Exhibit 10.2
TRADEMARK LICENSE AGREEMENT
TRADEMARK LICENSE AGREEMENT ("Agreement"), effective as of the
Trigger Date (the "Effective Date"), by TRAVELERS PROPERTY CASUALTY CORP., a
Connecticut corporation ("TPC"), and THE TRAVELERS INSURANCE COMPANY, a
Connecticut corporation ("TIC").
WHEREAS, Citigroup Inc. ("Citigroup"), the indirect corporate parent
of TIC, is the indirect owner of a majority of the issued and outstanding common
stock of TPC;
WHEREAS, TPC is the owner of all right, title, and interest in the
trademark, service xxxx, and domain name registrations and applications, and
common-law marks set forth on Exhibit A hereto (other than New Portions (as
defined herein)), and all related common-law rights and goodwill (the "Licensed
Marks");
WHEREAS, TPC and TIC acknowledge that TIC has been using the
Licensed Marks throughout the world, in connection with the Business (as defined
herein), pursuant to an implied license from TPC since before the Initial Public
Offering (the "Implied License"); and
WHEREAS, in connection with Citigroup ceasing to be an indirect
owner of a majority of the issued and outstanding common stock of TPC, TIC and
TPC desire to formalize the Implied License in this Agreement;
NOW, THEREFORE, for good and valuable consideration (including that
set forth in the Intercompany Agreement (as defined herein)), the receipt and
adequacy of which is acknowledged, the parties hereto, intending to be legally
bound, hereby agree as follows:
ARTICLE I
DEFINITIONS
Section 1.1 Definitions.
(a) All initially capitalized terms in this Agreement shall have the
meaning set forth in the Intercompany Agreement unless defined in this
Agreement.
(b) "AAA" shall have the meaning set forth in Section 7.2(a) of this
Agreement.
(c) "Action" shall have the meaning set forth in Section 6.1(b) of
this Agreement.
(d) "Agreement" shall have the meaning set forth in the first
paragraph of this Agreement.
(e) An "Affiliate" of, or a Person "Affiliated" with a specified
Person, means a Person that directly, or indirectly through one or more
intermediaries, controls, or is controlled by, or is under common control with,
the Person specified; provided that the term Affiliate (i) when used with regard
to TIC excludes TPC and its Subsidiaries, and (ii) when used with regard to TPC
excludes TIC and all members of the Citigroup Affiliated Group. The term
"control" (including the terms "controlling," "controlled by," and "under common
control with") means the possession, direct or indirect, of the power to direct
or cause the direction of the management
and/or policies of a Person, whether through the ownership of voting securities,
by contract, or otherwise.
(f) "Business" means the life insurance and annuity business and the
broker dealer and investment advisory businesses, including products, services,
and activities specifically related thereto.
(g) "Citigroup" shall have the meaning set forth in the recitals of
this Agreement.
(h) "Composite Marks" shall have the meaning set forth in Section
4.3 of this Agreement.
(i) "Dispute" shall have the meaning set forth in Section 7.1 of
this Agreement.
(j) "Effective Date" shall have the meaning set forth in the first
paragraph of this Agreement.
(k) "Exclusive Field" means the (i) life insurance business, (ii)
annuity business, and (iii) the broker dealer business associated with the
SEC-registered life insurance and annuity business, including products,
services, and activities specifically related to any of the foregoing.
(l) "Infringement" shall have the meaning set forth in Section
6.1(a) of this Agreement.
(m) "Initiating Party" shall have the meaning set forth in Section
6.1(c) of this Agreement.
(n) "Intercompany Agreement" means the agreement under such name by
and among TPC, TIC, and Citigroup, dated March 26, 2002.
(o) "Licensed Marks" shall have the meaning set forth in the
recitals of this Agreement.
(p) "Losses" shall have the meaning set forth in Section 6.2(a) of
this Agreement.
(q) "Xxxx" shall have the meaning set forth in Section 2.3(a) of
this Agreement.
(r) "Negotiating Period" shall have the meaning set forth in Section
7.1 of this Agreement.
(s) "New Xxxx" shall have the meaning set forth in Section 2.3(a) of
this Agreement.
(t) "New Portion" shall have the meaning set forth in Section 4.1 of
this Agreement.
(u) "New York Courts" shall have the meaning set forth in Section
7.2(d) of this Agreement.
(v) "Notice" shall have the meaning set forth in Section 7.1 of this
Agreement.
(w) "Person" means any individual, corporation, partnership, joint
venture, limited liability company, association, or other business entity and
any trust, unincorporated organization or government or any agency or political
subdivision thereof.
(x) "Rules" shall have the meaning set forth in Section 7.2(a) of
this Agreement.
(y) "Runoff Business" shall have the meaning set forth in Section
2.1 of this Agreement.
(z) "Sublicensees" shall have the meaning set forth in Section 2.2
of this Agreement.
(aa) "TIC" shall have the meaning set forth in the first paragraph
of this Agreement.
(bb) "TM Guidelines" shall have the meaning set forth in Section
2.3(a)(i) of this Agreement.
(cc) "TPC" shall have the meaning set forth in the first paragraph
of this Agreement.
(dd) "TPC License" shall have the meaning set forth in Section 2.1
of this Agreement.
(ee) "TPC Standards Manual" shall have the meaning set forth in
Section 2.3(a)(i)(2) of this Agreement.
(ff) "Travelers Xxxx" shall have the meaning set forth in Section
2.3(a) of this Agreement.
