TRADEMARK LICENSE AGREEMENT
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This license agreement ("Agreement") dated as of December 21, 1999 is made and
entered into by and between GENERAL MOTORS CORPORATION, a Delaware corporation,
having offices at 0000 Xxxx Xxxxx Xxxx., Xxxxxxx, XX 00000 ("GM") and AM
GENERAL CORPORATION, a Delaware corporation, having offices at 000 Xxxxx Xxxxx
Xxxxxx, Xxxxx Xxxx, XX 00000 ("AMG"), hereinafter referred to collectively as
the "parties".
R E C I T A L S
WHEREAS, pursuant to an assignment agreement entered into between the parties
contemporaneously with this Agreement (the "Assignment Agreement"), GM owns all
right, title and interest including, without limitation, all common law rights,
all merchandising rights, all marks, words, names, letters, numbers, symbols,
emblems, shapes, designs, devices and trade dress, or any combination thereof,
as well as anything that may distinguish the goods and services in the business
associated with the manufacture, sale, distribution, servicing, financing,
insuring, leasing or promotion of Hummer motor vehicles throughout the world and
all registrations and applications and all goodwill connected with the Hummer
trademarks;
WHEREAS, pursuant to a new vehicle assembly agreement entered into between the
parties contemporaneously with this Agreement (the "New Vehicle Assembly
Agreement"), GM will design a new vehicle and AMG will assemble such new vehicle
for delivery to GM, and AMG will develop and GM will provide certain financing
for new facilities for the assembly of such new vehicle;
WHEREAS, pursuant to a management services agreement entered into between the
parties contemporaneously with this Agreement (the "Management Services
Agreement"), as modified from time to time, wherein GM will be the exclusive
provider of marketing and distribution support to AMG in connection with AMG's
distribution and sale of a non-military vehicle product currently being
manufactured, distributed and sold by AMG ("Current Vehicle");
WHEREAS, AMG desires to continue to use the Hummer trademarks upon and in
connection with the manufacture, distribution and sale of the Current Vehicle
worldwide; and
WHEREAS, pursuant to two letter agreements (the "HUMVEE Trademark Agreement"
and the "Royalty Sharing Agreement ") entered into between the parties
contemporaneously with this Agreement, the parties have set forth AMG's
retention of rights in certain trademarks (the "HUMVEE Trademarks"), as set
forth in the HUMVEE Trademark Agreement, and each party's rights to royalties
derived by the other party in connection with its respective licensing
activities with respect to the HUMVEE Trademarks and Hummer trademarks;
NOW, THEREFORE, in consideration of the mutual promises herein contained and for
other good and valuable consideration, the receipt and sufficiency of which is
hereby acknowledged, it is hereby agreed as follows:
X.
XXXXX OF LICENSE
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1.1 GM hereby grants to AMG this non-exclusive, paid-up, royalty-free,
worldwide license to use and display the Hummer trademarks as set forth in
Schedule A and all related marks, words, names, letters, numbers, symbols,
emblems, devices, trade dress and other common law rights or any
combination thereof assigned to GM pursuant to the Assignment Agreement
(collectively the "Hummer Trademarks") during the Term of this Agreement
solely and only upon and in connection with the manufacture, distribution,
promotion and sale of the Current Vehicle. Any modification in the form,
color, dimension and manner of use by AMG shall be subject to the approval
of GM, which approval shall not be unreasonably withheld.
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1.2 It is agreed to and understood that the grant of paragraph 1.1 above is
intended to include use of the Hummer Trademarks on related parts,
accessories and maintenance and repair services for the Current Vehicle and
ancillary business materials such as business cards, stationery and
business signs of AMG in connection with its manufacture, distribution,
promotion and sale of the Current Vehicle bearing the Hummer Trademarks.
1.3 It is agreed to and understood that this Agreement does not convey to AMG
any license to use the Hummer Trademarks in connection with any apparel,
novelty items or other merchandise and AMG is expressly prohibited from
using the Hummer Trademarks in connection therewith. GM recognizes and
acknowledges that AMG has previously licensed use of the Hummer Trademarks
to third parties in connection with apparel, novelty items and other
merchandise, such license agreements being assigned to GM pursuant to the
Royalty Sharing Agreement.
