TRADEMARK LICENSE AGREEMENT
Exhibit 10.2
EXHIBIT F TO ASSET PURCHASE AGREEMENT
This Trademark License Agreement (the “Agreement”) is entered into as of September 28,
2007 (the “Effective Date”), by and between TeleTech Holdings, Inc., a Delaware corporation
(“Licensor”), and Aspen Marketing Services, Inc., a Delaware corporation,
(“Licensee”), (collectively, the “Parties”). Capitalized terms used herein but not defined
herein shall have the meanings assigned to such terms in the Software License Agreement (as defined
below).
RECITALS
WHEREAS, the Parties hereto executed a Software and Intellectual Property License Agreement
dated September 28, 2007 (the “Software License Agreement”) whereby they have agreed to
enter into this Agreement;
WHEREAS, Licensor owns the trademarks set forth in Section 1 of Schedule 1 attached hereto
(the “Licensed Marks”); and
WHEREAS, Licensee desires to obtain from Licensor a license to use the Licensed Marks pursuant
to the terms and conditions set forth herein, including Schedule 1 attached hereto.
NOW, THEREFORE, for and in consideration of the mutual covenants and agreements set forth
herein, and other good and valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, the Parties covenant and agree as follows:
1. LICENSE
Subject to the restrictions, terms and conditions of this Agreement, Licensor hereby grants to
Licensee:
(a) an exclusive, non-assignable, revocable, nontransferable, limited license to use the
Licensed Marks solely in connection with the Software and the provision of the Services in the
Territory for the Automotive Field of Use; and
(b) a non-exclusive, non-assignable, revocable, nontransferable, limited license to use the
Licensed Marks in connection with the Software and the provision of the Services in the Territory
for the Non-Automotive Field of Use.
Notwithstanding the foregoing, Licensor retains the rights to use the Licensed Marks (i)
outside the Territory, and (ii) in the Territory with respect to any field of use other than the
Automotive Field of Use.
Licensee shall have no right to sublicense the Licensed Marks, or to grant sublicenses under
this Agreement. In no event shall Licensee use the Licensed Marks for any reason beyond the terms
provided in this Agreement without first obtaining the prior written consent of Licensor. Licensor
retains all other rights not specifically granted herein.
2. TRADEMARK RIGHTS AND OWNERSHIP
Licensee agrees and acknowledges that:
(a) Licensor is the exclusive owner of all right, title and interest in and to the Licensed
Marks including any goodwill associated therewith, subject to the license granted to Licensee
hereunder. To the extent any right, title
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or interest in the Licensed Marks become vested in
Licensee by operation of law or otherwise, Licensee hereby assigns irrevocably any such right,
title or interest to Licensor;
(b) except as provided in this Agreement, Licensee acquires no right, title or interest in or
to any of the Licensed Marks;
(c) any use of the Licensed Marks by the Licensee and the goodwill arising from such use shall
inure to the benefit of the Licensor; and
(d) the Licensed Marks have not yet been registered in the Territory.
3. RESTRICTIONS ON USE
Licensee hereby agrees that it will:
(a) not contest or assist another in contesting the validity, ownership or enforceability of
any of the Licensed Marks or do anything that may disparage the Licensed Marks or dilute the value
of the goodwill attached to any of the Licensed Marks;
(b) at all times use its best efforts to preserve the value, reputation and validity of the
Licensed Marks;
(c) not allow any third party to use the Licensed Marks;
(d) cooperate fully and in good faith with Licensor for the purpose of securing or protecting
Licensor’s rights in and to the Licensed Marks, including, without limiting the generality of the
foregoing, the execution of documents or the provision of labels, advertising or other materials to
Licensor at Licensor’s request; and
(e) use the Licensed Marks only in connection with the Software and the Services.
4. WARRANTIES
(a) Licensor hereby represents and warrants, that Licensor exclusively owns and possess all
right, title and interest to the Licensed Marks, free and clear of any lien, license or other
restriction or limitation. To Seller’s Knowledge use of the Licensed Marks does not and will not
infringe any third-party’s Intellectual Property and that Licensor has the right to grant the
license granted to Licensee hereunder.
5. QUALITY CONTROL, MAINTENANCE, ENFORCEMENT
(a) Quality Control, Maintenance.
(i) All use of the Licensed Marks by Licensee shall be in accordance with Licensor’s
reasonable policies or guidelines regarding advertising and trademark usage as established
from time to time and provided to Licensee in writing. Licensor shall provide policies or
guidelines to Licensee on use of the Licensed Marks within thirty (30) days from the
execution of the Agreement.
(ii) Licensor hereby covenants to Licensee that it will apply for registrations for the
Licensed Marks in the Territory, and maintain current and future registrations that support
the Licensed Marks, including filing any renewals or other documentation as may be
necessary.
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(iii) Any proposed use of the Trademarks by Licensee shall be submitted to Licensor
for approval at least twenty (20) days prior to the use of the Licensed Marks by Licensee,
such approval not to be unreasonably withheld.
