Exhibit 10.2
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TRADENAME LICENSE AGREEMENT
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THIS TRADENAME LICENSE AGREEMENT (this "Agreement") is made and entered
into as of February 6, 1997, by and between Xxxxxxx & Xxxxxx Floor Coverings
Group, Inc., a Delaware corporation ("Licensor"), CAF Holdings, Inc., a Virginia
corporation, and Xxxxxxx & Xxxxxx Floor Coverings, Inc., a Delaware corporation
(collectively, "Licensee"). Capitalized terms used herein but not defined have
the meaning given them in the Acquisition Agreement, dated as of December 9,
1996 (the "Acquisition Agreement") between Licensor and certain other Persons
relating to the purchase and sale of stock of Licensee.
RECITALS:
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A. Licensor has certain rights to use the name "Xxxxxxx & Xxxxxx" (the
"Name") and the logo depicted on Annex A attached hereto (the "Logo");
B. Licensee believes that various commercial advantages could result from
its continued use of the Name and Logo in the operation of its Business;
C. The parties desire to set forth the terms and conditions under which
Licensee would be permitted so to use the Name and Logo; and
D. The execution and delivery of this Agreement is a condition to the
obligations of the parties to the Acquisition Agreement to consummate the
transactions contemplated thereby.
NOW, THEREFORE, in consideration of the premises and the agreements
contained herein and in the Acquisition Agreement, Licensor and Licensee agree
as follows:
1. Grant of License.
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1.1. On the terms and subject to the conditions hereof including without
limitation Section 9, Licensor grants to Licensee a perpetual, exclusive, fully
paid, royalty-free License to use the Name and Logo (but only to the extent the
Licensor has the right to use the Name and Logo) in connection with the conduct
of the business of designing, manufacturing and marketing carpets or floor
coverings for installation in buildings or other structures (such as stadiums)
and other products currently manufactured and distributed by the Company (the
"Floorcoverings Business"), provided that the Name and Logo will not be used
other than in close proximity to the words "Floorcoverings" or "Floor
Coverings." Licensor represents and warrants to Licensee that, as of the date
hereof, Licensor has all of the right, title and interest in and to the Name and
Logo when used in connection with the Floorcoverings Business and in close
proximity to the words "Floorcoverings" or "Floor Coverings" that Xxxxxxx &
Xxxxxx
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Products Co., a Delaware corporation ("C&A"), had prior to the date hereof.
1.2. Nothing contained herein will in any manner limit or affect the right
of Licensor or C&A to use, or permit another Person to use, the Name and Logo
for any purpose other than (i) in the Floorcoverings Business or (ii) in close
proximity to the words "Floorcoverings" or "Floor Coverings", including without
limitation in connection with the manufacture and sale of Licensor's or C&A's
products or services.
2. Term. This Agreement will commence on the date of this Agreement and
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will continue until terminated as provided in Section 9.
3. Quality Control. Licensee recognizes the quality of Licensor's and
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C&A's products and services and Licensor's and C&A's position and goodwill in
the businesses in which Licensor and C&A operate and that it is essential that
such quality be maintained at all times. Licensee will display the Name and
Logo only in such form or manner as (i) displayed by Licensee prior to the date
hereof or (ii) has been previously approved by Licensor (which approval, if not
previously given, (x) may not unreasonably be withheld or delayed and (y) will
be deemed given if Licensor does not object in writing within 15 calendar days
of Licensor's receipt of a Licensee's written request for Licensor's approval)
and will take such actions as are reasonably requested by Licensor from time to
time with respect to the form or manner of Licensee's use of the Name and Logo
and to distinguish Licensor and C&A from Licensee. Licensee will also cause to
appear on all materials in connection with which the Name and Logo are used such
legends, markings or notices as Licensor may request in order to give
appropriate notice of any trademark, trade name or other rights or such
distinction, including the use of the Name and Logo in close proximity to
"Floorcoverings" or "Floor Coverings."
4. Infringement. Licensee agrees to notify Licensor promptly of any
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infringement or of any use by any Person of a name or xxxx confusingly similar
to the Name or Logo which actually comes to the attention of a senior officer of
Licensee. Licensor will take, or cause to be taken, such action as it deems
advisable for the protection of its rights in and to the Name and Logo and
Licensee will cooperate with Licensor, if requested to do so. In no event,
however, will Licensor be required to take, or cause to be taken, any action if
it deems it inadvisable to do so and Licensee will have no right to take any
action with respect to the Name or Logo without Licensor's prior written
approval (which may be given or withheld in Licensor's reasonable discretion).
Licensor agrees to notify Licensee promptly of any infringement of or any use by
any Person of a name or xxxx confusingly similar to the Name, the Logo or
"Xxxxxxx & Xxxxxx Floorcoverings" which comes to the attention of Licensor.
