Exhibit 99(d)(6)
ASSIGNMENT AND USE OF NAME AGREEMENT
ASSIGNMENT AND USE OF NAME AGREEMENT, dated as of August 12,
2002 (this "AGREEMENT"), is by and between Xxxxxx X. XxXxxxx, an individual
("ASSIGNOR"), and NRT Incorporated, a Delaware corporation ("ASSIGNEE").
W I T N E S S E T H:
WHEREAS, Assignee, Timber Acquisition Corporation
("ACQUISITION SUB") and The XxXxxxx Companies, Inc., a Massachusetts corporation
(the "COMPANY") are parties to that certain Agreement and Plan of Merger, dated
August 12, 2002 (the "MERGER AGREEMENT"), pursuant to which, among other things,
Acquisition Sub is acquiring and merging into the Company;
WHEREAS, the Company uses the name and xxxx XXXXXXX and
certain XXXXXXX-formative names and marks in its Business; and
WHEREAS, Assignor may own certain rights relating to the
XxXxxxx Name (as defined below), and to the extent he or she may have such
rights, Assignor desires to transfer all such rights together with the goodwill
of the business connected with the use of and symbolized by the XxXxxxx Name to
Assignee, and Assignee desires to obtain such rights and associated goodwill
from Assignor.
NOW, THEREFORE, for good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, the parties hereto
agree as follows:
1. XXXXXXX NAME. As used herein, "XXXXXXX NAME" means
"XXXXXXX", and all formatives, stylizations and variations thereof and
associated designs and logos currently used in the Business.
2. ASSIGNMENT OF XXXXXXX NAME. Assignor hereby sells,
transfers, conveys, and assigns to Assignee, for use by Assignee and its
Affiliates, successors, and assigns, for and in connection with (i) real estate
brokerage, referral and property management, (ii) relocation, (iii) mortgage
brokerage and banking, (iv) insurance brokerage, and (v) title insurance and
escrow services , and the provision of related products and services
(collectively, the "Services"), all of Assignor's right, title, ownership, and
interest in and to the XxXxxxx Name, throughout the world, including any and all
rights as a trademark, service xxxx, trade name, domain name, endorsement, and
similar or related identifier; all registrations, applications, common law
rights, and rights of privacy and publicity therein, including in the United
States trademark registration for XXXXXXX HOMEMOVIE & Design and in the pending
United States trademark application for XXXXXXX.XXX, together with all related
goodwill of the business symbolized by or associated with the XxXxxxx Name being
assigned; and all causes of action (either in law or in equity) and the right to
xxx, counterclaim, and recover for past, present, and future infringement
relating to such aforementioned rights. For avoidance of doubt, to the extent
that any of Assignor's rights to transfer, convey, and assign to Assignee any of
Assignor's rights, title, ownership, or interest in and to the XxXxxxx Name in
connection with any of the Services may ripen or otherwise accrue after the
Effective Date and may not be assignable as of the Effective Date, all such
rights, title, ownership, and interest of Assignor shall be deemed automatically
assigned to Assignee (or its applicable successor) immediately upon such
ripening or accrual. To the extent any of the foregoing rights cannot be
assigned as a matter of law or otherwise, Assignor hereby waives and irrevocably
consents to the exclusive right of Assignee, its Affiliates, successors, and
assigns to use and exercise all such aforementioned rights.
3. RESTRICTIONS ON ASSIGNOR'S USE OF XXXXXXX NAME. (a)
Assignor hereby acknowledges and agrees that he or she will not, and that he or
she will cause and ensure that the Persons owned or directly or indirectly
controlled by him or her will not, use or authorize others to use the XxXxxxx
Name, or any confusingly similar variation of XXXXXXX, in connection with any of
the Services, including, but not limited to, in or as part of any trademark,
service xxxx, trade name, domain name, endorsement, or similar or related
identifier (including in any advertisement, promotion, or other activities
relating thereto).
(b) For purposes of clarification and not in limitation of
Section 3(a) above, Assignor hereby acknowledges and agrees that as of the date
hereof he or she shall not use the XxXxxxx Name or authorize others to use the
XxXxxxx Name in competition with the Business, or otherwise in connection with
any business that competes with or targets sales associates, agents, or
customers of Assignee and/or its Affiliates anywhere in the world with respect
to any of the Services.
(c) For purposes of clarification and not in limitation of
Section 3(a) above, Assignor further acknowledges and agrees that he or she will
not, whether as a franchisor, franchisee, licensee, sublicensor, or otherwise,
co-brand the XxXxxxx Name, or any confusingly similar variation thereof, with
any name or xxxx of any third party that is involved in any of the Services.
