TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT "Agreement"), effective as of March 31,
1995, is made by and between CARALOE, INC. ("Licensor"), a Texas corporation,
having its principal place of business at 0000 Xxxxxx Xxxx Xxxx, Xxxxxx, Xxxxx
00000, and EMPRISE INTERNATIONAL, INC. ("Licensee"), a Texas corporation, having
its principal place of business at 0000 Xxxxx Xxxxxxx 000, Xxxxx Xxxxxxx, Xxxxx
00000.
WITNESSETH:
WHEREAS, simultaneously with the execution of this Agreement, Licensor and
Licensee are entering into an exclusive Supply Agreement of even date herewith
(the "Supply Agreement") for the sale by Licensor and purchase by Licensee of
bulk aloe xxxx mucilaginous polysaccharide (hereinafter referred to under the
product name of "MANAPOL-TM-") to be used in products manufactured by Licensee
also containing other substances (the "Manufactured Products");
WHEREAS, Xxxxxxxxxx Laboratories, Inc., a Texas corporation ("Xxxxxxxxxx"),
claims the ownership of the trademark MANAPOL-TM- (the "Xxxx") and has granted
to Licensor a license to use the Xxxx and to license others to use it on an
exclusive and/or a nonexclusive basis;
WHEREAS, Licensee is desirous of obtaining from Licensor, and Licensor is
willing to grant to Licensee, a license to use the product name MANAPOL-TM- (the
"Xxxx") in connection with the advertising and sale of the Manufactured Products
subject to the terms, conditions and restrictions set forth herein; and
WHEREAS, Licensor and Licensee are mutually desirous of insuring the
consistent quality of all products sold in connection with the Xxxx;
NOW, THEREFORE, in consideration of premises, the mutual covenants,
promises and agreement set forth herein, and other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
parties hereby covenant, promise and agree as follows:
Article 1
LICENSE
1.1 TERMS AND CONDITIONS. Licensor hereby grants to Licensee the
non-transferable right and license to use the Xxxx in connection with the
labeling, advertising and sale of Manufactured Products manufactured and sold
by Licensee during the term of this Agreement. During the term of this
Agreement, Licensee shall have (a) the exclusive right to use the Xxxx in
connection with Manufactured Products containing MANAPOL-TM- that are intended
for sale to the ultimate consumer in the United States, Canada and Mexico, and
(b) the non-exclusive right to use the Xxxx in connection with Manufactured
Products containing MANAPOL-TM- that are intended for sale to the ultimate
consumer in places other than the United States, Canada and Mexico.
1.2 LICENSE COTERMINOUS WITH SUPPLY AGREEMENT. The license
granted by this Agreement shall run conterminously with the Supply Agreement,
and any actions or events which shall operate to extend or terminate the Supply
Agreement shall automatically extend or terminate this Agreement simultaneously.
1.3 SUBLICENSES. Licensee shall not have the right without written
permission from Licensor to grant sublicenses with respect to the license
granted herein; however, Licensee may engage a third party or parties to make
and affix labels for the Manufactured Products in compliance with Articles 2, 3,
and 4 hereof, and/or to distribute and sell the Manufactured Products in
compliance with the terms and conditions of this Agreement. Licensee shall be
expressly obligated to ensure full compliance with all terms and conditions of
this Agreement.
Article 2
CERTAIN OBLIGATIONS OF LICENSEE
2.1 REPRESENTATIONS BY LICENSEE. Licensee shall not represent in any
manner that it owns any right, title or interest in or to the Xxxx. Licensee
acknowledges that its use of the Xxxx shall inure to the benefit of Licensor and
shall not create in Licensee's favor any right, title or interest in or to the
Xxxx.
2.2 DISCONTINUATION OF USE OF XXXX. Upon the expiration or termination of
this Agreement, Licensee will cease and desist from all use of the Xxxx in any
manner and will not adopt or use, without Licensor's prior written consent, any
word or xxxx which is confusingly or deceptively similar to the Xxxx, except
that Licensee may continue to use the Xxxx under the terms and, conditions of
this Agreement in connection with any remaining supplies of MANAPOL-TM-
purchased by Licensee from Licensor until such supplies are exhausted.
2.3 STANDARDS. All products on which the Xxxx is used by Licensee shall be
of consistent quality and shall meet or exceed all standards set by Licensor, in
Licensor's sole discretion, from time to time. Licensee shall have thirty (30)
days from the receipt of written notice of any change in the standards to comply
with any new requirements.
2.4 FDA COMPLIANCE OF PRODUCTS. All products on which the Xxxx is used by
Licensee shall be manufactured, packaged, labeled, advertised, marketed and sold
in compliance with (i) the Federal Food, Drug and Cosmetic Act and the rules and
regulations promulgated thereunder, as amended from dine to time, and (ii) all
other applicable laws, rules and relations.
