SECOND AMENDED AND RESTATED TRADEMARK
COLLATERAL SECURITY AND PLEDGE AGREEMENT
SECOND AMENDED AND RESTATED TRADEMARK COLLATERAL SECURITY AND PLEDGE
AGREEMENT, dated as of December 23, 1998 (this "Agreement"), by and between
XXXXXXXXX XXXXX, INC., a California corporation having its principal place of
business at 0000 Xxxxxx Xxxxxxxxx, Xxx Xxxxx, Xxxxxxxxxx 00000 (the "Assignor"),
and BANKBOSTON, N.A., a national banking association having an office at 000
Xxxxxxx Xxxxxx, Xxxxxx, Xxxxxxxxxxxxx 00000, as agent (in such capacity, the
"Agent") for itself and other lending institutions (collectively, the "Banks")
which are or may become parties to that certain Second Amended and Restated
Revolving Credit Agreement dated as of December 23, 1998 (as amended and in
effect from time to time, the "Credit Agreement") among the Assignor, Xxxxxxxxx
Xxxxx Holding, Inc. (the "Guarantor"), the Banks and the Agent.
WHEREAS, pursuant to that certain Amended and Restated Revolving
Credit and Term Loan Agreement dated as of December 5, 1997 (as amended and in
effect from time to time, the "First Restated Credit Agreement", which amended
and restated in its entirety the Revolving Credit and Term Loan Agreement dated
as of September 27, 1996), the Banks made loans or otherwise extended credit to
the Assignor for the purposes described therein;
WHEREAS, pursuant to that certain Amended and Restated Security
Agreement dated as of December 5, 1997 (as amended and in effect from time to
time, the "First Restated Security Agreement", which amended and restated in its
entirety the Security Agreement dated as of September 27, 1996), the Assignor
granted to the Agent, for the benefit of the Banks and the Agent, security
interests in substantially all of its assets, including but not limited to
certain of its intellectual property assets, to secure payment and performance
of its obligations under and with respect to the First Restated Credit
Agreement;
WHEREAS, pursuant to that certain Amended and Restated Trademark
Collateral Security and Pledge Agreement dated as of December 5, 1997 (as
amended and in effect from time to time, the "First Restated Trademark
Agreement", which amended and restated in its entirety the Trademark
Collateral Security and Pledge Agreement dated as of September 27, 1996), the
Assignor granted to the Agent, for the benefit of the Banks and the Agent,
security interests in certain of its intellectual property assets to secure
payment and performance of its obligations under and with respect to the
First Restated Credit Agreement;
WHEREAS, the Assignor, the Guarantor, the Banks and the Agent have
entered into the Credit Agreement to amend and restate in its entirety the First
Restated Credit Agreement;
WHEREAS, pursuant to that certain Second Amended and Restated Security
Agreement dated as December 23, 1998 (as amended and in effect from
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time to time, the "Security Agreement"), the Assignor has granted to the
Agent, for the benefit of the Banks and the Agent, a security interest in
substantially all of its assets, including but not limited to all of its
intellectual property assets, to secure payment and performance of its
Obligations under and with respect to the Credit Agreement;
WHEREAS, it is a condition precedent to the Agent and the Banks
amending and restating the First Restated Credit Agreement and converting any
loans under the First Restated Agreement into Loans under the Credit Agreement
or making any other Loans or otherwise extending credit under the Credit
Agreement that the Assignor execute and deliver to the Agent, for the benefit of
the Banks and the Agent, a trademark agreement in substantially the form hereof;
WHEREAS, the Assignor wishes to grant to the Agent, for the benefit of
the Banks and the Agent, security interests in all of its intellectual property
assets, including but not limited to trademarks, service marks, trademark and
service xxxx registrations, and trademark and service xxxx registration
applications, in order to secure its Obligations and to ratify and confirm the
prior grant of a security interest in its intellectual property assets under the
First Restated Trademark Agreement; and
WHEREAS, the Assignor is the direct legal and/or beneficial owner of
all trademarks, service marks, trademark and service xxxx registrations, and
trademark and service xxxx registration applications listed on SCHEDULE A;
NOW, THEREFORE, in consideration of the premises contained herein and
for other good and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, the Assignor and the Agent agree that the First
Restated Trademark Agreement is hereby amended and restated in its entirety as
follows:
1. DEFINITIONS.
Capitalized terms used herein and not otherwise defined herein shall
have the respective meanings provided therefor in the Credit Agreement and the
Security Agreement. In addition, the following terms shall have the meanings set
forth in this Section 1 or elsewhere in this Agreement referred to below:
ASSIGNMENT OF MARKS. See Section 2.1.
ASSOCIATED GOODWILL. All goodwill of the Assignor and its business,
products and services appurtenant to, associated with or symbolized by the
Trademarks and the use thereof.
