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EXHIBIT 10.4
HALLIBURTON COMPANY
TRADEMARK ASSIGNMENT AND LICENSE AGREEMENT
THIS TRADEMARK ASSIGNMENT AND LICENSE Agreement (this "Agreement"),
effective as of April 10, 2001 (the "Effective Date"), is entered into by and
between Halliburton Company, having a principal place of business at 3600
Lincoln Plaza, 000 X. Xxxxx Xx., Xxxxxx, Xxxxx 00000-0000, hereinafter referred
to as "ASSIGNOR," and Dresser, Inc. having a principal place of business at 0000
Xxxxxxxx Xxxx, Xxxxxxxxx, Xxxxx, 00000, hereinafter referred to as "ASSIGNEE."
WHEREAS, ASSIGNOR and its Affiliates have adopted and are using the
xxxx "DRESSER" and "DRESSER and Design" as trademarks and service marks for a
broad range of goods and services in the United States and elsewhere throughout
the world, and has on file with the trademark offices of various countries
pending trademark and service xxxx applications and registrations covering the
above-mentioned Marks, a listing of which is attached hereto as Appendix A
(hereinafter collectively referred to as the "Marks");
WHEREAS, ASSIGNEE is acquiring substantially all of the capital stock
of the Dresser, Inc., pursuant to a certain Amended and Restated Agreement and
Plan of Recapitalization among ASSIGNOR, DEG Acquisitions, LLC and the Seller
named therein dated as of April 10, 2001 (the "Recapitalization Agreement"), and
as a condition to the completion of the transactions contemplated by the
Reorganization Agreement ASSIGNOR and ASSIGNEE are entering into this Agreement
pursuant to which ASSIGNEE will acquire any and all right, title and interest in
and to the Marks together with the goodwill of the business symbolized thereby,
subject to the Existing Licenses (as defined below), the General License (as
defined below) and the Exclusive License (as defined below); and
WHEREAS, ASSIGNOR and ASSIGNEE agree that ASSIGNEE shall not use the
name DRESSER INDUSTRIES, that ASSIGNEE shall be limited in its use of the Marks
in the Upstream Oilfield Business (as defined below) for the period of time set
forth herein, and that covenants of ASSIGNEE set forth below are necessary and
reasonable to ensure that the parties' intentions in these regards are fulfilled
during the term hereof;
NOW, THEREFORE, in consideration of the mutual covenants of the
parties, the execution of the Recapitalization Agreement and other good and
valuable consideration, the receipt and sufficiency of which is hereby
acknowledged by both parties, the parties hereby agree as follows:
ARTICLE 1 -- DEFINITIONS
1.1 Definitions. Whenever used in this Agreement, the following terms
shall have the meaning ascribed to them in this Article 1, whether
plural or singular.
"Affiliate" of a specified entity shall mean an entity that directly,
or indirectly through one or more intermediaries, controls or is
controlled by, or is under common control with, the entity specified.
For the purpose of this definition, "control" means (a) the legal or
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beneficial ownership of: (i) 50% or more of the outstanding voting
stock of a company; or (ii) 50% or more of the equity of a company,
partnership or joint venture; or (b) the power to direct (whether
directly or through one or more intermediaries) the management or
policies of an entity.
"Assignment" shall have the meaning ascribed to such term in Section
2.1.
"Existing Licenses" shall have the meaning ascribed to such term in
Section 8.1.
"Exclusive License" shall have the meaning ascribed to such term in
Section 2.3.
"General License" shall have the meaning ascribed to such term in
Section 2.2.
"Investor Group" shall mean any one or more of First Reserve
Corporation, Odyssey Investment Partners, LLC and each of their
affiliated investment partnerships and portfolio investments.
"Subsidiary" shall mean any entity in which Dresser, Inc. holds any
direct or indirect interest.
"Upstream Oilfield Business" shall mean the upstream oilfield business
of the ASSIGNOR as described in Appendix B hereto.
ARTICLE 2 -- ASSIGNMENT AND LICENSES
2.1 Assignment. ASSIGNOR hereby assigns to ASSIGNEE all right, title
and interest in and to the Marks, together with the goodwill of the
business symbolized thereby, and all rights to damages and profits, due
or accrued, arising out of past infringements of the Marks, and the
right to xxx for and recover the same (the "Assignment"); provided,
however, that ASSIGNEE agrees and acknowledges that the Assignment is
subject to and encumbered by all outstanding license agreements between
ASSIGNOR, its Affiliates and third parties in effect as of the
Effective Date, as more fully set forth in Section 8.1. Subject to the
foregoing, ASSIGNOR will execute such further assurances as may
reasonably be required in order to permit ASSIGNEE to hold and enjoy
the Marks. It is the intention of Assignor to assign hereby to Assignee
all of the trademarks and service marks using the xxxx "DRESSER" and
"DRESSER and Design" in connection with the sale, promotion, design,
manufacture or development of products or services in the United States
and elsewhere throughout the world, that are on file with the trademark
offices of various countries on behalf of ASSIGNOR and its Affiliates.