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5. Indemnity. Licensee will jointly and severally indemnify, defend and
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hold harmless Licensor, its Affiliates and its or their respective directors,
officers, employees, agents and representatives (including without limitation
any predecessor or successor to any of the foregoing) from and against any and
all Indemnifiable Losses relating to, resulting from or arising out of (a)
infringement or an act of unfair competition in connection with the use of the
Name or Logo by Licensee or any of its Affiliates outside of the United States;
(b) the breach by Licensee of any covenant or agreement contained in this
Agreement; and (c) any Third Party Claim the subject matter of which relates to
use of the Name or Logo by Licensee after the Closing Date.
6. Recognition of Ownership.
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6.1. Based on the representation of Licensor in Section 1.1, Licensee
recognizes Licensor's and C&A's title to the Name and Logo and will not do or
cause to be done any act which will in any way impair the rights of Licensor or
C&A in and to the Name and Logo. Licensee will not acquire and will not claim
title to the Name or Logo adverse to Licensor or C&A by virtue of the license
granted hereunder or use of the Name or Logo or otherwise.
6.2. Nothing herein will require Licensor or any of its Affiliates to
obtain, maintain or renew any registration of the Name or Logo.
7. Covenant-Not-to-Xxx. Licensee for itself and its Affiliates,
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successors and assigns, hereby covenants from and after the date hereof, not to
xxx or to otherwise assert any claims with respect to the use or ownership of
the Name or Logo (other than for any breach by Licensor of this Agreement or the
Acquisition Agreement or any of the agreements contemplated thereby) against
Licensor or any of its Affiliates.
8. Assignment. Neither this Agreement nor any of the rights or
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obligations of Licensee hereunder may be directly or indirectly assigned or
transferred by Licensee, in whole or in part, nor may Licensee grant any
sublicense hereunder to any Person (a) except with the prior written consent of
Licensor, which may be given or withheld in Licensor's sole discretion, (b)
except that Licensee may sublicense its rights hereunder to any wholly owned
Subsidiary of Licensee pursuant to a sublicense pursuant to which such
sublicensee agrees to be bound by all of the terms and conditions hereof, and
(c) except that Licensee may assign its rights hereunder to an entity purchasing
all or substantially all of Licensee's assets, provided neither such entity nor
any of its Affiliates, competes, directly or indirectly, with C&A, Licensor or
any of their respective Subsidiaries (the "C&A Group") in any material current
or future product line of the C&A Group other than (i) carpets or floorcoverings
for installation in buildings or other structures
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(such as stadiums) ("Floorcoverings Products") or (ii) a product line that is a
product line of any entity that purchases all or substantially all of the
Licensor's, C&A's or C&A's parent's equity or assets at the time of such
acquisition and thereafter becomes a product line of C&A (a "Parent Product
Line"). Any attempted assignment by Licensee of this Agreement or of any rights
or obligations of Licensee hereunder or sublicense not expressly permitted by
the immediately preceding sentence of this section will be null and void.
Nothing herein or done pursuant to this Agreement shall be construed as making
either party an agent of the other.
9. Termination.
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9.1. If Licensee violates or fails to perform in any material respect any
of its material obligations hereunder, Licensor will have the right to give
written notice of default (the "Default Notice") setting forth in reasonable
detail the facts and circumstances constituting the alleged default and stating
that Licensor intends to terminate this Agreement on or after the date set forth
therein (which shall be at least 30 calendar days after the giving of such
notice) (the "Cure Date") unless the Licensee has remedied the default to
Licensor's reasonable satisfaction. In the event the alleged default set forth
in the Default Notice is not rendered to Licensor's reasonable satisfaction by
the Cure Date, Licensor will have the right to terminate this Agreement by
giving written notice of termination. In addition, this Agreement will
terminate automatically, without any notice or action being required by Licensor
or any other Person, if Licensee is acquired by a Person that competes, directly
or indirectly, with the C&A Group in any material current or future product line
of the C&A Group other than the Floorcoverings Products Line or a Parent Product
Line (a "Competing Successor"), provided, however, that for purposes of this
sentence, the term "Person" does not include a merchant bank, leveraged capital
or buy-out firm or similar financial investment firm unless such Person or a
Subsidiary or Affiliate of such Person is a major competitor of C&A in a
material product line of the C&A Group in the automotive interior and
convertible top components and systems business.
9.2. Upon termination of this Agreement, Licensee's rights to use of the
Name and Logo will, without further action, cease. Licensee will, and will use
its reasonable efforts to cause any Competing Successor to, promptly thereafter
(a) destroy any and all signage, stationery, business cards, billhead and other
items bearing the Name or Logo, (b) refrain from using the Name or Logo as part
of its or their corporate name, and (c) refrain from using the Name or Logo on
packaging, advertising, commercial registers and directories, telephone
directories and other listings.