2.5 INSPECTION. Licensor reserves the right to inspect Licensee's
products bearing the Xxxx and Licensee's manufacturing facilities at all
reasonable times to insure Licensee's compliance with this Agreement.
2.6 USE OF TRADEMARK. Licensee shall not use the Xxxx except as
specifically set forth herein. Without limiting the generality of the preceding
sentence, Licensee shall not use the Xxxx in connection with the sale or
advertising of any products other than the Manufactured Products.
2.7 TRADEMARK REGISTRATION. At Licensor's request and expense and, except
as otherwise provided herein at Licensor's sole discretion and option, Licensee
shall take whatever action it reasonably necessary to assist Xxxxxxxxxx or its
assigns in registering the Xxxx with the U.S. Patent and Trademark Office
("USPTO") and/or in perfecting, protecting or enforcing Xxxxxxxxxx'x and
Licensor's rights in and to the Xxxx. Licensee understands that Xxxxxxxxxx or
its assigns may rely solely on Licensee's use of the Xxxx to obtain or maintain
registration with the USPTO.
Article 3
MANUFACTURING AND SALE
3.1 MANUFACTURING FACILITIES. All manufacturing of the Manufactured
Products shall be done in the Licensee's facilities or contract facilities that
Licensee confirms meets all terms of this Agreement, including without
limitation Sections 2.3 and 2.4.
3.2 COMBINATION WITH OTHER PRODUCTS. Licensee shall not combine
MANAPOL-TM- with any product or Substance in any manner which would violate any
laws, rules or regulations of any state, federal or other governmental body.
Licensee shall not combine MANAPOL-TM- with any other substance in a
Manufactured Product that is to be advertised or sold for use or consumption by
humans or animals if the approval of the U.S. Food and Drug Administration (the
"FDA") or the U.S. Departs of Agriculture ("USDA") for such use or consumption
is required and has not been obtained.
-2-
3.3 COMPLIANCE BY THIRD PARTIES. Licensee shall take all steps reasonably
necessary to ensure that its distributors and any other parties to whom it sells
any of the Manufactured Products for resale do not relabel, repackage,
advertise, sell or attempt to sell MANAPOL-TM- or any of the Manufactured
Products in a manner that would violate this Agreement if done by Licensee.
3.4 MANAPOL-TM- CONTENT. The amount of MANAPOL-TM- to be contained in
each Manufactured Product shall be determined by mutual written agreement of
Licensor and Licensee. The parties shall meet once each calendar quarter to
determine and agree upon the MANAPOL-TM- content for existing and proposed
Manufactured Products.
Article 4
LABELS AND ADVERTISING
4.1 FDA COMPLIANCE OF LABELS AND ADVERTISING. All labels and advertising
relating to the Manufactured Products offered in connection with the Xxxx must
strictly comply with all applicable rules and regulations of the FDA and all
other applicable laws, rules and regulations, including but not limited to FDA
requirements relating to product ingredients. Information regarding the
ingredients of MANAPOL-TM- shall be furnished to Licensee by Licensor from time
to time.
4.2 MANDATORY REQUIREMENTS. Licensee shall cause all labels, packaging,
advertising and promotional materials used by it in advertising, marketing and
selling any product manufactured by or on behalf of Licensee that contains
MANAPOL-TM- to contain (i) the Xxxx, (ii) a statement setting forth the
concentration of MANAPOL-TM- contained in such product, and (iii) the following
legend:
MANAPOL-TM- is a trademark of Xxxxxxxxxx laboratories, Inc.
4.3 CLAIMS BY LICENSEE. Licensee hereby agrees not to make, or permit any
of its employees, agents or distributors to make, any claims of any properties
or results relating to MANAPOL-TM- or any Manufactured Product, unless such
claims have received written approval from the FDA.
4.4 FDA OR USDA APPROVAL OF CLAIMS. If Licensee desires to seek FDA or
USDA approval as to any specific claims with respect to MANAPOL-TM- or any
Manufactured Product Licensee hereby agrees to (i) notify Licensor of the claims
and the application prior to filing and (ii) to keep Licensor informed as to the
progress of the application, including but not limited to sending Licensor
copies of all communications or notices to or from the FDA or USDA, as
applicable.
4.5 RIGHT TO APPROVE LABELS, ETC. If Licensor so requests, Licensee shall
not use any label, advertisement or marketing material that contains the Xxxx
unless such label, advertisement or marketing material has first been submitted
to and approved by Licensor. Licensor shall not unreasonably withhold its
approval of any such label, advertisement or marketing material.
