COLLATERAL ASSIGNMENT OF TRADEMARKS
Exhibit 10.5
XXXXX DAY DRAFT AS OF SEPTEMBER 2, 2020
COLLATERAL ASSIGNMENT OF TRADEMARKS
COLLATERAL ASSIGNMENT OF TRADEMARKS, dated as of September [3], 2020 (“Agreement”), between Purple Innovation, LLC, a Delaware limited liability company (together with its successors and assigns, the “Assignor”), and KeyBank National Association, as administrative agent (together with its successors and assigns in such capacity, the “Administrative Agent”), for the benefit of the Secured Creditors (as defined in the Security Agreement referred to below):
RECITALS:
(1) This Agreement is made pursuant to the Credit Agreement, dated as of September [3], 2020 (as amended, restated, supplemented or otherwise modified from time to time, the “Credit Agreement”), among the Assignor (together with its successors and assigns, the “Borrower”), Purple Innovation, Inc., a Delaware corporation (“Holdings”), the lenders party thereto (the “Lenders”), and the Administrative Agent.
(2) In connection with the Credit Agreement, the Assignor is a party to a Pledge and Security Agreement, dated as of September [3], 2020 (as amended, restated, supplemented or otherwise modified from time to time, the “Security Agreement”), among the Assignor, Holdings, the other Grantors party thereto and the Administrative Agent, pursuant to which the Assignor has granted to the Administrative Agent, for the benefit of the Secured Creditors, a continuing security interest in, assignment of and lien on substantially all of its assets, whether now owned or existing or hereafter acquired or arising.
NOW, THEREFORE, in consideration of the foregoing, the mutual covenants contained herein and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Assignor hereby covenants and agrees with the Administrative Agent and the other Secured Creditors as follows:
Section 1. Defined Terms. Terms used herein without definition shall have the respective meanings ascribed thereto in the Security Agreement.
Section 2. Assignment and Grant of Security Interest. As security for the prompt payment and performance of the Secured Obligations, the Assignor hereby assigns, transfers, conveys and grants to the Administrative Agent, for the benefit of the Secured Creditors, a security interest in, a general lien upon and/or a right of set-off against (whether now owned or hereafter acquired by the Assignor and whether acquired in the United States or elsewhere in the world) all right, title and interest of the Assignor in and to the following, whether now existing or hereafter acquired:
(i) all trademarks, trade names and service marks registered with the United States Patent and Trademark Office (including, without limitation, those listed on Schedule A to this Agreement);
(ii) all applications for the registration of trademarks, trade names and service marks filed with the United States Patent and Trademark Office (including, without limitation, those listed on Schedule A to this Agreement);
(iii) all trademarks, trade names and service marks registered with any office, agency or other Governmental Authority of any State, the District of Columbia or any possession or territory of the United States;
(iv) all trademarks, trade names and service marks registered with any office, agency or other Governmental Authority of any other country or any province, department or other governmental subdivision thereof;
(v) all registrations and recordings with respect to any of the foregoing;
(vi) all reissues, extensions and renewals of any of the foregoing;
(vii) all corporate names, business names, trade styles, logos, other source or business identifiers; all information, customer lists, identification of supplier, data, plans, blueprints, specifications, designs, drawings, recorded knowledge, surveys, engineering reports, test reports, manuals, materials standards, processing standards, performance standards, catalogs, computer and automatic machinery software and programs, and the like pertaining to operations by the Assignor in, on or about any of its plants or warehouses; all field repair data, sales data and other information relating to sales or service of products now or hereafter manufactured on or about any of its plants; and all accounting information pertaining to operations in, on or about any of its plants and all media in which or on which all of the information or knowledge or data or records relating to its plants and warehouses may be recorded or stored and all computer programs used for the compilation or printout of such information, knowledge, records or data, and the Administrative Agent shall keep all such information, knowledge, records or data strictly confidential in accordance with the Credit Agreement;
(viii) all licenses and other agreements relating in whole or in part to any of the foregoing, including all rights to payments in respect thereof;
(ix) all rights to xxx for past, present or future infringements of any of the foregoing;
(x) all goodwill related to any of the foregoing;
(xi) to the extent not included above, all general intangibles (as such term is defined in the UCC) of the Assignor related to the foregoing; and
(xii) all proceeds of any and all of the foregoing.
Section 3. Reference to Separate Security Agreement. This Agreement has been entered into by the Assignor and the Administrative Agent primarily for recording purposes as contemplated by the Security Agreement. In the event of any inconsistency between any of the terms or provisions hereof and the terms and provisions of such Security Agreement, the terms and provisions of such Security Agreement shall govern.