ARTICLE II
TRADEMARK LICENSE GRANT
Section 2.1 Grant of Trademark License. Subject to the terms and
conditions herein, during the term of this Agreement, TPC grants, on behalf of
itself and its Affiliates, to TIC a worldwide, sublicensable (subject to Section
2.2), perpetual (subject to Article V), and royalty-free license (the "TPC
License") to use the Licensed Marks as (i) trademarks and service marks, (ii)
corporate names and trade names; provided that, notwithstanding Section
2.3(a)(i)(1), any new corporate or trade name using a Licensed Xxxx must contain
the term "Travelers Life & Annuity" or "Travelers Life and Annuity" in its
entirety, (iii) domain names (or any other similar or successor address system),
respectively as indicated for each such above-identified category (i)-(iii) on
Exhibit A, which license shall be (x) exclusive (even against TPC and its
Affiliates (but subject to the pre-existing licenses set forth on Exhibit B
hereto)), with respect to the Exclusive Field, and non-exclusive with respect to
the broker dealer and investment advisory businesses outside of the Exclusive
Field, and (y) non-exclusive to the extent needed to administer run-off blocks
of business that are outside of the Business and in existence as of the
Effective Date as set forth on Exhibit C hereto (the "Runoff Business"). For the
avoidance of doubt, the Licensed Marks do not include any other Marks containing
TRAVELERS unless such Marks are approved New Marks pursuant to Section 2.3.
Without limiting the generality of the foregoing sentence, and subject to the
provisions of Section 2.6, TIC shall not use any Travelers Xxxx other than the
Licensed Marks (including the Xxxx "Travelers" standing alone), including
without limitation as a defined term after the initial use of the entire
Licensed Xxxx.
Section 2.2 Right to Sublicense. TIC shall have the right (i) to
freely sublicense the rights granted in Section 2.1 with respect to the Business
solely (x) to its agents, distributors and members of the Citigroup Affiliated
Group, and (y) to other third parties for advertising, promoting, and marketing
the Business, and (ii) to sublicense the rights granted in Section 2.1 with
respect to the Business to other third parties with the consent of TPC in its
sole discretion, provided that TIC shall ensure that all TIC sublicensees of
such rights ("Sublicensees") comply in all respects with this Agreement and
shall be liable hereunder for such Sublicensees' conduct. Once each calendar
quarter, TPC shall have the right to request that TIC disclose to TPC the
identity of any new Sublicensees who are not members of the Citigroup Affiliated
Group, and TIC shall in its discretion either disclose in writing the identity
of any such new Sublicensees or make available for inspection documents
containing such information to TPC within 20 business days of TPC's written
request.
Section 2.3 New Marks.
(a) Subject to Section 2.6, if TIC proposes to use any trademark,
service xxxx, domain name, corporate name, trade name, or other source indicator
(a "Xxxx") containing TRAVELERS (a "Travelers Xxxx") that is not a Licensed Xxxx
as of the Effective Date (each of such proposed marks, a "New Xxxx"), TIC must
comply with the following procedures and shall not use any proposed New Xxxx
except in full compliance therewith:
(i) If a proposed New Xxxx meets the criteria set forth in the
following provisions (1)-(7) (the "TM Guidelines"), then TIC may use such
proposed New Xxxx without TPC's advance approval (provided that TIC shall
give TPC prompt notice of its use of such New Xxxx, with such notice to
contain a signed statement by an officer of TIC as to such compliance with
the TM Guidelines, and provided further that TIC must not modify or alter
such New Xxxx in any way that does not comply with all of the TM
Guidelines):
(1) contains the words "Life" and/or "Annuity" or
"Annuities";
(2) uses TRAVELERS consistent with the TPC Standards
Manual attached hereto as Exhibit D (the "TPC
Standards Manual"), with no variations to
TRAVELERS such as by using a logo that includes
new graphics or artwork in combination with
TRAVELERS or by using translations, abbreviations
(e.g., TRAV), new stylizations, or co-branded
marks (e.g., "Travelers Yahoo! Life & Annuity");
provided that this Subsection 2.3(a)(i)(2) shall
not restrict use by TIC of TRAVELERS together with
LIFE and ANNUITY (or, if TIC exits either the life
insurance or the annuity business but not both,
TRAVELERS together with either LIFE or ANNUITY, as
applicable) with the "Umbrella" Design xxxx, the
"Blue Wave" xxxx, the CITIGROUP Xxxx, or the Xxxx
A MEMBER OF CITIGROUP so long as such use is
otherwise consistent with the TPC Standards
Manual;
(3) uses TRAVELERS in reasonably similar prominence to
all other words in the proposed New Xxxx;
(4) the New Portion (as defined below) as used in the
proposed New Xxxx is not the same as or
confusingly similar to a Xxxx already in use by
TPC and/or its Affiliates that is both (i) (x) on
the attached Exhibit E (as supplemented from time
to time in a written notice from TPC to TIC
pursuant to this Agreement) or (y) pending (and
listed on the then publicly-available database of
the United States Patent and Trademark Office) or
registered in the United States Patent and
Trademark Office in the name of TPC and/or its
Affiliates, and (ii) not generic or descriptive
(provided that such generic or descriptive term is
not "property", "casualty", "surety", "indemnity",
or "liability").
(5) is for use only in a country or jurisdiction where
TPC has used, registered, or filed to register
TRAVELERS or a Xxxx that includes TRAVELERS (all
of such countries being listed on Exhibit I
hereto; provided that if TPC uses, files to
register, or registers a Travelers Xxxx in a new
foreign jurisdiction, then such jurisdiction shall
be deemed added to Exhibit I for all purposes
under this Agreement) (or in a country or
jurisdiction in which, based upon advice to TIC or
Citigroup (rendered at TIC's expense) by local
counsel that is reasonably acceptable to TPC and
is regularly used by TIC, Citigroup, or either of
their outside trademark counsel, the TRAVELERS
xxxx is deemed generic, descriptive, or otherwise
unprotectable);
(6) has, for any New Portion (as defined herein), been
approved by internal trademark counsel of TIC
and/or Citigroup (with regard to such New Portion)
after its clearance search (at TIC's expense)
indicates that the use of the New Portion in the
New Xxxx will not violate the rights of a third
party (such search report (i.e., the third party
marks revealed by the search) to be provided to
TPC upon request to the extent that such provision
would not in any way compromise the
attorney-client or attorney work product
privileges, provided that TIC shall use reasonable
efforts to cooperate with TPC in an effort to
prevent such privileges from being waived); and
(7) is not in any respect below the quality standards,
reputation, and goodwill associated with TPC and
the Travelers Marks.