Article 5
RIGHT OF FIRST REFUSAL
5.1 RIGHT OF FIRST REFUSAL. If, during the period of ninety (90) days
immediately following the effective date of this Agreement, Licensor receives
an offer from a third party to purchase quantities of MANAPOL-TM- and obtain an
exclusive license to use the Xxxx in connection with a product or products
containing MANAPOL-TM- that are intended for sale to the ultimate consumer in
places other than the United States, and Mexico, and such offer is acceptable to
Licensor, Licensor stall give prompt written notice to Licensee setting forth
the terms of such offer. If, within fifteen
-3-
(15) days after Licensee's receipt of such notice, Licensee notifies Licensor in
writing that Licensee is willing to enter into an agreement or agreements with
Licensor on the terms set forth in the third party's offer, Licensor and
Licensee shall enter into an agreement or agreements embodying the terms of such
offer and such other terms as Licensor and Licensee shall mutually agree upon;
provided, however, that Licensor shall not be obligated to enter into any such
agreement or agreements with Licensee if Licensee it in default under the terms
of this Agreement or the Supply Agreement.
Article 6
NEGATION OF WARRANTIES, DISCLAIMER AND INDEMNITY
6.1 NEGATION OF WARRANTIES, ETC. Nothing in this Agreement shall be
construed or interpreted as:
(a) a warranty or representation by Licensor that any product made, used,
sold or otherwise disposed of under the license granted in this Agreement is or
will be free of infringement or the like of the rights of third parties; or
(b) an obligation by Licensor to bring or prosecute actions or suits
against third parties for infringement or the like of the Xxxx or of any
registration that may subsequently be granted for such Xxxx; or
(c) granting by implication, estoppel or otherwise any licenses or rights
other than those expressly granted hereunder.
6.2 DISCLAIMER. LICENSOR MAKES NO REPRESENTATIONS, EXTENDS NO WARRANTIES
OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES
OF MERCHANTABILITY, FITNESS AND FITNESS FOR A PARTICULAR PURPOSE, AND ASSUMES NO
RESPONSIBILITIES WHATSOEVER WITH RESPECT TO THE USE, SALE OR OTHER DISPOSITION
BY LICENSEE OR ITS CUSTOMERS, VENDEES OR OTHER TRANSFEREES, WITH RESPECT TO THE
XXXX OR ANY PRODUCTS MADE OR SOLD BY LICENSEE.
6.3 LIABILITY OF LICENSEE FOR PRODUCTS. Licensee shall assume all
financial and other obligations for the products made and sold by it under this
Agreement and Licensor shall not incur any liability or responsibility to
Licensee or to third parties arising out of or connected in any manner with
Licensee's products made or sold pursuant to this Agreement. In no event shall
Licensor be liable for lost profits, special damages, consequential damages or
contingent liabilities arising out of or in any manner with this Agreement or
the products made or sold by Licensee under this Agreement.
6.4 INDEMNITY OF LICENSOR. Licensee agrees to defend, indemnify and in
hold Licensor, its officers, directors, employees and agents harmless, against
all claims, liabilities, demands, damages, expenses or losses arising out of or
connected with (a) the use by Licensee of the Xxxx or (b) any use, sale or other
disposition of Licensee's products by Licensee or by any other party.
6.5 NEGATION OF TRADEMARK WARRANTY. Licensee acknowledges that Licensor
makes no warranty, express or implied, with respect to its ownership of any
rights relating to the Xxxx.
Article 7
TERM AND TERMINATION
7.1 TERM. Unless terminated as provided for herein, this Agreement shall
remain in full force and effect for a five (5)-year period ending at midnight on
March 31, 2000. This Agreement may be extended or renewed
-4-
as provided in Section 1.2, or otherwise by the written agreement of the
parties.
7.2 BREACH OF AGREEMENT. Except as provided otherwise in Section 7.3, if
either party breaches any material provision of this Agreement and fails to cure
the breach within (30) days after receipt of written notice from the
nonbreaching party specifying the breach, then the nonbreaching party may
terminate this Agreement upon written notice to the breaching party, which right
of termination shall be in addition to, and not in lieu of, all other rights and
remedies the nonbreaching party may have against the breaching party under this
Agreement, at law or in equity. Failure by Licensor to give notice of
termination with respect to any such failure shall not be deemed a waiver of its
right at a later date to give such notice if such failure continues or again
occurs, or if another failure occurs. A breach by either party of a material
provision of the Supply Agreement shall be deemed a breach by such party of a
material provision of this Agreement.
7.3 IMMEDIATE TERMINATION. Licensor may immediately terminate this
Agreement, upon written notice to Licensee, upon the occurrence of any one or
more of the following events: (i) Licensee breaches any provision of Articles 2,
3, or 4; (ii) Licensee fails to purchase and/or to pay for the quantities of
MANAPOL-TM- that it is obligated to purchase and pay for under the Supply
Agreement in accordance with the terms thereof; (iii) Licensee voluntarily seeks
protection under any federal or state bankruptcy or insolvency laws; (iv) a
petition for bankruptcy or the appointment of a receiver is filed against
Licensee and is not dismissed within thirty (30) days thereafter; (v) Licensee
makes any assignment for the benefit of its creditors; or (vi) Licensee ceases
doing business.