ASSIGNOR covenants and agrees to execute subsequent assignments or
amendments to this Assignment conveying any additional Marks which
Assignor may own relating to the Dresser name or design which ASSIGNOR
may discover from time to time.
2.2 General License to Marks. ASSIGNEE grants to ASSIGNOR and its
Affiliates as of the date hereof a nonexclusive, irrevocable,
worldwide, royalty-free and nontransferable license to use the Marks
for a transition period of up to three years to ASSIGNOR to effect
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promptly, using commercially reasonable efforts, the liquidation and/or
change the names of those specific entities which are using the Marks
as of the Effective Date other than Dresser, Inc. and its Subsidiaries.
This limited license is not transferable, perpetual, exclusive,
irrevocable, worldwide, and royalty free. All of the license rights
conveyed in this Section 2.2 shall comprise the "General License."
2.3 Exclusive License to "Dresser Industries" Name. Independent from
the General License granted in Section 2.2, ASSIGNEE grants to ASSIGNOR
and its Affiliates as of the date hereof a perpetual, exclusive,
irrevocable, worldwide, royalty-free and nontransferable license to use
the name "DRESSER INDUSTRIES"; provided, however, that neither ASSIGNOR
nor any of its Affiliates shall use or sublicense the "DRESSER
INDUSTRIES" name, directly or indirectly, in connection with the
raising of capital, the sale, promotion, design, manufacture or
development of goods or services or other activity which would create
confusion in the capital markets or with customers of ASSIGNEE and its
Affiliates regarding ASSIGNEE's ownership of the Marks. In addition,
ASSIGNEE grants to ASSIGNOR the limited license to use the "Dresser
Industries, Inc." name for use as a holding company name and not for
use (i) in the sale, promotion, design, manufacture, development or
delivery of any product or service or (ii) in commerce, fundraising or
financing activities. All of the license rights conveyed in this
Section 2.3 shall comprise the "Exclusive License."
ARTICLE 3 -- COVENANTS OF ASSIGNEE
3.1 Covenant Not to Use Marks in Upstream Oilfield Business. For a
period of seven years following the Effective Date, ASSIGNEE covenants
and agrees that it and its Affiliates will not use or license the Marks
directly in connection with the sale, promotion, design, manufacture or
development of goods or services in the Upstream Oilfield Business. The
foregoing prohibition against use and licensing the Marks includes,
without limitation, any contract or agreement by the Assignee or any
Affiliates thereof under which the Assignee or such Affiliate purports
to transfer to a third person, or permit a third person to use, any of
the Marks; provided, however, that after the third anniversary of the
Effective Date, ASSIGNEE may identify its Upstream Oilfield Businesses,
if any, as being a "Dresser Company" (assuming that Dresser, Inc. is
the ASSIGNEE or parent entity of the ASSIGNEE).
3.2 Covenant Not to Use the Marks. For a period of three years
following the Effective Date, no ASSIGNEE or ASSIGNEE Affiliate (for
purposes of clarity, this shall not include affiliates of the Investor
Group, other than Dresser, Inc. and its Subsidiaries) shall, during a
period of time where a direct or indirect parent entity of such
Affiliate uses the Marks, directly or indirectly (whether as owner,
partner, contractor or otherwise), engage in any activity that is
competitive with ASSIGNOR or its Affiliates in the Upstream Oilfield
Business anywhere in the world, whether alone or on behalf of or in
conjunction with any other person, persons, company, partnership or
corporation. The parties hereto agree and acknowledge that this
covenant is ancillary to the Recapitalization Agreement, and is
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reasonably calculated to enforce covenants in the Recapitalization
Agreement and this Agreement.
