Exhibit 10.1(e)
FORM OF TRADEMARK LICENSE
THIS TRADEMARK LICENSE is entered into as of 4th day of January, 2002
("Effective Date") by and between Elan Pharmaceuticals, Inc., ("Elan") a
corporation organized and existing under the laws of Delaware, having its
principal place of business at 000 Xxxxxxx Xxxxxxxxx, Xxxxx Xxx Xxxxxxxxx, XX
00000 ("Elan") and Athena Diagnostics, Inc., a corporation organized and
existing under the laws of Delaware, having its principle place of business at
Four Biotech Park, 000 Xxxxxxxxxx Xxxxxx, Xxxxxxxxx, XX 00000 ("Athena").
WHEREAS, Elan owns the registered and common law rights in the
trademarks identified on Exhibit A in connection with its pharmaceutical and
diagnostic business (hereinafter "Trademarks");
WHEREAS, Elan wishes to xxxxx Xxxxxx, and Athena wishes to obtain from
Elan, the right and license to use the Trademarks in connection with the
advertising, distribution, sale and provision of Services in the Territory on
the terms and subject to the conditions set forth in this Trademark License;
NOW THEREFORE, in consideration of the mutual covenants and agreements
contained herein, and for other good and valuable consideration, the receipt and
legal sufficiency of which are hereby acknowledged, Elan and Athena hereby
covenant and agree as follows:
1. DEFINITIONS
1.1 "Effective Date" means the date upon which this Trademark License
is executed, as defined above.
1.2 "Trademarks" means the trademarks set forth on Exhibit A attached
hereto.
1.3 "Party" shall mean a party to this Trademark License.
1.4 "Services" means diagnostic and prognostic clinical testing
services and related services.
1.5 "Term" means the period of time identified in Section 10.1 of this
Trademark License.
1.6 "Territory" means worldwide.
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1.7 "Trademark License" means the terms and conditions of this
trademark license, and Exhibit A attached hereto.
2. GRANT OF LICENSE
2.1 Grant of License. Subject to the terms and conditions of this
Trademark License, Elan hereby grants Athena, and Athena hereby accepts, a
nonexclusive and royalty-free license to use the Licensed Trademarks on and in
connection with the advertising, distribution, sale and provision of the
Services, and in connection with the company name Athena Diagnostics, Inc.
2.2 Sublicensing. Athena may sublicense its rights pursuant to this
Trademark License subject to the prior written consent of Elan, which Elan shall
not unreasonably withhold. Each sublicense agreement shall: (i) require the
sublicensee to comply with the applicable terms and conditions of this Trademark
License; and (ii) provide that the sublicense will automatically be assigned to
Elan upon the termination of this Trademark License. Athena shall take all
necessary steps to exercise quality control over all Services advertised,
distributed, sold or provided under such sublicense to ensure that the quality
standards required by this Trademark License are being maintained. Any
sublicense agreement, however, shall permit Elan to exercise such quality
control directly over any sublicensee.
3. OWNERSHIP
3.1 Ownership of the Trademarks. Athena acknowledges and agrees that
Elan is the sole owner of all right, title and interest in and to the Trademarks
and all associated goodwill, that Athena acquires no interests under this
Trademark License to the Trademarks, other than the limited license to use the
Trademarks explicitly granted in this Trademark License, and that all goodwill
associated with Athena `s use of the Trademarks inures solely to the benefit of
Elan. Nothing in this Trademark License shall be construed to limit or restrict
any right of Elan to use, register, license, transfer, assign or encumber the
Trademarks, subject only the rights explicitly granted to Athena hereunder.
3.2 Assignment of Rights. If Athena acquires any rights in the
Trademarks by operation of law or otherwise, Athena shall immediately assign
such rights to Elan, along with all associated goodwill.
3.3 No Derogation of Elan's Rights. Athena shall not: (i) do anything
that might harm the reputation or goodwill of Elan or its Trademarks; (ii) take
any action inconsistent with Elan's ownership of the Trademarks; or (iii)
challenge Elan's rights or interest in the Trademarks.
4. QUALITY CONTROL
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4.1 Quality Standards and Local Laws. Athena shall maintain the quality
of the Services at least at a level: (i) consistent with the quality standards
of Athena in existence as of the date of this Trademark License; (ii) consistent
with the existing high quality image of Elan; and (iii) that meets or exceeds
industry standards. The Services must also comply with all laws, government
regulations and requirements of the jurisdiction into which the Services are
offered, and Athena shall not violate or infringe any rights of any third party.
4.2 Inspections. Athena shall allow Elan, upon Elan's reasonable
request, to inspect the labs, clinics and facilities at which the Services are
performed.
4.3 Termination of Affected Services. In the event that any of the
Services do not comply with the quality standards set forth in this Trademark
License, Athena shall immediately cease performance of such Services. Further,
Athena shall take prompt action to remedy any such nonconformities and, in any
event, shall not advertise or perform any Services that do not meet the quality
standards set forth in this Trademark License.
