EXHIBIT 2.5
CONFIDENTIAL
[WSGR DRAFT 12/01/1999]
MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
BETWEEN
3COM CORPORATION
AND
PALM, INC.
Effective as of _____, 2000
MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
TABLE OF CONTENTS
Page
----
ARTICLE 1 DEFINITIONS.............................................. 1
1.1 AUTHORIZED DEALERS...................................... 1
1.2 COLLATERAL MATERIALS.................................... 1
1.3 CORPORATE IDENTITY MATERIALS............................ 1
1.4 DISTRIBUTION DATE....................................... 2
1.5 LICENSED MARKS.......................................... 2
1.6 MAINTENANCE CONTRACTS................................... 2
1.7 XXXX.................................................... 2
1.8 MASTER SEPARATION AND DISTRIBUTION AGREEMENT............ 2
1.9 PALM BUSINESS........................................... 2
1.10 PALM BUSINESS MARKS..................................... 2
1.11 PALM BUSINESS MARKS DATABASE............................ 2
1.12 PALM BUSINESS PRODUCTS.................................. 2
1.13 PERSON.................................................. 2
1.14 QUALITY STANDARDS....................................... 3
1.15 SELL.................................................... 3
1.16 SEPARATION DATE......................................... 3
1.17 SUBSIDIARY.............................................. 3
1.18 THIRD PARTY............................................. 3
1.19 TRADEMARK USAGE GUIDELINES.............................. 3
ARTICLE 2 OWNERSHIP................................................ 3
2.1 OWNERSHIP OF PALM BUSINESS MARKS........................ 3
2.2 PRIOR GRANTS............................................ 4
2.3 ASSIGNMENT DISCLAIMER................................... 4
ARTICLE 3 LICENSES ................................................ 4
3.1 LICENSE GRANT........................................... 4
3.2 LICENSE RESTRICTIONS.................................... 4
3.3 LICENSEE UNDERTAKINGS................................... 5
3.4 NON-TRADEMARK USE....................................... 5
3.5 RESERVATION OF RIGHTS................................... 5
3.6 THIRD PARTY LICENSES.................................... 6
ARTICLE 4 PERMITTED SUBLICENSES ................................... 6
4.1 SUBLICENSES............................................. 6
4.2 AUTHORIZED DEALERS' USE OF MARKS........................ 6
4.3 ENFORCEMENT OF AGREEMENTS............................... 6
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TABLE OF CONTENTS
(continued)
ARTICLE 5 TRADEMARK USAGE GUIDELINES .............................. 7
5.1 TRADEMARK USAGE GUIDELINES.............................. 7
5.2 TRADEMARK REVIEWS....................................... 7
ARTICLE 6 TRADEMARK USAGE GUIDELINE ENFORCEMENT ................... 7
6.1 INITIAL CURE PERIOD..................................... 7
6.2 SECOND CURE PERIOD...................................... 7
6.3 FINAL CURE PERIOD....................................... 8
ARTICLE 7 QUALITY STANDARDS........................................ 8
7.1 GENERAL................................................. 8
7.2 QUALITY STANDARDS....................................... 8
7.3 QUALITY CONTROL REVIEWS................................. 8
7.4 PRODUCT DISCONTINUATION................................. 8
ARTICLE 8 QUALITY STANDARD ENFORCEMENT............................. 9
8.1 INITIAL CURE PERIOD..................................... 9
8.2 SECOND CURE PERIOD...................................... 9
8.3 FINAL CURE PERIOD....................................... 9
ARTICLE 9 PROTECTION OF LICENSED MARKS............................. 9
9.1 OWNERSHIP AND RIGHTS.................................... 9
9.2 PROTECTION OF MARKS..................................... 9
9.3 SIMILAR MARKS........................................... 10
9.4 INFRINGEMENT PROCEEDINGS................................ 10
ARTICLE 10 TERMINATION............................................. 11
10.1 TERM 11
10.2 VOLUNTARY TERMINATION................................... 11
10.3 SURVIVAL................................................ 11
10.4 OTHER TERMINATION....................................... 11
ARTICLE 11 DISPUTE RESOLUTION...................................... 11
11.1 MEDIATION............................................... 11
11.2 ARBITRATION............................................. 11
11.3 COURT ACTION............................................ 12
11.4 CONTINUITY OF SERVICE AND PERFORMANCE................... 12
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TABLE OF CONTENTS
(continued)
ARTICLE 12 LIMITATION OF LIABILITY................................. 12
ARTICLE 13 MISCELLANEOUS PROVISIONS................................ 13
13.1 DISCLAIMER.............................................. 13
13.2 NO IMPLIED LICENSES..................................... 13
13.3 INFRINGEMENT SUITS...................................... 13
13.4 NO OTHER OBLIGATIONS.................................... 13
13.5 ENTIRE AGREEMENT........................................ 13
13.6 GOVERNING LAW........................................... 14
13.7 DESCRIPTIVE HEADINGS.................................... 14
13.8 NOTICES................................................. 14
13.9 NONASSIGNABILITY........................................ 15
13.10 SEVERABILITY............................................ 15
13.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE... 15
13.12 AMENDMENT............................................... 15
13.13 COUNTERPARTS............................................ 15
EXHIBIT A: LICENSED MARKS
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MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
This Master Trademark Ownership and License Agreement (the "Agreement") is
effective as of ________, 2000 (the "Effective Date"), between 3Com Corporation,
a Delaware corporation ("3Com"), having an office at 0000 Xxxxxxxx Xxxxx, Xxxxx
Xxxxx, Xxxxxxxxxx, 00000 and Palm, Inc., a Delaware corporation ("Palm"), having
an office at 0000 Xxxxxxxx Xxxxx, Xxxxx Xxxxx, Xxxxxxxxxx, 00000.