(ii) TPC agrees that the Licensed Marks set forth in Exhibit A
are deemed approved for use in connection with the Business.
(b) For New Marks submitted by TIC to TPC for prior approval as not
compliant with all of the TM Guidelines, the following procedures shall apply:
(1) TIC shall notify the TPC personnel set forth on
Exhibit F hereto by both facsimile and nationally
recognized overnight courier service of any
request for approval of such proposed New Xxxx.
For New Marks that comply with TM Guidelines (1)
and (2), if TPC does not respond within 10
business days of such notice, and TIC wishes to
continue pursuing the approval process, TIC must
subsequently send a second notice to the same
personnel by the same method, but with the
following legend displayed prominently across the
first page: SECOND NOTICE: FAILURE TO RESPOND
SHALL BE DEEMED APPROVAL. Further, for such second
notice, and solely if such proposed New Xxxx
complies with TM Guidelines (1) and (2), then TIC
shall also make a good faith attempt to reach the
TPC General Counsel by telephone within such time
frame. Provided that due and proper second notice
is given hereunder, TPC shall respond within 5
business days of such second notice. Upon
reasonable request, TIC shall provide to TPC all
information and documentation relevant to its
approval request hereunder.
(2) Provided that TIC has complied with its
obligations under Section 2.3(b)(1), and solely if
such proposed New Xxxx complies with TM Guidelines
(1) and (2), any failure to respond by TPC (or to
request more time under reasonable circumstances)
within the above timetable shall be deemed an
approval of such proposed New Xxxx. For any
proposed New Xxxx that does not comply with TM
Guidelines (1) and (2), any failure or delay to
respond by TPC shall be deemed a rejection of such
proposed New Xxxx; and
(3) Approval of any proposed New Xxxx shall be in
TPC's sole discretion (such approval or rejection
not to be unreasonably delayed); provided,
however, that TPC's approval shall not be
unreasonably withheld if such proposed New Xxxx
complies with TM Guidelines (1) and (2), and any
such rejection of such proposed New Xxxx must be
in writing and state the grounds for such
rejection with reasonable specificity.
(c) For purposes of clarification, any dispute concerning use of a
New Xxxx or approval or rejection of a proposed New Xxxx shall be resolved
pursuant to Article 7 of this Agreement. With respect to proposed New Marks
submitted by TIC to TPC for prior approval pursuant to Section 2.3(b)), TIC
shall not commence use of such proposed New Xxxx until such Xxxx has been
approved or TIC becomes so permitted pursuant to Article 7 of this Agreement.
(d) Any New Xxxx that complies with the TM Guidelines, is otherwise
approved by TPC hereunder, or is permitted pursuant to Article 7 of this
Agreement shall be deemed added to Exhibit A and be deemed a Licensed Xxxx for
all purposes under this Agreement.
(e) TIC acknowledges and agrees that TPC may amend the TPC Standards
Manual (i.e., the guidelines regarding the graphic depiction of TRAVELERS) from
time to time in its sole discretion, and TIC shall comply with any such amended
guidelines that are the result of changes in applicable governmental statute,
law, rule or regulation. For all other amended guidelines for which TIC's
compliance would be prudent to protect the continued validity and enforceability
of the Licensed Marks, the parties shall agree in good faith as to whether TIC
shall comply with such amended guidelines.
Section 2.4 Restrictions on TIC.
(a) TIC shall have no rights with respect to the Licensed Marks
other than those set forth in this Agreement. TPC reserves all rights not
expressly granted to TIC hereunder, including without limitation the right to
use Travelers Marks (other than "Travelers" together with "Life" and/or
"Annuity" or "Annuities") in all fields other than the Exclusive Field
(including in the property and casualty insurance business), subject to all
terms and conditions herein and any non-compete obligations in any other
agreement between the parties. Further, for the avoidance of doubt, TPC reserves
the right to continue to use Travelers Marks (other than "Travelers" together
with "Life" and/or "Annuity" or "Annuities") in those lines of property casualty
business which TPC is conducting as of the Effective Date even if such lines of
business overlap with the Exclusive Field; provided, however, that any such
products or services are (i) filed with the appropriate regulatory authorities
as property casualty products or services, and (ii) offered only as both a
component of and ancillary to a property casualty product or service, and such
component is not branded with a Travelers Xxxx; provided further, however, that
if TPC acquires or develops a life insurance and/or annuity business, TPC shall
not use any Travelers Xxxx (including any Licensed Xxxx) in connection with such
business except as provided in Section 2.4(c). For purposes of this Section
2.4(a), the parties acknowledge that worker's compensation and products or
services that are both a component of and ancillary to worker's compensation
(other than structured settlements and payout annuities) constitute property
casualty products and services.
(b) Without limiting the generality of Section 2.4(a), TIC shall not
market products using "The Travelers Insurance Company" as any type of Xxxx,
except that TIC may use such name and xxxx (i) for those products and services,
if any, with which it currently uses such name as of the Effective Date, (ii) to
identify the corporate issuer of a product or service or the depositor of a
separate account related to a product or service, or (iii) as required by law or
regulation.
(c) Notwithstanding any provision of this Agreement to the contrary,
TPC may use the "Travelers Property Casualty" name (or any successor name that
does not specifically communicate the life or annuity business) and TIC may use
the "Travelers Life and Annuity" (or, if TIC exits either the life insurance or
the annuity business but not both, TRAVELERS together with either LIFE or
ANNUITY, as applicable) name in any business (including, without limitation, for
TPC, in the Exclusive Field, and for TIC, in the property and casualty insurance
business) solely to indicate the entire legal name of the corporate parent of
any Affiliate (including as part of a tag line, but not as a trademark or
service xxxx) so long as such use of "Travelers" is significantly less prominent
than the primary Xxxx for such Affiliate.
