INTELLECTUAL PROPERTY SECURITY AGREEMENT
Exhibit 10.4
TRADEMARK SECURITY AGREEMENT dated as of February 21, 2023 (this “Agreement”), among Grocery Outlet Inc., a California corporation (the “Grantor”) and Bank of America, N.A. in its capacity as Collateral Agent for the Secured Parties party to the Credit Agreement referred to below (in such capacity, together with its successors, assigns, designees and sub-agents in such capacity, the “Collateral Agent”).
WHEREAS, reference is made to (a) the Credit Agreement dated as of February 21, 2023 (as amended, increased, extended restated, amended and restated, supplemented or otherwise modified from time to time, the “Credit Agreement”), by and among Grocery Outlet Holding Corp., a Delaware corporation (the “Borrower”), the lenders from time to time party thereto (the “Lenders”), Bank of America, as the Administrative Agent, the Collateral Agent, Letter of Credit Issuer and Swingline Lender, and the other parties from time to time party thereto and (b) the Pledge and Security Agreement dated as of February 21, 2023 (the “Security Agreement”), by and among the Borrower, the Grantor, the other Subsidiary Parties (as defined therein) from time to time party thereto, the Additional Parties (as defined therein) from time to time party thereto and the Collateral Agent;
WHEREAS, the Lenders, the Swingline Lender and the Letter of Credit Issuers have agreed to extend credit to the Borrower subject to the terms and conditions set forth in the Credit Agreement; and
WHEREAS, the Grantor is willing to execute and deliver this Agreement as consideration for such extensions of credit.
NOW, THEREFORE, for good and valuable consideration, the sufficiency of which is hereby acknowledged, the parties hereto agree as follows:
SECTION 1. Terms. Capitalized terms used in this Agreement and not otherwise defined herein have the meanings specified in the Security Agreement or the Credit Agreement, as applicable.
SECTION 2. Grant of Security Interest. As security for the prompt and complete payment or performance, as the case may be, in full of the Obligations, the Grantor hereby pledges, collaterally assigns, mortgages, transfers and grants to the Collateral Agent, its successors and permitted assigns, for the benefit of the Secured Parties, a continuing security interest (the “Security Interest”) in all of such Grantor’s right in, and title and interest to and under the following assets, whether now owned by or owing to, or hereafter acquired by or arising in favor of such Grantor, but excluding any Excluded Property (the “Collateral”):
all (a) trademarks, service marks, trade names, corporate names, company names, business names, fictitious business names, trade styles, trade dress, logos, slogans, other source or business identifiers, now existing or hereafter adopted or acquired, whether registered or unregistered, and all registrations, recordings and applications for registration filed in connection with the foregoing, including the registrations and applications for registration in the U.S. Patent and Trademark Office listed on Schedule I hereto, (b) all goodwill associated therewith or symbolized thereby, (c) all extensions or renewals thereof, (d) all rights to sue or otherwise recover for any past, present and future infringement, dilution, or other violation thereof, (e) all Proceeds of the foregoing, including, without limitation, license fees, royalties, income, payments, claims, damages, proceeds of suit and other payments now or hereafter due and/or payable with respect thereto, and (f) all other rights of any kind accruing thereunder or pertaining thereto throughout the world (but excluding, for the avoidance of doubt, any intent-to-use application prior to the filing and acceptance of a “Statement of Use” or “Amendment to Allege Use” notice and/or filing with respect thereto but only to the extent that, and solely during the period if any in which, the grant of a security interest therein would impair the
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validity or enforceability of such intent-to-use trademark applications (or the resulting trademark registrations)).
SECTION 3. Security Agreement. The Security Interest granted to the Collateral Agent herein is granted in furtherance, and not in limitation, of the security interests granted to the Collateral Agent pursuant to the Security Agreement. Each Grantor hereby acknowledges and affirms that the rights and remedies of the Collateral Agent with respect to the Collateral are more fully set forth in the Security Agreement, the terms and provisions of which are hereby incorporated herein by reference as if fully set forth herein. In the event of any conflict between the terms of this Agreement and the Security Agreement, the terms of the Security Agreement shall govern.
