TRADEMARK SECURITY AGREEMENT
THIS TRADEMARK SECURITY AGREEMENT ("Agreement") is made as of August
27, 1997, by BUSINESS LOAN CENTER, INC., a Delaware corporation ("Assignor"), in
favor of TRANSAMERICA BUSINESS CREDIT CORPORATION ("Lender"), a Delaware
corporation, with reference to the following facts:
RECITALS
A. Pursuant to that certain Restated and Amended Loan Agreement of
even date herewith between Assignor and Lender (as the same from time to time
may be amended, supplemented or otherwise modified, the "Loan Agreement"),
Lender has agreed, among other things, to make loans and extend other financial
accommodations to and for the direct and indirect benefit of Assignor. Unless
otherwise defined herein, capitalized terms and matters of construction defined
or established in the Loan Agreement shall be applied herein as defined or
established therein.
B. Under the terms of the Security Agreement, Assignor has granted
to Lender a lien upon certain of Assignor's assets, including the Intellectual
Property Collateral, in order to secure the prompt and complete payment and
performance of the Liabilities.
C. Assignor owns the trademarks and rights under the trademark
licenses as set forth in Schedule 1, and Assignor may hereafter own various
additional trademarks, file various additional trademark applications, or be a
party to, or an assignee of a party to, various additional trademark licenses.
Any reference to "Schedule 1" in this Agreement shall refer to Schedule 1
attached hereto, as the same may be amended from time to time, which schedule is
incorporated by reference into this Agreement.
D. The parties are entering into this Agreement, in addition to the
Security Agreement, in order to more fully describe the rights and remedies of
Lender with respect to the Intellectual Property Collateral (as defined below),
and to
ensure that Lender will realize the full benefits of the rights and remedies
that the parties intend to confer upon Lender in connection with the
Intellectual Property Collateral. Nothing contained herein shall be construed to
limit the rights or remedies of Lender under the Security Agreement.
AGREEMENT
NOW, THEREFORE, in consideration of the premises set forth herein,
and to induce Lender to enter into the Loan Agreement and the Security Agreement
and to make the loans and other financial accommodations provided for therein,
Assignor agrees as follows:
1. Definitions. As used in this Agreement, the following terms shall have
the respective meanings assigned to them:
(a) "Goodwill" shall mean all goodwill, trade secrets, proprietary
or confidential information, technical information, procedures, formulae,
quality control standards, designs, operating and training manuals, customer
lists, distribution agreements and general intangibles now or hereafter owned or
acquired by Assignor.
(b) "Intellectual Property Collateral" shall have the meaning given
to it in Section 2 of this Agreement.
(c) "Trademarks" shall mean all of the following:
(i) all trademarks, trade names, corporate names, business
names, trade styles, service marks, logos, other source or business
identifiers, proprietary product names or descriptions, prints and labels
on which any of the foregoing have appeared or appear, designs and general
intangibles of like nature, now existing or hereafter adopted or acquired,
all registrations and recordings thereof, and all applications in
connection therewith, including registrations, recordings and applications
in the United States Patent and Trademark Office or in any similar office
or agency of the United States, any state or territory thereof, or any
other country or any political
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subdivision thereof, including the trademarks listed in Schedule 1; and
(ii) all proceeds of the foregoing, including license
royalties and proceeds of infringement suits, the right to xxx for past,
present and future infringements, all rights corresponding thereto
throughout the world and all reissues, extensions or renewals thereof.
(d) "Trademark Licenses" shall mean all rights now owned or
hereafter acquired by Assignor under any written agreement granting any right to
use any Trademark or Trademark registration, including the trademark licenses
listed in Schedule 1.
2. Grant of Security Interest. As security for payment and performance of
the Liabilities, Assignor hereby mortgages, pledges, and grants to Lender a lien
upon and security interest in, all of Assignor's right, title and interest,
whether presently existing or hereafter arising or acquired, in, to and under
the following (collectively, the "Intellectual Property Collateral"):
(a) each Trademark owned and Trademark application filed by
Assignor, including those listed in Schedule 1;
(b) each Trademark License to which Assignor is a party (or the
assignee of a party), including each Trademark License listed in Schedule 1;
(c) the Goodwill associated with: (i) each Trademark and Trademark
application, including those listed in Schedule 1; and (ii) each Trademark
licensed under any Trademark License, including those listed in Schedule 1; and
(d) all products and proceeds of the foregoing, including any claim
of Assignor against third parties for any (i) past, present or future
infringement or dilution of any Trademark or of any Trademark License, and (ii)
injury to the Goodwill associated with the foregoing.
3. Representations and Warranties. Assignor represents and warrants to
Lender that as of the date of this Agreement:
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(a) Assignor does not own any trademark that is filed or registered
with, or issued by, the United States Patent and Trademark Office or any similar
offices or agencies of the United States, any state or territory thereof, or any
other country or political subdivision other than each of the Trademarks listed
in Schedule 1.
