1
Exhibit 10.22
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement, is made by and between Starwood
Capital Group, L.L.C., a Connecticut Limited Liability Company, with a place of
business at Three Pickwick Plaza, Suite 250, Greenwich, Connecticut 06830
("SCG"), and Starwood Lodging Trust, a Maryland real estate investment trust,
with a place of business at 0000 Xxxx Xxxxxxxxx Xxxx, Xxxxx 000, Xxxxxxx,
Xxxxxxx 00000 ("SLT").
WITNESSETH:
WHEREAS, SCG is the owner, and has adopted and used in its business, in
connection with real estate services, including real estate investment services,
the trademark for which registration is being sought in the United States Patent
and Trademark Office under the following application number (the "SCG
Trademark"):
Trademark Application No. Filing Date
--------- --------------- -----------
STARWOOD 75/229,277 1/22/97
WHEREAS, SLT was the owner, adopted and used in its business, in
connection with real estate services, including the acquisition of hotels, the
trademark for which registration is being sought in the United States Patent and
Trademark Office under the following application number (the "STARWOOD LODGING
TRUST Trademarks"):
Trademark Application No. Filing Date
--------- --------------- -----------
STARWOOD LODGING TRUST 75/200,968 11/20/96
STARWOOD LODGING TRUST 75/352,062 9/5/97
and Design
WHEREAS, SLT has adopted and used in its business, in connection with
real estate services, including the acquisition of hotels, the trademark
depicted on Exhibit 1 of Exhibit A attached hereto (the "Star Design Trademark")
(the STARWOOD LODGING TRUST Trademarks and the Star Design Trademark are
hereinafter collectively referred to as the "SLT Trademarks");
WHEREAS, as evidenced by the Trademark Assignment Nunc Pro Tunc
attached hereto as Exhibit A, which has been executed concurrently with this
Trademark License Agreement, effective August 15, 1969, SLT assigned and
transferred to SCG, its entire right, title, and interest in, to and under the
SLT Trademarks and the applications for the STARWOOD LODGING TRUST Trademarks,
together with the goodwill of the business connected with the use of and
symbolized by the SLT Trademarks (the SCG Trademark and the SLT Trademarks are
hereinafter collectively referred to as the "STARWOOD Trademarks");
2
121097
WHEREAS, SLT desires to continue to use the STARWOOD Trademarks in
connection with the acquisition, ownership, leasing, management, merchandising,
operation and disposition of hotels and hospitality services, and of properties,
entities and activities related to the acquisition, ownership, leasing,
management, operation and disposition of hotels and hospitality services ("the
Permitted Uses").
WHEREAS, SCG is willing to grant to SLT the right to use the STARWOOD
Trademarks subject to the terms and conditions of this Trademark License
Agreement, and SLT is willing to use the STARWOOD Trademarks on all terms and
conditions set forth below.
NOW, THEREFORE, in exchange for good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, and in consideration of
the mutual covenants set forth herein, the parties agree as follows:
X. XXXXX OF LICENSE
A. SCG grants to SLT the royalty-free license and right to use the
STARWOOD Trademarks in connection with the Permitted Uses, exclusive to SLT and
its affiliates (except only for SCG and affiliates) in North America; provided,
however, that SLT shall have the right to use "Starwood" in its corporate name
worldwide.
B. The right granted in Subparagraph I(A) above shall be nondivisible
and shall not be transferred, assigned or sublicensed without SCG's prior
written consent, which SCG may not unreasonably withhold or delay.
C. In the event that SLT desires to use the STARWOOD Trademarks in
connection with other than Permitted Uses, it shall request a license therefor
from SCG, which license SCG agrees to offer on reasonable terms based on then
current prevailing market terms.
II. USE OF THE TRADEMARKS
A. SLT acknowledges SCG's exclusive right, title and interest in and to
the STARWOOD Trademarks. SLT will not at any time do or cause to be done any
act, directly or indirectly contesting or in any way impairing SCG's right,
title or interest in the STARWOOD Trademarks. In connection with its Permitted
Use of the STARWOOD Trademarks, SLT shall not in any manner represent that it
has any ownership interest in the STARWOOD Trademarks, and SLT specifically
acknowledges that its Permitted Use of the STARWOOD Trademarks shall not create
any right, title or interest in the STARWOOD Trademarks. Every Permitted Use of
the STARWOOD Trademarks by SLT shall inure to the benefit of SCG.
B. Without detracting from the generality of the foregoing, it is
agreed and understood by SLT that SLT does not have permission to: (1)
sublicense the STARWOOD Trademarks except as provided in Paragraph I(B) above;
or (2) transfer or assign any right
3
granted by this Trademark License Agreement except as provided in paragraph I(B)
above.