1.4 GM makes no representations or warranties with respect to the availability
of use of the Hummer Trademarks in any country. AMG agrees and understands
that upon written notification from GM that any of the Hummer Trademarks
are the subject of a trademark infringement claim or allegation brought by
a third party alleging infringement by GM or AMG, GM shall promptly confer
with AMG in good faith to develop an appropriate response including, where
reasonable under the circumstances and in GM's sole discretion,
discontinuing the use of such Hummer Trademarks pending the outcome of the
alleged trademark infringement.
1.5 Except for trademarks or service marks that currently appear on the Current
Vehicle (e.g., component parts), AMG agrees and understands that no
trademarks other than AMG-owned trademarks and the Hummer Trademarks shall
appear on any of the Current Vehicles, unless otherwise agreed to by GM in
writing wherein such agreement shall not be unreasonably withheld.
1.6 Notwithstanding anything to the contrary in this Agreement, upon the
request and at the expense of AMG, GM will pursue securing trademark and
service xxxx registrations for use of the Hummer Trademarks in connection
with the manufacture, distribution, promotion and sale of the Current
Vehicle in any countries reasonably requested by AMG.
1.7 (a) GM hereby grants to AMG a non-exclusive, paid-up, royalty-free,
worldwide license to use the shape and design of the Current Vehicle
including, but not limited to, the Current Vehicle grill and nose design,
(the "Current Vehicle Design") in connection with the manufacture,
distribution, servicing, financing, insuring, leasing, promotion and sale
of the Current Vehicle. During the term of the license granted pursuant to
this Section 1.7, GM agrees not to license the Current Vehicle Design to
any third party for use in the manufacture of the Current Vehicle, without
AMG's prior written consent.
(b) The parties acknowledge and agree that the license granted in Section
1.7 (a) above, also includes the use of the Current Vehicle Design on
related parts, accessories and maintenance and repair services for the
Current Vehicle and ancillary business materials such as business cards,
stationary and business signs of AMG in connection with its manufacture,
distribution, promotion and sale of the Current Vehicle.
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II.
TERM
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2.1 This Agreement shall become effective upon complete execution by both
parties of: (i) this Agreement, (ii) the Assignment Agreement, (iii) the
Management Services Agreement, (iv) the New Vehicle Assembly Agreement, (v)
the HUMVEE Trademark Agreement, and (vi) the Royalty Sharing Agreement and
shall continue for an indefinite duration, unless this Agreement is
terminated pursuant to the terms and conditions hereof.
III.
ACKNOWLEDGMENT OF TRADEMARK OWNERSHIP
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3.1 AMG agrees that it will not, during the term of this Agreement or
thereafter, attack the validity of the Hummer Trademarks, or this
Agreement.
3.2 AMG acknowledges GM's title to the Hummer Trademarks, and shall not at any
time do or permit to be done any act or thing which will in any way impair
the rights of GM in the Hummer Trademarks or which damages or reflects
adversely upon GM or the Hummer Trademarks.
3.3 AMG shall not attempt to register the Hummer Trademarks alone or as part of
its own trademarks, nor shall AMG use or attempt to register any marks
confusingly similar to the Hummer Trademarks, except that AMG shall retain
the right to own, use, transfer, license or register its HUMVEE trademarks
and service marks including but not limited to the registered marks listed
on the attached Schedule B, subject to the HUMVEE Trademark Agreement and
Royalty Sharing Agreement.
3.4 It is the intention of the parties that all use of the Hummer Trademarks
shall inure to the benefit of the GM.
3.5 In connection with AMG's use of the Hummer Trademarks, AMG will use the
following notice (or such other notice as otherwise specified by GM)
somewhere in its advertising and promotional materials, in all related-
owners manuals and publications, as well as on the Current Vehicle or
labels affixed to the Current Vehicle:
"[Hummer Trademarks] are trademarks of General Motors Corporation,
used under license to AM General Corporation."
IV.
GOOD WILL AND PROMOTIONAL VALUE
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4.1 AMG recognizes the value of the good will associated with the Hummer
Trademarks and acknowledges that the Hummer Trademarks, and all rights
therein and the good will pertaining thereto, belong exclusively to GM.
V.