3.3 Exceptions. Notwithstanding the foregoing provisions of this
Article 3, nothing in this Agreement shall prohibit:
(a) the ownership by the ASSIGNEE or any of its Affiliates
(whether now existing or hereafter acquired or created) of
less than 5% of the outstanding stock of any publicly-traded
corporation engaged in an Upstream Oilfield Business;
(b) the acquisition of the ASSIGNEE or any of its Affiliates by a
third party whose operations involve an Upstream Oilfield
Business;
(c) the acquisition by the ASSIGNEE or any of its Affiliates of a
third party which engages in an Upstream Oilfield Business,
provided that the primary purpose of any such acquisition
referred to in this clause (c) is not the acquisition of such
Upstream Oilfield Businesses, and provided further that such
Upstream Oilfield Business referred to in this clause (c)
either (i), together with the revenues for any prior
acquisition exempted from the provisions of this Article 3 by
this clause (c)(i), accounts for less than U.S. $50,000,000 in
revenues for the last fiscal year of such third party for
which financial statements are available or (ii) is divested
by the ASSIGNEE or its Affiliate within 270 days from the date
it is acquired;
(d) any action of the Investor Group and investments of and other
entities controlled by the Investor Group, individually or in
the aggregate, other than with respect to Dresser, Inc. and
its Subsidiaries;
(e) any commercial relationship (as distinguished from an equity
relationship) where ASSIGNEE sells services or products which
are currently provided by ASSIGNOR or are logical extensions
of such businesses as provided in the last proviso of Appendix
B; or
(f) any joint venture relationship in which (1) the joint venture
does not use any Dresser name, (2) the ASSIGNEE has a minority
equity interest, (3) the services or products provided by the
ASSIGNEE to such joint venture are currently provided,
serviced, sold or manufactured by ASSIGNEE or are logical
extensions of such businesses as provided in the last proviso
of Appendix B and (4) ASSIGNOR has a minority and
non-controlling role in the management of such joint venture.
ARTICLE 4 -- INJUNCTIVE RELIEF AND LIQUIDATED DAMAGES
FOR BREACH OF COVENANTS BY ASSIGNEE
4.1 Injunctive Relief for Breach of Covenants and Terms of Licenses.
ASSIGNOR and ASSIGNEE agree and acknowledge that due to the important
nature of the covenants set forth in Article 3 and the licenses granted
pursuant to Article 2 any violation (in the case of Article 2, an
"ASSIGNOR Breach" and, in the case of Article 3, an "ASSIGNEE Breach")
thereof will result in immediate and irreparable harm to the
non-breaching party. ASSIGNOR and ASSIGNEE recognize that the remedies
of the non-breaching party at law may be inadequate, and that the
non-breaching party shall have the right to injunctive relief in
addition to any other remedy available to it. In the case of an
Assignor Breach or an Assignee Breach, the non-breaching party shall
have the right to a court-ordered injunction,
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as well as any and all other remedies and damages, to compel the
enforcement of the terms stated herein. If court action is taken to
enforce this Agreement, the party prevailing in such action shall be
entitled to reimbursement from the other party for its reasonable
attorneys' fees and court costs.
ARTICLE 5 -- QUALITY OF GOODS AND SERVICES
5.1 Quality Control. ASSIGNOR shall use the Marks only as described in
this Agreement, and only in accordance with the guidance and directions
furnished to ASSIGNOR by ASSIGNEE, or its representatives or agents,
but the quality of the goods and services under the General License and
the quality of the documentation shall always be reasonably
satisfactory to ASSIGNEE or as reasonably specified by it. ASSIGNEE
agrees and acknowledges that the manner in which ASSIGNOR is currently
using the Marks fully meets the quality standards of ASSIGNEE.
ARTICLE 6 -- INSPECTION
6.1 Inspection. ASSIGNOR shall permit an independent accounting firm
selected by ASSIGNEE to inspect, at the expense of ASSIGNEE, the
ASSIGNOR's use of the Marks during normal business hours and with at
least 10 business days notice, for the purpose of ascertaining or
determining compliance with Article 2 hereof. Such inspection shall
occur no more than once annually. It shall be a condition to the
exercise by ASSIGNEE of rights under this Article 6 that the accounting
firm selected shall enter into an agreement with ASSIGNOR reasonably
satisfactory to ASSIGNEE obligating the accounting firm to
confidentiality prior to conducting such inspection. ASSIGNOR shall use
its best efforts to cause its Affiliates to permit inspection by
ASSIGNEE of such Affiliates' use of the Marks on the same terms as
apply to inspection of ASSIGNOR.
ARTICLE 7 -- USE OF MARKS
7.1 Compliance with Laws. When using the Marks under this Agreement,
each party undertakes to comply substantially with all laws pertaining
to service marks and trademarks in force at any time in the United
States and all foreign jurisdictions in which the Marks are used.