Section 2.5 Restrictions on TPC. Subject to Section 2.4(a), TPC agrees
that during the term of this Agreement and for one year following the expiration
or termination of this Agreement (unless and to the extent that, in the case of
post-term use, earlier use is reasonably necessary to avoid a viable claim of
abandonment), it and its Affiliates shall not use any Travelers Xxxx (including
without limitation the Licensed Marks), for purposes of identifying or marketing
the Exclusive Field.
Section 2.6 Scope of Agreement. The parties acknowledge that except as
expressly set forth herein with respect to New Portions, this Agreement and the
TPC License govern and concern only the Travelers Marks (where applicable) and
Licensed Marks and any New Marks. Notwithstanding any other provision of this
Agreement, this Agreement and the TPC License do not restrict TIC or its
Affiliates from using any word contained in the Licensed Marks, the Travelers
Marks, or the New Marks, including the word "Traveler" or "Travelers," in its
generic or descriptive sense, and this Agreement shall not govern such usages.
The parties reserve all rights as to whether a particular use by TIC or its
Affiliates of "Traveler" or "Travelers" is a use of such word in its generic or
descriptive sense.
ARTICLE III
QUALITY CONTROL
Section 3.1 Trademark Standards.
(a) TIC shall use the Licensed Marks only in connection with
activities, products, and services in the Business and the Runoff Business that
are consistent in all material respects with the high levels of quality
associated with TIC in connection with the Licensed Marks as of the Effective
Date.
(b) TIC agrees that, in the conduct of the Business and the Runoff
Business, it shall comply with all applicable statutes, laws, regulations, and
rules.
Section 3.2 Inspection and Compliance. TPC shall have the right to request
representative samples of any uses of the Licensed Marks by TIC or its
Sublicensees (including without limitation on products or in connection with
advertising, marketing, and promotional materials in any media) and to inspect
and evaluate upon reasonable advance written notice any products and services
bearing the Licensed Marks (whether on TIC's premises or otherwise as agreed by
the parties) no more than twice in any calendar year (unless otherwise
reasonably justified under the circumstances).
Section 3.3 Notice. TIC agrees to use the Licensed Marks with all notices
and legends (if any) that are reasonably requested by TPC so as to preserve and
maintain the validity of and TPC's rights in the Licensed Marks.
Section 3.4 Cooperation. The parties shall cooperate in good faith to
consider the use of appropriate disclaimers or other notices by the parties for
purposes of communicating to customers the separate nature of their respective
businesses, provided that the parties are not obligated to agree to their use in
any form or manner except as required by applicable law or regulation.
ARTICLE IV
TRADEMARK OWNERSHIP
Section 4.1 New Portions. If the non-TRAVELERS portion of a New Xxxx
approved hereunder is protectable by TIC under applicable trademark law
principles (i.e., is not generic or descriptive (unless, if descriptive, it has
already acquired secondary meaning)), then TIC shall own such new portion ("New
Portion"), and TPC shall also not use such New Portion or a Xxxx confusingly
similar thereto without TIC's prior written consent. New Portions currently in
use by TIC are set forth on Exhibit G hereto. Notwithstanding any other
provision of this Agreement, this Agreement does not restrict TPC or its
Affiliates from using any word contained in the New Portions in its generic or
descriptive sense (provided that such generic or descriptive term shall not be
"life", "annuity", or "annuities" in any Travelers Xxxx), and this Agreement
shall not govern such usages. The parties reserve all rights as to whether a
particular use by TPC or its Affiliates of a word in a New Portion is a use of
such word in its generic or descriptive sense.
Section 4.2 Trademark Ownership. TIC acknowledges and agrees that, as
between the parties, TPC and its Affiliates are the owner of all of the right,
title, and interest in and to the Licensed Marks and the Travelers Marks and all
goodwill associated therewith throughout the world (other than a New Portion or
as provided under Section 2.6) and acknowledge the validity of such Licensed
Marks and of all registrations and applications of TPC and its Affiliates
pertaining thereto. All use of the Licensed Marks (other than a New Portion) by
TIC and its Sublicensees (including all past, present, and future use), and the
goodwill generated thereby, shall inure to the benefit of TPC and shall not vest
in TIC or in its Sublicensees. TIC shall not, directly or indirectly, contest or
challenge the validity or enforceability of the Licensed Marks (other than a New
Portion) or the TRAVELERS portion (other than as provided under Section 2.6) of
any Travelers Xxxx and/or TPC's ownership thereof, including that TIC and its
Affiliates shall not use the TRAVELERMILES registration, U.S. Reg. No.
1,989,880, owned by TIC's Affiliate as a basis for challenging TPC's use of the
TRAVELERS portion of any Travelers Xxxx. To the extent that TIC or any of its
Sublicensees is deemed to have any ownership rights in the Licensed Marks (other
than a New Portion), at TPC's written request, TIC shall, and shall cause each
such Sublicensee to, assign such rights to TPC or to such other TPC Affiliate
designated by TPC.
