Exhibit 2.3
EXHIBIT D
TO DISTRIBUTION
AGREEMENT
TRADEMARK LICENSE AGREEMENT
This AGREEMENT, entered into this ___ day of ___________, 199_ by and
between PROVIDIAN BANCORP, INC., a Delaware corporation, having offices at 000
Xxxxxxx Xxxxxx, Xxx Xxxxxxxxx, Xxxxxxxxxx (the "LICENSOR") and PROVIDIAN
CORPORATION, a Delaware corporation, having offices at 000 Xxxx Xxxxxx Xxxxxx,
Xxxxxxxxxx, Xxxxxxxx (the "LICENSEE");
WHEREAS, LICENSOR has adopted and is using the words PROVIDIAN, PROVIDIAN
_______________, and a logo Design as service marks, trademarks, trade names
and/or trade dress for _____________________ [describe] throughout the United
States and is the owner of U.S. Trademark Registrations Nos._________________
[fill in] and U.S. Trademark Application Serial Nos. _________ [fill in], copies
of which are attached hereto as Exhibits A and B (hereinafter collectively
referred to as the "SERVICE MARKS"); and
WHEREAS, prior to the date hereof, SPINCO was a wholly owned subsidiary of
COMPANY and, pursuant to the General Intellectual Property Assignment and
Renunciation referred to in the Agreement and Plan of Distribution between
LICENSOR and LICENSEE, dated December 28, 1996 (the "Distribution Agreement"),
COMPANY assigned to SPINCO the SERVICE MARKS;
WHEREAS, LICENSEE is the owner of certain insurance subsidiaries identified
on Exhibit C to this Agreement (the "LICENSEE'S SUBSIDIARIES");
WHEREAS, in accordance with the Distribution Agreement, LICENSEE and
LICENSEE'S SUBSIDIARIES intend to change their names and have agreed to cease
using COMPANY in their names and to cease using said SERVICE MARKS;
WHEREAS, LICENSEE'S SUBSIDIARIES need to obtain regulatory approval to
change their names;
WHEREAS, LICENSEE and LICENSEE'S SUBSIDIARIES are desirous of licensing
said SERVICE MARKS for use in connection with their respective businesses for
the periods set forth herein;
NOW, THEREFORE, in consideration of the mutual covenants of the parties and
other good and valuable consideration, the receipt and sufficiency of which is
hereby acknowledged, the parties hereby agree as follows:
1. LICENSE. LICENSOR grants to LICENSEE and LICENSEE'S SUBSIDIARIES
a license to use the SERVICE MARKS throughout the United States of
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America in connection with the Company Business, as defined in Article VI
of the Distribution Agreement (hereinafter, the "COMPANY BUSINESS").
2. QUALITY OF SERVICES. LICENSOR acknowledges that it has reviewed
LICENSEE'S and LICENSEE'S SUBSIDIARIES services, and the advertising
related thereto, and agrees that they meet LICENSOR'S quality standards.
LICENSEE agrees, and shall cause LICENSEE'S SUBSIDIARIES, to maintain the
quality of the services, and advertising related thereto, substantially at
the current level.
3. INSPECTION. LICENSEE and LICENSEE'S SUBSIDIARIES will permit duly
authorized representatives of LICENSOR to inspect the use of the SERVICE
MARKS by LICENSEE and LICENSEE'S SUBSIDIARIES at their respective offices,
at all reasonable times and on reasonable notice, for the purpose of
ascertaining or determining compliance with Paragraphs 1 and 2 hereof.
4. USE OF SERVICE MARKS. LICENSEE and LICENSEE'S SUBSIDIARIES shall,
at the request of LICENSOR on reasonable notice and to the extent that
LICENSOR has reasonable cause to believe that LICENSEE or LICENSEE'S
SUBSIDIARIES is not complying with its obligations under Paragraphs 1 and 2
hereof, provide LICENSOR with samples of all literature, brochures, signs
and advertising material prepared by LICENSEE or LICENSEE'S SUBSIDIARIES,
provided that LICENSOR shall pay 50% of LICENSEE'S and LICENSEE'S
SUBSIDIARIES' costs in providing such samples. When using the SERVICE MARKS
under this AGREEMENT, LICENSEE and LICENSEE'S SUBSIDIARIES undertake to
comply substantially with all laws pertaining to service marks in force at
any time. This provision includes compliance with marking requirements.
5. EXTENT OF LICENSE. The right granted in Paragraph 1 hereof shall
be nonexclusive and shall not be transferable (except, after notice to
LICENSOR, to successor entities in connection with internal reorganizations
of LICENSEE and LICENSEE'S SUBSIDIARIES, provided that such successor
entities remain direct or indirect wholly owned subsidiaries of Merger
Partner (as defined in the Distribution Agreement)) without LICENSOR'S
prior written consent, the LICENSOR shall have the right to use the SERVICE
MARKS and to license its use to any other designee, subject to Section 8.08
of the Distribution Agreement. Except as stated herein, the license granted
shall not be assignable or transferable in any manner whatsoever, nor shall
the LICENSEE or LICENSEE'S SUBSIDIARIES have the right to grant any
sublicenses, except by prior written consent of LICENSOR.