C. In order to assure SCG the ability to protect the goodwill
associated with the STARWOOD Trademarks and the validity and integrity of the
STARWOOD Trademarks, and in order to prevent any deception to the public, SLT
shall operate its business in accordance with the standards and requirements of
quality which from time to time are reasonably prescribed by SCG, and shall use
the STARWOOD Trademarks in a manner consistent with any format reasonably
prescribed by SCG.
D. In order to assure compliance with the quality, specifications and
standards set forth by SCG, SLT shall make available to representatives of SCG,
any information reasonably requested relating to such quality control or use of
the STARWOOD Trademarks, and permit such representatives to inspect at
reasonable times and or reasonable notice documents or things upon which the
STARWOOD Trademarks are used as SCG reasonably considers necessary.
III. TERMS AND TERMINATION
A. This Trademark License Agreement shall be perpetual.
B. Notwithstanding Subparagraph III(A) above, if SLT makes any
assignment of assets or business for the benefit of creditors, if a trustee or
receiver is appointed to administer or conduct SLT's business or affairs, or if
SLT is adjudged in any legal proceeding to be either a voluntary or involuntary
bankruptcy, SCG may terminate this Trademark License Agreement upon fifteen days
prior written notice.
C. Notwithstanding Subparagraph III(A) above, if SLT breaches any of
the material terms and conditions of this Trademark License Agreement, and SCG
provides written notice of any such breach, SCG may terminate this Trademark
License Agreement, unless SLT cures any such breach within a reasonable period
after receiving written notice.
D. Upon the termination of this Trademark License Agreement, SLT agrees
to immediately discontinue all use of the STARWOOD Trademarks and will at no
time adopt or use, without SCG's prior written consent, any word, phrase,
symbol, logo or xxxx which is similar to or likely to be confusing with the
STARWOOD Trademarks.
IV. INDEMNIFICATION
SLT shall indemnify and hold harmless SCG, any parents, subsidiaries or
affiliates of SCG and their respective officers, directors, shareholders,
employees, agents, successors and assigns (collectively, the "SCG Indemnified
Parties") from and against any and all costs, losses, damages, obligations,
expenses, liability and/or attorneys' fees arising, directly or indirectly, by
reason of any claim made or asserted against the SCG Indemnified Parties by
third parties, during the term of this Trademark License Agreement or subsequent
to its termination, arising out of SLT's use of the STARWOOD Trademarks or SLT's
provision of services in connection with the STARWOOD Trademarks, unless such
claim involves an act performed by an SCG
4
Indemnified Party, or arises out of SCG's breach of this Trademark License
Agreement.
SCG shall indemnify and hold harmless SLT, any parent, subsidiaries,
affiliates or affiliates of SLT and their respective officers, directors,
trustees, shareholders, employees, agents, successor and assigns (collectively
the "SLT Indemnified Parties") from and against any and all costs, losses,
damages, obligations, expenses, liability and/or attorneys' fees arising,
directly or indirectly by reason of any claim made or asserted against the SLT
Indemnified Parties by third parties, during the term of this License Agreement
or subsequent to its termination, arising out of SCG's use of the STARWOOD
Trademark or SCG's provision or services in connection with the Starwood
trademarks, unless such claim involves an act performed by an SLT Indemnified
Party or arises out of SLT's breach of this Trademark License Agreement.
V. GOVERNING LAW
This Trademark License Agreement shall be subject to and governed by
the substantive law of the State of Connecticut, United States of America,
without regard to principles of choice of law.
VI. ENTIRE AGREEMENT
This Trademark License Agreement including its attachments constitutes
the entire agreement between the parties and contains all of the agreement
between the parties with respect to the subject matter of this Trademark License
Agreement. This Trademark License Agreement supersedes any and all other
agreements, either oral or written, between the parties with respect to the
subject matter of this Trademark License Agreement. No change or modification of
this Trademark License Agreement shall be valid unless the same shall be in
writing and signed by the parties.
VII. SEVERABILITY
If any provisions of this Trademark Settlement Agreement, or the
application of any such provisions to the parties hereto, shall be held by a
court of competent jurisdiction to be unlawful or unenforceable, the remaining
provisions of this Trademark License Agreement shall nevertheless be valid,
enforceable and shall remain in full force and effect, and shall not be
affected, impaired or invalidated in any manner.
VIII. CONSTRUCTION
This Trademark License Agreement shall be construed without regard to
the party or parties responsible for the preparation of the Trademark License
Agreement and shall be deemed as prepared jointly by the parties. Any ambiguity
or uncertainty existing herein shall not be interpreted or construed against any
party.
