Exhiibt 10.6
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement (the "License") is entered
into this 9th day of July, 1998, by and between GENERAC CORPORATION, a
Wisconsin corporation ("Licensor"), and GENERAC PORTABLE PRODUCTS, INC.
(F/K/A GPPC, INC.), a Delaware corporation ("Licensee"). (Licensor and
Licensee are sometimes referred to hereinafter collectively as the "Parties"
and individually as a "Party.")
RECITALS
A. Licensee and Licensor have entered into a separate Asset
Purchase and Sale Agreement (the "Purchase Agreement") under which Licensee will
purchase the Licensor's Portable Products Division (the "Division"), which
consists of certain assets relating to the business of manufacturing, marketing
and selling portable consumer generators, pressure washers and engine driven
welders ("Products").
B. Licensor is the owner of certain rights to the "GENERAC"
trademark in various forms.
C. Licensee wishes to obtain from Licensor, and Licensor
wishes to grant to Licensee, a limited license to use the trademark "GENERAC
PORTABLE PRODUCTS" (the "Trademark") in connection with the manufacturing,
marketing and sale of Products (the "Business"), under the terms and conditions
described below.
AGREEMENTS
NOW, THEREFORE, in consideration of the foregoing and the
mutual promises set forth herein, and for other good and valuable consideration,
the receipt and adequacy of which are hereby acknowledged, the parties hereto
agree as follows:
1. GRANT. Licensor hereby grants to Licensee a limited
exclusive right during the term of this License to use the Trademark on Products
and their packaging, and on printed materials advertising the Products,
throughout any portion of the world in which Licensor possesses rights to the
Trademark (the "Territory"). Licensor hereby further grants to Licensee a
limited exclusive right during the term of this License to use the Trademark as
a part of the name of the entities under which it and its affiliates conduct the
Business. Licensee may use the Trademark with respect to the Business, but shall
not use the Trademark in connection with any other goods or services. Licensee
may use the Trademark only in the forms appearing in Exhibit A attached hereto
(as that Exhibit may be amended from time to time in accordance with section 8
of this License),
and shall not modify the Trademark without the prior, written consent of
Licensor.
2. TERM. The term of this License shall start on the effective
date of the Purchase Agreement, and shall continue in perpetuity unless
terminated under section 5 of this License.
3. QUALITY STANDARDS. All Products marketed or sold by
Licensee under the Trademark shall meet or exceed in all material respects the
quality of the same or similar products sold by Licensor under the Trademark
immediately prior to the date of the Purchase Agreement, and shall conform to
the requirements of all laws and regulations applicable to such Products in the
Territory. The appearance and content of any promotional materials distributed
by Licensee bearing the Trademark shall be of such a nature that they will not
harm the public image of the Trademark or the consumer goodwill related thereto,
and shall also conform to the requirements of all laws and regulations
applicable to such materials in the Territory.
4. QUALITY CONTROL SAMPLES. Licensee shall provide to
Licensor, at cost, such samples of Products as Licensor may reasonably request
from time to time for the purpose of ensuring that Products marketed or sold
under the Trademark meet the quality standards described in section 3 of this
License. Licensee shall provide to Licensor, at no charge and prior to any
public distribution, with representative samples of all promotional materials
developed by Licensee bearing the Trademark. With advance notice and during
normal business hours, Licensee shall also provide Licensor or its
representatives with such access to manufacturing facilities and worksites as is
reasonably necessary to check on the quality of Products being manufactured by
or for Licensee for marketing or sale under the Trademark.
5. TERMINATION. Any breach of this License or the Purchase
Agreement by Licensee shall be adequate grounds for termination of this License
by Licensor, at Licensor's sole discretion, if: (a) such breach remains uncured
30 days following Licensor's written notice to Licensee of such breach, or (b)
the material term breached by Licensee has previously been breached and cured by
Licensee twice prior to such breach. Upon termination of this License, Licensee
shall provide Licensor with all tangible embodiments of the Trademark under
Licensee's control, and will make no further use of the Trademark, although
Licensee may have three months following termination to sell off any inventory
of Products that are in Licensee's possession and bear the Trademark on the date
of termination.