(iv) Licensee shall provide to Licensor, no less than quarterly or as reasonably
requested from time to time by Licensor, two (2) copies of all advertisements, promotional
literature, and other marketing materials that use or contain the Licensed Marks.
(v) Licensor shall have the right to inspect the premises of License from time to time
during normal business hours and upon reasonable notice, in order to observe the performance
of the Services and the use of the Software to ensure compliance with the use of the
Licensed Marks pursuant to this Agreement.
(b) Enforcement by Licensor.
(i) Licensor shall have the right, in its sole discretion, to initiate, control, and
settle a suit or other legal proceedings in its name or, if appropriate, in the names of
Licensee and Licensor, to enforce and defend the Licensed Marks in the Territory or outside
of the Territory if Licensor in its sole discretion determines that any potential or actual
infringement substantially impacts its rights to the Licensed Marks. Licensor shall
promptly notify Licensee in writing of any potential or actual infringement or unlawful use
of the Licensed Marks that Licensor becomes aware of in the Territory. Likewise, Licensee
shall promptly notify Licensor in writing of any potential or actual infringement or
unlawful use of the Licensed Marks that Licensee becomes aware of in the Territory.
(ii) Licensor will pay the costs and fees of any suit or proceeding brought by Licensor
to enforce and defend the Licensed Marks and any monies recovered by suit or settlement or
otherwise from such suit or proceeding will be the sole property of Licensor. Licensor
shall keep Licensee informed as to the progress of any such suit or proceeding, and Licensee
shall have the right to participate in any such suit or proceeding, at Licensee’s expense.
(c) Enforcement by Licensee.
(i) Within 30 days of Licensor providing written notice of potential or actual
infringement or unlawful use to Licensee, or within 20 days from receiving written notice of
potential or actual infringement or unlawful use from Licensee, Licensor shall provide
Licensee with a written statement of whether it intends to invoke its rights under Section
5(b) of this Agreement.
(ii) If Licensor elects not to invoke its rights, Licensee shall have the right, in its
sole discretion, to initiate and control a suit or other legal proceeding in its name or, if
appropriate, in the names of Licensee and Licensor, to enforce and defend the Licensed Marks
in the Territory or outside of the Territory, if Licensee in its sole discretion determines
that any potential or actual infringement substantially impacts its rights to the Licensed
Marks. Any settlement proposal must be consented to in writing by Licensor, such consent
not to be withheld unreasonably. Licensee will cover the costs of any suit or proceeding
brought by Licensee to enforce and defend the Licensed Marks, and any monies recovered by
suit or settlement or otherwise shall be the sole property of the Licensee. Licensee shall
keep Licensor informed of the status of any suit or proceeding brought by Licensee relating
to the Licensed Marks.
6. INDEMNITY
Licensee agrees to defend, indemnify and hold Licensor, its employees, agents, officers,
directors, managers, shareholder, members or representatives or any one of them, or any affiliate
of Licensor or its respective
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officers, managers, directors, employees, shareholders, members,
agents or representatives or any one of them, harmless from and against any and all claims,
actions, demands, proceedings, suits, awards, judgments, costs (including reasonable attorney
fees), expenses and liabilities incurred in connection with, arising from, or in any way connected
with: (i) any breach by Licensee of this Agreement; (ii) the marketing, sale or performance of the
Services by Licensee; or (iii) the use of the Licensed Marks by Licensee.
Licensor agrees to defend, indemnify and hold Licensee, its employees, agents, officers,
directors, managers, shareholder, members or representatives or any one of them, or any affiliate
of Licensee or its respective officers, managers, directors, employees, shareholders, members,
agents or representatives or any one of them, harmless from and against any and all claims,
actions, demands, proceedings, suits, awards, judgments, costs (including reasonable attorney
fees), expenses and liabilities incurred in connection with, arising from, or in any way connected
with any breach by Licensor of this Agreement.
7. TERM AND TERMINATION
This Agreement shall commence on the Effective Date and may be terminated by Licensor if: (a)
Licensee breaches its obligations hereunder, and such breach is not remedied within 30 days
following written notice to Licensee of such breach; or (b) Licensee becomes insolvent, files a
petition for bankruptcy or an involuntary petition in bankruptcy is filed against Licensee and it
is not dismissed within thirty (30) days of such filing; or (c) Licensee makes an assignment for
the benefit of its creditors, or is subject to the appointment of a trustee, receiver or other
custodian for its property. This Agreement shall also terminate automatically if the Software
License Agreement is terminated for any reason. Upon termination of this Agreement, Licensee shall
immediately cease to use the Licensed Marks and shall return to Licensor or destroy, at Licensor’s
option, copies of all materials containing the Licensed Marks in Licensee’s direct or indirect
possession or control, and provide written certification of same by one of Licensee’s officers.
