EXHIBIT 10.44
-------------
COLLATERAL ASSIGNMENT OF PATENTS AND
TRADEMARKS AND SECURITY AGREEMENT
---------------------------------
COLLATERAL ASSIGNMENT OF PATENTS AND TRADEMARKS AND SECURITY AGREEMENT,
dated effective November 14, 2000, made by XXXXXXXXXX.XXX, INC., a Delaware
corporation, having its principal office at 000 Xxxx 00xx Xxxxxx, Xxx Xxxx, Xxx
Xxxx 00000, (the "Borrower") to XXXXXX.XXX, INC., a Delaware corporation, having
an office at 000 Xxxx 00xx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000, XXXXXX X. XXXXXXXX,
residing at 0 Xxxxxxxxxx Xxxxx, Xxxx Xxxxx, Xxx Xxxx 00000 and XXX ROC LIMITED
PARTNERSHIP, with offices at 000 Xxxxxxx Xxxxxx, Xxxxxxxxxx, Xxx Xxxx
(collectively, the "Lender").
W I T N E S S E T H :
- - - - - - - - - -
WHEREAS, Borrower owns the patents, patent registrations, patent
applications, trademarks, trademark registrations and trademark applications
listed on, respectively, Schedule 1 and Schedule 2 annexed hereto (for purposes
of this Patent and Trademark Security Agreement, all references to "trademark",
"trademark registrations", "trademark applications" and "trademark licenses"
shall be deemed to include service marks, service xxxx registrations, service
xxxx applications and service xxxx licenses);
WHEREAS, Borrower has granted to Lender a security interest in certain
of the assets of Borrower to secure the payment of all amounts owing under the
provisions of a Security Agreement dated the date hereof between Borrower and
Lender (the "Agreement");
WHEREAS, to further secure the payment of all amounts owing under the
terms of the Agreement, Borrower has agreed to grant to Lender a collateral
assignment of and security interest in, inter alia, all rights, title and
interest of Borrower in, to and under all Borrower's patents, patent
registrations, patent applications, trademarks, trademark registrations,
together with any renewals thereof, trademark applications and any registrations
resulting therefrom, whether presently existing or hereafter arising or
acquired, together with the goodwill of the business symbolized by the patents,
trademarks and the applications therefore and the registrations thereof, and all
products and proceeds of its rights, title and interest in and to such patents,
patent registrations, patent applications, trademarks, trademark registrations
and trademark applications, including, without limitation, any and all causes of
action which may exist by reason of past, present or future infringement,
misappropriation, misuse or dilution thereof or injury to the associated
goodwill;
NOW, THEREFORE, subject to the terms and conditions set forth herein,
for good and valuable consideration, the receipt and sufficiency of which is
hereby acknowledged, in order to more fully perfect and confirm unto Lender the
collateral assignment of and security interest in the Patent and Trademark
Collateral referred to below, Borrower does hereby sell, assign, convey,
transfer, deliver and set over to Lender and grant to Lender a security interest
in all
Borrower's rights, title and interest in, to and under the following (all of the
following items or types of property being herein collectively referred to as
the "Patent and Trademark Collateral"), whether presently existing or hereafter
arising or acquired:
(i) each patent, patent license and patent application owned by
Borrower, including, without limitation, each patent and patent application of
Borrower referred to in Schedule 1 hereto, and any patent granted thereon,
together with any divisional, provisional, continuation, reissue or other
related application, and any renewals thereof in the United States and the
territories in which the related applications were filed and the related patents
were granted, and all of the goodwill of the business connected with the use of,
and symbolized by each such patent;
(ii) each trademark, trademark registration and trademark application
owned by Borrower, including, without limitation, each trademark referred to in
Schedule 2 hereto, and renewals thereof, in the territories in which the related
registrations were granted and the related applications were filed, and any and
all common law or other rights in trademarks owned by and used in the businesses
of Borrower as of the date of this instrument for which neither an application
for registration has been filed nor a registration granted, along with the
goodwill of said businesses conducted under said trademarks and service marks in
said territories and jurisdictions, and all together with the rights to xxx for
past infringement thereof; and
(iii) all products and proceeds of the foregoing, including, without
limitation, any claim by or accruing to Borrower against third parties for past,
present or future infringement, dilution, misuse or misappropriation of any
patent, patent registration, trademark or trademark registration owned by
Borrower, including, without limitation, any patent, patent registration,
trademark or trademark registration referred to in Schedule 1 or Schedule 2
hereto, as the case may be or for injury to the goodwill associated with any
patent, patent registration or patent application, or with any trademark,
trademark registration, or trademark applications.
Borrower shall, without charge, render such assistance to Lender as
might be reasonably necessary in order for Lender to establish and maintain
clear record ownership and control of the assets set forth in the Schedules
attached hereto, said assistance including the execution of such further
assignments, instruments and other documents requested by Lender as necessary,
desirable or appropriate for the aforesaid purposes.
Borrower does hereby acknowledge and affirm that the rights and
remedies of Borrower with respect to the security interest in the patents,
patent registrations, patent applications, trademarks, trademark registrations,
and trademark applications made and granted hereby are as provided in the
Agreement, all such rights and remedies being incorporated herein by reference.
During the term of this Collateral Assignment of Patents and Trademarks
and Security Agreement, Borrower shall continue the normal maintenance of the
subject patents and trademarks by filing all appropriate new applications,
affidavits of use and /or renewal applications as needed and by prosecuting any
applications thereof. If Borrower fails to do any
of the same, Lender shall have the right (but not the obligation) to cause the
same to be performed, all at the sole cost and expense of the Borrower.