Section 4.3 Ownership of Composite Marks. Notwithstanding Section 4.2, TIC
and its Affiliates shall own certain registrations that include both the
"Umbrella" xxxx together with the TRAVELERS GROUP xxxx set forth on Exhibit H
hereto ("Composite Marks"), which shall be retained by TIC and its Affiliates
prior to abandonment in accordance with the timeline set forth on Exhibit H
hereto. TIC and TPC shall negotiate in good faith to enter into an agreement
regarding cancellation of all other registrations that include both the
"Umbrella" xxxx together with either the TRAVELERS or the TRAVELERS GROUP xxxx,
which registrations shall be owned by TIC or its Affiliates prior to
cancellation ; provided that TIC and its Affiliates shall either abandon all
such Composite Marks no later than January 1, 2013, or shall provide a written
notice to TPC that TIC or its Affiliates need to retain a particular Composite
Xxxx for a longer period of time and shall set forth in such writing an
explanation of the reasons for such delay; provided further that if TPC applies
to register a Travelers Xxxx in a jurisdiction in which TIC or any TIC Affiliate
owns a registration for a Composite Xxxx, and such Composite Xxxx is
cited as a barrier to registration of such xxxx by TPC, then TIC and its
Affiliates shall cooperate with TPC to assist TPC in obtaining a registration
for such xxxx and shall not oppose the registration of such xxxx based upon TIC
or its Affiliate's ownership of such Composite Xxxx.
Section 4.4 Domain Name Ownership. Notwithstanding Section 4.2, TIC and
its Affiliates may register and use the domain names (or any other similar or
successor address mechanism or system, whether now known or hereafter devised)
(1) set forth on Exhibit A hereto and (2) for any other Licensed Xxxx, it being
understood that TPC shall own the Licensed Marks and New Marks (other than the
New TIC Portions) featured in such domain names to the same extent as its
ownership of Licensed Marks and New Marks, and that, except as otherwise
expressly set forth herein, such domain names shall otherwise be treated as
Licensed Marks hereunder.
Section 4.5 Maintenance Costs. TPC, at TIC's written request and at TIC's
sole discretion, agrees to (i) prosecute any application and maintain and renew
any registration for the Licensed Marks in any jurisdiction in which the
Licensed Marks are used by TIC as of the Effective Date, and (ii) upon request,
apply for new applications for the Licensed Marks in any jurisdiction in which
the Licensed Marks are or will be used by TIC after the Effective Date, and
maintain and renew any resulting registrations thereof. TPC and TIC shall
execute and TPC shall record all documents, including registered user agreements
and cancellations thereof, reasonably necessary to establish, protect, or
maintain TPC's or its Affiliates' ownership of or rights in and to the Licensed
Marks or TIC's rights as licensee of the Licensed Marks under this Agreement.
TPC shall cooperate fully with TIC in connection with the application,
prosecution, and maintenance of all Licensed Marks pursuant to this Section 4.5
(including, without limitation, by providing to TIC at TIC's written request all
invoices and related documentation concerning fees pursuant to this Section
4.5). TPC shall make all filings and pay all fees in connection with all of its
obligations in this Section 4.5, subject in each case to reimbursement by TIC
for such actions for which TIC has received reasonable prior written notice from
TPC and TIC has approved in writing prior to such action, provided that upon
termination or expiration of this Agreement, at TIC's written request TPC shall
either (x) reimburse TIC for all fees paid by TIC in connection with the
applications and registrations for such marks, or (y) if TPC does not wish to so
reimburse TIC, then TPC shall expressly abandon and cancel all such applications
and registrations.
Section 4.6 DISCLAIMER OF REPRESENTATIONS AND WARRANTIES. TPC, ON ITS OWN
BEHALF AND ON BEHALF OF ITS AFFILIATES, SPECIFICALLY DISCLAIMS ANY AND ALL
REPRESENTATIONS AND WARRANTIES, EXPRESS OR IMPLIED (INCLUDING WITHOUT LIMITATION
ANY IMPLIED WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
VALIDITY, REGISTRABILITY, TITLE OR NON-INFRINGEMENT AND IMPLIED WARRANTIES
ARISING FROM COURSE OF DEALING OR COURSE OF PERFORMANCE), REGARDING THE LICENSED
MARKS. WITHOUT LIMITING THE GENERALITY OF THE FOREGOING, TIC ACKNOWLEDGES THAT
THE LICENSES GRANTED IN THIS AGREEMENT AND THE LICENSED MARKS ARE PROVIDED "AS
IS."
ARTICLE V
EXPIRATION AND TERMINATION
Section 5.1 Expiration. The term of this Agreement shall commence on the
Effective Date and, subject to this Section and Sections 5.2 and 5.4, shall be
perpetual thereafter; provided that this Agreement shall automatically expire
upon the second anniversary of the earlier to occur of (i) a downgrade of the
A.M. Best claims paying rating below A+ of TIC (or whichever company is the
principal life insurance and annuity company for TIC at the relevant time);
provided that TIC may maintain an A.M. Best claims paying rating of A, if and
only if (and after and only after) TPC's own A.M. Best claims paying rating is A
or lower; provided, further, that if A.M. Best subsequently increases TPC's
claims paying rating to a rating higher than A, then TIC (or whichever company
is the principal life insurance and annuity company for TIC at the relevant
time) must have its A.M. Best claims paying rating raised to A+ in TIC's annual
A.M. Best rating that is at least 12 months after the upgrade of TPC's rating
(i.e., the rating for the year thereafter), or this Agreement shall
automatically expire upon the second anniversary of the increase in TPC's A.M.
Best claims paying rating to higher than A; and provided, further, that the
parties agree that the foregoing references to A.M. Best ratings reflect the
current system used by A.M. Best and that the applicable ratings under this
Subsection 5.1(i) shall be adjusted accordingly by written agreement of the
parties to reflect any modifications in the rating systems used by A.M. Best,
(ii) a change of control of TIC such that it is no longer an Affiliate of
Citigroup, or (iii) when TIC and all Sublicensees have ceased use of all the
Licensed Marks with no intent to resume use, TIC to notify TPC promptly of such
occurrence. The term of any Sublicenses granted by TIC hereunder shall expire
simultaneously with the expiration of this Agreement.
