EXHIBIT 99.12
TRADEMARK ASSIGNMENT
THIS TRADEMARK ASSIGNMENT ("Assignment") is made the 21st day of January,
2005, and is entered into by and between Citel Technologies Limited, company
number 02459517, a corporation organized under the laws of England and Wales
("Purchaser"), and Verso Technologies, Inc., a Minnesota corporation, MCK
Communications, Inc., a Nevada corporation, MCK Communications, Inc., a Delaware
corporation, MCK Telecommunications Inc., a Yukon Territory corporation, and
Digital Techniques, Inc., a Texas corporation (collectively, "Sellers"). Each of
the foregoing parties is referred to herein individually as a "Party" and
together as the "Parties."
RECITALS:
WHEREAS, each Seller is the sole and exclusive owner of all rights in and
to the U.S., Canadian, and foreign registered and unregistered trade marks,
trade dress, service marks, logos, trade names, corporate names and all
applications to register the same as listed in Annex A hereto (the "Assigned
Trademarks"), and Sellers and Purchaser have agreed that the Purchaser is to
acquire all of Sellers' right, title and interest in and to the Assigned
Trademarks,
NOW, THEREFORE, each Seller has entered into this Assignment to
acknowledge and confirm that the ownership of the Assigned Trademarks is vested
in such Seller and to assign all interest in the same to the Purchaser.
IT IS HEREBY AGREED as follows:
1. Assignment.
1.1 Each Seller as the sole and exclusive owner of the applicable Assigned
Trademarks hereby irrevocably sells, assigns, transfers, conveys and delivers to
Purchaser and its successors and assigns, and Purchaser hereby purchases and
accepts from Seller, all of Sellers' right, title and interest in and to the
Assigned Trademarks, and all goodwill associated with the Assigned Trademarks
and symbolized thereby including all renewals, extensions and reversions of the
Assigned Trademarks and the right to xxx and recover damages and other remedies
for past infringements of the same and all right title and interest in any
physical embodiment of the Assigned Trademarks.
1.2 To the extent that any rights to be assigned under Clause 1.1 above
are not wholly and/or validly assigned to the Purchaser, the Sellers shall hold
them upon trust for the full and exclusive benefit of the Purchaser.
2. Cooperation and Recordation. Each Seller hereby agrees to cooperate
with Purchaser as reasonably necessary and to execute any further documents
and/or deeds and/or do any such things as the Purchaser may require to give full
effect to and perfect the rights of Purchaser in the Assigned Trademarks and/or
the benefit of this Assignment. The Parties agree that Purchaser may record this
Assignment in the United States Patent and Trademark Office,
Trademark Assignment
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Canadian Intellectual Property Office, and the equivalent governmental authority
in any jurisdiction applicable to the Assigned Trademarks, and take any other
necessary action, to effect the transfer of rights contemplated herein.
Purchaser shall be responsible for all reasonable expenses and costs associated
therewith. Seller hereby authorizes and requests that the Commissioner of
Patents and Trademarks of the United States, and the equivalent governmental
authority in any jurisdiction applicable to the Assigned Trademarks, issue to,
and record in the name of, Purchaser all right, title, and interest in and to
the Assigned Trademarks. Sellers will deliver up to Purchaser all documents,
material and/or other media which may be in the Sellers' possession power or
control which comprises or contains any part of or information in relation to
the Assigned Trademarks (including all trademark attorneys' files and papers)
with thirty (30) business days after execution of this Agreement, and each
Seller undertakes to take such action as the Purchaser may reasonably require to
assist the Purchaser in bringing or defending any proceedings relating to the
Assigned Trademarks.
3. Moral Rights. Each Seller irrevocably and unconditionally waives and
has procured or shall procure from all employees and third parties who have
created works for or on behalf of such Seller in relation to the MCK business
the irrevocable and unconditional waiver of all their moral rights in such
works.