9.3. Licensee acknowledges that a breach of any of the covenants and
agreements contained herein may result in material
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irreparable injury to Licensor and its Affiliates for which there is no adequate
remedy at law, that it will not be possible to measure damages for such injuries
precisely and that, in the event of such a breach or threat thereof, Licensee
shall be entitled in addition to any other remedies it may have under this
Agreement or otherwise, to seek to obtain a temporary restraining order and/or a
preliminary or permanent injunction restraining Licensee and its Affiliates from
engaging in activities prohibited hereby or such other relief as may be required
to specifically enforce any of the covenants contained herein; provided, that no
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specification in this Agreement of a specific legal or equitable remedy shall be
construed as a waiver or prohibition against the pursuit of other legal or
equitable remedies in the event of such breach.
10. Notices. All notices and other communications required or permitted
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hereunder will be in writing and, unless otherwise provided in this Agreement,
will be deemed to have been duly given when delivered in person or by a
nationally recognized overnight courier service or when dispatched during normal
business hours by electronic facsimile transfer (confirmed in writing by mail
promptly dispatched) to the appropriate party at the address specified below:
If to Licensor, to:
Xxxxxxx & Xxxxxx Floor Coverings Group, Inc.
000 XxXxxxxxxx Xxxxx
Xxxxxxxxx, XX 00000
Facsimile No.: (000) 000-0000
Attention: Xxxxxx X. Xxxxxxx, Esq.
With a copy to:
Xxxxx, Day, Xxxxxx & Xxxxx
000 Xxxxxxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Facsimile No.: (000) 000-0000
Attention: Xxxxxx X. Xxxxxxxx, Esq.
If to Licensee:
Xxxxxxx & Xxxxxx Floorcoverings, Inc.
000 Xxxxx Xxxxxxxxxx Xxxx.
Xxxxxx, Xxxxxxx 00000-0000
Facsimile No.: (000) 000-0000
Attention: Xxxxx X. Xxxxxxx
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With a copy to:
CAF Holdings, Inc.
000 Xxxx Xxxx Xxxxxx
Xxxxxxxxxxxxxxx, Xxxxxxxx 00000
Facsimile No.: (000) 000-0000
Attention: Xxxxxxx X. Xxxxx
And:
McGuire, Woods, Battle & Xxxxxx, L.L.P.
Xxx Xxxxx Xxxxxx
Xxxxxxxx, Xxxxxxxx 00000
Facsimile No.: (000) 000-0000
Attention: Xxxxxx X. Xxxxxxx, Esq.
or to such other address or addresses as Licensor or Licensee may from time to
time designate by like notice.
11. Governing Law. This Agreement and the legal relations among the
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parties hereto will be governed by and construed in accordance with the
substantive laws of the State of New York, without giving effect to the
principles of conflict of laws thereof.
12. Severability. If in any judicial proceeding a court refuses to
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enforce all provisions of this Agreement, any unenforceable provisions will be
deemed eliminated from the Agreement as is necessary to permit the remainder of
the Agreement to be enforced in such proceeding.
13. Entire Agreement; Amendment.
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13.1. This Agreement and the Acquisition Agreement set forth the
entire agreement and understanding of the parties in respect of the matters
contemplated hereby and supersede all prior agreements, arrangements and
understandings relating to the subject matter hereof.
13.2. This Agreement may be modified or amended only in a writing
signed by both Licensor and Licensee.
14. Successors. This Agreement shall be binding on and inure to the
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benefit of the parties hereto and their respective successors and permitted
assigns.
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IN WITNESS WHEREOF, this Tradename License Agreement has been executed
and entered into by the parties as of the date first written above.
XXXXXXX & XXXXXX FLOOR COVERINGS
GROUP, INC.
By: /s/ Xxxxxxx X. Xxxxx
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Name:_______________________
Title: _______________________
XXXXXXX & XXXXXX FLOOR COVERINGS,
INC.
By: /s/ J. Xxxxxxx Xxxxx
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Name:_______________________
Title: _______________________
CAF HOLDINGS INC.
By: /s/ Xxxxxxx X. Xxxxx
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Name:_______________________
Title: _______________________
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GUARANTEE
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Xxxxxxx & Xxxxxx Products Co. hereby guarantees the performance by
Xxxxxxx & Xxxxxx Floor Coverings Group, Inc. ("Licensor") of Licensor's
obligations under the Tradename License Agreement dated as of the date hereof
between Licensor, Xxxxxxx & Xxxxxx Floor Coverings, Inc. and CAF Holdings, Inc.
XXXXXXX & XXXXXX PRODUCTS CO.
By: /s/ Xxxxxxxxx Xxxxxxx
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Name: Xxxxxxxxx Xxxxxxx
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Title: Executive Vice President
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