AMENDED AND RESTATED U.S. INTELLECTUAL PROPERTY SECURITY AGREEMENT

Exhibit 10.3
EXECUTION COPY
AMENDED AND RESTATED U.S. INTELLECTUAL PROPERTY SECURITY AGREEMENT
This AMENDED AND RESTATED U.S. INTELLECTUAL PROPERTY SECURITY AGREEMENT (as amended, amended and restated, supplemented or otherwise modified from time to time, the “U.S. IP Security Agreement”) dated as of October 14, 2011, is made by the Persons listed on the signature pages hereof (collectively, the “Grantors”) in favor of Bank of America, N.A. (“Bank of America”), as agent (the “Agent”) for the Secured Parties (as defined in the Credit Agreement referred to below).
WHEREAS, United Rentals (North America), Inc., a Delaware corporation (the “Company”), is party to a Credit Agreement dated as of June 9, 2008, with Bank of America, as Agent, United Rentals, Inc., a Delaware corporation (“Holdings”), the U.S. Subsidiary Borrowers, United Rentals of Canada, Inc., a corporation amalgamated under the laws of the Province of Ontario (“URC”), United Rentals Financing Limited Partnership, a Delaware partnership (the “Specified Loan Borrower”), the other Guarantors and the lenders party thereto (as amended, restated, amended and restated, supplemented or otherwise modified prior to the date hereof, the “Existing Credit Agreement”);
WHEREAS, as of the date hereof, the Existing Credit Agreement is being amended and restated, without constituting a novation, pursuant to an amended and restated Credit Agreement, dated as of even date herewith (as amended, restated, amended and restated, supplemented or otherwise modified from time to time, the “Credit Agreement”), among Holdings, the Company, the other U.S. Borrowers, URC as the Canadian Borrower, the Specified Loan Borrower, the Guarantors, Bank of America, N.A., as Agent, and the Lenders party thereto; terms defined in the Credit Agreement and not otherwise defined herein are used herein as defined in the Credit Agreement;
WHEREAS, in connection with the Existing Credit Agreement, each Grantor (and certain other grantors party thereto) entered into a U.S. Intellectual Property Security Agreement, dated as of June 9, 2008 (as amended, restated, extended, supplemented or otherwise modified in writing prior to the date hereof, the “Existing U.S. IP Security Agreement”);
WHEREAS, as a condition precedent to the amendment and restatement of the Existing Credit Agreement by the entering into of the Credit Agreement, the maintaining and making of the Loans, the issuance of Letters of Credit by any Letter of Credit Issuer and Lenders’ and their Affiliates willingness to extend other financial accommodations under the Credit Agreement, each Grantor has executed and delivered that certain Amended and Restated U.S. Security Agreement dated as of October 14, 2011 made by the Grantors, certain other parties and the Agent (as amended, amended and restated, supplemented or otherwise modified from time to time, the “U.S. Security Agreement”);
WHEREAS, under the terms of the U.S. Security Agreement, the Grantors have granted to the Agent, for the ratable benefit of the Secured Parties, a security interest in, among other property, certain intellectual property of the Grantors, and have agreed as a condition thereof to execute this U.S. IP Security Agreement for recording with the U.S. Patent and Trademark Office, the United States Copyright Office and, to the extent agreed upon and applicable, other foreign governmental authorities;

 

 

 

NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, each Grantor agrees that the Existing U.S. IP Security Agreement shall be amended and restated as follows:
SECTION 1. Grant of Security. Each Grantor hereby grants to the Agent for the ratable benefit of the Secured Parties a security interest in all of such Grantor’s right, title and interest in and to the following (the “Collateral”):
(A) the patents and patent applications set forth in Schedule A hereto (the “Patents”);
(B) the trademark and service xxxx registrations and applications set forth in Schedule B hereto (provided that no security interest shall be granted in United States intent-to-use trademark applications to the extent that, and solely during the period in which, the grant of a security interest therein would impair the validity or enforceability of such intent-to-use trademark applications under applicable federal law), together with the goodwill symbolized thereby (the “Trademarks”);
(C) all copyrights, whether registered or unregistered, now owned or hereafter acquired by such Grantor, including, without limitation, the copyright registrations and applications set forth in Schedule C hereto (the “Copyrights”);
(D) all reissues, divisions, continuations, continuations-in-part, extensions, renewals and reexaminations of any of the foregoing, and, to the extent applicable, all rights in the foregoing provided by international treaties or conventions, all rights corresponding thereto throughout the world and all other rights of any kind whatsoever of such Grantor accruing thereunder or pertaining thereto;
(E) any and all claims for damages and injunctive relief for past, present and future infringement, dilution, misappropriation, violation, misuse or breach with respect to any of the foregoing, with the right, but not the obligation, to xxx for and collect, or otherwise recover, such damages; and
(F) any and all proceeds of, collateral for, income, royalties and other payments now or hereafter due and payable with respect to, and supporting obligations relating to, any and all of the Collateral of or arising from any of the foregoing.
SECTION 2. Security for Obligations. The grant of a security interest in, the Collateral by each Grantor under this U.S. IP Security Agreement secures the payment of all Obligations of such Grantor now or hereafter existing under or in respect of the Loan Documents, whether direct or indirect, absolute or contingent, and whether for principal, reimbursement obligations, interest, premiums, penalties, fees, indemnifications, contract causes of action, costs, expenses or otherwise. Without limiting the generality of the foregoing, this U.S. IP Security Agreement secures, as to each Grantor, the payment of all amounts that constitute part of the Obligations and that would be owed by such Grantor to any Secured Party under the Loan Documents but for the fact that such Obligations are unenforceable or not allowable due to the existence of a bankruptcy, reorganization or similar proceeding involving a Loan Party.