PLEDGED TRADEMARKS. All of the Assignor's right, title and interest in
and to all of the Trademarks, the Trademark Registrations, the Trademark License
Rights, the Trademark Rights, the Associated Goodwill, the Related Assets, and
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all accessions to, substitutions for, replacements of, and all products and
proceeds of any and all of the foregoing.
PTO. The United States Patent and Trademark Office.
RELATED ASSETS. All assets, rights and interests of the Assignor that
uniquely reflect or embody the Associated Goodwill, including the following:
(a) all patents, inventions, copyrights, trade secrets,
confidential information, formulae, methods or processes, compounds,
recipes, know-how, methods and operating systems, drawings,
descriptions, formulations, manufacturing and production and delivery
procedures, quality control procedures, product and service
specifications, catalogs, price lists, and advertising materials,
relating to the manufacture, production, delivery, provision and sale
of goods or services under or in association with any of the
Trademarks; and
(b) the following documents and things in the possession or
under the control of the Assignor, or subject to its demand for
possession or control, related to the production, delivery, provision
and sale by the Assignor, or any affiliate, franchisee, licensee or
contractor, of products or services sold by or under the authority of
the Assignor in connection with the Trademarks or Trademark Rights,
whether prior to, on or subsequent to the date hereof:
(i) all lists, contracts, ancillary documents and
other information that identify, describe or provide
information with respect to any customers, dealers or
distributors of the Assignor, its affiliates or franchisees
or licensees or contractors, for products or services sold
under or in connection with the Trademarks or Trademark
Rights, including all lists and documents containing
information regarding each customer's, dealer's or
distributor's name and address, credit, payment, discount,
delivery and other sale terms, and history, pattern and
total of purchases by brand, product, style, size and
quantity;
(ii) all agreements (including franchise
agreements), product and service specification documents and
operating, production and quality control manuals relating
to or used in the design, manufacture, production, delivery,
provision and sale of products or services under or in
connection with the Trademarks or Trademark Rights;
(iii) all documents and agreements relating to the
identity and locations of all sources of supply, all terms
of purchase and delivery, for all materials, components, raw
materials and other supplies and services used in the
manufacture, production,
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provision, delivery and sale of products or services under
or in connection with the Trademarks or Trademark Rights;
and
(iv) all agreements and documents constituting or
concerning the present or future, current or proposed
advertising and promotion by the Assignor (or any of its
affiliates, franchisees, licensees or contractors) of
products or services sold under or in connection with the
Trademarks or Trademark Rights.
TRADEMARK AGREEMENT. This Trademark Collateral Security and Pledge
Agreement, as amended and in effect from time to time.
TRADEMARK LICENSE RIGHTS. Any and all past, present or future rights
and interests of the Assignor pursuant to any and all past, present and future
franchising or licensing agreements in favor of the Assignor, or to which the
Assignor is a party, pertaining to any Trademarks, Trademark Registrations, or
Trademark Rights owned or used by third parties in the past, present or future,
including the right (but not the obligation) in the name of the Assignor or the
Bank to enforce, and xxx and recover for, any breach or violation of any such
agreement to which the Assignor is a party.
TRADEMARK REGISTRATIONS. All past, present or future federal, state,
local and foreign registrations of the Trademarks, all past, present and future
applications for any such registrations (and any such registrations thereof upon
approval of such applications), together with the right (but not the obligation)
to apply for such registrations (and prosecute such applications) in the name of
the Assignor or the Agent, and to take any and all actions necessary or
appropriate to maintain such registrations in effect and renew and extend such
registrations.
TRADEMARK RIGHTS. Any and all past, present or future rights in, to
and associated with the Trademarks throughout the world, whether arising under
federal law, state law, common law, foreign law or otherwise, including the
following: all such rights arising out of or associated with the Trademark
Registrations; the right (but not the obligation) to register claims under any
state, federal or foreign trademark law or regulation; the right (but not the
obligation) to xxx or bring opposition or cancellation proceedings in the name
of the Assignor or the Agent for any and all past, present and future
infringements or dilution of or any other damages or injury to the Trademarks,
the Trademark Rights, or the Associated Goodwill, and the rights to damages or
profits due or accrued arising out of or in connection with any such past,
present or future infringement, dilution, damage or injury; and the Trademark
License Rights.
TRADEMARKS. All of the trademarks, service marks, designs, logos,
indicia, trade names, corporate names, company names, business names, fictitious
business names, trade styles, elements of package or trade dress, and other
source and product or service identifiers, used or associated with or
appurtenant to the products, services and businesses of the Assignor, that (i)
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are set forth on SCHEDULE A hereto, or (ii) have been adopted, acquired, owned,
held or used by the Assignor or are now owned, held or used by the Assignor, in
the Assignor's business, or with the Assignor's products and services, or in
which the Assignor has any right, title or interest, or (iii) are in the future
adopted, acquired, owned, held and used by the Assignor in the Assignor's
business or with the Assignor's products and services, or in which the Assignor
in the future acquires any right, title or interest.