7.2 No Sublicensing. The ASSIGNOR and its Affiliates may not sublicense
the Marks to any party.
ARTICLE 8 -- THIRD PARTY LICENSEES
8.1 Assignment Subject to Third Party Licenses. The Assignment, the
General License and the Exclusive License are subject to the rights to
the Marks granted to Dresser-Rand
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Company and Ingersoll-Dresser Pump Company arising in connection with
the divestiture of the Dresser Rand and Ingersoll Dresser Pump joint
ventures in February 2000 and granted to Bredero-Xxxx.
ARTICLE 9 -- DISCLAIMER OF WARRANTIES AND MUTUAL INDEMNITIES
9.1 DISCLAIMER OF WARRANTIES. EXCEPT AS SET FORTH IN THE
RECAPITALIZATION AGREEMENT AND IN SECTION 2.1 HEREOF, ASSIGNOR MAKES NO
REPRESENTATION OR WARRANTY AS TO OWNERSHIP OR TITLE TO THE MARKS, OR AS
TO FREEDOM OF THE MARKS FROM PRE-EXISTING LICENSES, LIENS OR
ENCUMBRANCES, AND EXPRESSLY DISCLAIMS ALL WARRANTIES, WHETHER EXPRESS
OR IMPLIED, WITH RESPECT TO THE MARKS. NEITHER PARTY ASSUMES ANY
LIABILITY TO THE OTHER OR THIRD PARTIES IN CONNECTION WITH THE
PERFORMANCE CHARACTERISTICS OF THE SERVICES OR GOODS RENDERED BY THE
OTHER PARTY.
ARTICLE 10 -- TERMINATION
10.1 Term. Except as otherwise provided herein, this Agreement shall
remain in full force and effect in perpetuity.
10.2 Termination. If ASSIGNOR makes an assignment of assets or business
for the benefit of creditors, or a trustee or receiver is appointed to
conduct its business or affairs or it is adjudged in any legal
proceeding to be either a voluntary or involuntary bankrupt, the
General License shall forthwith cease and terminate without any prior
written notice or legal action by ASSIGNEE.
10.3 Effect of Termination. Notwithstanding anything to the contrary,
the Assignment is irrevocable and shall survive any termination of this
Agreement. Furthermore, notwithstanding anything to the contrary, the
Exclusive License set forth in Section 2.3 is perpetual and
irrevocable, and shall not be terminated for any reason.
ARTICLE 11 -- OWNERSHIP OF MARKS
11.1 ASSIGNEE's Ownership of the Marks. Subject to the Existing
Licenses, ASSIGNOR and all parties to this agreement acknowledge
ASSIGNEE's exclusive right, title in and to the Marks 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 part of such right, title and
interest. In connection with its use of the Marks, ASSIGNOR shall not
in any manner represent that it has any ownership in the Marks or
registrations thereof, and both parties acknowledge that use of the
Marks shall inure to the benefit of ASSIGNEE. Subject to the Exclusive
License, which shall survive, upon termination of the General License
in any manner provided herein, ASSIGNOR will
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cease and desist from all use of the Marks in any way and will deliver
up to ASSIGNEE or its duly authorized representatives all material and
papers upon which the Marks appear; and; furthermore, ASSIGNOR will not
at any time adopt or use without ASSIGNEE's prior written consent any
word or xxxx that is likely to be similar to or confused with the
Marks.
11.2 Reasonable Assistance. ASSIGNOR shall take all reasonable steps to
advise ASSIGNEE promptly of any infringement or apparent infringement
as soon as it becomes known to ASSIGNOR and to provide information and
other reasonable assistance in defense of such infringement, provide
that ASSIGNEE shall reimburse ASSIGNOR for all out-of-pocket costs and
expenses incurred in connection with such assistance. ASSIGNEE shall
have sole authority to initiate and pursue legal proceedings, as it
deems appropriate, for infringement of the Marks, and ASSIGNOR shall
cooperate fully, at ASSIGNEE'S expense, with ASSIGNEE in respect of any
such proceedings.
ARTICLE 12 -- MISCELLANEOUS
12.1 Entire Agreement; Amendments. This Agreement and the
Recapitalization Agreement (including the appendices attached hereto
and thereto) constitutes the entire agreement between the parties
concerning the subject matter hereof, and supersedes prior or
contemporaneous representations, inducements, promises, or agreements,
oral or otherwise, between the parties. No modification or amendment to
this Agreement will be valid or binding unless reduced to writing and
duly executed and delivered by the party to be bound thereby. No terms
in any written order or acknowledgment that add to or change the terms
of this Agreement shall be of any force or effect, whether or not the
party receiving the same signs the order or acknowledgment or otherwise
indicates its acceptance, unless such party expressly refers to the
specific addition or change in question as a modification of this
Agreement.