(b) Assignor is not a party to, or an assignee of a party to, any
trademark license other than the Trademark Licenses listed in Schedule 1.
(c) Assignor does not own any trademark material to the conduct of
its business other than the Trademark registrations listed in Schedule 1.
(d) Assignor has not granted any license, right or privilege in or
to the Intellectual Property Collateral to any party, except as otherwise set
forth herein.
(e) The Trademark registrations listed in Schedule 1 have been duly
and properly issued, and are valid and enforceable.
(f) None of the Intellectual Property Collateral listed in Schedule
1 has been adjudged invalid or unenforceable, in whole or in part.
(g) Assignor (i) conducts business without infringement or claim of
infringement of any license, service xxxx, Trademark, trade name, or other
intellectual property right of others, and (ii) has not commenced and is not
about to commence any suit or action against others in connection with the
violation or enforcement of its rights in any of the Intellectual Property
Collateral.
(h) Assignor is and shall at all times remain the sole and exclusive
owner of the entire and unencumbered right, title and interest in and to the
Intellectual Property Collateral as listed in Schedule 1, free and clear of any
liens, charges and encumbrances, including pledges, assignments, licenses, and
covenants by Assignor not to xxx third persons, except for (i) the interest of
Lender under the Loan Documents and (ii) Permitted Liens.
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(i) Assignor has the unqualified right and power to enter into this
Agreement and perform its terms and has entered and will enter into written
agreements as necessary with each of its present and future employees, agents
and consultants that will enable it to comply with the covenants herein
contained.
4. Covenants. Assignor covenants and agrees as follows:
(a) (i) Assignor shall not, either by itself or through any agent,
employee, licensee or designee, file an application for the registration of any
Intellectual Property Collateral with the United States Patent and Trademark
Office or any similar office or agency in the United States or any other country
or any political subdivision thereof without giving Lender written notice
thereof within 45 days after any such application is filed, (ii) upon issuance
of any Trademarks, Assignor shall notify Lender promptly in writing and, in any
event, within five Business Days thereafter, and (iii) upon the request of
Lender, Assignor shall execute and deliver, for filing with any such office or
agency as Lender may deem appropriate, (A) an amendment to this assignment
adding a description of such Intellectual Property Collateral to Schedule 1 and
(B) any other agreements, instruments, documents, and papers as Lender may
request to evidence Lender's lien upon and security interest in such
Intellectual Property Collateral.
(b) Subject to Section 4(a) hereof, Assignor shall take all
necessary actions to maintain and pursue each application, to obtain the
relevant registration, and to maintain the registration of all of the
Intellectual Property Collateral with the United States Patent and Trademark
Office or other appropriate filing office or agency in which registration is
necessary to protect its rights therein, including the filing of applications
for renewal, affidavits of use, affidavits of noncontestability and opposition
and interference and cancellation proceedings.
(c) In the event that any of Assignor's rights under any
Intellectual Property Collateral are infringed, misappropriated or diluted by a
third party, Assignor (i) shall notify Lender promptly after it learns thereof,
unless Assignor shall reasonably determine that such Intellectual Property
Collateral is not material to the conduct of its business, in which case
Assignor shall provide Lender with quarterly reports
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thereof within the period required for delivery of Assignor's monthly financial
statements as set forth in Section 5.1(b) of the Loan Agreement, (ii) shall
promptly xxx such party for infringement, misappropriation or dilution and
recover any and all damages for such infringement, misappropriation or dilution,
unless Assignor shall reasonably determine that such Intellectual Property
Collateral is not material to the conduct of its business, and (iii) shall take
such other actions as Assignor shall reasonably deem appropriate under the
circumstances to protect such Intellectual Property Collateral.
(d) Assignor shall promptly notify Lender, in writing, of any suit,
action or proceeding brought against Assignor relating to, concerned with or
affecting the Intellectual Property Collateral or infringement of or
interference with another trademark which, if determined adversely, is likely to
have a Material Adverse Effect and shall, upon request by Lender, deliver to
Lender a copy of all pleadings, papers, orders, or decrees theretofore or
thereafter filed in any such suit, action or proceeding, and shall keep Lender
fully advised and informed, in writing, of the progress of any such suit, action
or proceeding.
(e) Assignor shall notify Lender immediately if it knows or has
reason to know (i) that any application or registration relating to any
Intellectual Property Collateral that is material to the conduct of its business
may become abandoned or dedicated, or (ii) that there has been or, in Assignor's
reasonable business judgment, likely may be an adverse determination or
development (including the institution of, or any adverse determination or
development in, any proceeding in the United States Patent and Trademark Office
or any court) regarding (A) Assignor's ownership of any Intellectual Property
Collateral that is material to the conduct of its business, (B) Assignor's right
to register such Intellectual Property Collateral, or (C) Assignor's right to
keep and maintain such Intellectual Property Collateral.