USE. With respect to any Trademark, all uses of such Trademark by, for
or in connection with the Assignor or its business or for the direct or indirect
benefit of the Assignor or its business, including all such uses by the Assignor
itself, by any of the affiliates of the Assignor, or by any franchisee, licensee
or contractor of the Assignor.
2. GRANT OF SECURITY INTEREST.
2.1. SECURITY INTEREST; ASSIGNMENT OF MARKS. As collateral security
for the payment and performance in full of all of the Obligations, the Assignor
hereby unconditionally grants to the Agent, for the benefit of the Banks, a
continuing security interest in and first priority lien on the Pledged
Trademarks, and pledges and mortgages (but does not transfer title to) the
Pledged Trademarks to the Agent, for the benefit of the Banks. In addition, the
Assignor has executed in blank and delivered to the Agent an assignment of
federally registered trademarks in substantially the form of EXHIBIT 1 hereto
(the "Assignment of Marks"). The Assignor hereby authorizes the Agent to
complete as assignee and record with the PTO the Assignment of Marks upon the
occurrence and during the continuance of an Event of Default and the proper
exercise of the Agent's remedies under this Trademark Agreement and the Security
Agreement.
2.2. CONDITIONAL ASSIGNMENT. In addition to, and not by way of
limitation of, the grant, pledge and mortgage of the Pledged Trademarks
provided in Section 2.1, the Assignor grants, assigns, transfers, conveys and
sets over to the Agent, for the benefit of the Banks, the Assignor's entire
right, title and interest in and to the Pledged Trademarks; PROVIDED that
such grant, assignment, transfer and conveyance shall be and become of force
and effect only (i) upon or after the occurrence and during the continuance
of an Event of Default and (ii) either (A) upon the written demand of the
Agent at any time during such continuance or (B) immediately and
automatically (without notice or action of any kind by the Agent) upon an
Event of Default for which acceleration of the Loans is automatic under the
Credit Agreement or upon the sale or other disposition of or foreclosure upon
the Collateral pursuant to the Security Agreement and applicable law
(including the transfer or other disposition of the Collateral by the
Assignor to the Agent or its nominee in lieu of foreclosure).
2.3. SUPPLEMENTAL TO SECURITY AGREEMENT. Pursuant to the Security
Agreement the Assignor has granted to the Agent, for the benefit of the Banks, a
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continuing security interest in and lien on the Collateral (including the
Pledged Trademarks). The Security Agreement, and all rights and interests of the
Agent in and to the Collateral (including the Pledged Trademarks) thereunder,
are hereby ratified and confirmed in all respects. In no event shall this
Trademark Agreement, the grant, assignment, transfer and conveyance of the
Pledged Trademarks hereunder, or the recordation of this Trademark Agreement (or
any document hereunder) with the PTO, adversely affect or impair, in any way or
to any extent, the Security Agreement, the security interest of the Banks and
the Agent in the Collateral (including the Pledged Trademarks) pursuant to the
Security Agreement and this Agreement, the attachment and perfection of such
security interest under the Uniform Commercial Code (including the security
interest in the Pledged Marks), or any present or future rights and interests of
the Bank in and to the Collateral under or in connection with the Security
Agreement, this Agreement or the Uniform Commercial Code. Any and all rights and
interests of the Agent, for the benefit of the Banks, in and to the Pledged
Trademarks (and any and all obligations of the Assignor with respect to the
Pledged Trademarks) provided herein, or arising hereunder or in connection
herewith, shall only supplement and be cumulative and in addition to the rights
and interests of the Banks and the Agent (and the obligations of the Assignor)
in, to or with respect to the Collateral (including the Pledged Trademarks)
provided in or arising under or in connection with the Security Agreement and
shall not be in derogation thereof.