4. ASSIGNOR'S PERMITTED USE OF XXXXXXX NAME. Except as
otherwise prohibited in this Agreement, the Merger Agreement or the
Non-Competition Agreement, dated August 9, 2002, between Xxxxxx X. XxXxxxx and
the Company, nothing herein shall (i) be deemed or construed to prevent Assignor
from using the XxXxxxx Name (including his or her personal name) commercially in
fields of use outside the Services, and (ii) be deemed or construed to prevent
Assignor from earning a living or otherwise benefiting from his or her talents
or abilities; PROVIDED, that the XxXxxxx Name is not used, licensed, or publicly
disseminated or exploited in connection therewith in a manner which is
prohibited or otherwise restricted in Section 3 of this Agreement.
5. REPRESENTATIONS AND WARRANTIES. Assignor hereby represents
and warrants that he or she has not granted to any third party (other than the
Company and the Company Subsidiaries and their franchisees as of the date
hereof) the right to use the XxXxxxx Name.
6. GOOD FAITH COVENANT. Assignor hereby acknowledges and
agrees that he or she will not do anything or cause others to do anything that
is inconsistent with the full assignment to, and ownership by, Assignee (or its
Affiliates, as the case may be)
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of the XxXxxxx Name, in accordance with this Agreement, or that would infringe,
disparage, tarnish, or reflect adversely on the XxXxxxx Name in relation to the
Business. Assignor further acknowledges and agrees that he or she will not, at
any time, now or in the future, assert or authorize others to assert any claim,
including but not limited to, any claim of infringement, unfair competition, or
violation of right of privacy or publicity, against Assignee or its Affiliates
relating to the use of the XxXxxxx Name anywhere in the world with respect to
any of the Services, unless Assignee or its Affiliates shall have used the
XxXxxxx Name with an intent to bring disrepute to, ridicule, or disparage
Assignor, and then only with respect to such offending action.
7. COOPERATION; FURTHER ASSURANCES. Assignor hereby agrees to
assist Assignee and its Affiliates, or any person or entity designated by
Assignee or its Affiliates, promptly upon request, in perfecting, registering,
maintaining, and enforcing, throughout the world, Assignee's (or its
Affiliates') rights in and to the XxXxxxx Name with respect to the Services,
whether now existing or hereafter created, including, but not limited to,
executing all documents and instruments as may be reasonably requested by
Assignee (or its Affiliates). Assignor further agrees that he or she will not
apply to register as a trademark, service xxxx, trade name or Internet domain
name (or similar or related identifier) the XxXxxxx Name in connection with any
of the Services, unless specifically requested and authorized to do so by
Assignee, in writing, and then only in the name of an entity designated by
Assignee.
8. TERM. The term of this Agreement shall be for 20 years.
9. EFFECTIVENESS. This Agreement shall only be effective if
the Closing under the Merger Agreement occurs.
10. ENTIRE AGREEMENT. This Agreement and the other agreements,
documents and instruments delivered in connection herewith contain the entire
agreement between the parties hereto with respect to the subject matter hereof
and supersede all prior agreements and understandings, oral or written, with
respect to such matters.
11. CONTROLLING DOCUMENT. Solely concerning the XxXxxxx Name,
this Agreement shall be controlling and governing if there is any conflict
between it and each or any of the Merger Agreement and the other agreements,
documents and instruments delivered in connection herewith.
12. GOVERNING LAW. This Agreement shall be governed by and
construed in accordance with the laws of the State of Delaware without giving
effect to the principles of conflicts of law thereof. Assignee and Assignor
hereby agree and consent to be subject to the non-exclusive jurisdiction of any
federal court sitting in the County of Suffolk, and the jurisdiction of the
courts of the Commonwealth of Massachusetts in the County of Suffolk, in any
suit, action or proceeding seeking to enforce any provision of, or based on any
matter arising out of or in connection with, this Agreement or the transactions
contemplated hereby.
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13. ASSIGNMENT OF AGREEMENT. This Agreement shall be
transferable and assignable by Assignee (and by Assignee's successors and
assignees) without Assignors' consent, and Assignee's successors and assignees
shall have full rights under this Agreement as if they were Assignee. This
Agreement may not be assigned by Assignor.
14. CONSTRUCTION. Capitalized terms used herein and not
otherwise defined have the meanings set forth in the Merger Agreement.
15. SECTION HEADINGS. Section headings are inserted for
convenience only and shall not affect any construction or interpretation of this
Agreement.
16. COUNTERPARTS. This Agreement may be executed in
counterparts, each of which shall be deemed an original, and all of which, when
taken together, shall constitute one and the same agreement.
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IN WITNESS WHEREOF, the parties hereto have executed or caused
this Agreement to be executed as of the date first written above.
ASSIGNOR
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Name: Xxxxxx X. XxXxxxx
ASSIGNEE
NRT INCORPORATED
By:
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Name:
Title:
