EXHIBIT 10.48
TRADEMARK COLLATERAL ASSIGNMENT
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THIS AGREEMENT is made on the 12th day of February, 1999, between
XXXXX.XXX, Inc. a Delaware corporation, having a mailing address at 0000 Xxxxxxx
Xxxxxx Xx., Xxx Xxxxx, XX 00000-0000 ("Assignor"), and Venture Lending & Leasing
II, Inc., ("Assignee"). Assignee's address is 0000 Xxxxx Xxxxx Xxxxxx, Xxxxx
000, Xxx Xxxx, Xxxxxxxxxx 00000.
RECITALS
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A. Assignor owns the Trademarks, Trademark registrations and Trademark
applications listed on Schedule 1 hereto, and is a party to the Trademark
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Licenses listed on Schedule 1 hereto:
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B. Assignor and Assignee are parties to a Loan and Security Agreement of
even date herewith (as the same may be amended from time to time, the "Loan
Agreement");
C. Pursuant to the terms of the Loan Agreement, Assignor has granted to
Assignee a security interest in certain personal property assets of Assignor,
including all right, title and interest of Assignor in, to and under all
Assignor's Trademarks (as defined in the Loan Agreement), Trademark
registrations, Trademark applications and Trademark Licenses (as defined in the
Loan Agreement), whether presently existing or hereafter arising or acquired,
together with the goodwill of the business symbolized by the Trademarks and the
applications therefor and the registrations thereof, 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. Capitalized terms used herein and not otherwise defined shall have the
meanings set forth in the Loan Agreement.
NOW, THEREFORE, in consideration of the premises, Assignor hereby agrees
with Assignee as follows:
1. To secure the complete and timely satisfaction of all Obligations
(as defined in the Loan Agreement), Assignor hereby grants, assigns and conveys
to Assignee a continuing security interest in and lien on all of Assignor's
right, title and interest in and to the Trademarks, Trademark applications and
Trademark Licenses listed on Schedule 1 hereto (as the same may be amended
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pursuant hereto from time to time), 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 (all of the foregoing are collectively called the "Trademarks"), and the
goodwill of the business to which each of the Trademarks relates.
2. Assignor covenants and warrants that:
a) The Trademarks are subsisting and have not been adjudged
invalid or unenforceable;
b) To the best of Assignor's knowledge, each of the Trademarks
is valid and enforceable;
c) No claim has been made that the use of any of the Trademarks
does or may violate the rights of any third person;
d) Assignor is the sole and exclusive owner of the entire and
unencumbered right, title and interest in and to each of the Trademarks, free
and clear of any liens, charges and encumbrances, including, without limitation,
pledges, assignments, licenses, registered user agreements and covenants by
Assignor not to xxx third persons, except (i) Permitted Liens; and (ii) any
license disclosed in Schedule 1;
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e) Assignor has the unqualified right to enter into this
Agreement and perform its terms;
f) Assignor has used, and will continue to use for the duration
of this Agreement, proper statutory notice in connection with its use of the
Trademarks; and
g) Assignor has used, and will continue to use for the duration
of this Agreement, consistent standards of quality in its manufacture of
products sold under the Trademarks.
3. Assignor hereby grants to Assignee and its employees and Assignee
the right to visit Assignor's plants and facilities which manufacture, inspect
or store products sold under any of the Trademarks, and to inspect the products
and quality control records relating thereto at reasonable times during regular
business hours. Assignor shall do any and all acts required by Assignee to
ensure Assignor's compliance with paragraph 2(g).
4. Assignor agrees that, until all of the Obligations shall have been
satisfied in full, it will not enter into any agreement (for example, a license
agreement) which is inconsistent with Assignor's obligations under this
Agreement, without Assignee's prior written consent; provided, that so long as
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no Default or Event of Default (as defined in the Loan Agreement) shall have
occurred and be continuing, Assignor may grant licenses to third parties to use
the Trademarks in the ordinary course of business of both Assignor and such
third party on arm's length and customary business terms.
5. If, before the Obligations shall have been satisfied in full,
Assignor shall obtain rights to any new Trademarks, the provisions of paragraph
1 shall automatically apply thereto and Assignor shall give Assignee prompt
written notice thereof.
6. Assignor authorizes Assignee unilaterally to modify this Agreement
by amending Schedule 1 to include any future Trademarks and Trademark
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applications covered by paragraphs 1 and 5 hereof.