WHEREAS, the Board of Directors of 3Com has determined that it is in the
best interest of 3Com and its stockholders to separate 3Com's existing
businesses into two independent businesses;
WHEREAS, as part of the foregoing, 3Com and Palm's predecessor, Palm
Computing, Inc., a California Corporation, have entered into a Master Separation
and Distribution Agreement (as defined below) which provides, among other
things, for the separation of certain Palm assets and Palm liabilities, the
initial public offering of Palm stock, the distribution of such stock and the
execution and delivery of certain other agreements in order to facilitate and
provide for the foregoing;
WHEREAS, the parties desire that 3Com assign and transfer to Palm the Palm
Business Marks (as defined below); and
WHEREAS, the parties further desire that 3Com license the Licensed Marks
(as defined below) to Palm after the separation of the Palm businesses.
NOW, THEREFORE, in consideration of the mutual promises of the parties, and
of good and valuable consideration, it is agreed by and between the parties as
follows:
ARTICLE 1
DEFINITIONS
For the purpose of this Agreement, the following capitalized terms are
defined in this Article 1 and shall have the meaning specified herein:
1.1 AUTHORIZED DEALERS. "Authorized Dealers" means any distributor,
dealer, OEM customer, VAR customer, VAD customer, systems integrator or other
agent that on or after the Separation Date is authorized to market, advertise,
sell, lease, rent, service or otherwise offer Palm Business Products. Palm will
provide 3Com a list of the then current Authorized Dealers within a reasonable
period after 3Com's request.
1.2 COLLATERAL MATERIALS. "Collateral Materials" means all packaging,
tags, labels, advertising, promotions, display fixtures, instructions,
warranties and other materials of any and all types associated with the Palm
Business Products that are marked with at least one of the Licensed Marks.
1.3 CORPORATE IDENTITY MATERIALS. "Corporate Identity Materials" means
materials that are not products or product-related and that Palm may now or
hereafter use to
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communicate its identity, including, by way of example and without limitation,
business cards, letterhead, stationery, paper stock and other supplies, and
signage on real property and buildings.
1.4 DISTRIBUTION DATE. "Distribution Date" has the meaning set forth in
the Master Separation and Distribution Agreement.
1.5 LICENSED MARKS. "Licensed Marks" means the Marks set forth on Exhibit
A hereto.
1.6 MAINTENANCE CONTRACTS. "Maintenance Contracts" means agreements
pursuant to which Palm, its Subsidiaries or its or their Authorized Dealers or
their designees provide repair and maintenance services (whether preventive,
diagnostic, remedial, warranty or non-warranty) in connection with Palm Business
Products, including without limitation agreements entered into by 3Com prior to
the Separation Date and assigned to Palm pursuant to the Master Separation and
Distribution Agreement or the Ancillary Agreements (as such term is defined in
the Master Separation and Distribution Agreement).
1.7 XXXX. "Xxxx" means any trademark, service xxxx, trade name, domain
name, and the like, or other word, name, symbol or device, or any combination
thereof, used or intended to be used by a Person to identify and distinguish the
products or services of that Person from the products or services of others and
to indicate the source of such goods or services, including without limitation
all registrations and applications therefor throughout the world and all common
law and other rights therein throughout the world.
1.8 MASTER SEPARATION AND DISTRIBUTION AGREEMENT. "Master Separation and
Distribution Agreement" means the Master Separation and Distribution Agreement
between the parties.
1.9 PALM BUSINESS. "Palm Business" means the business and operations of
Palm.
1.10 PALM BUSINESS MARKS. "Palm Business Marks" means the mutually agreed
Marks listed in the Palm Business Marks Database.
1.11 PALM BUSINESS MARKS DATABASE. "Palm Business Marks Database" means
the mutually agreed Palm Business Marks Database as of the Separation Date, as
it may be updated by the parties upon mutual agreement to add additional Marks
as of the Separation Date.
1.12 PALM BUSINESS PRODUCTS means any and all products of the Palm Business
commercially released prior to the Separation Date.
1.13 PERSON. "Person" means an individual, a partnership, a corporation, a
limited liability company, an association, a joint stock company, a trust, a
joint venture, an unincorporated organization, and a governmental entity or any
department, agency or political subdivision thereof.
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1.14 QUALITY STANDARDS. "Quality Standards" means standards of quality
applicable to the Palm Business Products, as in use immediately prior to the
Separation Date, unless otherwise communicated in writing by 3Com from time to
time.
1.15 SELL. To "Sell" a product means to sell, transfer, lease or otherwise
dispose of a product. "Sale" and "Sold" have the corollary meanings ascribed
thereto.
1.16 SEPARATION DATE. "Separation Date" means 12:01 a.m., Pacific Time,
February 26, 2000, or such other date as may be fixed by the Board of Directors
of 3Com.
1.17 SUBSIDIARY. "Subsidiary" of any Person means a corporation or other
organization whether incorporated or unincorporated of which at least a majority
of the securities or interests having by the terms thereof ordinary voting power
to elect at least a majority of the board of directors or others performing
similar functions with respect to such corporation or other organization is
directly or indirectly owned or controlled by such Person or by any one or more
of its Subsidiaries, or by such Person and one or more of its Subsidiaries;
provided, however, that no Person that is not directly or indirectly wholly-
owned by any other Person shall be a Subsidiary of such other Person unless such
other Person controls, or has the right, power or ability to control, that
Person. For purposes of this Agreement, Palm shall be deemed not to be a
subsidiary of 3Com.