5
IX. EFFECTIVE DATE
This Trademark License Agreement shall be binding on the parties at the
time the last of them executes it below, which shall be the effective date of
this Trademark License Agreement.
X. COUNTERPARTS
This Trademark License Agreement may be executed in counterparts.
XI. HEADINGS
The headings in this Trademark License Agreement are inserted for
convenience only and are not to be considered in the interpretation or
construction of the provisions of this Trademark License Agreement.
XII. NOTICES
All notices called for in this Trademark License Agreement shall be
deemed to be sufficiently given if sent by registered or certified mail return
receipt requested to the other party at the above-referenced address or at such
other address as the party may designate in writing. Any such notice shall be
effective and deemed received when the return receipt is presented to the
addressee for execution.
XIII. AUTHORITY
The signatories respectively represent and warrant that they have full
authority to enter into this Trademark License Agreement on behalf of the entity
for which they have signed.
XIV. DISCLAIMER
The name "Starwood Lodging Trust" is the designation of Starwood
Lodging Trust and its Trustees (as Trustees but not personally) under a
Declaration of Trust dated August 25, 1996 as amended and restated, and all
Persons dealing with Starwood Lodging Trust must look solely to Starwood Lodging
Trust's property for the enforcement of any claims against Starwood Lodging
Trust, as the Trustees, officers, agents and security holders of Starwood
Lodging Trust assume no personal obligations of Starwood Lodging Trust, and
their respective properties shall not be subject to claims of any Person
relating to such obligation.
Dated:____________ STARWOOD CAPITAL GROUP, L.L.C.
By:
6
Name:
Title:
Dated:____________ STARWOOD LODGING TRUST
By:
Name:
Title:
7
TRADEMARK ASSIGNMENT NUNC PRO TUNC EXHIBIT A
WHEREAS, Starwood Lodging Trust, a Maryland real estate investment
trust, with a place of business at 0000 Xxxx Xxxxxxxxx Xxxx, Xxxxx 000, Xxxxxxx,
Xxxxxxx 00000 ("Assignor"), has adopted and used in its business, since as early
as August 15, 1969, in connection with real estate services, including the
acquisition, ownership, leasing, management, merchandising, promotion, operation
and disposition of hotels and hospitality services, and of properties, entities
and activities related to the acquisition, ownership, leasing, management,
merchandising, promotion, operation and disposition of hotels and hospitality
services ("the Permitted Uses"), the trademark for which registration is being
sought in the United States Patent and Trademark Office under the following
application number (the "STARWOOD LODGING TRUST Trademarks"):
Trademark Application No. Filing Date
--------- --------------- -----------
STARWOOD LODGING TRUST 75/200,968 11/20/96
STARWOOD LODGING TRUST 75/352,062 9/5/97
and Design
WHEREAS, SLT has adopted and used in its business, since at least as
early as August 15, 1969, in connection with real estate services, including the
acquisition of hotels, the trademark depicted on Exhibit 1 attached hereto (the
"Star Design Trademark") (the "STARWOOD LODGING TRUST Trademarks and the Star
Design Trademark are hereinafter collectively referred to as the "Trademarks");
WHEREAS, Starwood Capital Group, L.L.C., a Connecticut Limited
Liability Company, with a place of business at Three Xxxxxxxx Xxxxx, Xxxxx 000,
Xxxxxxxxx, Xxxxxxxxxxx 00000 ("Assignee"), is desirous of acquiring the
Trademarks;
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of
8
which is hereby acknowledged, Assignor hereby sells, assigns and transfers to
Assignee, effective August 15, 1969, the entire right, title, and interest in,
to and under the Trademarks and the applications for the STARWOOD LODGING TRUST
Trademarks, which are listed above, together with the goodwill of the business
connected with the use of and symbolized by the Trademarks and the right to xxx
for past, present and future infringement thereof.
The name "Starwood Lodging Trust" is the designation of Starwood
Lodging Trust and its Trustees (as Trustees but not personally) under a
Declaration of Trust dated August 25, 1996 as amended and restated, and all
Persons dealing with Starwood Lodging Trust must look solely to Starwood Lodging
Trust's property for the enforcement of any claims against Starwood Lodging
Trust, as the Trustees, officers, agents and security holders of Starwood
Lodging Trust assume no personal obligations of Starwood Lodging Trust, and
their respective properties shall not be subject to claims of any Person
relating to such obligation.
STARWOOD LODGING TRUST
By:
Name:
Title:
Date:
9
EXHIBIT 1
10
STATE OF ______________)
) SS
COUNTY OF ____________)
On this ___ day of ___________, 1997, before me appeared
_______________________, the person who signed this instrument, who acknowledged
that (s)he signed it as a free act on behalf of the identified corporation with
authority to do so.
Notary Public