Section 5.2 Termination of Agreement. Notwithstanding Section 5.1, TPC may
terminate this Agreement only if TIC commits a material breach of this Agreement
that materially impairs or jeopardizes the Licensed Marks and/or the goodwill
symbolized thereby and TIC fails to cure such breach within 120 days following
written notice by TPC to TIC (provided that, in addition, the General Counsel of
TPC shall in good faith attempt to reach the General Counsel of TIC by
telephone) containing a description of the specifics of such breach; provided
that if TIC cures such breach within such 120 day period, TPC shall not be
entitled to terminate this Agreement. TPC may not terminate this Agreement, any
portion of the TPC License, or TIC's right to use a Licensed Xxxx except as
expressly set forth in this Section 5.2 or Section 5.4 or if the Agreement
expires pursuant to Section 5.1. Any dispute regarding termination hereunder
shall not be subject to the negotiation period in Section 7.1; provided that TPC
may commence arbitration pursuant to Section 7.2 hereof seeking any termination
of rights hereunder only after TIC has failed to cure such breach within 30 days
following the notice as provided for in this Section 5.2 (the parties
acknowledge that TIC nonetheless shall have a total of 120 days to cure).
Section 5.3 Cessation of Use. Upon the expiration or termination of this
Agreement (or partial termination pursuant to Section 5.4, with respect to the
terminated use of a particular Licensed Xxxx), TIC shall, and shall cause each
of its Sublicensees to, discontinue all uses of the Licensed Marks (or the
particular use subject to partial termination pursuant to Section 5.4) within 30
days after such expiration under Section 5.1 or partial termination under
Section 5.4 or 6 months after an arbitration panel renders a final decision that
TIC has breached and failed to
cure pursuant to Section 5.2, or such longer period solely as and to the extent
required by applicable law or regulation, provided that TIC takes all reasonable
actions to comply in a timely manner with all such applicable laws or
regulations.
Section 5.4 Partial Termination of TPC License. TPC may partially
terminate the TPC License with respect to a particular usage of a particular
Licensed Xxxx for a material breach of this Agreement by TIC that is not cured
within 60 days of written notice by TPC to TIC containing a description of the
specifics of such breach (for material breaches that can be cured but cannot
reasonably be cured within 60 days, TIC shall have an additional 60 days to cure
if TIC commences and continues diligent efforts to cure within such initial
60-day cure period) or such shorter cure period as is necessary to address a
third party claim that such use violates that third party's rights. Such partial
termination shall be limited to the particular usage of the particular Licensed
Xxxx, and shall not affect the TPC License and TIC's rights thereunder with
respect to other Licensed Marks or the provision of other products or services
in connection with the Licensed Marks. Upon written notice to TIC, TPC may also
suspend (but not terminate) TIC's license for a particular usage of any
particular Licensed Xxxx if TIC's or its Sublicensees' continued usage would
subject TPC to third-party liability, and TIC must either comply with the
suspension or (i) notify TPC that (x) TIC believes in good faith that suspension
is not warranted under the circumstances, and (y) TIC's continued use should not
subject TPC to any penalties or sanctions other than ordinary monetary damages
and/or any reasonable risk to the validity of, or TPC's rights in, the Travelers
Marks, with both (x) and (y) supported by a reasonable position by outside
counsel; and (ii) indemnify TPC with respect to any continued use pursuant to
Section 6.2(b). Any dispute regarding termination or suspension hereunder shall
not be subject to the negotiation period in Section 7.1.
Section 5.5 Survival. Articles 7 and 8 and Sections 2.6, 4.1, 4.2, 4.3,
4.4, 5.3, 5.5, 6.1 (with respect to Actions already initiated), and 6.2 shall
survive the expiration or termination of this Agreement for any reason.
ARTICLE VI
INFRINGEMENT AND INDEMNIFICATION
Section 6.1 Infringement.
(a) The parties agree to notify each other promptly of any known
actual or threatened infringement, dilution, violation, or other unauthorized
use ("Infringement") of a Licensed Xxxx (other than a New Portion) that has or
could reasonably be expected to have a negative effect on the other party's
business.
(b) TPC shall have the sole initial right to determine whether or
not it shall initiate any claim, action, inquiry, suit, or proceeding ("Action")
against any such Infringement of the Licensed Marks.
(c) In the event that TPC fails to initiate an Action against an
Infringement of a Licensed Xxxx within 30 days following written notice by TIC,
or decides not to continue prosecuting such an Action thereafter, then TIC may
bring or continue such an Action; provided that TIC obtains TPC's prior written
consent in its sole discretion; provided that TPC shall not withhold consent if
the Infringement either (i) is occurring solely within the Business, or (ii) has
the effect of creating within the Business a likelihood of confusion or dilution
or other conflict with TIC's rights that is likely to materially impair or
jeopardize the Business of TIC under the
Licensed Marks. The party that initiates or continues an Action under this
Section 6.1 shall be the "Initiating Party".
(d) The Initiating Party shall choose the attorneys, control the
Action, pay the Action's expenses, and retain any damages, proceeds, costs,
and/or fees recovered as a result of any judgment, verdict, award, or settlement
of such Action. The parties shall cooperate fully in the prosecution of any such
Action. The non-Initiating Party may participate in any infringement Action with
counsel of its choice at its own expense.
(e) Any recovery from an Action in which both parties participate
pursuant to this Section 6.1 shall be divided between the parties in proportion
to the expenses each incurred in connection with the prosecution of such Action.
(f) TIC and TPC agree to provide reasonable cooperation to each
other in any Action taken to enforce the Licensed Marks, including joining in
such Action if necessary to maintain the other party's standing. Neither party
shall settle any Action brought pursuant to this Section 6.1 in any manner that
compromises the other party's rights or subjects the other party to liability
without the prior written consent of the other party, which consent shall not be
unreasonably withheld or delayed.
Section 6.2 Indemnification.