1.18 THIRD PARTY. "Third Party" means a Person other than 3Com and its
Subsidiaries and Palm and its Subsidiaries.
1.19 TRADEMARK USAGE GUIDELINES. "Trademark Usage Guidelines" means the
guidelines for proper usage of the Licensed Marks, as in use immediately prior
to the Separation Date, as such guidelines may be revised and updated in writing
by 3Com from time to time.
ARTICLE 2
OWNERSHIP
2.1 OWNERSHIP OF PALM BUSINESS MARKS. The parties agree that Palm hereby
retains ownership of all right, title and interest in and to the Palm Business
Marks. Subject to Sections 2.2 and 2.3 below, to the extent that any Palm
Business Marks are registered in 3Com's name anywhere in the world, or to the
extent that 3Com otherwise has any ownership rights in and to the Palm Business
Marks or any goodwill therein, 3Com hereby grants, conveys and assigns (and
agrees to cause its appropriate Subsidiaries to grant, convey and assign) to
Palm, by execution hereof (or, where appropriate or required, by execution of
separate instruments of assignment), all its (and their) right, title and
interest in and to the Palm Business Marks, including all goodwill of the Palm
Business appurtenant thereto, to be held and enjoyed by Palm, its successors and
assigns. 3Com further grants, conveys and assigns (and agrees to cause its
appropriate Subsidiaries to grant, convey and assign) to Palm all its (and
their) right, title and interest in and to any and all causes of action and
rights of recovery for past infringement of the Palm Business Marks. 3Com will,
without demanding any further consideration therefor, at the request and expense
of Palm (except for the
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value of the time of 3Com employees), do (and to cause its Subsidiaries to do)
all lawful and just acts that may be or become necessary for evidencing,
maintaining, recording and perfecting Palm's rights to such Palm Business Marks
consistent with 3Com's general business practice as of the Separation Date,
including but not limited to execution and acknowledgement of (and causing its
Subsidiaries to execute and acknowledge) assignments and other instruments in a
form reasonably required by Palm or the relevant governmental or other
authorities for each Xxxx in all jurisdictions in which 3Com owns rights
thereto.
2.2 PRIOR GRANTS. Palm acknowledges and agrees that the foregoing
assignment is subject to any and all licenses or other rights that may have been
granted by 3Com or its Subsidiaries with respect to the Palm Business Marks
prior to the Separation Date. 3Com shall respond to reasonable inquiries from
Palm regarding any such prior grants.
2.3 ASSIGNMENT DISCLAIMER. PALM ACKNOWLEDGES AND AGREES THAT THE FOREGOING
ASSIGNMENTS ARE MADE ON AN "AS-IS," QUITCLAIM BASIS AND THAT NEITHER 3COM NOR
ANY SUBSIDIARY OF 3COM HAS MADE OR WILL MAKE ANY WARRANTY WHATSOEVER, EXPRESS,
IMPLIED OR STATUTORY, INCLUDING, WITHOUT LIMITATION, ANY IMPLIED WARRANTIES OF
TITLE, ENFORCEABILITY OR NON-INFRINGEMENT.
ARTICLE 3
LICENSES
3.1 LICENSE GRANT. 3Com grants (and agrees to cause its appropriate
Subsidiaries to grant) to Palm a personal, irrevocable, nonexclusive, worldwide,
fully-paid and non-transferable (except as set forth in Section 13.9) license to
use the Licensed Marks on the Palm Business Products and in connection with the
Sale and offer for Sale of Palm Business Products (or, in the case of Palm
Business Products in the form of software, in connection with licensing of Palm
Business Products) and to use the Licensed Marks in the advertisement and
promotion of such Palm Business Products.
3.2 LICENSE RESTRICTIONS.
(a) Palm may not make any use whatsoever, in whole or in part, of the
Licensed Marks, or any other Xxxx owned by 3Com, in connection with Palm's
corporate, doing business as, or fictitious name, or on Corporate Identity
Materials without the prior written consent of 3Com, except as expressly set
forth in this Section 3.2(a) or in Section 3.4 below. Notwithstanding the
foregoing, Palm may use any business cards, letterhead, stationery, paper stock
and other supplies, and the like throughout their useful life in connection with
the conduct of the Palm Business, to the extent that, as of the Separation Date,
they are in use, in inventory or on order.
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(b) Palm may not use any Licensed Xxxx in direct association with
another Xxxx such that the two Marks appear to be a single Xxxx or in any other
composite manner with any Marks of Palm or any Third Party (other than the Palm
Business Marks as permitted herein).
(c) In all respects, Palm's usage of the Licensed Marks pursuant to
the license granted hereunder shall be in a manner consistent with the high
standards, reputation and prestige represented by the Licensed Marks, and any
usage by Palm that is inconsistent with the foregoing shall be deemed to be
outside the scope of the license granted hereunder. As a condition to the
license granted hereunder, Palm shall at all times present, position and promote
the Palm Business Products marked with one or more of the Licensed Marks in a
manner consistent with the high standards and prestige represented by the
Licensed Marks.
3.3 LICENSEE UNDERTAKINGS. As a condition to the licenses granted
hereunder, Palm undertakes to 3Com that:
(a) Palm shall not use the Licensed Marks (or any other Xxxx of 3Com)
in any manner which is deceptive or misleading, which ridicules or is derogatory
to the Licensed Marks, or which compromises or reflects unfavorably upon the
goodwill, good name, reputation or image of 3Com or the Licensed Marks, or which
might jeopardize or limit 3Com's proprietary interest therein.
(b) Palm shall not use the Licensed Marks in connection with any
products or services other than the Palm Business Products.
(c) Palm shall not (i) misrepresent to any Person the scope of its
authority under this Agreement, (ii) incur or authorize any expenses or
liabilities chargeable to 3Com, or (iii) take any actions that would impose upon
3Com any obligation or liability to a Third Party other than obligations under
this Agreement, or other obligations which 3Com expressly approves in writing
for Palm to incur on its behalf.
(d) All press releases and corporate advertising and promotions that
embody the Licensed Marks and messages conveyed thereby shall be consistent with
the high standards and prestige represented by the Licensed Marks.
3.4 NON-TRADEMARK USE. Each party may make appropriate and truthful
references to the other party and the other party's products and technology.
3.5 RESERVATION OF RIGHTS. Except as otherwise expressly provided in this
Agreement, 3Com shall retain all rights in and to the Licensed Marks, including
without limitation:
(a) All rights of ownership in and to the Licensed Marks;
(b) The right to use (including the right of 3Com's Subsidiaries to
use) the Licensed Marks, either alone or in combination with other Marks, in
connection with the marketing,
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offer or provision of any product or service, including any product or service
which competes with Palm Business products; and
(c) The right to license Third Parties to use the Licensed Marks.
3.6 THIRD PARTY LICENSES. 3Com agrees that it and its Subsidiaries will
not license or transfer the Licensed Marks to Third Parties (other than to and
among Subsidiaries or Joint Ventures (as defined below) of 3Com) for use in
connection with products or services which compete with Palm Business Products
that are listed on a mutually agreed Palm corporate price list as of the
Distribution Date until two (2) years after the Separation Date. Such
restriction shall be binding on any successors and assigns of the Licensed
Marks. As used in this Section 3.6, "Joint Venture" means a corporation or other
organization whether incorporated or unincorporated of which at least fifth
percent (50%) of the securities or interests having by the terms thereof
ordinary voting power to elect at least a majority of the board of directors or
others performing similar functions with respect to such corporation or other
organization is directly or indirectly owned or controlled by 3Com.
ARTICLE 4
PERMITTED SUBLICENSES
4.1 SUBLICENSES
(a) SUBLICENSES TO SUBSIDIARIES. Subject to the terms and conditions
of this Agreement, including all applicable Quality Standards and Trademark
Usage Guidelines and other restrictions in this Agreement, Palm may grant
sublicenses to its Subsidiaries to use the Licensed Marks in accordance with the
license grant in Section 3.1 above; provided, that (i) Palm enters into a
written sublicense agreement with each such Subsidiary sublicensee, and (ii)
such agreement does not include the right to grant further sublicenses other
than, in the case of a sublicensed Subsidiary of Palm, to another Subsidiary of
Palm. Palm shall provide copies of such written sublicense agreements to 3Com
upon request. If Palm grants any sublicense rights pursuant to this Section
4.1(a) and any such sublicensed Subsidiary ceases to be a Subsidiary, then the
sublicense granted to such Subsidiary pursuant to this Section 4.1(a) shall
terminate 180 days from the date of such cessation.
4.2 AUTHORIZED DEALERS' USE OF MARKS. Subject to the terms and conditions
of this Agreement, including all applicable Quality Standards and Trademark
Usage Guidelines and other restrictions in this Agreement, Palm (and those
Subsidiaries sublicensed to use the Licensed Marks pursuant to Section 4.1) may
allow Authorized Dealers to, and may allow such Authorized Dealers to allow
other Authorized Dealers to, use the Licensed Marks in the advertisement and
promotion of Palm Business Products Sold by such Authorized Dealers.
4.3 ENFORCEMENT OF AGREEMENTS. Palm shall take all appropriate measures
at Palm's expense promptly and diligently to enforce the terms of any sublicense
agreement or other
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agreement with any Subsidiary or Authorized Dealer, or of any existing agreement
with any Authorized Dealer, and shall restrain any such Subsidiary or Authorized
Dealer from violating such terms, including without limitation (i) monitoring
the Subsidiaries' and Authorized Dealers' compliance with the relevant Trademark
Usage Guidelines and Quality Standards and causing any noncomplying Subsidiary
or Authorized Dealer promptly to remedy any failure, (ii) terminating such
agreement and/or (iii) commencing legal action, in each case, using a standard
of care consistent with 3Com's practices as of the Separation Date. In the event
that 3Com determines that Palm has failed promptly and diligently to enforce the
terms of any such agreement using such standard of care, 3Com reserves the right
to enforce such terms, and Palm shall reimburse 3Com for its fully allocated
direct costs and expenses incurred in enforcing such agreement, plus all out-of-
pocket costs and expenses, plus five percent (5%).
ARTICLE 5
TRADEMARK USAGE GUIDELINES
5.1 TRADEMARK USAGE GUIDELINES. Palm and its Subsidiaries and Authorized
Dealers shall use the Licensed Marks only in a manner that is consistent with
the Trademark Usage Guidelines.
