TRADEMARK SECURITY AGREEMENT
THIS TRADEMARK SECURITY AGREEMENT (this "Security Agreement") made as of
this 26th day of June 2002, by MEDICAL TECHNOLOGY SYSTEMS, INC., a Delaware
corporation ("Grantor") in favor of EUREKA I, L.P., as collateral agent (in such
capacity, the "Collateral Agent").
W I T N E S S E T H
WHEREAS, Grantor has entered into the Securities Purchase Agreement of even
date herewith with Eureka I, L.P., as purchaser (the "Purchaser") and Collateral
Agent (as amended, restated or otherwise modified from time to time, the
"Purchase Agreement"), providing, subject to the terms and conditions thereof,
for the purchase from the Grantor by the Purchaser of, among other things,
$4,000,000 aggregate principal amount of Notes (as defined in the Purchase
Agreement); and
WHEREAS, to induce the Purchaser to enter into the Purchase Agreement with
the Grantor and to purchase the Notes, the Grantor has agreed to execute and
deliver this Security Agreement and to grant to Collateral Agent, for its
benefit and for the benefit of the Noteholders, a security interest in certain
of the Grantor's assets, including, without limitation, its trademarks and
trademark applications;
NOW, THEREFORE, in consideration of the premises set forth herein and for
other good and valuable consideration, receipt and sufficiency of which are
hereby acknowledged, Grantor agrees as follows:
1. Certain Definitions. Capitalized terms used but not otherwise defined
herein shall have the meanings herein as in the Purchase Agreement.
2. Grant of Security Interests. To secure the complete and timely payment
and satisfaction of the Liabilities, Grantor hereby grants to Collateral Agent,
as agent for itself and the Noteholders, a continuing security interest in
Grantor's entire right, title and interest in and to all of its now owned or
existing and hereafter acquired or arising trademarks, trademark license
agreements, whether as licensor or licensee, trade names, corporate names,
company names, business names, fictitious business names, trade styles, service
marks, logos, other business identifiers, prints and labels on which any of the
foregoing have appeared or appear, all registrations and recordings thereof, and
all applications (other than "intent to use" applications until a verified
statement of use is filed with respect to such applications) in connection
therewith, including, without limitation, the trademarks and applications listed
on Schedule A attached hereto and made a part hereof and the trademarks, and
renewals thereof, and all income, royalties, damages and payments now or
hereafter due and/or payable under or with respect to any of the foregoing,
including, without limitation, damages and payments for past, present and future
infringements of any of the foregoing and the right to xxx for past, present and
future infringements of any of the foregoing (all of the foregoing are sometimes
hereinafter individually and/or collectively referred to as the "Trademarks");
all rights corresponding to any of the foregoing throughout the world and the
goodwill of the Grantor's business connected with the use of and symbolized by
the Trademarks.
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The term "Liability" or "Liabilities" shall mean the indebtedness and
liabilities of the Grantor to the Collateral Agent and/or the Noteholders under
this Security Agreement, the Notes, the Purchase Agreement and the Security
Documents (as defined in the Purchase Agreement), including but not limited to
all obligations to perform acts or refrain from taking any action and any
obligations of the Grantor owing to the Collateral Agent and/or the Noteholders.
3. Intercreditor Agreement. The priority of the security interests granted
hereby, the exercise by the Collateral Agent of any of its rights or remedies
hereunder, and the covenants of the Grantor contained herein (in each case
whether or not so expressed) are subject in all respects to the Intercreditor
Agreement (as such term is defined in the Purchase Agreement). Any reference to
property in the possession of, or to property secured or to be secured to, the
Collateral Agent will be deemed to refer to, or to be satisfied by, property in
the possession of or secured to the "Senior Lender" under the Intercreditor
Agreement. The security interests created in favor of the Collateral Agent
hereunder are subordinate and junior to the security interests created in favor
of the Senior Lender (as such term is defined in the Intercreditor Agreement).
4. Warranties and Representations. Grantor warrants and represents to
Collateral Agent that:
(a) no Trademark has been adjudged invalid or unenforceable by a court
of competent jurisdiction nor has any such Trademark been cancelled, in
whole or in part and each such Trademark is presently subsisting;
(b) Grantor is the sole and exclusive owner of the entire and
unencumbered right, title and interest in and to each Trademark, free and
clear of any liens, charges and encumbrances, including without limitation,
shop rights and covenants by Grantor not to xxx third persons, other than
Permitted Liens;
(c) Grantor has no notice of any suits or actions commenced or
threatened with reference to any Trademark; and
(d) Grantor has the unqualified right to execute and deliver this
Security Agreement and perform its terms.
