INTERNATIONAL TRADEMARK ASSIGNMENT
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Exhibit 10.10
CONFORMED COPY
INTERNATIONAL TRADEMARK ASSIGNMENT
This Global Trademark Assignment agreement (the "Assignment") is entered into this 16th day of March, 2004, between Pretzelmaker, LLC, a Utah limited liability company having its principal place of business at 0000 X. Xxxxxxxxxx Xxxxxxx, Xxxxx 000, Xxxx Xxxx Xxxx, Xxxx 00000 ("Assignor"), and Pretzelmaker Franchising, LLC, a Delaware limited liability company having its principal place of business at 0000 X. Xxxxxxxxxx Xxxxxxx, Xxxxx 000, Xxxx Xxxx Xxxx, Xxxx 00000 ("Assignee").
A. Assignor is the owner of the International trademarks and service marks set forth on the attached Schedule A, all common rights relating thereto, and all registrations and applications relating thereto (the "Marks"); and
B. Assignor has agreed to assign the Marks and the goodwill of the business attendant thereto, if any, and the parties wish to memorialize the transfer of the Marks and goodwill of the business associated therewith to Assignee.
NOW, THEREFORE, for good and valuable consideration, receipt of which is herby acknowledged, the parties hereto agree as follows:
1. Assignment. Assignor does hereby sell, assign, transfer, and set over unto said Assignee, its entire right, title and interest in, to and under said Marks, together with the entire goodwill of the business in connection with which said Marks are used, and in and to all income, royalties, damages and payments now or thereafter due or payable with respect thereto in and to all causes of action (either at law or in equity) and the right to xxx, counterclaim, and recover for past, present and future infringement of the rights assigned or to be assigned under this Assignment.
2. Assumption. In consideration of the assignment set forth above, Assignee hereby agrees to assume all liabilities and obligations of the Assignor arising out of or related to the Marks, including without limitation, any such liabilities and obligations that arise from periods prior to the date of this Assignment.
3. Non-Assignable Marks; Irrevocable License. To the extent that any of the Marks or rights associated therewith is not capable of being assigned hereunder without the consent or approval of a third party (whether or not a governmental authority), or if such assignment or transfer will require the parties to file applications or notices under the laws of applicable jurisdictions in order for such assignment to be valid between the parties, or would constitute a breach thereof or violation of applicable law, this Assignment shall not constitute an actual or attempted assignment or transfer thereof unless and until such consent or approval of such third party has been duly obtained or such application or notice has been filed or the assignment has otherwise become lawful (any Xxxx not assigned or transferred as a result of this Section is hereinafter referred to as a "Licensed Xxxx"). Assignor hereby grants to the Assignee, and Assignee herby accepts from the Assignor, a worldwide, exclusive, royalty free right to use and sublicense the Licensed Marks until such time as the assignment shall satisfy the requirements set forth above.
4. Further Assurances. Assignor hereby agrees to execute all papers and to perform such other proper acts as Assignee or its successors or assigns may deem reasonably necessary to secure to Assignee or to its successors or assigns, the rights transferred hereby, including without limitation, any documents necessary to obtain the consents or waivers or record the applications, notices or other documentation described in Section 3 above, and any and all documents necessary to file or record this Assignment with the international registries where the Marks are recorded or registered.
(a) Governing Law. This Assignment shall be governed by the laws of the State of Utah (other than its rules of conflicts of law to the extent that the application of the laws of another jurisdiction would be required thereby).
(b) Counterparts. This Assignment may be executed in any number of counterparts, each of which shall be an original, and all of which shall together constitute a single instrument.
(c) Descriptive Headings. Descriptive headings of the Sections of this Assignment are inserted for convenience only and shall not affect the meaning of this Assignment.
IN WITNESS WHEREOF, the parties have caused this Assignment to be executed below, on the date indicated, by a duly authorized officer thereof.
| PRETZELMAKER, LLC | ||||
By: |
/s/ XXXXXX XXXXX |
|||
| Name: | Xxxxxx Xxxxx | |||
| Title: | Sr. Vice President | |||
PRETZELMAKER FRANCHISING, LLC |
||||
By: |
/s/ XXXXXXX XXXX |
|||
| Name: | Xxxxxxx Xxxx | |||
| Title: | Sr. Vice President | |||
SCHEDULE A
TRADEMARKS
Foreign Registrations
Pretzelmaker, Inc.
| No. |
Trademark |
Country |
Registration Number |
Registration Date |
||||
|---|---|---|---|---|---|---|---|---|
| 1 | PRETZELMAKER WORLD'S BEST SOFT PRETZEL | Argentina | 1.616.560 | Sep-20-1996 | ||||
| 2 | PRETZELMAKER (& Design) | Australia | 700147 | Jan-03-1996 | ||||
| 3 | PRETZELMAKER WORLD'S BEST SOFT PRETZEL (& Design) | Brazil | 819132659 | Dec-22-1998 | ||||
| 4 | PRETZELMAKER TOUJOURS PRET. TOUJOURS PRETZEL (& Design) | Canada | TMA489,221 | Feb-03-1998 | ||||
| 5 | PRETZELMAKER (& Design) | Canada | TMA446,184 | Nov-21-1996 | ||||
| 6 | PRETZELMAKER WORLD'S BEST SOFT PRETZEL (& Design) | European Community | 829622 | May-31-1996 | ||||
| 7 | PRETZELMAKER WORLD'S BEST SOFT PRETZEL | Guam | SR-0015 | Nov-21-1995 | ||||
| 8 | PRETZELMAKER WORLD'S BEST SOFT PRETZEL (& Design)* | Hong Kong | 04114 of 1997 | Nov-23-1995 | ||||
| 9 | PRETZELMAKER/WORLD'S BEST SOFT PRETZEL (& Device) | Japan | 0000000 | Nov-21-1997 | ||||
| 10 | PRETZELMAKER/WORLD'S BEST SOFT PRETZEL (& Device) | Japan | 0000000 | Dec-19-1997 | ||||
| 11 | PRETZELMAKER/WORLD'S BEST SOFT PRETZEL (& Design) | Mexico | 520014 | Feb-06-1996 | ||||
| 12 | PRETZELMAKER WORLD'S BEST SOFT PRETZEL (& Design) | Saudi Arabia | 480/97 | Oct-24-1995 | ||||
| 13 | PRETZELMAKER (& Design) | Singapore | T96/01790G | Feb-26-1996 |
Foreign Applications
Pretzelmaker, Inc.
| No. |
Trademark |
Country |
Application Number |
Application Date |
||||
|---|---|---|---|---|---|---|---|---|
| 1 | PRETZELMAKER WORLD'S BEST SOFT PRETZEL (& Design) | Egypt | 134782 | Jul-22-2000 | ||||
| 2 | PRETZELMAKER WORLD'S BEST SOFT PRETZEL | South Korea | 0-0000-000000 | Feb-13-2003 | ||||
| 3 | PRETZELMAKER WORLD'S BEST SOFT PRETZEL (& Design) | South Korea | 97-4105 | Mar-27-1997 |
INTERNATIONAL TRADEMARK ASSIGNMENT