6. OWNERSHIP AND ENFORCEMENT. Licensor represents and warrants
that it is the owner of trademark rights in the term GENERAC, including those
rights granted by U.S. Trademark Registration Number 1,706,283, and that
Licensor has the unfettered
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authority to license those rights in whole or part. Licensee acknowledges that,
as between Licensor and Licensee, Licensor is the owner of the Trademark, that
nothing in this License or the Purchase Agreement grants Licensee any ownership
interest in the Trademark, and that any goodwill arising from Licensee's use of
the Trademark shall inure to the benefit of Licensor. Licensee agrees that it
shall not assist or encourage, through action or inaction, any challenge to the
validity of the Trademark or Licensor's ownership of the Trademark. Licensee
shall provide reasonable cooperation and support, and execute such documents as
are reasonably required, to assist Licensor in any registration or maintenance
of the Trademark that Licensor may choose to pursue. Upon learning of any actual
or anticipated infringement of the Trademark by any third party, Licensee shall
promptly inform Licensor of such infringement, and shall provide all reasonable
support and cooperation to any enforcement efforts Licensor may choose to make
to prevent or remedy such infringement. Licensor has no notice of any
infringement claims against the Division relating to the Trademark.
7. NOTICES. Any notice to be given hereunder shall be given
and deemed sufficient if in writing and delivered or two business days after
being mailed by registered or certified mail, in the case of Licensor, to:
Generac Corporation
X.X. Xxx 0
Xxxxxxxx, XX 00000
Attn: Xxxxxx X. Xxxx, Chairman of the Board
with a copy to:
Reinhart, Boerner, Van Deuren, Xxxxxx & Rieselbach, s.c.
0000 Xxxxx Xxxxx Xxxxxx
Xxxxx 0000
Xxxxxxxxx, XX 00000
Attn: Xxxxxxx X. Van Deuren, Esq.
and, in the case of Licensee, to:
Generac Portable Products, Inc. (f/k/a GPPC, Inc.)
000 Xxxx Xxxxxx
00xx Xxxxx
Xxx Xxxx, XX 00000
Attn: Xx. Xxxx Xxxxxxxxx
with a copy to:
King & Xxxxxxxx
0
0000 Xxxxxx of the Americas
Xxx Xxxx, XX 00000
Attn: Xxxx Xxxxxxxxx, Esq.
8. ASSIGNMENT, AMENDMENT AND SEVERABILITY. Neither party may
assign or otherwise transfer this License or any rights or obligations hereunder
without the prior written consent of the other party; provided, however, either
party may assign, upon written notice to the other party and without the other
party's consent, this License or its interest herein to any third party
succeeding to its business. Subject to the foregoing, this License shall bind
and inure to the benefit of Licensor, Licensee, and their respective
representatives, heirs, successors and assigns. This License constitutes the
entire agreement between the Parties regarding the Trademark and may not be
substituted, varied or abridged in any manner except by written amendment
executed by authorized officers of both Parties. In the event any provision of
this License is found to be void or unenforceable, all remaining provisions of
this License will remain in full force and effect.
9. GOVERNING LAW. This License and the relationship between
the Parties will be governed by and construed in accordance with the internal
laws of the State of Wisconsin.
10. COUNTERPARTS. This License may be executed in
counterparts, each of which shall be deemed an original, but both of which taken
together shall constitute one and the same instrument.
IN WITNESS WHEREOF, this License has been executed and
delivered as of the date first above written.
GENERAC CORPORATION
BY /s/ Xxxxxx X. Xxxx
-------------------------------
Xxxxxx X. Xxxx
Chairman of the Board
GENERAC PORTABLE PRODUCTS, INC.
(F/K/A GPPC, INC.)
BY /s/ Xxxx X. Xxxxxxxxx
-------------------------------
Xxxx X. Xxxxxxxxx
President
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EXHIBIT A
Licensed Forms of the Trademark
1. GENERAC PORTABLE PRODUCTS (in all standard scripts and fonts)