Section 4. Governing Law. This Agreement and the rights of the parties hereunder shall be construed and interpreted in accordance with the laws of the State of New York, without application of the rules regarding conflicts of laws.
Section 5. Miscellaneous. Delivery of an executed signature page to this Agreement by facsimile or other electronic transmission shall be effective as delivery of a manually executed copy of this Agreement.
[Signature Page Follows.]
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed and delivered by their duly authorized officers as of the date first set forth above.
| PURPLE INNOVATION, LLC, | ||||
| as Assignor | ||||
| By: | ||||
| Name: | ||||
| Title: | ||||
| Accepted and acknowledged by: | ||||
| KEYBANK NATIONAL ASSOCIATION, as Administrative Agent | ||||
| By: | ||||
| Name: | ||||
| Title: | ||||
[Signature Page to Collateral Assignment of Trademarks]
Schedule A
to Collateral Assignment of Trademarks
| CREDIT PARTY |
TITLE | DATE FILED |
COUNTRY | STATUS | APP. NO. | REG. NO. |
| Purple Innovation, LLC | WONDERGEL | Apr 21, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 85/301,000 | 0000000 |
| Purple Innovation, LLC | EQUAGEL | Apr 21, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 85/301,000 | 0000000 |
| Purple Innovation, LLC | EQUAPRESSURE | Apr 23, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 85/302,000 | 0000000 |
| Purple Innovation, LLC | SOMNIGEL | May 23, 0000 | Xxxxxx Xxxxxx of America | Registered | 85941228 | 4633324 |
| Purple Innovation, LLC | PURPLE | Jun 23, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 86/671,000 | 0000000 |
| Purple Innovation, LLC | XXXXXX | Xxx 00, 0000 | Xxxxxxxxx | Pending | 1290946 | |
| Purple Innovation, LLC | PURPLE | Dec 22, 2015 | Canada | Registered | 1,760,844 | TMA1012279 |
| Purple Innovation, LLC | PURPLE | Dec 22, 2015 | European Union | Pending | 1290946 | |
| Purple Innovation, LLC | PURPLE | Dec 22, 2015 | International Bureau (WIPO) | Registered | 1290946 | 1290946 |
| Purple Innovation, LLC | PURPLE | Dec 22, 2015 | New Zealand | Pending | 1290946 | |
| Purple Innovation, LLC | NO PRESSURE | Jun 1, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 87/057,091 | 5277596 |
| Purple Innovation, LLC | HYPER-ELASTIC POLYMER | Jun 1, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 87/057,122 | 5224883 |
| Purple Innovation, LLC | NO PRESSURE | Jun 14, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 87/070,000 | 0000000 |
| Purple Innovation, LLC | HYPER-ELASTIC POLYMER | Jun 14, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 87/070,000 | 0000000 |
| Purple Innovation, LLC | [COLOR] PURPLE | Oct 6, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 87/195,000 | 0000000 |
| CREDIT PARTY |
TITLE | DATE FILED |
COUNTRY | STATUS | APP. NO. | REG. NO. |
| Purple Innovation, LLC | [COLOR] PURPLE | Oct 6, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 87/195,000 | 0000000 |
| Purple Innovation, LLC | NO PRESSURE (Classes 20, 24) | Nov 4, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 87/226,000 | 0000000 |
| Purple Innovation, LLC | PURPLE (Class 20, 24) | Mar 17, 2017 | European Union | Registered | 016479933 | 016479933 |
| Purple Innovation, LLC | XXXXXX | Xxx 00, 0000 | Xxxxxxxx xx Xxxxx | Registered | 00-0000-0000000 | 401490464 |
| Purple Innovation, LLC | NO PRESSURE (Classes 20, 24) | May 1, 0000 | Xxxxxxxxx | Registered | 1860226 | 1357042 |
| Purple Innovation, LLC | PURPLE (Class 20, 24) | May 1, 2017 | Canada | Registered | 1,835,184 | TMA1037437 |
| Purple Innovation, LLC | NO PRESSURE (Classes 20, 24) | May 1, 2017 | Canada | Registered | 1,835,187 | TMA1060001 |
| Purple Innovation, LLC | NO PRESSURE | May 1, 2017 | European Union | Pending | 87070760 | 1357042 |
| Purple Innovation, LLC | NO PRESSURE (Classes 20, 24) | May 1, 2017 | European Union | Registered | 1357042 | 1357042 |
| Purple Innovation, LLC | NO PRESSURE (Classes 20, 24) | May 1, 2017 | International Bureau (WIPO) | Registered | 1357042 | 1357042 |
| Purple Innovation, LLC | XX XXXXXXXX (Xxxxxxx 00, 00) | Xxx 0, 0000 | Xxxxxxxx of Korea | Pending | 1357042 | |
| Purple Innovation, LLC | NO PRESSURE (Classes 20, 24) | May 1, 2017 | New Zealand | Registered | 1071903 | 1357042 |
| Purple Innovation, LLC | PURPLE (Class 24) | May 11, 2017 | China | Pending | 24070950 | |
| Purple Innovation, LLC | PURPLE (Class 20) | May 11, 2017 | China | Pending | 24070950 | |
| Purple Innovation, LLC | HYPER-ELASTIC POLYMER | Jun 19, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 87/495,000 | 0000000 |
| Purple Innovation, LLC | NO PRESSURE | Jun 28, 0000 | Xxxxx Xxxxxx | Registered | 2017/17902 | 201717901 |
| Purple Innovation, LLC | NO PRESSURE | Jun 28, 0000 | Xxxxx Xxxxxx | Registered | 2017/17901-2 | 201717902 |
| CREDIT PARTY |
TITLE | DATE FILED |
COUNTRY | STATUS | APP. NO. | REG. NO. |
| Purple Innovation, LLC | HYPER-ELASTIC POLYMER | Jun 29, 0000 | Xxxxx Xxxxxx | Registered | 2017/18159 | 201718159 |
| Purple Innovation, LLC | HYPER-ELASTIC POLYMER | Jun 29, 0000 | Xxxxx Xxxxxx | Registered | 2017/18157 | 201718157 |
| Purple Innovation, LLC | HYPER-ELASTIC POLYMER | Jul 7, 2017 | Canada | Registered | 1,846,000 | 0000000 |
| Purple Innovation, LLC | [COLOR] PURPLE | Aug 17, 0000 | Xxxxx Xxxxxx | Pending | 2017/23808 | |
| Purple Innovation, LLC | [COLOR] PURPLE | Aug 17, 0000 | Xxxxx Xxxxxx | Pending | 2017/23809 | |
| Purple Innovation, LLC | [COLOR] PURPLE | Aug 17, 0000 | Xxxxx Xxxxxx | Pending | 2017/23807 | |
| Purple Innovation, LLC | HYPER-ELASTIC POLYMER | Nov 22, 2017 | China | Pending | 1395439 | |
| Purple Innovation, LLC | HYPER-ELASTIC POLYMER | Nov 22, 2017 | European Union | Pending | 1395349 | |
| Purple Innovation, LLC | HYPER-ELASTIC POLYMER | Nov 22, 2017 | United Kingdom | Pending | 1395349 | |
| Purple Innovation, LLC | HYPER-ELASTIC POLYMER | Nov 22, 2017 | International Bureau (WIPO) | Registered | 1395349 | 1395349 |
| Purple Innovation, LLC | HYPER-ELASTIC POLYMER | Nov 22, 0000 | Xxxxx | Pending | 0000000 | |
| Purple Innovation, LLC | HYPER-ELASTIC POLYMER | Nov 22, 2017 | Australia | Pending | 1395349 | 1395349 |
| Purple Innovation, LLC | purple | Apr 5, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 87/865,000 | 0000000 |
| Purple Innovation, LLC | PURPLE | May 14, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 87/919,000 | 0000000 |
| Purple Innovation, LLC | PURPLE | Jul 6, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 88/028,000 | 0000000 |
| CREDIT PARTY |
TITLE | DATE FILED |
COUNTRY | STATUS | APP. NO. | REG. NO. |
| Purple Innovation, LLC | PURPLE | Jul 6, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 88/028,000 | 0000000 |
| Purple Innovation, LLC | The Purple PowerBase | Aug 27, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 88/093,000 | 0000000 |
| Purple Innovation, LLC | The Purple PowerBase Plus | Aug 27, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Allowed | 88/093,928 | |
| Purple Innovation, LLC | The Purple PowerBase Premier | Aug 27, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Allowed | 88/093,935 | |
| Purple Innovation, LLC | PURPLE GLOVE | Sep 7, 0000 | Xxxxxx Xxxxxx of America | Allowed | 88/109,289 | |
| Purple Innovation, LLC | Purple No Pressure | Sep 12, 0000 | Xxxxx | Registered | 3551020 | |
| Purple Innovation, LLC | PURPLE GLOVE | Sep 18, 2018 | United Kingdom | Registered | 3339583 | 3339583 |
| Purple Innovation, LLC | PURPLE GLOVE | Sep 20, 2018 | Canada | Pending | 1,921,228 | |
| Purple Innovation, LLC | Purple (logo) - Bed Frames | Oct 10, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 88/150,000 | 0000000 |
| Purple Innovation, LLC | PURPLE - Bed Frames | Oct 10, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 88/150,000 | 0000000 |
| Purple Innovation, LLC | Purple (logo) - Bedding | Oct 10, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 88/150,000 | 0000000 |
| Purple Innovation, LLC | PURPLE - Bedding | Oct 10, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Registered | 88/150,000 | 0000000 |
| Purple Innovation, LLC | EIDERTECH | Oct 25, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Pending | 88/169,440 | |
| Purple Innovation, LLC | XXXXXX | Xxx 00, 0000 | Xxxxxxxxx | Pending | DID2019005436 | |
| Purple Innovation, LLC | Purple | Apr 26, 2019 | Australia | Pending | 2005723 |
| CREDIT PARTY |
TITLE | DATE FILED |
COUNTRY | STATUS | APP. NO. | REG. NO. |
| Purple Innovation, LLC | PURPLE LOGO | Apr 26, 2019 | Australia | Pending | 2005690 | |
| Purple Innovation, LLC | Purple | May 2, 2019 | European Union | Registered | 018060266 | 01806266 |
| Purple Innovation, LLC | PURPLE GRID | May 14, 0000 | Xxxxxx Xxxxxx xx Xxxxxxx | Allowed | 88/429,120 | |
| Purple Innovation, LLC | Purple Grid | May 17, 2019 | Canada | Pending | 1,963,613 | |
| Purple Innovation, LLC | HARMONY | Oct 24, 0000 | Xxxxxx Xxxxxx of America | Pending | 88667257 | |
| Purple Innovation, LLC | PURPLE | Oct 25, 0000 | Xxxxxx Xxxxxx of America | Registered | 88668964 | 6083965 |
| Purple Innovation, LLC | FURRPLES | Jan 9, 0000 | Xxxxxx Xxxxxx of America | Allowed | 88752253 | |
| Purple Innovation, LLC | PURPLE PAY | Feb 28, 0000 | Xxxxxx Xxxxxx of America | Pending | 88815224 | |
| Purple Innovation, LLC | HARMONY | Apr 7, 2020 | Canada | Pending | 2,021,260 | |
| Purple Innovation, LLC | soft where you want it, firm where you need it | Apr 23, 0000 | Xxxxxx Xxxxxx of America | Pending | 88884365 | |
| Purple Innovation, LLC | The Purple Mattress | Apr 28, 0000 | Xxxxxx Xxxxxx of America | Pending | 88891245 | |
| Purple Innovation, LLC | PURPLE HYBRID | Apr 28, 0000 | Xxxxxx Xxxxxx of America | Pending | 88891282 | |
| Purple Innovation, LLC | PURPLE + | Apr 29, 0000 | Xxxxxx Xxxxxx of America | Pending | 88892955 | |
| Purple Innovation, LLC | PURPLE PLUS | Apr 29, 0000 | Xxxxxx Xxxxxx of America | Allowed | 88892977 | |
| Purple Innovation, LLC | PURPLE HYBRID PREMIER | Apr 29, 0000 | Xxxxxx Xxxxxx of America | Pending | 88893018 | |
| Purple Innovation, LLC | True Comfort Innovation | May 4, 0000 | Xxxxxx Xxxxxx of America | Pending | 88899486 |
| CREDIT PARTY |
TITLE | DATE FILED |
COUNTRY | STATUS | APP. NO. | REG. NO. |
| Purple Innovation, LLC | Take Comfort | May 4, 0000 | Xxxxxx Xxxxxx of America | Pending | 88899474 | |
| Purple Innovation, LLC | FIND COMFORT | May 4, 0000 | Xxxxxx Xxxxxx of America | Pending | 88899496 | |