(a) Indemnification by TPC. TPC agrees to indemnify, defend at its
expense, and hold harmless TIC and its Affiliates and each of their respective
officers, directors, employees, and agents against any and all liabilities,
losses, damages, awards, verdicts, judgments, settlements, fees, costs and
expenses (including reasonable attorneys' fees and costs of an Action)
("Losses"), based on, arising out of, resulting from or in connection with (i)
any breach by TPC of this Agreement, or (ii) any use of the Travelers Marks by
TPC or its Affiliates.
(b) Indemnification by TIC. TIC agrees to indemnify, defend at its
expense, and hold harmless TPC and its Affiliates and each of their respective
officers, directors, employees, and agents against any and all Losses, based on,
arising out of, resulting from or in connection with any (i) breach by TIC or
its Sublicensees of this Agreement, (ii) use of the Licensed Marks by TIC or its
Sublicensees, (iii) use by TIC or its Sublicensees of any New Portion, or (iv)
use by TIC or its Sublicensees of a Licensed Xxxx after TPC has requested
suspension of such usage in writing pursuant to Section 5.4.
(c) Procedure. The party seeking indemnification hereunder shall
give prompt written notice to the indemnifying party of any indemnifiable claim
and cooperate fully at the indemnifying party's expense in its defense and/or
settlement. The indemnifying party shall have sole control over the defense
and/or settlement of any indemnifiable claim; provided that neither party shall
compromise or settle any indemnifiable claim hereunder in such a manner that
compromises the other party's rights hereunder or subjects the other party to
liability without the other party's prior written consent, which consent shall
not be unreasonably withheld or delayed.
ARTICLE VII
DISPUTE RESOLUTION
Section 7.1 Negotiation. Except as otherwise specified in this Agreement,
in the event of any dispute, controversy, or claim arising out of or relating to
this Agreement or performance or breach hereunder (including, without
limitation, any dispute concerning the approval or rejection of a proposed New
Xxxx), (a "Dispute"), upon the written notice ("Notice") of either party, senior
management of the parties shall attempt in good faith to negotiate an amicable
resolution of the Dispute for a 30-day period or a mutually-agreed extension of
time (the "Negotiating Period").
Section 7.2 Binding Arbitration.
(a) Any Dispute not resolved pursuant to Section 7.1 or not subject
to Section 7.1 shall, at the request of either party, be finally resolved by
arbitration administered by the American Arbitration Association (the "AAA")
under its Commercial Arbitration Rules then in effect (the "Rules") except as
modified herein. The arbitration shall be held in New York, New York.
(b) There shall be three arbitrators of whom each party shall select
one within 30 days of respondent's receipt of claimant's demand for arbitration.
The two party-appointed arbitrators shall select a third arbitrator to serve as
Chair of the tribunal within 30 days of their selection. If any arbitrator has
not been appointed within the time limits specified herein, such appointment
shall be made by the AAA in accordance with the Rules. The hearing shall be held
no later than 120 days following the appointment of the third arbitrator;
provided, however, that in connection with an arbitration pursuant to Section
5.2, the parties shall use good faith efforts to have the arbitration panel
reach a final decision within 90 days following the end of TIC's 120 day cure
period provided for therein.
(c) The arbitral tribunal shall permit such prehearing discovery as
is relevant and necessary to the resolution of the Dispute taking into account
the parties' desire that the arbitration be conducted expeditiously and cost
effectively. All discovery shall be completed within 60 days of the appointment
of the third arbitrator or such other reasonable period determined by the
arbitrators.
(d) By agreeing to negotiation and arbitration pursuant to Article 7
of this Agreement, the parties do not intend to deprive a court of its
jurisdiction to issue such provisional relief, including without limitation a
preliminary injunction, in aid of arbitration proceedings and relief in aid of
the enforcement of any arbitration ruling pursuant to Article 7 of this
Agreement. Without prejudice to such provisional remedies as may be available
under the jurisdiction of a court, the arbitral tribunal shall have full
authority to grant provisional remedies, and to direct the parties to request
that any court modify or vacate any temporary or preliminary relief issued by
such court. For the purpose of any provisional relief in aid of arbitration
expressly provided for hereunder, the parties submit to the exclusive
jurisdiction of the Federal or State Courts in New York, New York (the "New York
Courts"). Each party unconditionally and irrevocably waives any objections which
they may have now or in the future to the jurisdiction of the New York Courts
including without limitation objections by reason of lack of personal
jurisdiction, improper venue, or inconvenient forum.
(e) The award shall be in writing, shall state the findings of fact
and conclusions of law on which it is based, shall be final and binding and
shall be the sole and exclusive remedy between the parties regarding any claims,
counterclaims, or issues presented to the arbitral tribunal. The arbitration
shall be governed by the United States Arbitration Act, 9 U.S.C. Section 1-15,
and judgment upon any award may be entered in any court having jurisdiction.
(f) The parties will bear equally all fees, costs, disbursements,
and other expenses of the arbitration, and each party shall be solely
responsible for all fees, costs, disbursements, and other expenses incurred in
the preparation and prosecution of their own case.
(g) The arbitral tribunal shall have the authority, for good cause
shown, to extend any of the time periods in this arbitration provision either on
its own authority or upon the request of any of the parties. The arbitral
tribunal shall be authorized in its discretion to grant pre-award and post-award
interest at commercial rates. The arbitral tribunal shall have no authority to
award any punitive, indirect, special, consequential, exemplary, or incidental
damages, costs of suit, or attorneys' fees. This Agreement and the rights and
obligations of the parties shall remain in full force and effect pending the
ruling in any arbitration proceeding hereunder.