3. REPRESENTATIONS, WARRANTIES AND COVENANTS.
The Assignor represents, warrants and covenants that: (i) SCHEDULE A
sets forth a true and complete list of all Trademarks and Trademark
Registrations now owned, licensed, controlled or used by the Assignor; (ii) the
Trademarks and Trademark Registrations are subsisting and have not been adjudged
invalid or unenforceable, in whole or in part, and there is no litigation or
proceeding pending concerning the validity or enforceability of the Trademarks
or Trademark Registrations; (iii) to the best of the Assignor's knowledge, each
of the Trademarks and Trademark Registrations is valid and enforceable; (iv) to
the best of the Assignor's knowledge, there is no infringement by others of the
Trademarks, Trademark Registrations or Trademark Rights; (v) no claim has been
made that the use of any of the Trademarks does or may violate the rights of any
third person, and to the best of the Assignor's knowledge, there is no
infringement by the Assignor of the trademark rights of others; (vi) the
Assignor is the sole and exclusive owner of the entire and unencumbered right,
title and interest in and to each of the Trademarks (other than ownership and
other rights reserved by third party owners with respect to Trademarks that the
Assignor is licensed to use), free and clear of any liens, charges, encumbrances
and adverse claims, including pledges, assignments, licenses, registered user
agreements and covenants by the Assignor not to xxx third persons, other than
the security interest and assignment created by the Security Agreement and this
Trademark Agreement; (vii) the Assignor has the unqualified right to enter into
this Trademark Agreement and to perform its terms; (viii) the Assignor has used,
and will
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continue to use, proper statutory and other appropriate proprietary notices
in connection with its use of the Trademarks; (ix) the Assignor has used, and
will continue to use for the duration of this Trademark Agreement, consistent
standards of quality in its manufacture and provision of products and
services sold or provided under the Trademarks; (x) this Trademark Agreement,
together with the Security Agreement, will create in favor of the Agent, for
the benefit of the Banks, a valid and perfected first priority security
interest in the Pledged Trademarks upon making the filings referred to in
clause (xi) of this Section 3; and (xi) except for the filing of financing
statements with the Secretary of State of the State of California under the
Uniform Commercial Code and the recording of this Trademark Agreement with
the PTO, no authorization, approval or other action by, and no notice to or
filing with, any governmental or regulatory authority, agency or office is
required either (A) for the grant by the Assignor or the effectiveness of the
security interest and assignment granted hereby or for the execution,
delivery and performance of this Trademark Agreement by the Assignor, or (B)
for the perfection of or the exercise by the Agent or any Bank of any of its
rights and remedies hereunder.
4. INSPECTION RIGHTS.
The Assignor hereby grants to the Agent and the Banks and their
designated representatives the right to inspect the Assignor's premises at
reasonable times during normal business hours.
5. NO TRANSFER OR INCONSISTENT AGREEMENTS.
Without the Agent's prior written consent and except for licenses of
the Pledged Trademarks in the ordinary course of the Assignor's business
consistent with its past practices, the Assignor will not (i) mortgage, pledge,
assign, encumber, grant a security interest in, transfer, license or alienate
any of the Pledged Trademarks, or (ii) enter into any agreement (for example, a
license agreement) that is inconsistent with the Assignor's obligations under
this Trademark Agreement or the Security Agreement.
6 AFTER-ACQUIRED TRADEMARKS, ETC.
6.1. AFTER-ACQUIRED TRADEMARKS. If, before the Obligations shall have
been finally paid and satisfied in full, the Assignor shall obtain any right,
title or interest in or to any other or new Trademarks, Trademark Registrations
or Trademark Rights, the provisions of this Trademark Agreement shall
automatically apply thereto and the Assignor shall promptly provide to the Agent
notice thereof in writing and execute and deliver to the Agent such documents or
instruments as the Agent may reasonably request further to implement, preserve
or evidence the Agent's interest therein of the Banks and the Agent.
6.2. AMENDMENT TO SCHEDULE. The Assignor authorizes the Agent to
modify this Trademark Agreement and the Assignment of Marks, without the
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necessity of the Assignor's further approval or signature, by amending SCHEDULE
A hereto and the ANNEX to the Assignment of Marks to include any future or other
Trademarks, Trademark Registrations or Trademark Rights under Section 2 or
Section 6.
7. TRADEMARK PROSECUTION.
7.1. ASSIGNOR RESPONSIBLE. The Assignor shall assume full and complete
responsibility for the prosecution, defense, enforcement or any other necessary
or desirable actions in connection with the Pledged Trademarks, and shall hold
the Agent harmless from any and all costs, damages, liabilities and expenses
that may be incurred by the Agent in connection with the Agent's interest of the
Banks and the Agent in the Pledged Trademarks or any other action or failure to
act in connection with this Trademark Agreement or the transactions contemplated
hereby. In respect of such responsibility, the Assignor shall retain trademark
counsel acceptable to the Agent.
7.2. ASSIGNOR'S DUTIES, ETC. The Assignor shall have the right and the
duty, through trademark counsel reasonably acceptable to the Agent, to prosecute
diligently any trademark registration applications of the Trademarks pending as
of the date of this Trademark Agreement or thereafter, to preserve and maintain
all rights in the Trademarks and Trademark Registrations, including the filing
of appropriate renewal applications and other instruments to maintain in effect
the Trademark Registrations and the payment when due of all registration renewal
fees and other fees, taxes and other expenses that shall be incurred or that
shall accrue with respect to any of the Trademarks or Trademark Registrations.
Any expenses incurred in connection with such applications and actions shall be
borne by the Assignor. The Assignor shall not abandon any filed trademark
registration application, or any Trademark Registration or Trademark, without
the consent of the Agent, which consent shall not be unreasonably withheld.
7.3. ASSIGNOR'S ENFORCEMENT RIGHTS. The Assignor shall have the right
and the duty to bring suit or other action in the Assignor's own name to
maintain and enforce the Trademarks, the Trademark Registrations and the
Trademark Rights. The Assignor may require the Agent to join in such suit or
action as necessary to assure the Assignor's ability to bring and maintain any
such suit or action in any proper forum if (but only if) the Agent is completely
satisfied that such joinder will not subject the Bank to any risk of liability.
The Assignor shall promptly, upon demand, reimburse and indemnify the Agent for
all damages, costs and expenses, including legal fees, incurred by the Agent
pursuant to this Section 7.3.
7.4. PROTECTION OF TRADEMARKS, ETC. In general, the Assignor shall
take any and all such actions (including institution and maintenance of suits,
proceedings or actions) as may be necessary or appropriate to properly maintain,
protect, preserve, care for and enforce the Pledged Trademarks. The Assignor
shall not take or fail to take any action, nor permit any action to be
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taken or not taken by others under its control, that would adversely affect the
validity, grant or enforcement of the Pledged Trademarks.
7.5. NOTIFICATION BY ASSIGNOR. Promptly upon obtaining knowledge
thereof, the Assignor will notify the Agent in writing of the institution of, or
any final adverse determination in, any proceeding in the PTO or any similar
office or agency of the United States or any foreign country, or any court,
regarding the validity of any of the Trademarks or Trademark Registrations or
the Assignor's rights, title or interests in and to the Pledged Trademarks, and
of any event that does or reasonably could materially adversely affect the value
of any of the Pledged Trademarks, the ability of the Assignor or the Agent to
dispose of any of the Pledged Trademarks or the rights and remedies of the Banks
and the Agent in relation thereto (including but not limited to the levy of any
legal process against any of the Pledged Trademarks).
8. REMEDIES.
Upon the occurrence and during the continuance of an Event of Default,
the Agent shall have, in addition to all other rights and remedies given it by
this Trademark Agreement (including, without limitation, those set forth in
ss.2.2), the Credit Agreement, the Security Agreement and the other Loan
Documents, those allowed by law and the rights and remedies of a secured party
under the Uniform Commercial Code as enacted in the Commonwealth of
Massachusetts, and, without limiting the generality of the foregoing, the Agent
may immediately, without demand of performance and without other notice (except
as set forth next below) or demand whatsoever to the Assignor, all of which are
hereby expressly waived, sell or license at public or private sale or otherwise
realize upon the whole or from time to time any part of the Pledged Trademarks,
or any interest that the Assignor may have therein, and after deducting from the
proceeds of sale or other disposition of the Pledged Trademarks all expenses
incurred by the Agent in attempting to enforce this Trademark Agreement
(including all reasonable expenses for broker's fees and legal services), shall
apply the residue of such proceeds toward the payment of the Obligations as set
forth in or by reference in the Security Agreement. Notice of any sale, license
or other disposition of the Pledged Trademarks shall be given to the Assignor at
least ten (10) days before the time that any intended public sale or other
public disposition of the Pledged Trademarks is to be made or after which any
private sale or other private disposition of the Pledged Trademarks may be made,
which the Assignor hereby agrees shall be reasonable notice of such public or
private sale or other disposition. At any such sale or other disposition, the
Agent may, to the extent permitted under applicable law, purchase or license the
whole or any part of the Pledged Trademarks or interests therein sold, licensed
or otherwise disposed of.
9. COLLATERAL PROTECTION.
If the Assignor shall fail to do any act that it has covenanted to do
hereunder, or if any representation or warranty of the Assignor shall be
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breached, the Agent, in its own name or that of the Assignor (in the sole
discretion of the Agent), may (but shall not be obligated to) do such act or
remedy such breach (or cause such act to be done or such breach to be remedied),
and the Assignor agrees promptly to reimburse the Bank for any cost or expense
incurred by the Agent in so doing.
10. POWER OF ATTORNEY.
If any Event of Default shall have occurred and be continuing, the
Assignor does hereby make, constitute and appoint the Agent (and any officer or
agent of the Agent as the Agent may select in its exclusive discretion) as the
Assignor's true and lawful attorney-in-fact, with full power of substitution and
with the power to endorse the Assignor's name on all applications, documents,
papers and instruments necessary for the Agent to use the Pledged Trademarks, or
to grant or issue any exclusive or nonexclusive license of any of the Pledged
Trademarks to any third person, or to take any and all actions necessary for the
Agent to assign, pledge, convey or otherwise transfer title in or dispose of any
of the Pledged Trademarks or any interest of the Assignor therein to any third
person, and, in general, to execute and deliver any instruments or documents and
do all other acts that the Assignor is obligated to execute and do hereunder.
The Assignor hereby ratifies all that such attorney shall lawfully do or cause
to be done by virtue hereof and releases the Agent from any claims, liabilities,
causes of action or demands arising out of or in connection with any action
taken or omitted to be taken by the Agent under this power of attorney (except
for the Agent's gross negligence or willful misconduct). This power of attorney
is coupled with an interest and shall be irrevocable for the duration of this
Trademark Agreement.
11. FURTHER ASSURANCES.
The Assignor shall, at any time and from time to time, and at its
expense, make, execute, acknowledge and deliver, and file and record as
necessary or appropriate with governmental or regulatory authorities, agencies
or offices, such agreements, assignments, documents and instruments, and do such
other and further acts and things (including, without limitation, obtaining
consents of third parties), as the Agent may reasonably request or as may be
necessary or appropriate in order to implement and effect fully the intentions,
purposes and provisions of this Agreement, or to assure and confirm to the Agent
the grant, perfection and priority of the Agent's security interest of the Banks
and the Agent in the Pledged Trademarks.
12. TERMINATION.
At such time as all of the Obligations have been finally paid and
satisfied in full, this Trademark Agreement shall terminate and the Agent shall,
upon the written request and at the expense of the Assignor, execute and deliver
to the Assignor all deeds, assignments and other instruments as may be necessary
or proper to reassign and reconvey to and re-vest in the Assignor the entire
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right, title and interest to the Pledged Trademarks previously granted,
assigned, transferred and conveyed to the Agent by the Assignor pursuant to this
Agreement, as fully as if this Agreement had not been made, subject to any
disposition of all or any part thereof that may have been made by the Agent
pursuant hereto or the Security Agreement.
13. COURSE OF DEALING.
No course of dealing between the Assignor and the Agent, nor any
failure to exercise, nor any delay in exercising, on the part of the Agent, any
right, power or privilege hereunder or under the Security Agreement or any other
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.
14. EXPENSES.
Any and all fees, costs and expenses, of whatever kind or nature,
including the reasonable attorneys' fees and expenses incurred by the Agent in
connection with the preparation of this Agreement and all other documents
relating hereto, the consummation of the transactions contemplated hereby or the
enforcement hereof, 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 or renewal fees, encumbrances, or otherwise
protecting, maintaining or preserving the Pledged Trademarks, or in defending or
prosecuting any actions or proceedings arising out of or related to the Pledged
Trademarks, shall be borne and paid by the Assignor.
15. OVERDUE AMOUNTS.
Until paid, all amounts due and payable by the Assignor hereunder
shall be a debt secured by the Pledged Trademarks and other Collateral and shall
bear, whether before or after judgment, interest at the rate of interest for
overdue principal set forth in the Credit Agreement.
16. NO ASSUMPTION OF LIABILITY; INDEMNIFICATION.
NOTWITHSTANDING ANYTHING TO THE CONTRARY CONTAINED HEREIN, THE BANK
ASSUMES NO LIABILITIES OF THE ASSIGNOR WITH RESPECT TO ANY CLAIM OR CLAIMS
REGARDING THE ASSIGNOR'S OWNERSHIP OR PURPORTED OWNERSHIP OF, OR RIGHTS OR
PURPORTED RIGHTS ARISING FROM, ANY OF THE PLEDGED TRADEMARKS OR ANY USE, LICENSE
OR SUBLICENSE THEREOF, WHETHER ARISING OUT OF ANY PAST, CURRENT OR FUTURE EVENT,
CIRCUMSTANCE, ACT OR OMISSION OR OTHERWISE. ALL OF SUCH LIABILITIES SHALL BE
EXCLUSIVELY THE RESPONSIBILITY OF THE ASSIGNOR, AND THE ASSIGNOR
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SHALL INDEMNIFY THE BANK FOR ANY AND ALL COSTS, EXPENSES, DAMAGES AND CLAIMS,
INCLUDING LEGAL FEES, INCURRED BY THE AGENT WITH RESPECT TO SUCH LIABILITIES.
17. NOTICES.
All notices and other communications made or required to be given
pursuant to this Trademark Agreement shall be in writing and shall be delivered
in hand, mailed by United States registered or certified first-class mail,
postage prepaid, or sent by telecopy and confirmed by delivery via courier or
postal service, addressed as follows:
(a) if to the Assignor, at 0000 Xxxxxx Xxxxxxxxx, Xxx Xxxxx,
Xxxxxxxxxx 00000, Attention: Chief Fiancnial Officer, or at such other
address for notice as the Assignor shall last have furnished in
writing to the person giving the notice, with copies to Xxxxxxxx Xxxx
& Xxxxxx, X.X., 000 Xxxxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000,
Attention: Xxxxx Xxxx and Xxxxx Xxxx; and
(b) if to the Agent, at 000 Xxxxxxx Xxxxxx, Mailstop
01-09-05, Xxxxxx, Xxxxxxxxxxxxx 00000, Large Corporate Retail-Apparel
Division, Attention: Xxxxxx X. XxXxxxxxxx or at such other address for
notice as the Bank shall last have furnished in writing to the person
giving the notice.