5. Restrictions on Future Agreements. Grantor agrees that, until the
Liabilities shall have been paid and satisfied in full, Grantor shall not,
without the prior written consent of Collateral Agent, sell or assign its
interest in any Trademark or enter into any other agreement with respect to any
Trademark which would affect the validity or enforcement of the rights
transferred to Collateral Agent under this Security Agreement.
6. New Trademarks. Grantor represents and warrants that, based on a
diligent investigation by Grantor, the Trademarks listed on Schedule A
constitute all of the federally registered Trademarks, and federal applications
for registration of Trademarks (other than "intent to use" applications until a
verified statement of use is filed with respect to such applications) now owned
by Grantor. If, before the Liabilities shall have been paid and satisfied in
full, Grantor shall (i) become aware of any existing Trademarks of which Grantor
has not previously informed Collateral Agent, or (ii) become entitled to the
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benefit of any Trademarks, which benefit is not in existence on the date hereof,
the provisions of this Security Agreement above shall automatically apply
thereto and Grantor shall give to Collateral Agent prompt written notice
thereof. Grantor hereby authorizes Collateral Agent to modify this Security
Agreement by amending Schedule A to include any such Trademarks.
7. Term. The term of this Security Agreement shall extend until the payment
and satisfaction in full of the Liabilities. Grantor agrees that, during the
continuance of an Event of Default, the use by Collateral Agent of all
Trademarks shall be without any liability for royalties or other related charges
from Collateral Agent to Grantor.
8. Product Quality. Grantor agrees to maintain the quality of any and all
products in connection with which the Trademarks are used, consistent with
commercially reasonable business practices. During the continuance of an Event
of Default and at the direction of the Required Noteholders and subject to the
Intercreditor Agreement, Grantor agrees that Collateral Agent, or a conservator
appointed by Collateral Agent, shall have the right to establish such additional
product quality controls as Collateral Agent, or said conservator, in its
reasonable judgment, may deem necessary to assure maintenance of the quality of
products sold by Grantor under the Trademarks.
9. Release of Security Agreement. This Security Agreement is made for
Collateral purposes only. Upon payment and satisfaction in full of the
Liabilities, Collateral Agent shall take such actions as may be necessary or
proper to terminate the security interests created hereby.
10. Expenses. All expenses incurred in connection with the performance of
any of the agreements set forth herein shall be borne by Grantor. All fees,
costs and expenses, of whatever kind or nature, including reasonable attorneys'
fees and legal expenses, actually incurred by Collateral Agent in connection
with the filing or recording of any documents (including all taxes in connection
therewith) in public offices, the payment or discharge of any taxes, reasonable
counsel fees actually incurred, maintenance fees, encumbrances or otherwise in
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 by and paid by Grantor and until paid shall constitute
Liabilities.
11. Duties of Grantor. Grantor shall have the duty (i) to file and
prosecute diligently any trademark applications pending as of the date hereof or
hereafter until the Liabilities shall have been paid and satisfied in full, (ii)
to preserve and maintain all rights in the Trademarks, as commercially
reasonable and (iii) to ensure that the Trademarks are and remain enforceable,
as commercially reasonable. Any expenses incurred in connection with the
Liabilities under this Section 11 shall be borne by Grantor.
12. Collateral Agent's Right to Xxx. During the continuance of an Event of
Default and at the direction of the Required Noteholders and subject to the
Intercreditor Agreement, Collateral Agent shall have the right, but shall in no
way be obligated, to bring suit in its own name to enforce the Trademarks and,
if Collateral Agent shall commence any such suit, Grantor shall, at the request
of Collateral Agent, do any and all lawful acts and execute any and all proper
documents required by Collateral Agent in aid of such enforcement and Grantor
shall promptly, upon demand, reimburse and indemnify Collateral Agent for all
costs and expenses actually incurred by Collateral Agent in the exercise of its
rights under this Section 12.
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13. Waivers. No course of dealing between Grantor and Collateral Agent, nor
any failure to exercise, nor any delay in exercising, on the part of Collateral
Agent, any right, power or privilege hereunder 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. Severability. The provisions of this 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 Security Agreement in any
jurisdiction.
15. Modification. This Security Agreement cannot be altered, amended or
modified in any way, except as specifically provided in Section 6 hereof or by a
writing signed by the parties hereto.
