EXHIBIT 2.06
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement (the "AGREEMENT") is entered into
effective as of April 9, 2004 (the "EFFECTIVE DATE"), by and between Celerity
Group, Inc., a Delaware corporation ("LICENSOR") and Kinetic Systems, Inc., a
California corporation (the "LICENSEE").
RECITALS
A. Licensor uses the trademarks and owns applications and registrations as
specified in Exhibit A (the "TRADEMARKS").
B. Before the Effective Date, the Licensee was a direct or indirect wholly
owned subsidiary of Licensor, and Licensor and the Licensee were each using the
Trademarks.
C. Licensor and the Licensee are parties to a Separation Agreement dated
the same date as the Effective Date (the "SEPARATION AGREEMENT") and related
agreements, pursuant to which the Licensee will no longer be a subsidiary of
Licensor and the businesses of Licensor and Licensee will be separated.
D. Licensor plans to cease using the Trademarks within one year after the
Effective Date (the "TRANSITION PERIOD"), however the Licensee plans to continue
to use the Trademarks in connection with design, manufacture and installation of
process piping and control systems for use in the manufacturing processes,
biotechnology, pharmaceutical, semi-conductor, and fiber optic industries and
related products and services (the "SERVICES").
E. The parties desire that the Licensee will have the right to continue
use the Trademarks after the Effective Date, and the Licensee will have an
option to purchase an assignment of the Trademarks, in accordance with the terms
of this Agreement.
NOW, THEREFORE, in partial consideration for the considerations provided
by the parties pursuant to the Separation Agreement and other related agreements
referred to therein, the parties agree as follows:
1. Grant of License. Subject to the terms and conditions of this
Agreement, Licensor grants to the Licensee a non-transferable, perpetual,
worldwide, royalty-free license to use the Trademarks in connection with the
Services. This license shall be exclusive to the Licensee except that Licensor
may continue to use the Trademarks during the Transition Period. After the
Transition Period, Licensor shall cease all use of the Trademarks and the
license shall be exclusive to the Licensee.
2. Trademark Usage and Attribution. The Licensee shall, in connection with
such Licensee's use of the Trademarks: (i) materially comply with Licensor's
reasonable trademark usage guidelines provided to such Licensee; (ii) refer to
Licensor as the owner of the Trademarks and use any denotation and attribution
trademark symbol and statement reasonably directed by Licensor; (iii) ensure
that the nature and quality of the Services sold and/or rendered by such
Licensee in connection with the Trademarks shall conform to industry standards
regarding the nature and quality of such Services; (iv) cooperate with Licensor
in facilitating Licensor's control of such nature and quality of the Services;
and (v) comply with all applicable laws and regulations, and obtain all
appropriate government approvals pertaining to the sale, rendering, and
advertising of the Services.
3. Ownership. The Licensee acknowledges the ownership of the Trademarks by
Licensor, and the Licensee shall have no rights to the Trademarks other than the
rights expressly granted by this Agreement. All use of the Trademarks by the
Licensee and goodwill associated therewith shall inure to Licensor's benefit.
The Licensee shall not attack the validity of the Trademarks, and applications
or registrations thereof, or Licensor's ownership of the Trademarks. The
Licensee shall assist Licensor as reasonably necessary in the registration and
enforcement of Licensor's rights in and to the Trademarks, including recordation
of this Agreement. If the Licensee becomes aware of any infringement of a
Trademark by a third party, then the Licensee shall promptly notify Licensor.
4. Option to Purchase. The Licensee may, by written notice to Licensor
purchase the Trademarks, along with the goodwill of the business symbolized by
the Trademarks, and the domain name xxxxxxxxxxxxx.xxx (the "DOMAIN NAME"), from
Licensor for payment to the Licensor of one hundred United States Dollars (USD
$100). The "PURCHASING LICENSEE" shall be the Licensee from which Licensor
receives the first written notice. Upon receipt of such written notice by
Licensor, the remaining Licensee's option to purchase the Trademarks and Domain
Name from Licensor is immediately extinguished. Upon receipt of written notice
and payment from the Purchasing Licensee, the provisions of Sections 1, 2, 3, 6
and 7 of this Agreement shall terminate and:
(a) Licensor shall assign, transfer and convey to Purchasing
Licensee all of Licensor's right, title and interest worldwide in and to the
Trademarks and the Domain Name, including, without limitation, registered and
common law trademark rights, together with the goodwill of the business
symbolized by the Trademarks, and, with respect to those Trademarks that are the
subject of intent-to-use applications filed with the United States Patent and
Trademark Office ("USPTO") pursuant to Section 1(b) of the Trademarks Act, that
portion of Licensor's business to which the Trademarks pertain, as well as all
pending applications for USPTO and state registration of the Trademarks, all
foreign applications and registrations for the Trademarks, all rights
appurtenant to the Trademarks under the International Convention for the
Protection of Industrial Property and all other international treaties to which
the United States is a member, all claims for damages by reason of past
infringement of the Trademarks, with the right to xxx for and collect the same
for Purchasing Licensee's own use and benefit;
(b) Licensor shall, at Purchasing Licensee's expense, cooperate
reasonably with Purchasing Licensee to do all affirmative acts, and to execute
all papers that are necessary and/or desirable in connection with the perfection
in Purchasing Licensee of the rights assigned under paragraph (a) of this
Section, including, without limitation, the execution of separate assignments in
connection with such property and the provisions of any international treaty to
which the United States is a member;
(c) Purchasing Licensee shall grant to Licensor a non-transferable,
worldwide, royalty-free license to use the Trademarks during the remainder of
the Transition Period on terms, restrictions and conditions similar to license
terms, restrictions and conditions granted by Licensor to the Licensee
hereunder, if such assignment, transfer and conveyance is effected during the
Transition Period; and
5. Term. This Agreement will commence as of the Effective Date and will
remain in force and effect perpetually thereafter, unless and until terminated
in accordance with its terms.