4. Miscellaneous. This Assignment shall be governed by, and interpreted in
accordance with, the laws of England and Wales without reference to its conflict
of laws rules. Any provision of this Assignment may only be amended, modified,
waived or supplemented in whole or in part at any time by an agreement in
writing among the Parties executed in the same manner as this Assignment. No
failure on the part of any Party to exercise, and no delay in exercising, any
right shall operate as waiver thereof, nor shall any single or partial exercise
by either Party of any right preclude any other or future exercise thereof or
the exercise of any other right. This Assignment shall bind and inure to the
benefit of the respective Parties and their assigns, transferees and successors.
It is intended by the Parties that this Assignment shall be effected as a deed
and may be executed in two or more counterparts, each of which shall be deemed
to constitute an original, but all of which together shall constitute one and
the same document.
[Remainder of this Page Intentionally Left Blank]
Trademark Assignment
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IN WITNESS WHEREOF, the Parties have caused this Trademark Assignment to
be executed and delivered as a deed on the date first written above by their
respective officers thereunto duly authorized.
SELLERS:
Executed as a deed by Executed as a deed by
VERSO TECHNOLOGIES, INC. in accordance MCK COMMUNICATIONS, INC. (NV) in
with its Articles of Incorporation accordance with its Articles of
Incorporation
By: /s/ Xxxxxx X. Xxxxxxx By: /s/ Xxxxxx X. Xxxxxxx
------------------------------- ------------------------------
Name: Xxxxxx X. Xxxxxxx Name: Xxxxxx X. Xxxxxxx
----------------------------- ----------------------------
Title: Executive Vice President and Title: Vice President
Chief Financial Officer ---------------------------
----------------------------
Executed as a deed by Executed as a deed by
MCK COMMUNICATIONS, INC. (DE) in MCK TELECOMMUNICATIONS INC. in
accordance with its Certificate of accordance with its Articles of
Incorporation Incorporation
By: /s/ Xxxxxx X. Xxxxxxx By: /s/ Xxxxxx X. Xxxxxxx
------------------------------ ------------------------------
Name: Xxxxxx X. Xxxxxxx Name: Xxxxxx X. Xxxxxxx
---------------------------- ----------------------------
Title: Vice President Title: President
--------------------------- ---------------------------
Executed as a deed by
DIGITAL TECHNIQUES, INC. in accordance with
its Articles of Incorporation
By: /s/ Xxxxxx X. Xxxxxxx
------------------------------
Name: Xxxxxx X. Xxxxxxx
----------------------------
Title: Vice President
---------------------------
PURCHASER:
Executed as a deed by
CITEL TECHNOLOGIES LIMITED in accordance
with its constitution
Acting by:
/s/ Xxxxxxx Xxxxxx Xxxxxxxx
----------------------------------
Director
/s/ Xxxxxxxx X. Xxxxxxx
----------------------------------
Director / Secretary
Trademark Assignment
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ANNEX A
ASSIGNED TRADEMARKS
XXXX NUMBER DATE REGISTERED APPLICANT/REGISTRANT
MCK plus symbol Reg. No.: 2,713,809 05/06/2003 MCK Communications, Inc. a Nevada corporation
CAMPUSCONNEX Serial No. 76/498,497 Abandoned for failure MCK Communications, Inc. a Nevada corporation
to file statement of use
SETCONNEX Serial No. 76/325,016 Abandon in due course: no MCK Communications, Inc. a Nevada corporation
record of a third extension
having been filed by the
05/05/2004 deadline
MCK EXTENDER Reg. No.: 2,704,962 04/08/2003 MCK Communications, Inc., a Nevada corporation
PBXGATEWAY Reg. No.: 2,497,294 10/09/2001 MCK Communications, Inc. a Nevada corporation
Supplemental
KNOWLEDGE CENTER Reg. No.: 2,667,646 12/31/2002 Digital Techniques, Inc., a Texas corporation
REMOTECONNEX PBXGATEWAY Reg. No.: 2,738,556 07/15/2003 MCK Communications, Inc., a Nevada corporation
TELEBRIDGE Reg. No.: TMA447154 09/01/1995 MCK Telecommunications Inc.
Unregistered Trademark: MobileConnex
Trademark Assignment
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