TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT ("Agreement"), effective as of August 14,
1997, 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 MANNATECH, INC., ("Licensee"), a Texas corporation, having its
principal place of business at 000 X. Xxxxx Xxxx, Xxxxx 000, Xxxxxxx, Xxxxx
00000.
WITNESSETH:
WHEREAS, simultaneously with the execution of this Agreement, Licensor and
Licensee are entering into an non-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-Registered Trademark- powder") to be used in
products manufactured by Licensee in capsule (the "Manufactured Products");
WHEREAS, Xxxxxxxxxx Laboratories, Inc., a Texas corporation ("Xxxxxxxxxx"),
claims the ownership of the trademark MANAPOL-Registered Trademark- (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 non-exclusive 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-Registered Trademark- (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 non-exclusive right to use the Xxxx in connection
with Manufactured Products containing MANAPOL-Registered Trademark- powder 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-Registered Trademark- powder that are
intended for sale to the ultimate consumer in places other than the United
States and Canada, that are specifically and mutually agreed upon from time to
time and listed in Exhibit A hereto. The countries in Exhibit A may be removed
by Caraloe upon written notice to Mannatech that an exclusive Trademark License
Agreement has been executed for that country. In that event, Mannatech shall no
longer be allowed to use the Manapol-Registered Trademark- Trademark within the
country removed by Caraloe after its existing supplies have been exhausted.
Relative to Japan, Mannatech may use the Trademark on a non-exclusive under the
same conditions as those listed in Exhibit A except no drink may be sold using
Manapol-Registered Trademark- powder or the Trademark.
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.
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1.3 SUBLICENSES. Licensee shall not have the right to grant sub licenses
without the written permission of Licensor 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 AND LICENSOR
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-Registered
Trademark- powder purchased by Licensee from Licensor until such supplies are
exhausted.
2.3 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 time to time if sold for use
within the United States, and (ii) all other applicable laws, rules and
regulations if sold for use outside of the United States.
2.4 INSPECTION. Upon reasonable notice, 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.
2.5 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. Any use of the
trademark, "Manapol-Registered Trademark-" pursuant to this agreement is
non-exclusive. Whenever the Licensee uses the trademark, "Manapol-Registered
Trademark-", it shall also indicate that such name is the registered trademark
of Licensor and shall take all reasonable measures to assure that there is no
confusion of ownership of the xxxx or the substance which it identifies, the
same being the proprietary property of the Licensee. Likewise, Licensor, if
referring to Ambrotose-TM-, shall indicate that the same is the trademark of
Mannatech, Incorporated and shall take all reasonable measures to assure that
there is no confusion of ownership the xxxx or the substance which it
identifies, the same being the proprietary property of the Licensor.
2.6 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 is 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 own facilities or qualified contract
manufacturing facilities.
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3.2 COMBINATION WITH OTHER PRODUCTS. Licensee shall not combine
MANAPOL-Registered Trademark- powder 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-Registered
Trademark- powder 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.
Department of Agriculture ("USDA") for such use or consumption is required and
has not been obtained.
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-Registered Trademark- powder or any
of the Manufactured Products in a manner that would violate this Agreement if
done by Licensee.
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 if sold for
use within the United States, and all other applicable laws, rules and
regulations wherever sold. Information regarding the ingredients of
MANAPOL-Registered Trademark- powder 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-Registered Trademark- to contain (i) the Xxxx, (ii) a statement setting
forth the concentration of MANAPOL-Registered Trademark- powder contained in
such product, and (iii) the following legend:
MANAPOL-Registered Trademark- is a registered 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-Registered Trademark- powder or any Manufactured
Product which would violate any applicable law.
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-Registered
Trademark- powder or any Manufactured Product, Licensee hereby agrees to (i)
notify Licensor of the claims and the application prior to filling 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.
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Article 5
NEGATION OF WARRANTIES. DISCLAIMER AND INDEMNITY
5.1 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.
5.2 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. THE FOREGOING
NOTWITHSTANDING, SELLER DOES REPRESENT THAT THE MANAPOL-Registered Trademark-
POWDER DOES MEET THE SPECIFICATIONS OUTLINED ON EXHIBIT A AND THAT IT IS A FOOD
SUPPLEMENT UNDER THE FDA RULES AND REGULATIONS.
5.3 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 connected in any manner with this
Agreement or the products made or sold by Licensee under this Agreement
5.4 INDEMNITY OF LICENSOR. Licensee Bees to defend, indemnify and 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 wrongful or negligent 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.
5.5 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 6
TERM AND TERMINATION
6.1 TERM. Unless terminated earlier as provided for herein, this Agreement
shall remain in full force and effect for a five (5)-year period ending at
midnight on August 14, 2001. This Agreement may be extended or renewed as
provided in Section 1.2, or otherwise by the written agreement of the parties.
6.2 BREACH OF AGREEMENT. Except as provided otherwise in Section 6.3, if
either party breaches any material provision of this Agreement and fails to cure
the breach within thirty (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
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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.
6.3 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-Registered Trademark- powder 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.
6.4 SURVIVAL OF PROVISIONS. In the event of termination, cancellation or
expiration of this Agreement for any reason, Sections 2.2, 5. 1, 5.2, 5.3, 5.4,
5.5 and 7.1 hereof shall survive such termination, cancellation or expiration
and remain in fill force and effect.
Article 7
MISCELLANEOUS
7.1 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 tn 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.
7.2 AMENDMENT. This Agreement may be changed, modified, or amended only by
an instrument in writing duly executed by each of the parties hereto.
7.3 ENTIRE AGREEMENT. This Agreement constitutes the fill 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.
7.4 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.
7.5 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 made when personally delivered or when duly deposited in the
mails, first class mail, postage prepaid, or when transmitted by prep aid
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.
7.6 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 7.6 shall be void.
7.7 RELATIONSHIP OF PARTIES. Nothing contained herein shall be construed
to create or constitute any
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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.
7.8 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 of any other right or remedy.
7.9 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 7.6 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.
7.10 GOVERNING LAW. This 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.
7.11 HEADINGS. The headings used in this Agreement are for convenience of
reference only and shall not be used to interpret this Agreement.
7.12 COUNTERPARTS. This Agreement may be executed 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
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Name: Xxxxxxx X. Xxxxxx
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Title: President/CEO
----------------------
MANNATECH, INC.
By: /s/ Xxxxxxx X. "Skip" Xxxxxxxx
--------------------------------
Name:Xxxxxxx X. "Skip" Xxxxxxxx
--------------------------
Title: Chairman of the Board
----------------------
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EXHIBIT A
To that certain Trademark License and Supply Agreement
dated August 14, 1997 by and between Caraloe, Inc. and Mannatech, Inc.
Switzerland
The countries of the European Union as of August 14, 1997
Singapore
Malaysia
Australia
New Zealand
The Philippines
Taiwan
Hong Kong
Japan
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