| Purple Innovation, LLC | FURPLE | May 4, 0000 | Xxxxxx Xxxxxx of America | Pending | 88899944 | |
| Purple Innovation, LLC | PURPLE PREMIER | May 15, 0000 | Xxxxxx Xxxxxx of America | Pending | 88918462 | |
| Purple Innovation, LLC | SOFTSTRETCH | Jun 17, 0000 | Xxxxxx Xxxxxx of America | Pending | 90006179 | |
| Purple Innovation, LLC | PURPLE PILLOW BOOSTER | Jun 23, 0000 | Xxxxxx Xxxxxx of America | Pending | 90015950 | |
| Purple Innovation, LLC | PURPLE DUVET | Jun 23, 0000 | Xxxxxx Xxxxxx of America | Pending | 90015935 | |
| Purple Innovation, LLC | PURPLE SHEETS | Jun 23, 0000 | Xxxxxx Xxxxxx of America | Pending | 90015883 | |
| Purple Innovation, LLC | Purple SoftStretch Sheets | Jun 23, 0000 | Xxxxxx Xxxxxx of America | Pending | 90015861 | |
| Purple Innovation, LLC | SoftStretch Sheets | Jun 23, 0000 | Xxxxxx Xxxxxx of America | Pending | 90013740 | |
| Purple Innovation, LLC | The Purple Mattress | Jun 24, 2020 | Canada | Pending | 2,036,272 | |
| Purple Innovation, LLC | PURPLE + | Jun 24, 2020 | Canada | Pending | 2,036,294 | |
| Purple Innovation, LLC | PURPLE PLUS | Jun 24, 2020 | Canada | Pending | 2,036,304 | |
| Purple Innovation, LLC | PURPLE HYBRID | Jun 24, 2020 | Canada | Pending | 2,036,283 | |
| Purple Innovation, LLC | PURPLE HYBRID PREMIER | Jun 24, 2020 | Canada | Pending | 2,036,316 | |
| Purple Innovation, LLC | True Comfort Innovation | Jun 24, 2020 | Canada | Pending | 2,036,327 | |
| Purple Innovation, LLC | FIND COMFORT | Jun 24, 2020 | Canada | Pending | 2,036,336 | |
| Purple Innovation, LLC | FURPLE | Jun 24, 2020 | Canada | Pending | 2,036,347 |
| CREDIT PARTY |
TITLE | DATE FILED |
COUNTRY | STATUS | APP. NO. | REG. NO. |
| Purple Innovation, LLC | PURPLE PREMIER | Jun 24, 2020 | Canada | Pending | 2,036,355 | |
| Purple Innovation, LLC | PURPLE PLUSH | Jun 25, 0000 | Xxxxxx Xxxxxx of America | Pending | 90020483 | |
| Purple Innovation, LLC | PURPLE PLUSH PILLOW | Jun 25, 0000 | Xxxxxx Xxxxxx of America | Pending | 90020446 | |
| Purple Innovation, LLC | PURPLE PILLOW | Jun 25, 0000 | Xxxxxx Xxxxxx of America | Pending | 90020407 | |
| Purple Innovation, LLC | Purple Mattress Protector | Jun 25, 0000 | Xxxxxx Xxxxxx of America | Pending | 90020558 | |
| Purple Innovation, LLC | Purple PowerBase | Jun 29, 0000 | Xxxxxx Xxxxxx of America | Pending | 90025731 | |
| Purple Innovation, LLC | PURPLE FOUNDATION | Jun 29, 0000 | Xxxxxx Xxxxxx of America | Pending | 90025744 | |
| Purple Innovation, LLC | PURPLE PLATFORM BED FRAME | Jun 29, 0000 | Xxxxxx Xxxxxx of America | Pending | 90025751 | |
| Purple Innovation, LLC | Dreams On Dreams | Jul 16, 0000 | Xxxxxx Xxxxxx of America | Pending | 90056050 | |
| Purple Innovation, LLC | PRPL | Jul 16, 0000 | Xxxxxx Xxxxxx of America | Pending | 90056068 | |
| Purple Innovation, LLC | PURPLE PLUSH | Jul 17, 2020 | Canada | Pending | 2,040,516 | |
| Purple Innovation, LLC | PURPLE PLUSH PILLOW | Jul 17, 2020 | Canada | Pending | 2,040,519 | |
| Purple Innovation, LLC | PURPLE PILLOW | Jul 17, 2020 | Canada | Pending | 2,040,520 | |
| Purple Innovation, LLC | Purple Mattress Protector | Jul 17, 2020 | Canada | Pending | 2,040,521 | |
| Purple Innovation, LLC | Purple PowerBase | Jul 17, 2020 | Canada | Pending | 2,040,522 | |
| Purple Innovation, LLC | PURPLE FOUNDATION | Jul 17, 2020 | Canada | Pending | 2,040,524 | |
| Purple Innovation, LLC | PURPLE PLATFORM BED FRAME | Jul 17, 2020 | Canada | Pending | 2,040,527 |