4.4 Elan's Right to Enjoin Services. In the event that any of the
Services, in the reasonable opinion of Elan, are the subject of a claim or
inquiry by any person, agency or commission with competent authority in the
Territory because of quality or safety concerns, or is the subject of negative
publicity due to poor quality or reliability, Athena shall, upon Elan's request,
immediately cease performing such Services and take any other measures Elan may
reasonably demand.
5. ADVERTISING AND PROMOTIONAL MATERIAL
Athena shall submit to Elan, upon Elan's reasonable request, samples of
all advertising, promotional, and promotional materials, and the like, which
display the Trademarks. Approval or disapproval of said materials shall lie
solely in Elan's discretion, which shall not be unreasonably withheld.
6. PLACEMENT AND APPEARANCE OF TRADEMRKS
The first and all prominent references to the Trademarks shall be
accompanied by a properly configured notice, consisting of the symbol "(R)"
where registered and "(TM)" where unregistered and a statement that the
Trademarks are trademarks or registered trademarks, as may be appropriate, in
the U.S. and other countries, and are used under license to Athena Diagnostics,
Inc. (the "Trademark Notice"). Each Trademark Notice shall appear in close
proximity to the Trademark to which it relates and shall be conspicuous and
clear.
7. INTERNET USE
7.1 Restrictions on Use. Athena shall make all reasonable efforts to
ensure that any web site on which the Trademarks appear will not contain
material that
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(i) infringes the intellectual property rights of a third party; (ii) is
obscene, defamatory, unreasonably objectionable or offensive to actual or
potential users of the site; or (iii) is likely to give rise to civil or
criminal liability.
7.2 Compliance with Laws, Regulations and Rules. Athena shall ensure
that any reference on the Internet to the Trademarks that Athena causes to
occur, and the operation of any web site on which Athena causes the Trademarks
to appear, including without limitation any contests or promotions featured on
the web sites, shall comply with any laws, regulations or rules of any
government body, agency, on-line tribunal or other body with competent authority
in the Territory, and any international treaties.
7.3 No Violation of Third Party Rights. Athena shall make all
reasonable efforts to ensure that any and all content appearing on any web site,
on which Athena causes the Trademarks to appear, will not violate any third
party intellectual property rights or other rights.
8. ENFORCEMENT OF TRADEMARK RIGHTS
8.1 Maintenance of Registration. Elan will file applications and
prosecute and maintain such registrations for the Trademarks as reasonably
requested by Athena. Athena shall reimburse Elan for all costs relating thereto
including, but not limited to, attorneys' fees, filing fees, registration and
renewal fees. Athena agrees to cooperate with Elan and take all reasonable
actions required to vest and secure in Elan the ownership rights and appurtenant
interests in the Trademarks as provided in this Trademark License, and shall,
upon request, provide Elan with any information as to Athena's use of the
Trademarks as Elan may require in obtaining or maintaining registrations for the
Trademarks.
8.2 Infringement by Third Party. In the event either Party (i) learns
of any infringement, threatened infringement, or other claim or potential claim
of or relating to any Trademark by a third party in the Territory, of any
third-party application for a xxxx which, if used, would infringe any Trademark
in the Territory or (ii) receives a demand from a third party alleging or
claiming that any Trademark infringes upon or otherwise violates such party's
rights, that Party shall promptly, and in any event no later than sixty (60)
days following discovery of such infringement, demand, claim or potential claim
(hereinafter collectively "Claim") notify the other Party of such Claim with the
details thereof. Elan has the sole discretion to initiate and control a
proceeding, or defend a proceeding, as applicable, against such third party.
Athena shall reimburse Elan for all of its reasonable expenses in connection
therewith, including but not limited to, attorneys' fees and costs.
Notwithstanding the foregoing, Athena, at its sole option and expense, shall be
permitted to take such steps as may be necessary to preserve Elan's right to
commence or carry on such proceedings until such time as it receives Elan's
notice of intent to control the proceeding, provided Athena shall give Elan
prior written notice of any such steps that it intends to take to give Elan time
to commence an action or otherwise take action that would have the same effect.
Athena acknowledges that Elan may, in its sole discretion, settle or dismiss any
proceeding at any time, provided, however, that Elan agrees not to (i) admit to,
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or subject Athena to, any liabilities; or (ii) restrict Athena's right to use
the Trademarks as provided for in this Trademark License without the express
written consent of Athena, which shall not be unreasonably withheld or delayed.
The proceeds from any such Claim, action or suit shall be applied first to
reimburse Elan for its costs, then to reimburse Athena for its costs, and then
to be shared equally between Athena and Elan.