(f) Upon the written request of Lender, Assignor shall promptly and
duly execute and deliver any and all additional documents, including UCC-1
financing statements, and take such further action as Lender may reasonably
require to obtain the full benefit of this Agreement, all at the sole expense of
Assignor.
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5. Power of Attorney. Upon the occurrence and during the continuation of
an Event of Default, Assignor hereby authorizes and empowers Lender to make,
constitute and appoint any officer or agent of Lender, as Lender may select in
its exclusive discretion, as Assignor's true and lawful attorney-in-fact, with
the power to endorse Assignor's name on all applications, documents, papers and
instruments necessary for Lender (a) to use the Intellectual Property
Collateral, or (b) to grant or issue to any third party a license or, to the
extent permitted by an applicable License, a sublicense, whether general,
specific or otherwise and whether on an exclusive or nonexclusive basis, of any
Intellectual Property Collateral throughout the world on such terms and
conditions and in such manner as Lender shall, in its sole discretion,
determine, or (c) to assign, pledge, convey or otherwise transfer title in or
dispose of the Intellectual Property Collateral to any third person. Assignor
hereby ratifies all that such attorney shall lawfully do or cause to be done by
virtue hereof. This power of attorney shall be irrevocable for the term of this
Agreement.
6. Grant of License to Use Intellectual Property Collateral. Effective
from and after an Event of Default and for the purpose of enabling Lender to
exercise rights and remedies hereunder or under the Security Agreement at such
time as Lender shall be lawfully entitled to do so, Assignor hereby grants to
Lender an irrevocable, nonexclusive license (exercisable without payment of
royalty or other compensation to Assignor), (a) to use, transfer, license or
sublicense any of the Intellectual Property Collateral now owned or hereafter
acquired by Assignor, and wherever the same may be located, and (b) to have
access to all media in which any of the licensed items may be recorded or stored
and to all computer and automatic machinery software and programs used for the
compilation or printout thereof.
7. Use and Protection of Intellectual Property Collateral. Notwithstanding
anything to the contrary contained herein, unless an Event of Default has
occurred and is continuing, Assignor may continue to use, enjoy and protect the
Intellectual Property Collateral in the ordinary course of its business, and
Lender shall from time to time execute and deliver, upon reasonable written
request of Assignor, any and all instruments, certificates or other documents,
in the form so requested, that in the reasonable judgment of Assignor are
necessary or appropriate to permit Assignor to continue to do so.
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8. Termination and Release. On the date on which (a) Assignor's right to
request Revolving Loans under the Loan Agreement terminates and (b) all the
Liabilities shall have been paid and satisfied in full, the rights of Lender
hereunder shall terminate and Lender shall execute and deliver to Assignor all
releases, powers of attorney and other instruments as may be necessary or proper
to terminate the Lien granted by Assignor hereunder and to revest in Assignor
its title to the Intellectual Property Collateral, subject to any disposition
thereof that may have been made by Lender pursuant hereto.
9. Incorporation of Security Agreement. Assignor hereby acknowledges and
affirms that the rights and remedies of Lender with respect to the Lien upon the
Intellectual Property Collateral made and granted hereby are further described
in the Security Agreement, the terms and provisions of which are incorporated
herein by this reference as if fully set forth herein. In the event of any
conflict between the terms hereof and the Security Agreement, the terms set
forth in the Security Agreement shall control.
IN WITNESS WHEREOF, Assignor has executed this Trademark Security
Agreement as of the date first set forth above.
BUSINESS LOAN CENTER, INC.
By: /s/ Xxxxxx Xxxxxxxxxxxx
------------------------
Xxxxxx X. Xxxxxxxxxxxx
President
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ACKNOWLEDGMENT OF INSTRUMENTS
STATE OF _________________ )
) SS.
COUNTY OF __________________ )
On __________________________ before me, the undersigned notary public in
and for said state, personally appeared ________________________, personally
known to me (or proved to me on the basis of satisfactory evidence) to be the
person(s) whose name(s) is/are subscribed to the within instrument and
acknowledged to me that he/she/they executed the same in his/her/their
authorized capacity(ies), and that by his/her/their signature(s) on the
instrument, the person(s), or the entity upon behalf of which the person(s)
acted, executed the instrument.
WITNESS my hand and official seal.
Signature _______________________________ (Seal)
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SCHEDULE 1
U.S. TRADEMARKS
Registration No. Registration Date Service Xxxx
---------------- ----------------- ------------
1,787,035 August 10, 1993 "Business Loan Center"
plus design
FOREIGN TRADEMARKS
NONE.
TRADEMARK LICENSES
Licensor Licensee Subject of License
-------- -------- ------------------
NONE.
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