EXHIBIT 10.77
TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT ("Agreement"), effective as of
December 1, 1997, is made by and between CARALOE, INC. ("Licensor"),
a Texas corporation, having its principal place of business at 0000
Xxxxxx Xxxx Xxxx, Xxxxxx, Xxxxx 00000, and MET-TRIM, ("Licensee"), a
Texas LLC, having its principal place of business at 00000 Xxxxxx
Xxxxxxx, Xxxxxx, Xxxxx 00000.
W I T N E S S E T H:
WHEREAS, simultaneously with the execution of this Agreement,
Licensor and Licensee are entering into an non-exclusive Supply
Agreement of even date herewith (the "Supply Agreement") for the sale
by Licensor and purchase by Licensee of bulk aloe xxxx mucilaginous
polysaccharide (hereinafter referred to under the product name of
"MANAPOL[R] powder") to be used in products manufactured by Licensee
in capsule (the "Manufactured Products");
WHEREAS, Xxxxxxxxxx Laboratories, Inc., a Texas corporation
("Xxxxxxxxxx"), claims the ownership of the trademark MANAPOL[R]
(the "Xxxx") and has granted to Licensor a license to use the Xxxx
and to license others to use it on an exclusive and/or a non-
exclusive basis;
WHEREAS, Licensee is desirous of obtaining from Licensor, and
Licensor is willing to grant to Licensee, a license to use the
product name MANAPOL[R] (the "Xxxx") in connection with the
advertising and sale of the Manufactured Products subject to the
terms, conditions and restrictions set forth herein; and
WHEREAS, Licensor and Licensee are mutually desirous of insuring
the consistent quality of all products sold in connection with the
Xxxx;
NOW, THEREFORE, in consideration of premises, the mutual
covenants, promises and agreement set forth herein, and other good
and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties hereby covenant, promise and agree
as follows:
Article 1
LICENSE
1.1 Terms and Conditions. Licensor hereby grants to Licensee
the non-transferable right and license to use the Xxxx in connection
with the labeling, advertising and sale of Manufactured Products
manufactured and sold by Licensee during the term of this Agreement.
During the term of this Agreement, Licensee shall have (a) the non-
exclusive right to use the Xxxx in connection with Manufactured
Products containing MANAPOL[R] powder that are intended for sale to
the ultimate consumer in the United States, Canada, Mexico,
Australia, and New Zealand, and (b) the non-exclusive right to use
the Xxxx in connection with Manufactured Products containing
MANAPOL[R] powder that are intended for sale to the ultimate
consumer in places other than the referenced countries, that are
specifically and mutually agreed upon from time to time and listed in
Exhibit A hereto. The countries in Exhibit A may be removed by
Caraloe upon written notice to Met-Trim that an exclusive Trademark
License Agreement has been executed for that country. In that event,
Met-Trim shall no longer be allowed to use the Manapol[R] Trademark
within the country removed by Caraloe after its existing supplies
have been exhausted.
1.2 License Coterminous With Supply Agreement. The license
granted by this Agreement shall run coterminously with the Supply
Agreement, and any actions or events which shall operate to extend or
t e rminate the Supply Agreement shall automatically extend or
terminate this Agreement simultaneously.
1.3 Sublicenses. Licensee shall not have the right to grant
sublicenses without the written permission of Licensor with respect
to the license granted herein; however, Licensee may engage a third
party or parties to make and affix labels for the Manufactured
Products in compliance with Articles 2,3, and 4 hereof, and/or to
distribute and sell the Manufactured Products in compliance with the
terms and conditions of this Agreement. Licensee shall be expressly
obligated to ensure full compliance with all terms and conditions of
this Agreement.
Article 2
CERTAIN OBLIGATIONS OF LICENSEE AND LICENSOR
2.1 Representations by Licensee. Licensee shall not represent
in any manner that it owns any right, title or interest in or to the
Xxxx. Licensee acknowledges that its use of the Xxxx shall inure to
the benefit of Licensor and shall not create in Licensee's favor any
right, title or interest in or to the Xxxx.
2.2 Discontinuation of Use of Xxxx. Upon the expiration or
termination of this Agreement, Licensee will cease and desist from
all use of the Xxxx in any manner and will not adopt or use, without
Licensor's prior written consent, any word or xxxx which is
confusingly or deceptively similar to the Xxxx, except that Licensee
may continue to use the Xxxx under the terms and conditions of this
Agreement in connection with any remaining supplies of MANAPOL[R]
powder purchased by Licensee from Licensor until such supplies are
exhausted.