The parties hereto hereby acknowledge and agree that this Collateral
Assignment of Patents and Trademarks and Security Agreement is for collateral
security only, and that Lender shall take title to and control of the
intellectual property assets set forth herein only if and when Lender becomes
entitled to exercise its rights and remedies under the security interests
granted to Lender pursuant to the terms and conditions of the Agreement between
Borrower and Lender and any other security agreement securing the same, and that
prior to the time that Lender becomes entitled to exercise such rights and
remedies the control and ownership of the intellectual property assets set forth
herein shall at all times remain with Borrower.
This Collateral Assignment of Patents and Trademarks and Security
Agreement shall terminate at such time as all of the obligations governed by the
Agreement have been fully and finally paid and performed and, upon such final
termination and upon request from the Borrower, Lender shall promptly execute
and deliver, at Borrower's sole cost and expense, to Borrower such documents and
instruments as are reasonably necessary to evidence such termination and usable
to record the termination and release of the security interests granted herein.
Borrower hereby waives any and all legal requirements that Lender
institute any action or proceeding in law or in equity against any other party,
or exhaust its remedies under the Agreement or any of the documents executed in
connection therewith as a condition precedent to exercising its rights and
remedies hereunder.
This Assignment shall be binding upon Borrower, and its successors and
assigns and shall inure to the benefit of Lender, and its successors and
assigns.
This Assignment may only be modified, altered, amended or terminated by
an agreement in writing executed by the parties hereto.
If any term, covenant or condition or, if separable, any part thereof
of this Assignment shall be held to be invalid, illegal or unenforceable in any
respect, this Assignment shall be construed without such provision or part
thereof.
This Assignment shall be governed by and construed under the laws of
the State of New York, without regard to its principles of conflicts or choice
of law.
IN WITNESS WHEREOF, Borrower has caused this Collateral Assignment of
Patents and Trademarks and Security Agreement to be duly executed on the date
first above written.
XXXXXXXXXX.XXX, INC.
By: /s/ Xxxx Xxx Xxxx
-----------------
Xxxx Xxx Xxxx
AGREED TO AND ACCEPTED:
XXXXXX.XXX, INC.
By: /s/ Xxxxxx X. Xxxxxxxx
----------------------------------------
Xxxxxx X. Xxxxxxxx, Chief Executive Officer
/s/ Xxxxxx X. Xxxxxxxx
--------------------------------------------
Xxxxxx X. Xxxxxxxx
XXX ROC LIMITED PARTNERSHIP
By: Xxx Roc Management Corp.,
By: /s/ Xxxxxxx Xxxxxxxxxx by: Xxxxx Xxxxxxx-Xxxxxx, P.O.A.
-------------------------------------------------------
Xxxxxxx Xxxxxxxxxx
STATE OF NEW YORK )
COUNTY OF NASSAU ) SS.:
On the 18th day of Dec., in the year 2000 before me, the undersigned,
personally appeared Xxxx Xxx Xxxx, personally known to me or proved to me on the
basis of satisfactory evidence to be the individual whose name is subscribed to
the within instrument and acknowledged to me that he executed the same in his
capacities, and that by his signature on the instrument, the individual, or the
person upon behalf of which the individual acted, executed the instrument.
/s/ Xxxxxx X. Xxxx
------------------
Signature and Office of individual
taking acknowledgment
Xxxxxx X. Xxxx
Notary Public, State of New York
No. 5000920
Qualified in Suffolk County
Commission Expires August 24, 0000
XXXXX XX XXX XXXX )
COUNTY OF ________ ) SS.:
On the ____ day of _________, in the year 2000 before me, the
undersigned, personally appeared Xxxxxx X. Xxxxxxxx, personally known to me or
proved to me on the basis of satisfactory evidence to be the individual whose
name is subscribed to the within instrument and acknowledged to me that he
executed the same in his capacities, and that by his signature on the
instrument, the individual, or the person upon behalf of which the individual
acted, executed the instrument.
-----------------------------------
Signature and Office of individual
taking acknowledgment
STATE OF NEW YORK )
COUNTY OF NASSAU ) SS.:
On the 18th of Dec., in the year 2000 before me, the undersigned,
personally appeared Xxxxxxx Xxxxxxxxxx, personally known to me or proved to me
on the basis of satisfactory evidence to be the individual whose name is
subscribed to the within instrument and acknowledged to me that he executed the
same in his capacities, and that by his signature on the instrument, the
individual, or the person upon behalf of which the individual acted, executed
the instrument.
/s/ Xxxxxx X. Xxxx
--------------------------------------
Signature and Office of individual taking
acknowledgment
Xxxxxx X. Xxxx
Notary Public, State of New York
No. 5000920
Qualified in Suffolk County
Commission Expires August 24, 2002
SCHEDULE "1"
------------
PATENT APPLICATION NUMBER FILING DATE APPLICANTS TITLE
------------------------- ----------- ---------- -----
09/588,768 June 6, 2000 Xxxx Xxx Xxxx System and
Xxxxxx Xxxxxxx method for
Xxxxxx Xxxx disseminating
information
over a
communication
network
according to
predefined
consumer
profiles
SCHEDULE "2"
------------
TRADEMARK SERIAL NUMBER XXXX
----------------------- ----
75/950782 VFLASH