TRADEMARK PROTECTION
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5.1 AMG shall fully and completely comply with the provisions of the trademark
laws of the countries in the Licensed Territory, and AMG agrees to bear any
costs which may be necessary to comply with such trademark laws, other than
the fees, taxes and maintenance charges assessed to register and maintain
the Hummer Trademarks.
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5.2 AMG agrees to bear any costs which may be necessary to record AMG as a
registered user of the Hummer Trademarks in countries in which AMG is
authorized under this Agreement to manufacture, distribute, promote and
sell the Current Vehicle bearing the Hummer Trademarks. Such cost shall be
limited to direct, out-of-pocket costs for outside counsel, trademark
agents and government registration fees.
5.3 AMG agrees to provide GM with such reasonable assistance as GM may require
in the procurement of any protection of GM's rights to the Hummer
Trademarks.
5.4 AMG agrees to notify GM in writing of any suspected infringing activity by
other entities which may come to AMG's attention. GM shall have the sole
right to determine whether any action shall be taken concerning such
activity. AMG shall not institute any action, make any demand, or contact
such other entity on behalf of GM concerning the suspected infringing
activity.
5.5 AMG agrees to provide to GM, at GM's request and cost and expense, copies
of all files in its possession or control related to any past or current
trademark matters pertaining to the Hummer Trademarks including, without
limitation, trademark applications, registrations, prosecutions,
oppositions, cancellations, pursuit of third party infringers, claims of
trademark infringement against AMG and litigation matters. Additionally,
AMG hereby assigns to GM, and GM accepts all rights AMG may have to pursue
and recover for any and all past, present and future trademark
infringements regarding the Hummer Trademarks, including but not limited to
any and all active litigation.
5.6 GM and AMG understand and acknowledge that with respect to each party's
pursuit of trademark protection for its respective trademarks (the Hummer
Trademarks by GM and the HUMVEE Trademarks by AMG), it may be necessary for
one of the parties to obtain a written consent for use and registration
from the other party. Therefore, the parties agree to execute all documents
necessary when requested by other party to effectuate the intent of this
understanding, provided that the requesting party shall pay all reasonable
costs associated therewith and shall prepare all such documents. This
paragraph 5.6 shall apply to all countries, worldwide, and shall survive
the termination of this Agreement.
VI.
INDEMNIFICATION
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6.1 AMG shall indemnify, defend and hold harmless GM from any cause of action,
claim, action or suit, including product liability claims and claims for
civil liability, for recovery of said damages, losses or injuries, as well
as all costs and reasonable attorney's fees, if any, arising out of the
manufacture, distribution, promotion, sale or use of the Current Vehicle
including, without limitation, use of any trademark (including, but not
limited to, the Hummer Trademarks), patent, process, idea, method or device
by or on behalf of AMG.
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VII.
QUALITY CONTROL
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7.1 AMG agrees that the Current Vehicle on which it will use the Hummer
Trademarks shall be of a standard of quality equally as high as that of the
specimen made available for GM's inspection as of the date of this
Agreement. Additional testing may be required by GM of the Current Vehicle
from time to time to verify that the Current Vehicle continues to be
substantially equal to or exceed the standard of quality of the Current
Vehicle made available for GM's inspection as of the date of this
Agreement. Such additional tests shall be called for at the discretion of
GM. GM shall have the right to inspect the manufacturing facilities of AMG
at all reasonable times.
7.2 AMG agrees that all advertising, brochures, marketing and promotional
materials, vehicle owner's manuals, documentation and technical materials,
business cards, stationery, business signs and all other written materials
used in connection with the Hummer Trademarks shall be of a standard of
quality equally as high as that of the specimens made available for GM's
inspection as of the date of this Agreement. Any material changes or
additions to the foregoing materials shall require GM's consent, which
consent shall not be unreasonably withheld or delayed. AMG agrees to make
any modifications or corrections to the materials as reasonably specified
by GM.
7.3 If at any time the Current Vehicle or the related advertising, marketing or
other materials do not substantially equal or exceed the standard of
quality as the samples submitted for GM's prior approval, GM shall have the
right to require AMG to discontinue the use of the Hummer Trademarks unless
modification reasonably satisfactory to GM is made within a time frame from
notice of disapproval that is also reasonably satisfactory to the GM.
