarks, in which event Secured Party may, if necessary, be joined as a
nominal party to such suit if Secured Party shall have been satisfied in the
exercise of its reasonable judgment that it is not thereby incurring any risk
of
liability because of such joinder. Each Grantor shall promptly, upon demand,
reimburse and indemnify Secured Party for all damages, costs and expenses,
including reasonable attorneys’ fees incurred by Secured Party, in accordance
with the Loan Agreement.
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13.
Each
Grantor hereby authorizes and empowers Secured Party to make, constitute and
appoint any officer or agent of Secured Party as Secured Party may select,
in
its exclusive discretion, as such Grantor’s true and lawful attorney-in-fact,
with the power, after and during the continuance of an Event of Default, to
endorse such Grantor’s name on all applications, documents, papers and
instruments necessary for Secured Party to use the Trademarks, or to grant
or
issue any exclusive or nonexclusive license under the Trademarks to anyone
else,
or necessary for Secured Party to, pledge, convey or otherwise transfer title
in
or dispose of the Trademarks to any third person as a part of Secured Party’s
realization on such collateral upon acceleration of the Secured Obligations
following an Event of Default. Each Grantor hereby ratifies all that such
attorney shall lawfully do or cause to be done by virtue hereof. This power
of
attorney being coupled with an interest shall be irrevocable for the life of
this Trademark Security Agreement.
14.
If
any Grantor fails to comply with any of their obligations hereunder, Secured
Party may do so in such Grantor’s name or in Secured Party’s name, but at
Grantors’ expense, and Grantors hereby jointly and severally agree to reimburse
Secured Party in full for all expenses, including reasonable attorneys’ fees,
incurred by Secured Party in protecting, defending and maintaining the
Trademarks.
15.
No
course of dealing between any Grantor and Secured Party, nor any failure to
exercise, nor any delay in exercising, on the part of Secured Party, any right,
power or privilege hereunder or under the Loan Agreement shall operate as a
waiver thereof; nor shall any single or partial exercise of any right, power
or
privilege hereunder or thereunder preclude any other or further exercise thereof
or the exercise of any other right, power or privilege.
16. All
of
Secured Party’s rights and remedies with respect to the Trademarks, whether
established hereby or by the Loan Agreement, or any other agreements or by
law,
shall be cumulative and may be exercised singularly or
concurrently.
17.
The
provisions of this Trademark Security Agreement are severable, and if any clause
or provision shall be held invalid and unenforceable in whole or in part in
any
jurisdiction, then such invalidity or unenforceability shall affect only such
clause or provision, or part thereof, in such jurisdiction, and shall not in
any
manner affect such clause or provision in any other jurisdiction, or any other
clause or provision of this Trademark Security Agreement in any
jurisdiction.
18.
This
Trademark Security Agreement is subject to modification only by a writing signed
by the parties hereto, except as provided in paragraph
6.
19.
This
Trademark Security Agreement shall be binding upon each Grantor and Secured
Party and their respective permitted successors and assigns, and shall inure
to
the benefit of Grantors, Secured Party and the respective permitted successors
and assigns of such Grantor and Secured Party.
20.
The
validity and interpretation of this Trademark Security Agreement and the rights
and obligations of the parties shall be governed by the laws of the State of
California.
21.
Section 11.2 (Notice)
of the
Loan Agreement is hereby incorporated herein in its entirety, save that
references therein to the term Lender shall be deemed to be references to
Secured Party herein and references therein to the term Borrower or Borrowers
shall be deemed to be references to any Grantor or the Grantors, as applicable,
herein.
[Remainder
of Page Intentionally Left Blank]
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IN
WITNESS WHEREOF,
the
execution hereof under seal as of the day and year first above written.
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DIOMED
HOLDINGS, INC.
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By:
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Name:
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Title:
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DIOMED,
INC.
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By:
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Name:
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Title:
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HERCULES
TECHNOLOGY GROWTH
CAPITAL, INC. |
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By:
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Name:
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X.
Xxxxxxxx Martitsch
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Its:
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Associate
General Counsel
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SCHEDULE
1 TO
TR
ADEMARK SECURITY AGREEMENT
TRADEMARKS
AND TRADEMARK APPLICATIONS:
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Trademark
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Applicant/Registrant
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Registration/
Application
No.
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Registration/
File Date |
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OPTIGUIDE
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Diomed,
Inc.
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2055737
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04/22/1997
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ELVT
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Diomed,
Inc.
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2715197
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05/13/2003
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ALC
(Block Letters)
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Diomed,
Inc.
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3044703
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01/17/2006
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SPOTLIGHT
OPS
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Diomed,
Inc.
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77-020683
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10/30/2006
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SITE
MARKS (Block Letters)
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Diomed,
Inc.
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77-032377
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10/30/2006
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SPOTLIGHT
(Block
Letters)
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Diomed,
Inc.
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78-804678
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02/01/2006
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