5.2 TRADEMARK REVIEWS. At 3Com's request, Palm agrees to furnish or make
available for inspection to 3Com samples of all Palm Business Products and
Collateral Materials of Palm, its Subsidiaries and Authorized Dealers that are
marked with one or more of the Licensed Marks (to the extent that Palm has the
right to obtain such samples). If Palm is notified or determines that it or any
of its Subsidiaries or Authorized Dealers is not complying with any Trademark
Usage Guidelines, it shall notify 3Com and the provisions of Article 6 and
Section 4.3 shall apply to such noncompliance.
ARTICLE 6
TRADEMARK USAGE GUIDELINE ENFORCEMENT
6.1 INITIAL CURE PERIOD. If 3Com becomes aware that Palm or any Subsidiary
or Authorized Dealer is not complying with any Trademark Usage Guidelines, 3Com
shall notify Palm in writing, setting forth in reasonable detail a written
description of the noncompliance and any requested action for curing such
noncompliance. Palm shall then have sixty (60) days with regard to noncompliance
by Authorized Dealers and thirty (30) days with regard to noncompliance by Palm
or any Subsidiary after receipt of such notice ("Guideline Initial Cure Period")
to correct such noncompliance or submit to 3Com a written plan to correct such
noncompliance which written plan is reasonably acceptable to 3Com.
6.2 SECOND CURE PERIOD. If noncompliance with the Trademark Usage
Guidelines continues beyond the Guideline Initial Cure Period, Palm and 3Com
shall each promptly appoint a representative to negotiate in good faith actions
that may be necessary to correct such
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noncompliance. The parties shall have thirty (30) days following the expiration
of the Guideline Initial Cure Period to agree on corrective actions, and Palm
shall have thirty (30) days from the date of an agreement of corrective actions
to implement such corrective actions and cure or cause the cure of such
noncompliance ("Second Guideline Cure Period").
6.3 FINAL CURE PERIOD. If the noncompliance with the Trademark Usage
Guidelines remains uncured after the expiration of the Second Guideline Cure
Period, then at 3Com's election, Palm, or the noncomplying Subsidiary or
Authorized Dealer, whichever is applicable, promptly shall cease using the
noncomplying Collateral Materials until 3Com determines that Palm, or the
noncomplying Subsidiary or Authorized Dealer, whichever is applicable, has
demonstrated its ability and commitment to comply with the Trademark Usage
Guidelines. Nothing in this Article 6 shall be deemed to limit Palm's
obligations under Section 4.3 above or to preclude 3Com from exercising any
rights or remedies under Section 4.3 above.
ARTICLE 7
QUALITY STANDARDS
7.1 GENERAL. Palm acknowledges that the Palm Business Products permitted
by this Agreement to be marked with one or more of the Licensed Marks must
continue to be of sufficiently high quality as to provide protection of the
Licensed Marks and the goodwill they symbolize, and Palm further acknowledges
that the maintenance of the high quality standards associated with such products
is of the essence of this Agreement.
7.2 QUALITY STANDARDS. Palm and its Authorized Dealers and Subsidiaries
shall use the Licensed Marks only on and in connection with Palm Business
Products that meet or exceed in all respects the Quality Standards.
7.3 QUALITY CONTROL REVIEWS. At 3Com's request, Palm agrees to furnish or
make available to 3Com for inspection sample Palm Business Products marked with
one or more of the Licensed Marks. 3Com may also independently conduct customer
satisfaction surveys to determine if Palm and its Subsidiaries and Authorized
Dealers are meeting the Quality Standards. Palm shall cooperate with 3Com fully
in the distribution of such surveys. In the event of a challenge by 3Com, 3Com
shall, at the request of Palm, provide Palm with copies of customer surveys used
by 3Com to determine if Palm is meeting the Quality Standards. If Palm is
notified or determines that it or any of its Subsidiaries or Authorized Dealers
is not complying with any Quality Standards, it shall notify 3Com and the
provisions of Article 8 and Section 4.3 shall apply to such noncompliance.
7.4 PRODUCT DISCONTINUATION. If, at any time during or after the term of
this Agreement, Palm discontinues the sale of a Palm Business Product that has
been marked with one or more of the Licensed Marks, Palm shall substantially
comply with the discontinuation procedure used by 3Com for such or similar
products immediately prior to Separation Date.
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ARTICLE 8
QUALITY STANDARD ENFORCEMENT
8.1 INITIAL CURE PERIOD. If 3Com becomes aware that Palm or any Subsidiary
or Authorized Dealer sublicensee is not complying with any Quality Standards,
3Com shall notify Palm in writing, setting forth in reasonable detail a written
description of the noncompliance and any requested action for curing such
noncompliance. Palm shall then have thirty (30) days after receipt of such
notice ("Initial Cure Period") to correct such noncompliance or submit to 3Com a
written plan to correct such noncompliance which written plan is reasonably
acceptable to 3Com.
8.2 SECOND CURE PERIOD. If noncompliance with the Quality Standards
continues beyond the Initial Cure Period, Palm and 3Com shall each promptly
appoint a representative to negotiate in good faith actions that may be
necessary to correct such noncompliance. The parties shall have thirty (30) days
following the expiration of the Initial Cure Period to agree on corrective
actions, and Palm shall have thirty (30) days from the date of an agreement of
corrective actions to implement such corrective actions and cure or cause the
cure of such noncompliance ("Second Cure Period").