8. GENERAL
a) Headings/Counterparts. Section headings are for convenience only. This Agreement may be
executed in one or more counterparts, each of which shall for all purposes are deemed to be an
original and all of which shall constitute the same instrument.
b) Consent. Wherever consent or other approval is required, such consent shall not be
unreasonably withheld or delayed; provided, however, it shall not be considered unreasonable for
Licensor to withhold its consent if consent could serve to jeopardize the confidentiality of and/or
Licensor’s interests in TeleTech IP.
c) Assignment. Licensee shall not assign this Agreement without the prior written consent of
Licensor; provided however that no consent shall be required in the event of an assignment of this
Agreement by Licensee (i) to an affiliate of Licensee, or (ii) in connection with a merger,
reorganization or sale of substantially all of the assets of Licensee.
d) Force Majeure. Except for obligations of confidentiality and payment, neither Party shall
be liable for any delay or failure in performance if caused by any factor beyond its reasonable
control, and performance shall be deferred until such cause of delay is removed.
e) No Agency. Nothing herein shall make either Party the agent of the other for any purpose
whatsoever. The Parties are independent of each other and this Agreement does not create the
relationship of partnership, principal-agent, employer-employee or joint venture between Licensee
and Licensor.
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f) Notices. Notices and other communications required hereunder must be in writing,
delivered by hand delivery or nationally recognized overnight courier or certified or registered
mail with postage prepaid and addressed to the following addresses:
TeleTech Holdings, Inc.
0000 X. Xxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Attention: Chief Financial Officer
Fax:
with copies to:
TeleTech Holdings, Inc.
|
TeleTech Holdings, Inc. | |
0000 X. Xxxxxx Xxxxxx
|
0000 X. Xxxxxx Xxxxxx | |
Xxxxxxxxx, XX 00000
|
Xxxxxxxxx, XX 00000 | |
Attention: General Counsel
|
Attention: Assistant General Counsel of Intellectual Property | |
Fax: 000-000-0000
|
Fax: 000-000-0000 |
and:
Aspen Marketing Services, Inc.
0000 Xxxxx Xxxxxx
Xxxx Xxxxxxx, XX 00000
Attention: General Counsel
Notices will be deemed given and delivery will be deemed made, when delivered, if hand
delivered, and on the next business day after deposit if sent by nationally recognized overnight
courier or 48 hours after being deposited in the mail, if certified or registered mail. Notices may
only be sent in this manner unless otherwise agreed to by the Parties.
g) Waiver. Any failure or delay by either Party in exercising any right or remedy shall not
be deemed a waiver of any further, prior, or future right or remedy hereunder.
h) Severability. Any provision of this Agreement that is prohibited or unenforceable in any
jurisdiction will, as to such jurisdiction, be ineffective to the extent of such prohibition or
unenforceability without invalidating the remaining portions hereof or affecting the validity or
enforceability of such provision in any other jurisdiction. The invalidity or unenforceability of
any provision shall not constitute a failure of consideration hereunder.
i) Entire Agreement/Modification. This Agreement and its Exhibits together constitute the
entire agreement between Licensor and Licensee, and supersede all prior agreements and
understandings, whether oral or written, relating to the subject matter hereof. No other agreements
shall be effective to change, modify, or terminate this Agreement in whole or in part unless in
writing specifically referencing this Agreement and duly signed by authorized representatives of
both Parties. No terms, provisions or conditions of any purchase order, invoice or other business
form or written authorization used by either Party will have any effect on the rights, duties or
obligations of the Parties under, or otherwise modify, this Agreement, regardless of any failure of
either Party to object to such terms, provisions or conditions. In case of any conflict between
this Agreement and (i) any Exhibit or other attachment hereto or (ii) that certain Asset Purchase Agreement dated as ___, 2007 by
and among the Parties and Newgen Results Corporation, Xxxxxxxxx.xxx, Inc. and Newgen Results
Canada, Ltd., the provisions of this Agreement shall control.
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j) Counterparts, Facsimile Signatures. This Agreement may be executed in counterparts, each
of which shall be deemed an original, but which together shall constitute one and the same
instrument. If this Agreement is executed in counterparts, no signatory hereto shall be bound
until both the Parties named below have duly executed or caused to be duly executed a counterpart
of this Agreement. A signature on a copy of this Agreement received by either Party by facsimile
is binding upon the other Party as an original. Both Parties agree that a photocopy of such
facsimile may also be treated by the Parties as a duplicate original.
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IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed as of the Effective
Date by their duly authorized representatives, and each represents and warrants to the other that
it is legally free to enter in to this Agreement.
ASPEN MARKETING SERVICES, INC.
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TELETECH HOLDINGS, INC. | |||||
Signed By: |
Signed By: |
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Printed Name: |
Printed Name: |
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Title: |
Title: |
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Date: |
Date: |
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SCHEDULE 1
1. Licensed Marks
Trademarks and service marks under United States Trademark Application Serial No. 77/263,087 for
the “IDENTIFY!” xxxx, and Serial No. 777/263,226 for the “IDENTIFY! PLUS” xxxx.
2. Licensed Services
Licensee may use the Licensed Marks solely in connection with the use of the Software as provided
in the Software License Agreement.
3. Territory
Licensee may use the Licensed Marks solely in the Territory as in the Software License Agreement.
4. Fields of Use
Licensee may use the Licensed Marks solely in the Automotive Field of Use and the Non-Automotive
Field of Use as defined in the Software License Agreement.
6574\70\1079171
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