7. If any Event of Default (as defined in the Loan Agreement) shall
have occurred and be continuing, Assignee shall have, in addition to all other
rights and remedies given it by this Agreement or any other Loan Document (as
defined in 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 Assignee may immediately, without demand of
performance and without other notice (except as set forth below) or demand
whatsoever to Assignor, 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 Assignor 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 Obligations. Any remainder of the proceeds after payment in full
of the Obligations shall be paid over to Assignor. Notice of any sale or other
disposition of the Trademarks shall be given to Assignor 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 Assignor hereby agrees shall be reasonable
notice of such sale or other disposition. At any such sale or other disposition
Assignee 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 Assignor, which right is hereby waived and released.
8. At such time as Assignor shall completely satisfy all of the
Obligations, this Agreement shall terminate and Assignee shall execute and
deliver to Assignor all assignments, reconveyances or other instruments as may
be necessary or proper to re-vest in Assignor full title to the Trademarks,
subject to any disposition thereof which may have been made by Assignee pursuant
hereto.
9. Any and all fees, costs and expenses, of whatever kind or nature,
including the reasonable attorneys' fees and legal expenses incurred by Assignee
in connection with the preparation of this 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 Assignor on demand by Assignee and until so paid shall be added to the
principal amount of the Obligations and shall bear interest at the highest
applicable Default Rate (as defined in the Loan Agreement).
10. Assignor shall have the duty, through counsel reasonably
acceptable to Assignee, to prosecute diligently any Trademark applications
pending as of the date of this Agreement or thereafter until the Obligations
shall have been paid in full, to make federal application on registrable but
unregistered Trademarks, 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 Assignor. The Assignor shall
not abandon any Trademark without the consent of Assignee, which consent shall
not be unreasonably withheld.
11. Assignor shall have the right, with the prior written consent of
Assignee, 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 Assignee may, if necessary, be joined as
a nominal party to such suit if Assignee shall have been satisfied that it is
not thereby incurring any risk of liability because of such joinder. Assignor
shall promptly, upon demand, reimburse and indemnify Assignee for all damages,
costs and expenses, including reasonable attorneys' fees incurred by Assignee,
in accordance with the Loan Agreement.
12. Assignor hereby authorizes and empowers Assignee to make,
constitute and appoint any officer or Assignee of Assignee as Assignee may
select, in its exclusive discretion, as Assignor's true and lawful attorney-in-
fact, with the power, after and during the continuance of an Event of Default,
to endorse Assignor's name on all applications, documents, papers and
instruments necessary for Assignee to use the Trademarks, or to grant or issue
any exclusive or nonexclusive license under the Trademarks to anyone else, or
necessary for Assignee to assign, pledge, convey or otherwise transfer title in
or dispose of the Trademarks to any third person as a part of Assignee's
realization on such collateral upon acceleration of the Obligations following an
Event of Default. Assignor 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 Agreement.
13. If Assignor fails to comply with any of its obligations
hereunder, Assignee may do so in Assignor's name or in Assignee's name, but at
Assignor's expense, and Assignor hereby agrees to reimburse Assignee in full for
all expenses, including reasonable attorneys' fees, incurred by Assignee in
protecting, defending and maintaining the Trademarks.
14. No course of dealing between Assignor and Assignee, nor any
failure to exercise, nor any delay in exercising, on the part of Assignee, 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.
15. All of Assignee's rights and remedies with respect to the
Trademarks, whether established hereby or by the Security Agreement, the Loan
Agreement or any other agreements or by law, shall be cumulative and may be
exercised singularly or concurrently.
16. The provisions of this 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 Agreement in any jurisdiction.
17. This Agreement is subject to modification only by a writing
signed by both parties, except as provided in paragraph 6.
18. This Agreement shall be binding upon Assignor and Assignee and
their respective permitted successors and assigns, and shall inure to the
benefit of Assignor, Assignee and the respective permitted successors and
assigns, of Assignee and Assignor.
19. The validity and interpretation of this Agreement and the rights
and obligations of the parties shall be governed by the laws of the State of
California.
WITNESS the execution hereof under seal as of the day and year first
above written.
XXXXX.XXX, INC.
By: /s/ C CRANE
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Name: C A Crane
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Title: President and CEO
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VENTURE LENDING & LEASING II, INC.
By: /s/ XXXXXXXX XXXXXXXXX
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Name: Xxxxxxxx Xxxxxxxxx
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Title: President
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SCHEDULE 1 TO
TRADEMARK COLLATERAL ASSIGNMENT
A. TRADEMARK AND TRADEMARK APPLICATIONS:
Application Issue or Expiration
or Trademark No. Filing Date Date Title
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B. TRADEMARK LICENSES:
Corresponding Date License Termination
Trademark No. Granted Licensee Date
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