8.3 FINAL CURE PERIOD. If the noncompliance with the Quality Standards
remains uncured after the expiration of the Second Cure Period, then at 3Com's
election, Palm, or the noncomplying Subsidiary or Authorized Dealer, whichever
is applicable, promptly shall cease offering the noncomplying Palm Business
Products under the Licensed Marks until 3Com determines that Palm, or the
noncomplying Subsidiary or Authorized Dealer, whichever is applicable, has
demonstrated its ability and commitment to comply with the Quality Standards.
Nothing in this Article 8 shall be deemed to limit Palm's obligations under
Section 4.3 above or to preclude 3Com from exercising any rights or remedies
under Section 4.3 above.
ARTICLE 9
PROTECTION OF LICENSED MARKS
9.1 OWNERSHIP AND RIGHTS. To the extent not contrary to applicable law,
Palm agrees not to challenge the ownership or validity of the Licensed Marks.
Palm shall not disparage, dilute or adversely affect the validity of the
Licensed Marks. Palm's use of the Licensed Marks shall inure exclusively to the
benefit of 3Com, and Palm shall not acquire or assert any rights therein. Palm
recognizes the value of the goodwill associated with the Licensed Marks, and
that the Licensed Marks may have acquired secondary meaning in the minds of the
public.
9.2 PROTECTION OF MARKS. Palm shall assist 3Com, at 3Com's request and
expense, in the procurement and maintenance of 3Com's intellectual property
rights in the Licensed Marks. Palm will not grant or attempt to grant a security
interest in the Licensed Marks, or to record any such security interest in the
United States Patent and Trademark Office or elsewhere, against any trademark
application or registration belonging to 3Com. Palm agrees to, and to cause its
Subsidiaries to, execute all documents reasonably requested by 3Com to effect
further registration
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of, maintenance and renewal of the Licensed Marks, recordation of the license
relationship between 3Com and Palm, and recordation of Palm as a registered
user. 3Com makes no warranty or representation that trademark registrations have
been or will be applied for, secured or maintained in the Licensed Marks
throughout, or anywhere within, the world. Palm shall cause to appear on all
Palm Business Products, and all Collateral Materials, such legends, markings and
notices as may be required by applicable law or reasonably requested by 3Com.
9.3 SIMILAR MARKS. Palm agrees not to use or register in any country any
Xxxx that infringes 3Com's rights in the Licensed Marks, or any element thereof.
If any application for registration is, or has been, filed in any country by
Palm which relates to any Xxxx that infringes 3Com's rights in the Licensed
Marks, Palm shall immediately abandon any such application or registration or
assign it to 3Com. To the extent not contrary to applicable law, Palm shall not
challenge 3Com's ownership of or the validity of the Licensed Marks or any
application for registration thereof throughout the world. Palm shall not use or
register in any country any copyright, domain name, telephone number or any
other intellectual property right, whether recognized currently or in the
future, or other designation which would affect the ownership or rights of 3Com
in and to the Licensed Marks, or otherwise to take any action which would
adversely affect any of such ownership rights, or assist anyone else in doing
so. Palm shall cause its Subsidiaries and Authorized Dealers to comply with the
provisions of this Section 9.3.
9.4 INFRINGEMENT PROCEEDINGS. In the event that the Palm General Counsel
learns of any infringement or threatened infringement of the Licensed Marks, or
any unfair competition, passing-off or dilution with respect to the Licensed
Marks, Palm shall notify 3Com or its authorized representative giving
particulars thereof, and Palm shall provide necessary information and assistance
to 3Com or its authorized representatives at 3Com's expense in the event that
3Com decides that proceedings should be commenced. Notwithstanding the
foregoing, Palm is not obligated to monitor or police use of the Licensed Marks
by Third Parties other than as specifically set forth in Section 4.3. 3Com shall
have exclusive control of any litigation, opposition, cancellation or related
legal proceedings, relating to the use of the licensed trademarks by third
parties. The decision whether to bring, maintain or settle any such proceedings
shall be at the exclusive option and expense of 3Com, and all recoveries shall
belong exclusively to 3Com. Palm shall not and shall have no right to initiate
any such litigation, opposition, cancellation or related legal proceedings in
its own name, but, at 3Com's request, agrees to be joined as a party in any
action taken by 3Com to enforce its rights in the Licensed Marks. 3Com shall
incur no liability to Palm or any other Person under any legal theory by reason
of 3Com's failure or refusal to prosecute or by 3Com's refusal to permit Palm to
prosecute, any alleged infringement by Third Parties, nor by reason of any
settlement to which 3Com may agree.
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ARTICLE 10
TERMINATION
10.1 TERM. This Agreement shall remain in effect for a period of two (2)
years from the Effective Date unless earlier terminated as provided below.
10.2 VOLUNTARY TERMINATION. By written notice to 3Com, Palm may
voluntarily terminate all or a specified portion of the licenses and rights
granted to it hereunder by 3Com. Such notice shall specify the effective date of
such termination and shall clearly specify any affected Licensed Marks, Palm
Business Products or services.
10.3 SURVIVAL. Any termination of licenses and rights of Palm under
Section 10.2 shall not affect Palm's licenses and rights with respect to any
Palm Business Products made or sold prior to such termination.
10.4 OTHER TERMINATION. 3Com acknowledges and agrees that its rights to
terminate the licenses granted to Palm hereunder are solely as set forth in
Section 4.3 and Articles 6 and 8.