2.3 FDA Compliance of Products. All products on which the Xxxx
is used by Licensee shall be manufactured, packaged, labeled,
advertised, marketed and sold in compliance with (i) the Federal
Food, Drug and Cosmetic Act and the rules and regulations promulgated
thereunder, as amended from time to time if sold for use within the
United States, and (ii) all other applicable laws, rules and
regulations if sold for use outside of the United States.
2.4 Inspection. Upon reasonable notice, Licensor reserves the
right to inspect Licensee's products bearing the Xxxx and Licensee's
manufacturing facilities at all reasonable times to insure Licensee's
compliance with this Agreement.
2.5 Use of Trademark. Licensee shall not use the Xxxx except
as specifically set forth herein. Without limiting the generality of
the preceding sentence, Licensee shall not use the Xxxx in connection
with the sale or advertising of any products other than the
Manufactured Products. Any use of the trademark, "Manapol[R]"
pursuant to this agreement is non-exclusive. Whenever the Licensee
uses the trademark, "Manapol[R]", it shall also indicate that such
name is the registered trademark of Licensor and shall take all
reasonable measures to assure that there is no confusion of ownership
of the xxxx or the substance which it identifies, the same being the
proprietary property of the Licensee.
2.6 Trademark Registration. At Licensor's request and expense
and, except as otherwise provided herein at Licensor's sole
discretion and option, Licensee shall take whatever action is
reasonably necessary to assist Xxxxxxxxxx or its assigns in
registering the Xxxx with the U.S. Patent and Trademark Office
("USPTO") and/or in perfecting, protecting or enforcing Xxxxxxxxxx'x
and Licensor's rights in and to the Xxxx. Licensee understands that
Xxxxxxxxxx or its assigns may rely solely on Licensee's use of the
Xxxx to obtain or maintain registration with the USPTO.
Article 3
MANUFACTURING AND SALE
3.1 M a nufacturing Facilities. All manufacturing of the
Manufactured Products shall be done in the Licensee's own facilities
or qualified contract manufacturing facilities.
3.2 Combination With Other Products. Licensee shall not
combine MANAPOL[R] powder with any product or substance in any
manner which would violate any laws, rules or regulations of any
state, federal or other governmental body. Licensee shall not
combine MANAPOL[R] powder with any other substance in a Manufactured
Product that is to be advertised or sold for use or consumption by
humans or animals if the approval of the U.S. Food and Drug
Administration (the "FDA") or the U.S. Department of Agriculture
("USDA") for such use or consumption is required and has not been
obtained.
3.3 Compliance by Third Parties. Licensee shall take all steps
reasonably necessary to ensure that its distributors and any other
parties to whom it sells any of the Manufactured Products for resale
do not relabel, repackage, advertise, sell or attempt to sell
MANAPOL[R] powder or any of the Manufactured Products in a manner
that would violate this Agreement if done by Licensee.
3.4 Manapol[R] Content. The amount of Manapol[R] powder to be
contained in each of the Met-Trim Manufactured Products shall be no
less than fifteen milligrams (15mgs) per capsule or compressed
tablet. The parties shall meet once each year to determine and agree
upon the Manapol[R] powder content for existing and proposed Met-Trim
Manufactured Products.
Article 4
LABELS AND ADVERTISING
4.1 FDA Compliance of Labels and Advertising. All labels and
a d vertising relating to the Manufactured Products offered in
connection with the Xxxx must strictly comply with all applicable
rules and regulations of the FDA if sold for use within the United
States, and all other applicable laws, rules and regulations
wherever sold. Information regarding the ingredients of MANAPOL[R]
powder shall be furnished to Licensee by Licensor from time to time.
4.2 Mandatory Requirements. Licensee shall cause all labels,
packaging, advertising and promotional materials used by it in
advertising, marketing and selling any product manufactured by or on
behalf of Licensee that contains MANAPOL[R] to contain (i) the Xxxx,
(ii) a statement setting forth the concentration of MANAPOL[R] powder
contained in such product, and (iii) the following legend:
MANAPOL[R] is a registered trademark of Caraloe, Inc.
4.3 Claims by Licensee. Licensee hereby agrees not to make, or
permit any of its employees, agents or distributors to make, any
claims of any properties or results relating to MANAPOL[R] powder or
any Manufactured Product which would violate any applicable law.
4.4 FDA or USDA Approval of Claims. If Licensee desires to
seek FDA or USDA approval as to any specific claims with respect to
MANAPOL[R] powder or any Manufactured Product, Licensee hereby agrees
to (i) notify Licensor of the claims and the application prior to
filing and (ii) to keep Licensor informed as to the progress of the
application, including but not limited to sending Licensor copies of
all communications or notices to or from the FDA or USDA, as
applicable.