7.4 AMG agrees that the Current Vehicle will be manufactured, promoted,
distributed and sold in accordance with all applicable federal, state and
local laws, regulations and rules in the applicable countries and AMG
agrees to bear all expenses and costs which may be necessary to comply with
such laws, regulations and rules. AMG further agrees that its conduct
shall in no manner reflect adversely upon the good name and reputation of
GM or the Hummer Trademarks.
VIII.
SUBLICENSE AND NON-ASSIGNMENT
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8.1 This Agreement and any rights herein granted thereby are personal to AMG
and may not be sublicensed or assigned without the prior written consent of
GM.
IX.
TERMINATION
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9.1 This Agreement shall automatically terminate without any notice being
necessary upon the expiration or termination of the New Vehicle Assembly
Agreement. Upon termination of this Agreement pursuant to this paragraph
9.1, GM will consider, at AMG's request, granting AMG a license to continue
to use the Hummer Trademarks on the Current Vehicle; provided, however,
that the granting of any such license shall be at GM's sole discretion.
9.2 This Agreement shall automatically terminate without any notice being
necessary if AMG files a petition in bankruptcy or is adjudicated a
bankrupt or if a petition in bankruptcy is filed against AMG and is not
dismissed within thirty (30) days or if it becomes insolvent, or makes an
assignment for the benefit of its creditors or an arrangement pursuant to
any bankruptcy law, or if a receiver is appointed for it or its business.
In the event that this Agreement is so terminated, AMG, its receivers,
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representatives, trustees, agents, administrators, successors, or assigns
shall have no right to sell, exploit or in any way deal with the Hummer
Trademarks or use the Hummer Trademarks in any way in connection with the
Current Vehicle or any carton, container, packing or wrapping material,
advertising, promotional or display material pertaining thereto.
9.3 If AMG materially breaches any of the conditions listed in this Agreement,
GM shall have the right to terminate this Agreement upon thirty (30) days
written notice, provided that AMG fails to cure such breach within such
thirty (30) day period; provided, however, that in the event a specific
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breach is of a type which can not reasonably be cured within such thirty
(30) day period, GM's rights of termination under this Section 9.4 shall be
suspended as long as AMG has begun to cure such breach within the thirty
(30) day period and in GM's sole discretion, continues to proceed
diligently and in good faith to complete such cure. The parties agree and
understand that insofar as a breach is of a type which is incapable of
cure, in whole or in part, the term "cure" in this provision shall be
interpreted to mean providing sufficient assurances and instituting
sufficient preventative procedures to ensure that breaches of that type
will not occur in the future.
9.4 Upon the termination of this Agreement, AMG shall immediately cease all use
of the Hummer Trademarks; provided, however, that AMG shall have the right
to use the Hummer Trademarks in connection with its completion of the
manufacture, distribution and sale of Current Vehicles for which bone fide
orders have been received by AMG as of the termination of this Agreement
and the use, distribution and sale of all raw materials, work-in-process,
and finished goods inventory of Current Vehicles bearing the Hummer
Trademarks existing as of the termination of this Agreement; provided,
however, that the distribution and sale of any such vehicles shall be
distributed and sold in conjunction with GM through the sales and marketing
network then utilized by GM for the distribution and sale of Hummer branded
vehicles.
9.5 Paragraphs 1.7, 3.3, 5.5, 6.1, and 9.4 shall survive the termination of
this Agreement. Therefore, upon termination of this Agreement, (i) AMG
shall have the right to continue to use the Current Vehicle Design as set
forth in paragraph 1.7 (including but not limited to the uses contemplated
in Section 1.7(b) above) in connection with its manufacture, distribution,
promotion and sale of the Current Vehicle until such time as AMG (a)
discontinues use of the Current Vehicle Design with the intent not to
resume its use, or (b) discontinues use of the Current Vehicle Design in
connection with the manufacture and sale of the Current Vehicle and has no
intention of resuming such use within twelve (12) months from the date of
such discontinuance or fails to resume use within such twelve (12) month
period, (ii) pursuant to paragraph 3.3 above, AMG shall not attempt to
register the Hummer Trademarks alone or as part of its own trademarks, nor
shall AMG use or attempt to register any marks confusingly similar to the
Hummer Trademarks, except that AMG shall retain the right to own, use,
transfer, license or register its HUMVEE Trademarks, trademarks and service
marks including but not limited to the registered markslisted on the
attached Schedule B, subject to the HUMVEE Trademark Agreement and Royalty
Sharing Agreement, and (iii) pursuant to paragraph 6.1, AMG shall continue
to be responsible for indemnifying GM in connection with AMG's continuing
use of the Current Vehicle Design. Notwithstanding anything to the contrary
herein contained, AMG shall also have the right to transfer or assign the
license grant of paragraph 1.7; provided, however, that such transfer or
assignment shall only be in connection with the sale or transfer of
substantially all of the stock or substantially all of the assets of AMG
(but in no case shall such rights be assigned in any proceeding in
bankruptcy or general assignment for the benefit of creditors or to a
competitor of GM in the manufacture and sale of motor vehicles).