 

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SECTION 3. Recordation. Each Grantor authorizes and requests that the Register of Copyrights, the Commissioner for Patents and the Commissioner for Trademarks and, to the extent agreed upon and applicable, any other applicable government office, record this U.S. IP Security Agreement.
SECTION 4. Execution in Counterparts. This U.S. IP Security Agreement may be executed in any number of counterparts, each of which when so executed shall be deemed to be an original and all of which taken together shall constitute one and the same agreement.
SECTION 5. Grants, Rights and Remedies. This U.S. IP Security Agreement has been entered into in conjunction with the provisions of the Amended and Restated U.S. Security Agreement. Each Grantor does hereby acknowledge and confirm that the grant of the security interest hereunder to, and the rights and remedies of, the Agent with respect to the Collateral are more fully set forth in the Amended and Restated U.S. Security Agreement, the terms and provisions of which are incorporated herein by reference as if fully set forth herein.
SECTION 6. Additional Grantors. Upon the execution and delivery by any Person of an intellectual property security agreement supplement in substantially the form of Exhibit A hereto (each a “IP Security Agreement Supplement”), such Person shall be referred to as an “Additional Grantor” and shall be and become a Grantor hereunder, and each reference in this Agreement and the other Loan Documents to “Grantor” shall also mean and be a reference to such Additional Grantor, each reference in this Agreement and the other Loan Documents to the “Collateral” shall also mean and be a reference to the Collateral granted by such Additional Grantor and each reference in this Agreement to a Schedule shall also mean and be a reference to the schedules attached to such IP Security Agreement Supplement.
SECTION 7. Governing Law. This U.S. IP Security Agreement shall be governed by, and construed in accordance with, the laws of the State of New York.
SECTION 8. Amendment and Restatement. On the date hereof, the Existing U.S. IP Security Agreement is hereby amended, restated and superseded in its entirety by this U.S. IP Security Agreement. The parties hereto acknowledge and agree that (i) this U.S. IP Security Agreement and the other Loan Documents executed and delivered in connection herewith do not constitute a novation, payment and reborrowing, or termination of the “Obligations” (as defined under the Existing Credit Agreement) or any of the other Loan Documents; (ii) such “Obligations” are in all respects continuing (as amended and restated on the date hereof); and (iii) the security interests, Lien and pledge granted under the Existing U.S. IP Security Agreement and the other Loan Documents are in all respects continuing and in full force and effect and are hereby fully ratified and affirmed in favor of the Agent, for the benefit of the Secured Parties. Without limiting the foregoing, each of the Grantors hereby fully and unconditionally ratifies and affirms this U.S. IP Security Agreement and agrees that all security interests, Liens and pledges granted hereunder and under the Existing U.S. IP Security Agreement shall from and after the date hereof secure all Obligations hereunder and under the other Loan Documents.
[Remainder of this Page Intentionally Left Blank]

 

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IN WITNESS WHEREOF, each of the parties hereto has caused this Agreement to be executed and delivered by its duly authorized officer as of the date first set forth above.
         
  GRANTORS:

UNITED RENTALS, INC.
 		  
  By:   /s/ Xxxxx Xxxxxxxxx  
    Name:   Xxxxx Xxxxxxxxx  
    Title:   Senior Vice President and Treasurer  
 
  UNITED RENTALS (NORTH AMERICA), INC.
 		  
  By:   /s/ Xxxxx Xxxxxxxxx  
    Name:   Xxxxx Xxxxxxxxx  
    Title:   Senior Vice President and Treasurer  
 
  UNITED RENTALS NORTHWEST, INC.
 		  
  By:   /s/ Xxxxx Xxxxxxxxx  
    Name:   Xxxxx Xxxxxxxxx  
    Title:   Vice President and Treasurer  
 
  UNITED RENTALS FINANCING LIMITED PARTNERSHIP

By its General Partner, United Rentals of Nova Scotia (No. 1), ULC
 		  
  By:   /s/ Xxxxx Xxxxxxxxx  
    Name:   Xxxxx Xxxxxxxxx  
    Title:   Vice President and Treasurer  
 

 

 

 

         
  UNITED RENTALS (DELAWARE), INC.
 		  