4.5 Right to Approve Labels, etc. If Licensor so requests,
Licensee shall not use any label, advertisement or marketing material
that contains the Xxxx unless such label, advertisement or marketing
material has first been submitted to and approved by Licensor.
Licensor shall not unreasonably withhold its approval of any such
label, advertisement or marketing material.
Article 5
ROYALTY
5.1 Licensee agrees to pay to Licensor a royalty of $100.00 for
the first contract year for the use of the Trademark. Thereafter,
the Parties shall meet and mutually agree upon the royalty for the
next contract year or for the remainder of the term of the Agreement.
5.2 All payments hereunder are to be paid in U.S. currency at
the address set forth at the beginning of the Agreement.
Article 6
NEGATION OF WARRANTIES, DISCLAIMER AND INDEMNITY
6.1 Negation of Warranties, etc. Nothing in this Agreement
shall be construed or interpreted as:
(a) a warranty or representation by Licensor that any product
made, used, sold or otherwise disposed of under the license granted
in this Agreement is or will be free of infringement or the like of
the rights of third parties; or
(b) an obligation by Licensor to bring or prosecute actions or
suits against third parties for infringement or the like of the Xxxx
or of any registration that may subsequently be granted for such
Xxxx; or
(c) granting by implication, estoppel or otherwise any licenses
or rights other than those expressly granted hereunder.
6.2 Disclaimer. LICENSOR MAKES NO REPRESENTATIONS, EXTENDS NO
WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT
LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS AND FITNESS FOR A
PARTICULAR PURPOSE, AND ASSUMES NO RESPONSIBILITIES WHATSOEVER WITH
RESPECT TO THE USE, SALE OR OTHER DISPOSITION BY LICENSEE OR ITS
CUSTOMERS, VENDEES OR OTHER TRANSFEREES, WITH RESPECT TO THE XXXX OR
ANY PRODUCTS MADE OR SOLD BY LICENSEE. THE FOREGOING NOTWITHSTANDING,
SELLER DOES REPRESENT THAT THE MANAPOL[R] POWDER DOES MEET THE
SPECIFICATIONS OUTLINED ON EXHIBIT A AND THAT IT IS A FOOD SUPPLEMENT
UNDER THE FDA RULES AND REGULATIONS.
6.3 Liability of Licensee for Products. Licensee shall assume
all financial and other obligations for the products made and sold by
it under this Agreement and Licensor shall not incur any liability or
responsibility to Licensee or to third parties arising out of or
connected in any manner with Licensee's products made or sold
pursuant to this Agreement. In no event shall Licensor be liable for
lost profits, special damages, consequential damages or contingent
liabilities arising out of or connected in any manner with this
Agreement or the products made or sold by Licensee under this
Agreement.
6.4 I n demnity of Licensor. Licensee agrees to defend,
indemnify and hold Licensor, its officers, directors, employees and
agents, harmless against all claims, liabilities, demands, damages,
expenses or losses arising out of or connected with (a) the wrongful
or negligent use by Licensee of the Xxxx or (b) any use, sale or
other disposition of Licensee's products by Licensee or by any other
party.
6.5 Negation of Trademark Warranty. Licensee acknowledges that
Licensor makes no warranty, express or implied, with respect to its
ownership of any rights relating to the Xxxx.
Article 7
TERM AND TERMINATION
7.1 Term. Unless terminated earlier as provided for herein,
this Agreement shall remain in full force and effect for a five (5)-
year period ending at midnight on August 14, 2001. This Agreement
may be extended or renewed as provided in Section 1.2, or otherwise
by the written agreement of the parties.
7.2 Breach of Agreement. Except as provided otherwise in
Section 7.3, if either party breaches any material provision of this
Agreement and fails to cure the breach within thirty (30) days after
receipt of written notice from the nonbreaching party specifying the
breach, then the nonbreaching party may terminate this Agreement upon
written notice to the breaching party, which right of termination
shall be in addition to, and not in lieu of, all other rights and
remedies the nonbreaching party may have against the breaching party
under this Agreement, at law or in equity. Failure by Licensor to
give notice of termination with respect to any such failure shall not
be deemed a waiver of its right at a later date to give such notice
if such failure continues or again occurs, or if another failure
occurs. A breach by either party of a material provision of the
Supply Agreement shall be deemed a breach by such party of a material
provision of this Agreement.