16. Cumulative Remedies; Power of Attorney; Effect on Financing Agreements.
All of Collateral Agent's rights and remedies with respect to the Trademarks,
whether established hereby, or by any other agreements or by law shall be
cumulative and may be exercised singularly or concurrently. Grantor hereby
authorizes Collateral Agent, during the continuance of an Event of Default and
at the direction of the Required Noteholders and subject to the Intercreditor
Agreement, to make, constitute and appoint any officer or agent of Collateral
Agent as Collateral Agent may select, in its sole discretion, as Grantor's true
and lawful attorney-in-fact, with power to (i) endorse Grantor's name on all
applications, documents, papers and instruments necessary or desirable for
Collateral Agent in the use of the Trademarks or (ii) take any other actions
with respect to the Trademarks as Collateral Agent deems to be in the best
interest of Collateral Agent, or (iii) grant or issue any exclusive or
non-exclusive license under the Trademarks to anyone, or (iv) assign, pledge,
convey or otherwise transfer title in or dispose of the Trademarks to anyone.
Grantor hereby ratifies all that such attorney shall lawfully do or cause to be
done by virtue hereof. This power of attorney shall be irrevocable until the
Liabilities shall have been paid and satisfied in full. Grantor acknowledges and
agrees that this Security Agreement is not intended to limit or restrict in any
way the rights and remedies of Collateral Agent and/or the Noteholders under the
Purchase Agreement but rather is intended to facilitate the exercise of such
rights and remedies. Collateral Agent and the Noteholders shall have, in
addition to all other rights and remedies given them by the terms of this
Security Agreement and the Purchase Agreement, all rights and remedies allowed
by law and the rights and remedies of a secured party under the Uniform
Commercial Code as enacted in the Commonwealth of Pennsylvania.
17. Binding Effect; Benefits. This Security Agreement shall be binding upon
Grantor and its successors and assigns, and shall inure to the benefit of the
Collateral Agent, the Noteholders and their respective successors, nominees and
assigns.
18. Governing Law. This Security Agreement shall be governed by and
construed in accordance with the laws of the Commonwealth of Pennsylvania and
applicable federal law.
19. Headings. Paragraph headings used herein are for convenience only and
shall not modify the provisions which they precede.
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20. Further Assurances. Grantor agrees to execute and deliver such further
agreements, instruments and documents, and to perform such further acts, as
Collateral Agent (at the direction of the Required Noteholders) shall reasonably
request from time to time in order to carry out the purpose of this Security
Agreement and agreements set forth herein.
21. Survival of Representations. All representations and warranties of
Grantor contained in this Security Agreement shall survive the execution and
delivery of this Security Agreement.
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IN WITNESS WHEREOF, Grantor has duly executed this Security Agreement as of
the date first written above.
MEDICAL TECHNOLOGY SYSTEMS, INC.
By:__________________________________________
Name
Title:
Agreed and Accepted
As of the Date First Written Above
EUREKA I, L.P., as Collateral Agent
By: EUREKA MANAGEMENT, L.P.,
its sole general partner
By: BERWIND CAPITAL PARTNERS, LLC,
its sole general partner
By:_______________________________
Xxxxxxxxx X. Xxxxx,
President
Trademark Description U.S. Serial/Registration No. Date Registered
--------------------- ---------------------------- ---------------
TRADEMARK APPLICATIONS
Trademark Application Description U.S. Application No. Date Applied
--------------------------------- -------------------- ------------
TRADEMARK LICENSES
Description of License U.S. Serial/Registration No. Date Registered
---------------------- ---------------------------- ---------------
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STATE OF NEW YORK :
: SS.
COUNTY OF NEW YORK :
On this, the ____ day of June, 2002, before me, a Notary Public, personally
appeared Xxxxxxxxx X. Xxxxx, who acknowledged herself to be the President of
Berwind Capital Partners, LLC, and that she as such officer, being duly
authorized to do so, executed the foregoing instrument for the purposes therein
contained by signing the name of the company by herself as such officer.
IN WITNESS WHEREOF, I have hereunto set my hand and official seal.
____________________________
Notary Public
My commission expires
STATE OF NEW YORK :
: SS.
COUNTY OF NEW YORK :
On this, the __ day of June, 2002, before me, a Notary Public, personally
appeared ______________, who acknowledged himself to be _______ of Medical
Technology Systems, Inc., a Delaware corporation, and that he as such officer,
being duly authorized to do so, executed the foregoing instrument for the
purposes therein contained by signing the name of the corporation by himself as
such officer.
IN WITNESS WHEREOF, I have hereunto set my hand and official seal.
____________________________
Notary Public
My commission expires