7.4 SURVIVAL OF PROVISIONS. In the event of termination, cancellation or
expiration of this Agreement for any reason, Sections 2.2, 6.1, 6.2, 6.3, 6.4,
6.5 and 8.1 hereof shall survive such termination, cancellation or expiration
and remain in full force and effect.
Article 8
MISCELLANEOUS
8.1 EQUITABLE RELIEF. A breach or default by Licensee of any of the
provisions of Articles 2,3 and 4 hereof shall cause Licensor to suffer
irreparable harm and, in such event, Licensor shall be entitled, as a matter of
right, to a restraining order and other injunctive relief from any court of
competent jurisdiction, restraining any further violation thereof by Licensee,
its officers, agents, servants, employees and those persons in active concert or
participation with them. The right to a restraining order or other injunctive
relief shall be supplemental to any other right or remedy Licensor may have,
including, without limitation, the recovery of damages for the breach or default
of any of the terms of this Agreement.
8.2 AMENDMENT. This Agreement may be changed, modified, or amended only by
an instrument in writing duly executed by each of the parties hereto.
8.3 ENTIRE AGREEMENT. This Agreement constitutes the full and complete
agreement of the parties hereto and supersedes any and all prior understandings,
whether written or oral, with respect to the subject matter hereof, including
the Trademark License Agreement between the parties dated May 16, 1994.
8.4 NO WAIVER. The failure of either party to insist upon strict
performance of any obligation hereunder by the other party, irrespective of the
length of time for which such failure continues, shall not be a waiver of its
right to demand strict compliance in the future. No consent or waiver, express
or implied, by either party to or of any breach or default in the performance of
any obligation hereunder by the other party shall constitute a consent or waiver
to or of any other breach or default in the performance of the same or any other
obligation hereunder.
8.5 NOTICES. All Notices required or permitted to be made or given
pursuant to this Agreement shall be in writing and shall be considered as
properly given or when personally delivered or when duly deposited in the mails,
-5-
first class mail, postage prepaid, or when transmitted by prepaid telegram, and
addressed to the applicable address first above written or to such other address
as the addressee shall have theretofore specified in a written notice to the
notifying Party.
8.6 ASSIGNMENT. This Agreement or any of the rights or obligations created
herein may be assigned, in whole or in part, by Licensor. However, this
Agreement is personal to Licensee, and Licensee may not assign this Agreement or
any of its rights, duties or obligations under this Agreement to any third party
without Licensor's prior written consent, and any attempted assignment by
Licensee not in accordance with this Section 3.6 shall be void.
8.7 RELATIONSHIP OF PARTIES. Nothing contained herein shall be construed
to create or constitute any employment, agency, partnership or joint venture
arrangement by and between the parties, and neither of them has the power or
authority, express or implied, to obligate or bind the other in any manner
whatsoever.
8.8 REMEDIES CUMULATIVE. Unless otherwise expressly provided herein, the
rights and remedies hereunder are in addition to, and not in limitation of, any
other rights and remedies, at law or in equity, and the exercise or one right or
remedy will not be deemed a waiver other right or remedy.
8.9 SUCCESSORS AND ASSIGNS. The provisions of this Agreement shall be
binding upon and inure to the benefit of the parties and their respective
successors and assigns, PROVIDED, HOWEVER, that the foregoing shall not be
deemed to expand or otherwise affect the limitations on assignment and
delegation set forth in Section 3.6 hereof, and except as otherwise expressly
provided in this Agreement, no other person or business entity is intended to or
shall have any right or interest under this Agreement.
8.10 GOVERNING LAW. Agreement shall be governed by and interpreted,
construed and enforced in accordance with the laws of the State of Texas,
excluding, however, any conflicts of law rules that would require the
application of the laws of any other state or country.
8.11 HEADINGS. The headings used in this Agreement are for convenience of
reference only and shall not be used to interpret this Agreement.
8.12 COUNTERPARTS. This Agreement may be exceed in multiple counterparts,
each of which shall be deemed an original and all of which will constitute but
one and the same instrument.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
by their duly authorized representatives as of the date first above written.
CARALOE, INC.
By: /s/ Xxxxxxx X. Xxxxxx
---------------------------------
Name: Xxxxxxx X. Xxxxxx
--------------------------
Title: Chief Operating Officer
-------------------------
EMPRISE INTERNATIONAL, INC.
By: Xxxxxxx X. Xxxxxxxx
-----------------------------------
Name: Xxxxxxx X. Xxxxxxxx
----------------------------
Title: Chief Executive Officer
---------------------------
-6-