ARTICLE 11
DISPUTE RESOLUTION
11.1 MEDIATION. If a dispute, controversy or claim ("Dispute") arises
between the parties relating to the interpretation or performance of this
Agreement or the Ancillary Agreements, or the grounds for the termination
hereof, appropriate senior executives (e. g. director or V.P. level) of each
party who shall have the authority to resolve the matter shall meet to attempt
in good faith to negotiate a resolution of the Dispute prior to pursuing other
available remedies. The initial meeting between the appropriate senior
executives shall be referred to herein as the "Dispute Resolution Commencement
Date." Discussions and correspondence relating to trying to resolve such Dispute
shall be treated as confidential information developed for the purpose of
settlement and shall be exempt from discovery or production and shall not be
admissible. If the senior executives are unable to resolve the Dispute within
thirty (30) days from the Dispute Resolution Commencement Date, and either party
wishes to pursue its rights relating to such Dispute, then the Dispute will be
mediated by a mutually acceptable mediator appointed pursuant to the mediation
rules of JAMS/Endispute within thirty (30) days after written notice by one
party to the other demanding non-binding mediation. Neither party may
unreasonably withhold consent to the selection of a mediator or the location of
the mediation. Both parties will share the costs of the mediation equally,
except that each party shall bear its own costs and expenses, including
attorney's fees, witness fees, travel expenses, and preparation costs. The
parties may also agree to replace mediation with some other form of non-binding
or binding ADR.
11.2 ARBITRATION. Any Dispute which the parties cannot resolve through
mediation within ninety (90) days of the Dispute Resolution Commencement Date,
unless otherwise mutually
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agreed, shall be submitted to final and binding arbitration under the then
current Commercial Arbitration Rules of the American Arbitration Association
("AAA"), by three (3) arbitrators in Santa Xxxxx County, California. Such
arbitrators shall be selected by the mutual agreement of the parties or, failing
such agreement, shall be selected according to the aforesaid AAA rules. The
arbitrators will be instructed to prepare and deliver a written, reasoned
opinion stating their decision within thirty (30) days of the completion of the
arbitration. The prevailing party in such arbitration shall be entitled to
expenses, including costs and reasonable attorneys' and other professional fees,
incurred in connection with the arbitration (but excluding any costs and fees
associated with prior negotiation or mediation). The decision of the arbitrator
shall be final and non-appealable and may be enforced in any court of competent
jurisdiction. The use of any ADR procedures will not be construed under the
doctrine of laches, waiver or estoppel to adversely affect the rights of either
party.
11.3 COURT ACTION. Any Dispute regarding the following is not required to
be negotiated, mediated or arbitrated prior to seeking relief from a court of
competent jurisdiction: breach of any obligation of confidentiality;
infringement, misappropriation, or misuse of any intellectual property right;
any other claim where interim relief from the court is sought to prevent serious
and irreparable injury to one of the parties or to others. However, the parties
to the Dispute shall make a good faith effort to negotiate and mediate such
Dispute, according to the above procedures, while such court action is pending.
11.4 CONTINUITY OF SERVICE AND PERFORMANCE. Unless otherwise agreed in
writing, the parties will continue to provide service and honor all other
commitments under this Agreement and each Ancillary Agreement during the course
of dispute resolution pursuant to the provisions of this Article 11 with respect
to all matters not subject to such dispute, controversy or claim.
ARTICLE 12
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE OTHER
PARTY OR ITS SUBSIDIARIES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT, INCIDENTAL
OR PUNITIVE DAMAGES OR LOST PROFITS OR ANY OTHER DAMAGES, HOWEVER CAUSED AND ON
ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY OUT OF THIS
AGREEMENT, WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES; PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT EACH
PARTY'S OBLIGATIONS EXPRESSLY ASSUMED IN EXHIBIT J OF THE MASTER SEPARATION AND
DISTRIBUTION AGREEMENT; PROVIDED FURTHER THAT THE EXCLUSION OF PUNITIVE DAMAGES
SHALL APPLY IN ANY EVENT.
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ARTICLE 13
MISCELLANEOUS PROVISIONS
13.1 DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL LICENSED
MARKS AND ANY OTHER INFORMATION OR MATERIALS LICENSED OR PROVIDED HEREUNDER ARE
LICENSED OR PROVIDED ON AN "AS IS" BASIS AND THAT NEITHER PARTY NOR ANY OF ITS
SUBSIDIARIES MAKE ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES WHATSOEVER,
EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT THERETO INCLUDING WITHOUT LIMITATION
ANY IMPLIED WARRANTIES OF TITLE, ENFORCEABILITY OR NON-INFRINGEMENT. Without
limiting the generality of the foregoing, neither 3Com nor any of its
Subsidiaries makes any warranty or representation as to the validity of any Xxxx
licensed by it to Palm or any warranty or representation that any use of any
Xxxx with respect to any product or service will be free from infringement of
any rights of any Third Party.
13.2 NO IMPLIED LICENSES. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any intellectual property right, other than the rights expressly granted in this
Agreement with respect to the Licensed Marks. Neither party is required
hereunder to furnish or disclose to the other any information (including copies
of registrations of the Marks), except as specifically provided herein.
13.3 INFRINGEMENT SUITS. Except as set forth in Section 4.3, (i) neither
party shall have any obligation hereunder to institute any action or suit
against Third Parties for infringement of any of the Licensed Marks or to defend
any action or suit brought by a Third Party which challenges or concerns the
validity of any of the Licensed Marks and (ii) Palm shall not have any right to
institute any action or suit against Third Parties for infringement of any of
the Licensed Marks.