  By:   /s/ Xxxxx Xxxxxxxxx  
    Name:   Xxxxx Xxxxxxxxx  
    Title:   Vice President and Treasurer  
 
  UNITED RENTALS HIGHWAY TECHNOLOGIES GULF, LLC
 		  
  By:   /s/ Xxxxx Xxxxxxxxx  
    Name:   Xxxxx Xxxxxxxxx  
    Title:   Vice President and Treasurer  
 
  UNITED RENTALS OF NOVA SCOTIA (NO. 1), ULC
 		  
  By:   /s/ Xxxxx Xxxxxxxxx  
    Name:   Xxxxx Xxxxxxxxx  
    Title:   Vice President and Treasurer  
 
  UNITED RENTALS OF NOVA SCOTIA (NO. 2), ULC
 		  
  By:   /s/ Xxxxx Xxxxxxxxx  
    Name:   Xxxxx Xxxxxxxxx  
    Title:   Vice President and Treasurer  
 
  AGENT:

BANK OF AMERICA, N.A., as Agent
 		  
  By:   /s/ Xxxxxxx X. Xxxxxxxx   
    Name:   Xxxxxxx X. Xxxxxxxx   
    Title:   Senior Vice President   
 

 

 

 

Solely for purposes of acknowledging Section 25 hereto:
         
  INFOMANAGER INC.
 		  
  By:   /s/ Xxxxx Xxxxxxxxx  
    Name:   Xxxxx Xxxxxxxxx  
    Title:   Vice President and Treasurer  
 
  UNITED RENTALS REALTY LLC

By United Rentals (North America), Inc., as its Sole Member
 		  
  By:   /s/ Xxxxx Xxxxxxxxx  
    Name:   Xxxxx Xxxxxxxxx  
    Title:   Vice President and Treasurer  
 
  XXXXX SYSTEMS, INC.
 		  
  By:   /s/ Xxxxx Xxxxxxxxx  
    Name:   Xxxxx Xxxxxxxxx  
    Title:   Vice President and Treasurer  
 

 

 

 

EXECUTION COPY
SCHEDULE A
PATENTS
None

 

 

 

SCHEDULE B
Trademarks
                                     
                            Next        
    App   Reg           File   Reg   Renew        
Trademark   Number   Number   Status   Country   Date   Date   Date   Class   Owner
THE RIGHT EQUIPMENT. RIGHT NOW!
   75/921,000   0000000   Registered   United States of America   17-Feb-2000   09-Jan-2001   09-Jan-2021   035, 042   UNITED RENTALS, INC.
THE UNDERGROUND EQUIPMENT SPECIALIST
   75/756,000   0000000   Registered   United States of America   21-Jul-1999   05-Dec-2000   05-Dec-2020   37   UNITED RENTALS, INC.
UNITED RENTALS
   75/445,000   0000000   Registered   United States of America   05-Mar-1998   07-Aug-2001   07-Aug-2021   035, 037, 042   UNITED RENTALS, INC.
UNITED RENTALS MISCELLANEOUS DESIGN
   75/449,210   2,406,720   Registered   United States of America   12-Mar-1998   12-Nov-2000   12-Nov-2020   035, 037, 042   UNITED RENTALS, INC.
URDATA
   76/011015   2497914   Registered   United States of America   24-Mar-2000   16-Oct-2001   16-Oct-2021   35   UNITED RENTALS, INC.
GOT TOOLS?
   78/401,442   3,034,458   Registered   United States of America   14-Apr-2004   27-Dec-2005   27-Dec-2015   Int’l Cl. 37   URNA (ASSIGNMENT TO URI PENDING)
ALL THE RIGHT TOOLS
   76/376,777   3,069,631   Registered   United States of America   28-Feb-2002   21-Mar-2006   21-Mar-2016   Int’l Cl. 37   URNA (ASSIGNMENT TO URI PENDING)
THE TOOLS TO SATISFY
   78/622,914   3,085,242   Registered   United States of America   04-May-2005   25-Apr-2006   25-Apr-2016   Int’l Cl. 37   URNA (ASSIGNMENT TO URI PENDING)
LEASCO
   76/376,463   2,921,928   Registered   United States of America   28-Feb-2002   28-Feb-2002   01-Feb-2015   Int’l Cl. 37   URNA (ASSIGNMENT TO URI PENDING)
US RENTALS & DESIGN
   74141973   1735268   Registered   United States of America   25-Feb-1991   24-Nov. 1992       Int’l CL 37, 39   UNITED RENTALS (NORTH AMERICA) INC.
UNITED GUARD
   85342236   N/A   Pending   United States of America   9-June-2001   N/A   N/A   Int’l CL 36   UNITED RENTALS, INC.
UNITED RENTALS & DESIGN
   853319031   N/A   Pending   United States of America   6-June-2011   N/A   N/A   Int’l CL 35, 17, 42   UNITED RENTALS, INC.
VERTICADE
   76141032   2613339   Registered   United States of America   4-Oct-2000   27-Aug.-2002       Int’l CL 9   UNITED RENTALS, INC.

 

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SCHEDULE C
Copyrights
None

 

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Filed: October 17th, 2011
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