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6. Termination by Licensor. Licensor may terminate this Agreement as
against a Licensee immediately by giving notice to the Licensee: (i) if the
Licensee commits a material breach of this Agreement and fails to correct such
breach within thirty (30) days after receiving written notice from Licensor of
such material breach; or (ii) upon the occurrence of any one or more of the
following events: (a) if the Licensee shall be unable to pay its debts when due,
or shall make any assignment for the benefit of creditors, or shall file any
petition under the bankruptcy or insolvency laws of any jurisdiction, country or
place, or shall have or suffer a receiver or trustee to be appointed for its
business or property, or be adjudicated a bankrupt or insolvent; (b) if any
government agency or court finds that the Services provided by the Licensee are
defective in any way, matter or form; (c) if actual or potential adverse
publicity or other information about such Licensee's use of a Trademark is such
that Licensor, in its sole judgment, believes that Licensor's reputation will be
adversely affected.
7. Termination Obligations. Upon termination of this Agreement by Licensor
as against the Licensee, the Licensee shall: (i) immediately discontinue all use
of the Trademarks and any term confusingly similar thereto; (ii) cooperate with
Licensor or its appointed agent to apply to the appropriate authorities to
cancel recording of this Agreement from all government records: (iii) destroy
all printed materials bearing the Trademarks in the possession of the Licensee,
and (iv) acknowledge that all rights in the Trademarks and the goodwill
connected therewith shall remain the property of Licensor.
8. General Provisions.
(a) Assignment. A party may not assign its rights or obligations
under this Agreement (including, without limitation, in connection with a sale
of all or substantially all of such party's assets), without the express written
consent of the other party. Subject to the foregoing, this Agreement will inure
to the benefit and bind the successors and permitted assigns of each party.
(b) Governing Law. This Agreement shall be governed by and construed
in accordance with the laws of the State of California, without regard to or
application of, conflict of laws rules or principles.
(c) Waiver. The waiver of any breach or default will not constitute
a waiver of any other right under this Agreement or any subsequent breach or
default.
(d) Severability. If for any reason a court of competent
jurisdiction finds any provision of this Agreement to be unenforceable, that
provision of the Agreement will be enforced to the maximum extent permissible so
as to effect the intent of the parties, and the remainder of this Agreement will
continue in full force and effect.
(e) Notices. All notices required or permitted under this Agreement
will be in writing and delivered by confirmed facsimile transmission, by courier
or overnight delivery service, or by certified mail, and in each instance will
be deemed given upon receipt. All communications will be sent to the addresses
set forth above or to such other address as may be specified by a party to the
other parties in accordance with this Section. A party may change its address
for notices under this Agreement by giving written notice to the other parties
by the means specified in this Section.
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(f) Relationship of the Parties. The parties to this Agreement are
independent contractors and this Agreement will not establish any relationship
of partnership, joint venture, employment, franchise, or agency among the
parties. No party will have the power to bind another party or incur obligations
on the other party's behalf without such other party's prior written consent.
(g) Entire Agreement. This Agreement constitutes the entire
agreement among the parties with respect to the subject matter hereof, and
supersedes and replaces all prior or contemporaneous understandings or
agreements, written or oral, regarding such subject matter. No modification of
this Agreement shall be effective unless in writing and signed by duly
authorized representatives of each party.
IN WITNESS WHEREOF, the parties have executed this Agreement through their duly
authorized representatives as of the Effective Date.
CELERITY GROUP, INC.
By: /s/ Xxxx Xxxxxxx
__________________________________________________________
Name:_________________________________________________________
Title: _______________________________________________________
KINETIC SYSTEMS, INC.
By: /s/ Xxxx Xxxxxxx
__________________________________________________________
Name:_________________________________________________________
Title: _______________________________________________________
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Exhibit A
Trademarks
KINETICS - U.S. Registration Xx. 0000000
XXXXXXXX - Xxxxxx Registration No. 657734/96
Ring Design - U.S. Registration No. 2160105
Ring Design - Mexico Registration No. 597345
Water Icon - U.S. Registration No. 2278282
Gas Icon - U.S. Registration No. 2285861
Chemical Icon - U.S. Registration No. 2281909
SAFETY BEGINS WITH ME - common law rights
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