13.4 NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY RESPONSIBILITIES OR
OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND OBLIGATIONS
EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN AGREEMENT BETWEEN
THE PARTIES. Without limiting the generality of the foregoing, neither party,
nor any of its Subsidiaries, is obligated to (i) file any application for
registration of any Xxxx, or to secure any rights in any Marks, (ii) to maintain
any Xxxx registration, or (iii) provide any assistance, except for the
obligations expressly assumed in this Agreement.
13.5 ENTIRE AGREEMENT. This Agreement, the Master Separation and
Distribution Agreement and the other Ancillary Agreements (as defined in the
Master Separation and Distribution Agreement) and the Exhibits and Schedules
referenced or attached hereto and thereto constitute the entire agreement
between the parties with respect to the subject matter hereof and thereof and
shall supersede all prior written and oral and all contemporaneous oral
agreements and understandings with respect to the subject matter hereof and
thereof. To the extent there is a conflict
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between this Agreement and the General Assignment and Assumption Agreement
between the parties, the terms of this Agreement shall govern.
13.6 GOVERNING LAW. This Agreement shall be construed in accordance with
and all Disputes hereunder shall be governed by the laws of the State of
California, excluding its conflict of law rules and the United Nations
Convention on Contracts for the International Sale of Goods. The Superior Court
of Santa Xxxxx County and/or the United States District Court for the Northern
District of California shall have jurisdiction and venue over all Disputes
between the parties that are permitted to be brought in a court of law pursuant
to Article 11 above.
13.7 DESCRIPTIVE HEADINGS. The headings contained in this Agreement, in
any Exhibit or Schedule hereto and in the table of contents to this Agreement
are for reference purposes only and shall not affect in any way the meaning or
interpretation of this Agreement. Any capitalized term used in any Exhibit or
Schedule but not otherwise defined therein, shall have the meaning assigned to
such term in this Agreement. When a reference is made in this Agreement to an
Article or a Section, Exhibit or Schedule, such reference shall be to an Article
or Section of, or an Exhibit or Schedule to, this Agreement unless otherwise
indicated.
13.8 NOTICES. Notices, offers, requests or other communications required
or permitted to be given by either party pursuant to the terms of this Agreement
shall be given in writing to the respective parties to the following addresses:
if to 3Com :
3Com Corporation
0000 Xxxxxxxx Xxxxx
Xxxxx Xxxxx, Xxxxxxxxxx 00000
Attention: General Counsel
Fax: (000) 000-0000
if to Palm:
Palm, Inc.
0000 Xxxxxxxx Xxxxx
Xxxxx Xxxxx, Xxxxxxxxxx 00000
Attention: General Counsel
Fax: (000) 000-0000
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing as provided herein. Any notice
involving non-performance, termination, or renewal shall be sent by hand
delivery, recognized overnight courier or, within the United States, may also be
sent via certified mail, return receipt requested. All other notices may also be
sent by fax, confirmed by first class mail. All notices shall be deemed to have
been given and received on the earlier of actual delivery or three (3) days from
the date of postmark.
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13.9 NONASSIGNABILITY. Neither party may, directly or indirectly, in whole
or in part, whether by operation of law or otherwise, assign or transfer this
Agreement, without the other party's prior written consent, and any attempted
assignment, transfer or delegation without such prior written consent shall be
voidable at the sole option of such other party. Notwithstanding the foregoing,
each party (or its permitted successive assignees or transferees hereunder) may
assign or transfer this Agreement as a whole without consent to a Person that
succeeds to all or substantially all of the business or assets of such party as
long as such Person agrees to accept all the terms and conditions set forth
herein. Without limiting the foregoing, this Agreement will be binding upon and
inure to the benefit of the parties and their permitted successors and assigns.
13.10 SEVERABILITY. If any term or other provision of this Agreement is
determined by a court, administrative agency or arbitrator to be invalid,
illegal or incapable of being enforced by any rule of law or public policy, all
other conditions and provisions of this Agreement shall nevertheless remain in
full force and effect so long as the economic or legal substance of the
transactions contemplated hereby is not affected in any manner materially
adverse to either party. Upon such determination that any term or other
provision is invalid, illegal or incapable of being enforced, the parties hereto
shall negotiate in good faith to modify this Agreement so as to effect the
original intent of the parties as closely as possible in an acceptable manner to
the end that the transactions contemplated hereby are fulfilled to the fullest
extent possible.
13.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No failure or
delay on the part of either party hereto in the exercise of any right hereunder
shall impair such right or be construed to be a waiver of, or acquiescence in,
any breach of any representation, warranty or agreement herein, nor shall any
single or partial exercise of any such right preclude other or further exercise
thereof or of any other right. All rights and remedies existing under this
Agreement are cumulative to, and not exclusive of, any rights or remedies
otherwise available.
13.12 AMENDMENT. No change or amendment will be made to this Agreement
except by an instrument in writing signed on behalf of each of the parties to
such agreement.
13.13 COUNTERPARTS. This Agreement, including the Ancillary Agreements and
the Exhibits and Schedules hereto and thereto and the other documents referred
to herein or therein, may be executed in counterparts, each of which shall be
deemed to be an original but all of which shall constitute one and the same
agreement.
WHEREFORE, the parties have signed this Trademark Ownership and License
Agreement effective as of the date first set forth above.
3COM CORPORATION PALM, INC.
By: By:
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Name: Name:
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Title: Title:
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EXHIBIT A
TO MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
LICENSED MARKS
3Com
3Com Logo
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