6. INDEMNITY. LICENSOR assumes no liability to LICENSEE or
LICENSEE'S SUBSIDIARIES or to third parties with respect to the performance
characteristics of the services rendered by LICENSEE or LICENSEE'S
SUBSIDIARIES under the SERVICE MARKS. LICENSEE and LICENSEE'S SUBSIDIARIES
shall
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indemnify LICENSOR against Losses (as defined in the Distribution
Agreement) incurred pursuant to claims of third parties against LICENSOR
arising out of the use of the SERVICE MARKS in connection with the COMPANY
BUSINESS or the provision of services by LICENSEE or LICENSEE'S
SUBSIDIARIES under the SERVICE MARKS, provided that such indemnity shall
not extend to Losses incurred by claims of third parties related to the
validity of LICENSOR'S rights in the SERVICE MARKS. LICENSOR and LICENSEE
further agree that any and all losses incurred by LICENSOR that are subject
to the foregoing indemnification shall be considered "Losses," as defined
in Article VI of the Distribution Agreement, and subject, but not in
addition, to the indemnification provisions set forth therein.
7. TERMINATION. LICENSEE and LICENSEE'S SUBSIDIARIES agree to effect
the change in the name of LICENSEE and LICENSEE'S SUBSIDIARIES as promptly
as reasonably practicable after the date hereof, to use reasonable efforts
to obtain all necessary regulatory approvals to effect such name change,
and to transition, as promptly as reasonably practicable, to usage of a new
name and to cease usage of the COMPANY name and the other SERVICE MARKS.
The license granted herein shall remain in effect only until said
transition is complete, or (i) six months from the date hereof with respect
to LICENSEE and (ii) 18 months from the date hereof with respect to
LICENSEE'S SUBSIDIARIES. Notwithstanding the foregoing, with respect to the
LICENSEE'S SUBSIDIARIES, if, despite reasonable efforts on the part of
LICENSEE to obtain regulatory approval for the name change of the
LICENSEE'S SUBSIDIARIES by the end of the 18-month period, such period may
be extended with the consent of LICENSOR, which consent shall not be
unreasonably withheld. LICENSOR shall also be entitled to terminate this
Agreement if LICENSEE and LICENSEE'S SUBSIDIARIES fail to comply with their
obligations hereunder in all material respects, subject to notice to
LICENSEE from LICENSOR and an opportunity for LICENSOR to cure such failure
within thirty days.
8. OWNERSHIP OF SERVICE MARKS. LICENSEE, LICENSEE'S SUBSIDIARIES and
all parties to this AGREEMENT acknowledge LICENSOR'S exclusive right, title
and interest in and to the SERVICE MARKS, except for the license granted
herein, and any registrations that have issued or may issue thereon, and
will not at any time do or cause to be done any act or thing contesting or
in any way impairing or tending to impair any part of such right, title and
interest. In connection with the use of the SERVICE MARKS, neither LICENSEE
nor LICENSEE'S SUBSIDIARIES nor any other party hereto shall in any manner
represent that he or it has any ownership in the SERVICE MARKS or
registrations thereof, and all parties acknowledge that LICENSEE'S and
LICENSEE'S SUBSIDIARIES use of the SERVICE MARKS shall enure to the benefit
of the LICENSOR. On termination of this AGREEMENT in any manner provided
herein, the LICENSEE and LICENSEE'S SUBSIDIARIES will cease and desist from
all use of the SERVICE MARKS in any way and will destroy all material and
paper upon which the SERVICE MARKS appear, other than for standard record
retention requirements, and furthermore, LICENSEE and LICENSEE'S
SUBSIDIARIES will not at any time adopt or use without LICENSOR'S prior
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written consent, any word or xxxx which is similar to or likely to be
confused with the SERVICE MARKS.
9. The following provisions of the Distribution Agreement are
incorporated herein by reference: Section 10.05 (Governing Laws), Section
10.06 (Notices), Section 10.09 (Counterparts), Section 10.10
(Interpretation), Section 10.11 (Severability), Section 10.12 (References;
Construction); Section 8.06 (Confidentiality).
PROVIDIAN BANCORP, INC.
000 Xxxxxxx Xxxxxx
Xxx Xxxxxxxxx, Xxxxxxxxxx 00000
By: _______________________________ Dated: _____________________________
, Its
PROVIDIAN CORPORATION
000 Xxxx Xxxxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxx 00000
By: _______________________________ Dated: _____________________________
, Its