Any such notice or demand shall be deemed to have been duly given or
made and to have become effective (i) if delivered by hand to a responsible
officer of the party to which it is directed, at the time of the receipt thereof
by such officer, (ii) if sent by registered or certified first-class mail,
postage prepaid, five (5) days after the posting thereof, and (iii) if sent by
telecopy, when such telecopy is transmitted to the appropriate telecopy number
and telephonic confirmation of receipt thereof is obtained.
18. AMENDMENT AND WAIVER.
This Trademark Agreement is subject to modification only by a
writing signed by the Agent and the Assignor, except as provided in Section
6.2. The Agent shall not be deemed to have waived any right hereunder unless
such waiver shall be in writing and signed by the Agent. A waiver on any one
occasion shall not be construed as a bar to or waiver of any right on any
future occasion.
19. GOVERNING LAW; CONSENT TO JURISDICTION.
THIS TRADEMARK AGREEMENT IS INTENDED TO TAKE EFFECT AS A SEALED
INSTRUMENT AND SHALL BE GOVERNED BY, AND CONSTRUED IN ACCORDANCE WITH, THE LAWS
OF THE COMMONWEALTH OF MASSACHUSETTS. The Assignor agrees that any suit for the
enforcement of this Trademark Agreement may be brought in the
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courts of the Commonwealth of Massachusetts or any federal court sitting
therein and consents to the non-exclusive jurisdiction of such court and to
service of process in any such suit being made upon the Assignor by mail at
the address specified pursuant to Section 17. The Assignor hereby waives any
objection that it may now or hereafter have to the venue of any such suit or
any such court or that such suit is brought in an inconvenient court.
20. WAIVER OF JURY TRIAL.
THE ASSIGNOR WAIVES ITS RIGHT TO A JURY TRIAL WITH RESPECT TO ANY
ACTION OR CLAIM ARISING OUT OF ANY DISPUTE IN CONNECTION WITH THIS TRADEMARK
AGREEMENT, ANY RIGHTS OR OBLIGATIONS HEREUNDER OR THE PERFORMANCE OF ANY SUCH
RIGHTS OR OBLIGATIONS. Except as prohibited by law, the Assignor waives any
right which it may have to claim or recover in any litigation referred to in the
preceding sentence any special, exemplary, punitive or consequential damages or
any damages other than, or in addition to, actual damages. The Assignor (i)
certifies that neither the Agent or any Bank nor any representative, agent or
attorney of the Agent or such Bank has represented, expressly or otherwise, that
the Agent or such Bank would not, in the event of litigation, seek to enforce
the foregoing waivers, and (ii) acknowledges that, in entering into the Credit
Agreement and the other Loan Documents to which the Bank and the Agents are
parties, the Agent is relying upon, among other things, the waivers and
certifications contained in this Section 20.
21. MISCELLANEOUS.
The headings of each section of this Trademark Agreement are for
convenience only and shall not define or limit the provisions thereof. This
Trademark Agreement and all rights and obligations hereunder shall be binding
upon the Assignor and its respective successors and assigns, and shall inure to
the benefit of the Banks and the Agent and their successors and assigns. In the
event of any irreconcilable conflict between the provisions of this Trademark
Agreement and the Credit Agreement, or between this Trademark Agreement and the
Security Agreement, the provisions of the Credit Agreement or the Security
Agreement, as the case may be, shall control. If any term of this Trademark
Agreement shall be held to be invalid, illegal or unenforceable, the validity of
all other terms hereof shall in no way be affected thereby, and this Trademark
Agreement shall be construed and be enforceable as if such invalid, illegal or
unenforceable term had not been included herein. The Assignor acknowledges
receipt of a copy of this Trademark Agreement.
22. TRANSITIONAL ARRANGEMENTS.
This Trademark Agreement shall supersede the First Restated Trademark
Agreement in its entirety on and as of the Closing Date. On the Closing Date,
the rights and obligations of the parties under the First Restated Trademark
Agreement shall be subsumed within and governed by this
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Trademark Agreement; PROVIDED, that the provisions of the First Restated
Trademark Agreement shall remain in full force and effect prior to the Closing
Date. The security interest granted by this Agreement is an extension of the
security interest granted in the First Restated Trademark Agreement.
[REMAINING PAGE INTENTIONALLY LEFT BLANK]
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IN WITNESS WHEREOF, this Trademark Agreement has been executed as of
the day and year first above written.
XXXXXXXXX XXXXX, INC.