9.6 Termination of this Agreement under the provisions of this Paragraph IX
shall be without prejudice to any rights which GM may otherwise have
against AMG or which AMG may otherwise have against GM.
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X.
GOVERNING LAW
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10.1 This Agreement shall be governed by and construed in accordance with the
laws of the State of Michigan. This Agreement cancels and supersedes all
prior written or oral agreements between the parties with respect to the
matters referred to herein. This Agreement may be amended or modified only
by a writing signed by both parties.
XI.
SEVERABILITY
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11.1 The provisions of this Agreement shall be severable, and if any provision
hereunder shall be held or declared illegal, invalid, or unenforceable,
such shall not effect any other provision hereof or the interpretation,
effect, or enforceability of this Agreement.
XII.
CONFIDENTIALITY
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12.1 AMG and GM shall not disclose or otherwise communicate to any third party
(other than the parties' respective employees, agents, and participants
with a specific "need to know" and who shall be bound by the provisions of
this paragraph) any information regarding either the terms and provisions
of this Agreement, or any confidential materials, trade secrets, and/or
proprietary information delivered pursuant to the terms and provisions of
this Agreement to such party by the other party if in writing and clearly
marked with a "Confidential" or similar legend; or if orally, is identified
as proprietary at the time of such oral disclosure and is confirmed in
writing to the receiving party to be proprietary within thirty (30) days
after such oral disclosure, except: (a) to the extent necessary to comply
with a specific applicable law or the valid final order of a court of
competent jurisdiction, in which case the party making the disclosure or
communication shall notify the other party in writing and shall seek
confidential and proprietary treatment of the information; (b) as part of
normal, reporting or review procedure to the respective parties and of
directors, parent company, auditors and attorneys provided, however, that
such persons or entities agree to be bound by the provisions of this
paragraph; (c) to enforce its rights legally under this Agreement in a
court of competent jurisdiction; or (d) such information which is or
becomes part of the public domain through disclosure other than by AMG or
by GM.
XIII.
NOTICES
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13.1 Any notices or other communication required or permitted under this
Agreement shall be in writing, and be mailed to:
If to GM: Xxxx XxXxxxxxxx
HUMMER Marketing
000 Xxxxxxxxxxx Xxxxxx
XX: 482-A32-B98
Xxxxxxx, Xxxxxxxx 00000
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with copy to: Xxxxxxx X. Xxxxxxxxx
General Motors Legal Staff
Intellectual Property Group
Xxx Xxxxxx Xxx Xxxx, Xxxxx 000
M/C 000-000-000
0000 Xxxx Xxxxx Xxxx.
Xxxxxxx, XX 00000
If to AMG: Xxxx X. Xxxxxxx, Chief Financial Officer
AM General Corporation
000 Xxxxx Xxxxx Xxxxxx
Xxxxx Xxxx, XX 00000
with a copy to: Xxxxxx X. Xxxxxxxxx, Vice President - Law
The Renco Group, Inc.
00 Xxxxxxxxxxx Xxxxx
Xxx Xxxx, Xxx Xxxx 00000
The parties hereto indicate their understanding of and full agreement with all
the foregoing by its duly authorized representatives' signature below.
GENERAL MOTORS CORPORATION AM GENERAL CORPORATION
By: ___________________________ By: _____________________________
Title: ________________________ Title: __________________________
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