SECTION 4. Counterparts. This Agreement may be executed in counterparts (and by different parties hereto on different counterparts), each of which shall constitute an original but all of which when taken together shall constitute a single contract. Delivery of an executed signature page to this Agreement by facsimile or other electronic transmission shall be effective as delivery of a manually signed counterpart of this Agreement.
SECTION 5. GOVERNING LAW. THIS AGREEMENT AND THE RIGHTS AND OBLIGATIONS OF THE PARTIES HEREUNDER SHALL BE GOVERNED BY, AND CONSTRUED AND INTERPRETED IN ACCORDANCE WITH, THE LAW OF THE STATE OF NEW YORK.
SECTION 6. INTERCREDITOR AGREEMENT GOVERNS. NOTWITHSTANDING ANYTHING HEREIN TO THE CONTRARY, THE LIENS AND SECURITY INTERESTS GRANTED TO THE COLLATERAL AGENT FOR THE BENEFIT OF THE SECURED PARTIES PURSUANT TO THIS AGREEMENT AND THE EXERCISE OF ANY RIGHT OR REMEDY BY THE COLLATERAL AGENT WITH RESPECT TO ANY COLLATERAL HEREUNDER ARE SUBJECT TO THE PROVISIONS OF ANY APPLICABLE INTERCREDITOR AGREEMENT. IN THE EVENT OF ANY CONFLICT BETWEEN THE PROVISIONS OF ANY APPLICABLE INTERCREDITOR AGREEMENT AND THIS AGREEMENT, THE PROVISIONS OF SUCH INTERCREDITOR AGREEMENT SHALL GOVERN AND CONTROL. SO LONG AS AN INTERCREDITOR AGREEMENT IS OUTSTANDING, THE REQUIREMENT OF THIS AGREEMENT OR ANY OTHER CREDIT DOCUMENT TO DELIVER COLLATERAL TO THE COLLATERAL AGENT (OR ANY REPRESENTATION OR WARRANTY HAVING THE EFFECT OF REQUIRING THE SAME) SHALL BE DEEMED SATISFIED (OR ANY SUCH REPRESENTATION OR WARRANTY SHALL BE DEEMED TRUE BY DELIVERY OF SUCH COLLATERAL TO THE CONTROLLING COLLATERAL AGENT (OR SUCH SIMILAR TERM AS DEFINED IN THE INTERCREDITOR AGREEMENT) AS BAILEE OF, AND BEHALF OF, THE COLLATERAL AGENT PURSUANT TO THE TERMS OF THE INTERCREDITOR AGREEMENT).
[Signature Pages Follow]
IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement as of the day and year first above written.
GROCERY OUTLET INC., a California corporation as Grantor | |||||||||||||||||
| By: | /s/ Xxxxxxx X. Xxxxxxx | ||||||||||||||||
| Name: | Xxxxxxx X. Xxxxxxx | ||||||||||||||||
| Title: | Executive Vice President and Chief Financial Officer | ||||||||||||||||
BANK OF AMERICA, N.A., as Collateral Agent | |||||||||||||||||
| By: | /s/ Xxxxxxxxx Xxxxxx | ||||||||||||||||
| Name: | Xxxxxxxxx Xxxxxx | ||||||||||||||||
| Title: | AVP | ||||||||||||||||
[SIGNATURE PAGE TO COPYRIGHT SECURITY AGREEMENT]
SCHEDULE I
U.S. Trademark Registrations and Applications
Trademark Registrations
| Xxxx | Xxx. No. | Reg. Date | ||||||
| WOW! (Stylized) | 6834292 | 08/30/2022 | ||||||
| HARVEST DAY | 6691997 | 04/05/2022 | ||||||
| LOW CARB FOR NOT A LOT OF COIN | 6679895 | 03/22/2022 | ||||||