7.3 Immediate Termination. Licensor may immediately terminate
this Agreement, upon written notice to Licensee, upon the occurrence
of any one or more of the following events: (i) Licensee breaches
any provision of Articles 2, 3, or 4; (ii) Licensee fails to purchase
and/or to pay for the quantities of MANAPOL[R] powder that it is
obligated to purchase and pay for under the Supply Agreement in
accordance with the terms thereof; (iii) Licensee voluntarily seeks
protection under any federal or state bankruptcy or insolvency laws;
(iv) a petition for bankruptcy or the appointment of a receiver is
filed against Licensee and is not dismissed within thirty (30) days
thereafter; (v) Licensee makes any assignment for the benefit of its
creditors; or (vi) Licensee ceases doing business.
7.4 Survival of Provisions. In the event of termination,
cancellation or expiration of this Agreement for any reason, Sections
2.2, 6.1, 6.2, 6.3, 6.4, 6.5 and 8.1 hereof shall survive such
termination, cancellation or expiration and remain in full force and
effect.
Article 7
MISCELLANEOUS
8.1 Equitable Relief. A breach or default by Licensee of any
of the provisions of Articles 2, 3 and 4 hereof shall cause Licensor
to suffer irreparable harm and, in such event, Licensor shall be
entitled, as a matter of right, to a restraining order and other
i n j unctive relief from any court of competent jurisdiction,
restraining any further violation thereof by Licensee, its officers,
agents, servants, employees and those persons in active concert or
participation with them. The right to a restraining order or other
injunctive relief shall be supplemental to any other right or remedy
Licensor may have, including, without limitation, the recovery of
damages for the breach or default of any of the terms of this
Agreement.
8.2 Amendment. This Agreement may be changed, modified, or
amended only by an instrument in writing duly executed by each of the
parties hereto.
8.3 Entire Agreement. This Agreement constitutes the full and
complete agreement of the parties hereto and supersedes any and all
prior understandings, whether written or oral, with respect to the
subject matter hereof.
8.4 No Waiver. The failure of either party to insist upon
strict performance of any obligation hereunder by the other party,
irrespective of the length of time for which such failure continues,
shall not be a waiver of its right to demand strict compliance in the
future. No consent or waiver, express or implied, by either party to
or of any breach or default in the performance of any obligation
hereunder by the other party shall constitute a consent or waiver to
or of any other breach or default in the performance of the same or
any other obligation hereunder.
8.5 Notices. All notices required or permitted to be made or
given pursuant to this Agreement shall be in writing and shall be
considered as properly given or made when personally delivered or
when duly deposited in the mails, first class mail, postage prepaid,
or when transmitted by prepaid telegram, and addressed to the
applicable address first above written or to such other address as
the addressee shall have theretofore specified in a written notice to
the notifying party.
8.6 Assignment. This Agreement or any of the rights or
obligations created herein may be assigned, in whole or in part, by
Licensor. However, this Agreement is personal to Licensee, and
Licensee may not assign this Agreement or any of its rights, duties
or obligations under this Agreement to any third party without
Licensor's prior written consent, and any attempted assignment by
Licensee not in accordance with this Section 8.6 shall be void.
8.7 Relationship of Parties. Nothing contained herein shall be
construed to create or constitute any employment, agency, partnership
or joint venture arrangement by and between the parties, and neither
of them has the power or authority, express or implied, to obligate
or bind the other in any manner whatsoever.
8.8 Remedies Cumulative. Unless otherwise expressly provided
herein, the rights and remedies hereunder are in addition to, and not
in limitation of, any other rights and remedies, at law or in equity,
and the exercise or one right or remedy will not be deemed a waiver
of any other right or remedy.
8.9 Successors and Assigns. The provisions of this Agreement
shall be binding upon and inure to the benefit of the parties and
their respective successors and assigns, provided, however, that the
foregoing shall not be deemed to expand or otherwise affect the
limitations on assignment and delegation set forth in Section 8.6
hereof, and except as otherwise expressly provided in this Agreement,
no other person or business entity is intended to or shall have any
right or interest under this Agreement.
8.10 Governing Law. This Agreement shall be governed by and
interpreted, construed and enforced in accordance with the laws of
the State of Texas, excluding, however, any conflicts of law rules
that would require the application of the laws of any other state or
country.
8.11 Headings. The headings used in this Agreement are for
convenience of reference only and shall not be used to interpret this
Agreement.
8.12 Counterparts. This Agreement may be executed in multiple
counterparts, each of which shall be deemed an original and all of
which will constitute but one and the same instrument.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives as of the date
first above written.
CARALOE, INC.
By:
Name:
Title:
MET-TRIM
By:
Name:
Title:
EXHIBIT A
To that certain Trademark License and Supply Agreement
dated December 1, 1997 by and between Caraloe, Inc. and Met-Trim
United States
Mexico
Canada
Australia
New Zealand