9. INDEMNIFICATION AND INSURANCE
Athena shall indemnify, defend and hold Elan and its officers,
directors, employees, agents and representatives, from and against any and all
liabilities, claims, demands, actions, suits, losses (including any claim for
consequential or indirect loss), damages, costs and expenses (including
reasonable attorneys' fees and expenses) which Elan may incur, suffer or be
required to pay by reason of litigation or claim made by a third party in
connection with Athena's advertising, distribution, sale and provision of the
Services.
Notwithstanding anything to the contrary in this Trademark License,
Elan shall not be liable to Athena by reason of any representation or warranty,
condition or other term or any duty of common law, or under the express terms of
this Trademark License, for any consequential or incidental or punitive loss or
damage (whether for loss of profits or otherwise) and whether occasioned by the
negligence of Elan, its officers, directors, employees, agents and
representatives.
10. TERM AND TERMINATION
10.1 Term. This Trademark License shall have an initial term of 5
years. Thereafter this Trademark License shall automatically renew every year,
unless either Party notifies the other Party in writing of its intent not to
renew at least thirty (30) calendar days prior to the end of the then-current
term.
10.2 Termination. This Trademark License may be terminated:
(a) by either Party, effective thirty (30) calendar days after
Notice to the other Party of termination for breach of any provision of this
Trademark License if such breach has not been cured within such thirty (30) day
period, or immediately upon Notice of termination if no cure is possible; or
(b) by Elan automatically: (i) if Athena files any petition
under the bankruptcy or insolvency laws of any jurisdiction, country or place;
(ii) if a receiver or trustee is appointed for Athena's business or property;
or, (iii) if Athena is adjudicated bankrupt or insolvent.
11. GENERAL
11.1 Notices. All notices hereunder, including changes in the Notice
addresses, must be in writing and delivered either in person, by mailing
(certified or
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registered mail, postage prepaid), or by Federal Express or a similar recognized
courier service (all charges prepaid), to:
If to Elan:
-----------
Vice President Intellectual Property
Elan Pharmaceuticals, Inc.
000 Xxxxxxx Xxxx.
Xx. Xxx Xxxxxxxxx, XX 00000
XXX
Facsimile: + 0 000 000-0000
If to Athena:
-------------
President
Athena Diagnostics, Inc.
Four Biotech Park
000 Xxxxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
11.2 Assignment. Elan may assign this Trademark License or any of its
rights or obligations hereunder. Athena may assign this Trademark License or any
of its rights or obligations hereunder, provided it obtains Elan `s written
consent, such consent not to be unreasonably withheld.
11.3 Successors and Assigns. This Trademark License shall be binding
upon and inure to the benefit of the permitted successors and assigns of the
Parties hereto.
11.4 Waiver or Delay. Any express waiver or failure to exercise
promptly any right under this Trademark License will not create a continuing
waiver or any expectation of non-enforcement. All rights and remedies granted
herein shall be cumulative and in addition to other rights and remedies to which
the Parties may be entitled at law or in equity.
11.5 Governing Law, Jurisdiction and Venue. Any action related to this
Trademark License shall be governed by California law and controlling U.S.
federal law and the choice of law rules of any jurisdiction shall not apply. The
Parties agree that any action shall be brought in the United States District
Court for the Northern District of California or the California Superior Court
for the County of San Francisco, as applicable, and the Parties hereby submit
exclusively to the personal jurisdiction and venue of the United States District
Court of the Northern District of California and the California Superior Court
of the County of San Francisco.
11.6 Severability. If any provision of this Trademark License is held
invalid by any competent authority, such invalidity will not affect the
enforceability of other provisions, and in such event, the Parties agree that
such provision will be replaced with a new provision that accomplishes the
original business purpose.
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11.7 Force Majeure. A Party is not liable under this Trademark License
for non-performance caused by events or conditions beyond that Party's control,
if that Party gives prompt Notice and makes reasonable efforts to perform.
11.8 Entire Agreement. This Trademark License is the parties' entire
agreement relating to its subject matter. It cancels and supersedes all prior or
contemporaneous oral or written communications, proposals, conditions,
representations, and warranties, and prevails over any conflicting or additional
terms of any quote, order, acknowledgment, or other communication between the
Parties relating to its subject matter during the term of this Trademark
License. No modification to this Trademark License will be binding, unless in
writing and signed by an authorized representative of each Party.
IN WITNESS WHEREOF, the Parties hereby execute this Trademark License through
the Authorized representative whose names appear below.
ELAN PHARMACEUTICALS, INC.
By:___________________________________
Name:_________________________________
Title:________________________________
Date:_________________________________
ATHENA DIAGNOSTICS, INC.
By:___________________________________
Name:_________________________________
Title:________________________________
Date:_________________________________
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EXHIBIT A
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A Athena & Design, for diagnostic and prognostic clinical testing services; but
not including any services which involve electronic monitoring of the condition
of patients
Athena, common law rights, for diagnostic and prognostic clinical testing
services, and related services.
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