| SEE YOU LATER SUPER SAVER | 6464373 | 08/24/2021 | ||||||
| SO FRESH YOU'LL FEEL LIKE SINGING GUARANTEED | 6464372 | 08/24/2021 | ||||||
| WELCOME TO BARGAIN BLISS | 6464371 | 08/24/2021 | ||||||
| GET MORE PIZZA FOR LESS DOUGH | 6464370 | 08/24/2021 | ||||||
| GET MORE KALE FOR LESS CABBAGE | 6464369 | 08/24/2021 | ||||||
| FEELS LIKE FALLING IN LOVE ON EVERY AISLE | 6456156 | 08/17/2021 | ||||||
| THE SAVINGS ARE REAL, THE FEELING IS PURE BLISS | 6449249 | 08/10/2021 | ||||||
| MORE FROMAGE FOR LESS CHEESE | 6449248 | 08/10/2021 | ||||||
| THOSE AREN'T ANGELS SINGING. THAT'S YOUR WALLET. | 6449247 | 08/10/2021 | ||||||
| HARVEST DAY | 6380520 | 06/08/2021 | ||||||
| XXXXXX ST. COFFEE | 6247724 | 01/12/2021 | ||||||
| BARGAIN BLISS | 6240333 | 01/05/2021 | ||||||
| HIP HIP SYRAH | 6081066 | 06/16/2020 | ||||||
| NOSH NATURAL ORGANIC SPECIALTY HEALTHY and Design | 6077840 | 06/16/2020 | ||||||
| NOSH and Design | 6077839 | 06/16/2020 | ||||||
| WESTSIDE BAKEHOUSE | 5956990 | 01/07/2020 | ||||||
| GROCERY OUTLET BARGAIN MARKET and Design | 5920283 | 11/26/2019 | ||||||
| GROCERY OUTLET BARGAIN MARKET and Design | 5766564 | 06/04/2019 | ||||||
| HARVEST DAY | 5619256 | 11/27/2018 | ||||||
| WOW! SAVE 50% OR MORE and Design | 5372725 | 01/09/2018 | ||||||
| HARVEST DAY | 5325344 | 10/31/2017 | ||||||
| BARGAINOMICS | 5313378 | 10/17/2017 | ||||||
| WOW! | 5306956 | 10/10/2017 | ||||||
| WOW! and Design | 5218984 | 06/06/2017 | ||||||
| NOSH NATURAL - ORGANIC - SPECIALTY - HEALTHY and Design | 5093914 | 12/06/2016 | ||||||
| NOSH and Design | 5093913 | 12/06/2016 | ||||||
| NOSH | 5067165 | 10/25/2016 | ||||||
| GROCERY OUTLET BARGAIN MARKET | 4888093 | 01/19/2016 | ||||||
| GO and Design | 4769584 | 07/07/2015 | ||||||
| GROCERY OUTLET BARGAIN MARKET and Design | 4479224 | 02/04/2014 | ||||||
| XXXXX UNDERSPEND | 4249977 | 11/27/2012 | ||||||
| XXXX PRICES | 4249976 | 11/27/2012 | ||||||
| XXXX | 4249975 | 11/27/2012 | ||||||
| XXX XXXXX | 4249974 | 11/27/2012 | ||||||
| NOSH | 4247576 | 11/20/2012 | ||||||
| FRUGAL FRIENDS | 4245918 | 11/20/2012 | ||||||
| BIG BRANDS. LITTLE PRICES. | 4190431 | 08/14/2012 | ||||||
| INDEPENDENCE FROM HUNGER | 4135088 | 05/01/2012 | ||||||
| INDEPENDENCE FROM HUNGER | 4135086 | 05/01/2012 | ||||||
| LADY XXX | 3779585 | 04/20/2010 | ||||||
| CANNED FOODS GROCERY OUTLETS | 3701241 | 10/27/2009 | ||||||
| GROCERY OUTLET BARGAIN MARKET | 3604714 | 04/07/2009 | ||||||
| BARGAINS ON BRANDS YOU TRUST! | 2964247 | 06/28/2005 | ||||||
| GROCERY OUTLET BARGAINS ONLY! and Design | 2775580 | 10/21/2003 | ||||||
| GROCERY OUTLET BARGAINS ONLY! | 2715156 | 05/13/2003 | ||||||
Trademark Application
| Mark | Appl. No. | Filing Date | ||||||
| THE WOW CROUD | 90389548 | 12/17/2020 | ||||||