By: /s/ XXXXXX X. XXXXXX
---------------------------------------
Title: CFO
BANKBOSTON, N.A., AS AGENT
By: /s/ XXXXX X. XXXXXX
---------------------------------------
Title: Director
CERTIFICATE OF ACKNOWLEDGMENT
STATE OF CALIFORNIA )
) ss.
COUNTY OF SAN DIEGO )
Before me, the undersigned, a Notary Public in and for the county
aforesaid, on this 23 day of December, 1998, personally appeared Xxxxxx X.
Xxxxxx to me known personally, and who, being by me duly sworn, deposes and
says that he is the CFO of Xxxxxxxxx Xxxxx, Inc., and that said instrument
was signed and sealed on behalf of said corporation by authority of its Board
of Directors, and said Xxxxxx X. Xxxxxx acknowledged said instrument to be
the free act and deed of said corporation.
/s/ XXXXXXX X. XXXXX
------------------------------
Notary Public
My commission expires:
SCHEDULE A
TRADEMARKS AND TRADEMARK REGISTRATIONS
Trademark Registrations --
or United States Patent and Trademark Office
Service Xxxx Registration No. Registration Date
------------ --------------- -----------------
Xxxxxxxxx Xxxxx* 1,485,692
Trademark Pending Applications --
or United States Patent and Trademark Office
Service Xxxx Serial No. Filing Date
------------ ---------- -----------
XXXXXXXXX XXXXX* 75-539,417
REMLI* 75-539,157
XXXXXXXXX XXXXX* 75-539,156
XXXXXXXXX XXXXX* 75-539,155
REMLI* 75-539,154
REMLI* 75-539,047
XXXXXXXXX XXXXX* 75-539,045
REMLI* 75-539,044
XXXXXXXXX XXXXX* 75-539,043
XXXXXXXXX XXXXX* 75-539,040
REMLI* 75-539,039
REMLI* 75-539,038
* The Registered or Pending Trademark has been licensed from Xxxxxxxxx Xxxxx
Merchandising, Inc. pursuant to a Trademark License Agreement dated as December
23, 1998.
EXHIBIT 1
ASSIGNMENT OF TRADEMARKS AND SERVICE MARKS (U.S.)
WHEREAS, Xxxxxxxxx Xxxxx, Inc., a corporation organized and existing
under the laws of the State of California, having a place of business at 0000
Xxxxxx Xxxxxxxxx, Xxx Xxxxx, Xxxxxxxxxx 00000 (the "Assignor"), has adopted and
used and is using the trademarks and service marks (the "Marks") identified on
the ANNEX hereto, and is the owner of the registrations of and pending
registration applications for such Marks in the United States Patent and
Trademark Office identified on such ANNEX; and
WHEREAS, ____________________, a ____________________ organized and
existing under the laws of the State of ___________________, having a place of
business at __________________________ (the "Assignee"), is desirous of
acquiring the Marks and the registrations thereof and registration applications
therefor;
NOW, THEREFORE, for good and valuable consideration, receipt of which
is hereby acknowledged, the Assignor does hereby assign, sell and transfer unto
the Assignee all right, title and interest in and to the Marks, together with
(i) the registrations of and registration applications for the Marks, (ii) the
goodwill of the business symbolized by and associated with the Marks and the
registrations thereof, and (iii) the right to xxx and recover for, and the right
to profits or damages due or accrued arising out of or in connection with, any
and all past, present or future infringements or dilution of or damage or injury
to the Marks or the registrations thereof or such associated goodwill.
This Assignment of Trademarks and Service Marks (U.S.) is intended to
and shall take effect as a sealed instrument at such time as the Assignee shall
complete this instrument by inserting its name in the second paragraph above and
signing its acceptance of this Assignment of Trademarks and Service Marks (U.S.)
below.
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IN WITNESS WHEREOF, the Assignor, by its duly authorized officer, has
executed this assignment, as an instrument under seal, on this ________ day of
____________________, _________.
XXXXXXXXX XXXXX, INC.
By:
--------------------------------------
Title:
The foregoing assignment of the Marks and the registrations thereof
and registration applications therefor by the Assignor to the Assignee is hereby
accepted as of the ______ day of _________________, _______.
By:
--------------------------------
Title:
STATE OF ________ )
)ss.
COUNTY OF ________ )
On this the _______ day of December, 1998, before me appeared
_____________________, the person who signed this instrument, who acknowledged
that he is the ___________________________ of Xxxxxxxxx Xxxxx, Inc. and that
being duly authorized he signed such instrument as a free act on behalf of
Xxxxxxxxx Xxxxx, Inc.
------------------------------
Notary Public
[Seal]
My commission expires:
ANNEX
Trademark Registrations --
or United States Patent and Trademark Office
Service Xxxx Registration No. Registration Date
------------ --------------- -----------------
Trademark Pending Applications --
or United States Patent and Trademark Office
Service Xxxx Serial No. Filing Date
------------ --------- -----------