12.2 Notices. Any notices required or permitted to be given under this
Agreement shall be deemed sufficiently given if mailed by registered
mail, postage prepaid, addressed to the party to be notified at its
address shown below, or at such other address as may be furnished in
writing to the notifying party.
12.3 Governing Law. This Agreement shall be construed (both as to
validity and performance) and enforced in accordance with, and governed
by, the laws of the State of New York applicable to agreements made and
to be performed wholly within such jurisdiction. Any judicial
proceeding brought against either of the parties hereto with respect to
this Agreement shall be brought in the United States Federal Court for
the Southern District of New York irrespective of where such party may
be located at the time of such proceeding, and by execution and
delivery of this Agreement, each of the parties hereto hereby consents
to the exclusive jurisdiction of such court and waives any defense or
opposition to such jurisdiction.
12.4 Intentional Risk Allocation. ASSIGNOR AND ASSIGNEE EACH
ACKNOWLEDGES THAT THE PROVISIONS OF THIS AGREEMENT WERE
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NEGOTIATED TO REFLECT AN INFORMED, VOLUNTARY ALLOCATION BETWEEN THEM OF
ALL RISKS (BOTH KNOWN AND UNKNOWN) ASSOCIATED WITH THE SUBJECT MATTER
OF THIS AGREEMENT.
12.5 Effect of Partial Invalidity. If any one or more of the provisions
of this Agreement should be ruled wholly or partly invalid or
unenforceable by competent authority, then: (a) the validity and
enforceability of all provisions of this Agreement not ruled to be
invalid or unenforceable will be unaffected; (b) the effect of the
ruling will be limited to competent authority making the ruling; and
(c) the provision(s) held wholly or partly invalid or unenforceable
will be deemed amended, and such competent authority is authorized to
reform the provision(s), to the minimum extent necessary to render them
valid and enforceable in conformity with the parties' intent as
manifested herein.
12.6 No Waiver. The failure of either party at any time to require
performance by the other party of any provision of this Agreement shall
in no way affect the right of such party to require performance of that
provision. Any waiver by either party of any breach of any provision of
this Agreement shall not be construed as a waiver of any continuing or
succeeding breach of such provision, a waiver of the provision itself
or a waiver of any right under this Agreement.
12.7 Survival of Covenants. The provisions of Article 1, Sections 2.1
and 2.3, Article 8, Article 9, Section 10.3 and Article 12 shall
survive termination of this Agreement for any reason. Termination of
this Agreement for any reason shall not release either party from any
liabilities or obligations set forth in this Agreement that the parties
have expressly agreed shall survive any such termination, remain to be
performed or by their nature would be intended to be applicable
following any such termination.
12.8 Independent Parties. ASSIGNOR and ASSIGNEE are independent
contractors. No partnership or joint venture is intended to be created
by this Agreement, nor any principal-agent or employer-employee
relationship. Neither party has, and neither party shall attempt to
assert, the authority to make commitments for or to bind the other
party to any obligation.
12.9 Headings. The section headings and the table of contents used
herein are for reference and convenience only, and shall not enter into
the construction of this Agreement. The words "herein," "hereof" and
"hereunder" and other words of similar import refer to this Agreement
as a whole and not to any particular section or other subdivision.
12.10 Breaches by Affiliates. Each party shall be responsible for any
action or omission by the Affiliates of such party which, if taken or
made by such party, would constitute a breach of those provisions of
this Agreement that are expressly binding upon Affiliates of such
party.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized officers on the respective dates and at the
respective places hereinafter set forth.
ASSIGNOR ASSIGNEE
Halliburton Company Dresser, Inc.
0000 Xxxxxxx Xxxxx 0000 Xxxxxxxx Xxxx
000 X. Xxxxx Xx. Xxxxxxxxx, XX 00000
Xxxxxx, XX 00000-0000 (000) 000-0000 (Ph)
(000) 000-0000 (Ph) (000) 000-0000 (Fax)
(000) 000-0000 (Fax)
By: /s/ XXXXX X. XXXXXX By: /s/ XXXXX X. XXXXXXX
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Xxxxx X. Xxxxxx Xxxxx X. Xxxxxxx
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Typed or Printed Name Typed or Printed Name
Title: Sr. Vice President Title: Vice President
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Date: 10 April 2001 Date:
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