ARTICLE VIII
MISCELLANEOUS
Section 8.1 Confidentiality. Each party shall maintain the confidentiality
(at a level at which it treats its own confidential information of similar
nature) of non-public, proprietary information provided by the other party
hereunder that is marked "CONFIDENTIAL" (or for oral information, is
simultaneously designated as "confidential," followed by written confirmation of
such status in a reasonable time), and shall not disclose such information to
any third party (other than employees who need to know it for the purposes of
this Agreement) without the prior written consent of the other party, except to
the extent such information is (i) already known to the receiving party or is
disclosed to the receiving party by a third party with no duty of
non-disclosure, (ii) in the public domain or disclosed by the disclosing party
to a third party without restriction, (iii) independently developed or acquired
by the receiving party without reliance on the confidential information, or (iv)
required to be disclosed by law, regulation, court order, or judicial process,
provided that the receiving party discloses no more information than is so
reasonably required and obtains, or cooperates with any attempt by the
disclosing party to obtain, a protective order or similar treatment with respect
to such information.
Section 8.2 Notices. All notices and other communications provided for
hereunder shall be dated and in writing and shall be deemed to have been given
(a) when delivered, if delivered personally, sent by confirmed facsimile or sent
by registered or certified mail, return receipt requested, postage prepaid, (b)
on the next business day if sent by nationally-recognized overnight courier, and
(c) when received if delivered otherwise. Such notices shall be delivered to the
address set forth below, or to such other address as a party shall have
furnished to the other party in accordance with this Section.
If to TIC or any TIC Affiliate, to:
The Travelers Insurance Company
Xxx Xxxxx Xxxxxx
Xxxxxxxx, XX 00000
Attention: Xxxxxx X. Xxxxxxx
Chief Executive Officer
Phone: (000) 000-0000
Fax: (000) 000-0000
With a copy to:
The Travelers Insurance Company
Xxx Xxxxx Xxxxxx
Xxxxxxxx, XX 00000
Attention: Xxxxx Xxxxxxx
General Counsel
Phone: (000) 000-0000
Fax: (000) 000-0000
And a copy to:
Citigroup Inc.
000 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attention: Xxxx X. Xxxxx, Esq.
Chief Trademark Counsel
Phone: (000) 000-0000
Fax: (000) 000-0000
If to TPC, to:
Travelers Property Casualty Corp.
Xxx Xxxxx Xxxxxx
Xxxxxxxx, XX 00000
Attention: Xxxxxx X. Xxxxxxx, Esq.
Deputy General Counsel
Law Department, 8 MS
Phone: 000-000-0000
Fax: 000-000-0000
And a copy to:
Travelers Property Casualty Corp.
Xxx Xxxxx Xxxxxx
Xxxxxxxx, XX 00000
Attention: General Counsel
Phone: 000-000-0000
Fax: 000-000-0000
Section 8.3 Binding Nature of Agreement. This Agreement shall be binding
upon and inure to the benefit of and be enforceable by the parties hereto or
their successors in interest, except as expressly otherwise provided herein.
Section 8.4 No Assignment. Neither this Agreement nor any of the rights,
interests, or obligations of any party hereto may be assigned by such party
without the prior written consent of the other party; provided, however, that
TPC and any permitted assignee of TPC may assign this Agreement (a) to any of
its Affiliates and (b) to any successor (whether direct or indirect, by transfer
of stock or assets, assignment, merger, consolidation or otherwise) of the
TRAVELERS Xxxx or any Licensed Xxxx in connection with a sale or transfer by TPC
or such assignee, as the case may be, of all or substantially all of any
business (whether direct or indirect, by transfer of stock or assets,
assignment, merger, consolidation or otherwise) to which the TRAVELERS Xxxx or
such Licensed Xxxx relates. In the event of a permitted assignment hereunder,
this Agreement shall be binding upon and inure to the benefit of and be
enforceable by the parties and their respective permitted successors and
assigns; provided, that no permitted assignment shall relieve the assigning
party of any obligation or liability unless the assignee assumes such obligation
or liability in writing for the express benefit of the non-assigning party
hereunder. In the event that TPC assigns less than all of the Travelers Marks
and Licensed Marks to a third party pursuant to this Section 8.4, this Agreement
shall apply with respect to such assigned marks and such assignee in the
applicable jurisdictions; provided that with respect to any provision of this
Agreement requiring consent by or notice to TPC, TIC shall not be required to
obtain such assignee's consent or provide such notice to such assignee, but
shall only be required to notify TPC or to obtain TPC's consent as applicable.
Any purported assignment in violation of the foregoing shall be null and void ab
initio and of no force and effect.
Section 8.5 No Third Party Beneficiaries. Nothing in this Agreement shall
convey any rights upon any Person which is not a party or a permitted successor
or assignee of a party to this Agreement. This Agreement shall apply to and be
binding upon Affiliates of the parties where so provided herein, and TPC and TIC
shall ensure that their respective Affiliates so comply with such provisions.
Section 8.6 Governing Law. This Agreement shall be construed and enforced
in accordance with, and the rights and duties of the parties shall be governed
by, the laws of the State of New York, without regard to the principles of
conflicts of law, and applicable federal law.
Section 8.7 Severability. In the event that any one or more of the
provisions contained herein, or the application thereof in any circumstances, is
held invalid, illegal, or unenforceable in any respect for any reason, the
validity, legality, and enforceability of any such provision in every other
respect and of the remaining provisions contained herein shall not be in any way
impaired thereby, it being intended that all of the rights and privileges of the
parties hereto shall be enforceable to the fullest extent permitted by law. To
the extent that any such provision is so held to be invalid, illegal, or
unenforceable, TIC and TPC shall use their good faith efforts to find and effect
an alternative means to achieve the same or substantially the same result as
that contemplated by such provision.
Section 8.8 Amendment and Modification. This Agreement may be amended,
modified, or supplemented only by written agreement executed by the parties.
Section 8.9 Entire Agreement. This Agreement including any schedules or
exhibits annexed hereto, embodies the entire agreement and understanding of the
parties hereto in respect of the transactions contemplated by this Agreement.
There are no restrictions, promises, representations, warranties, covenants, or
undertakings, other than those expressly set forth or referred to herein or
therein. This Agreement supersedes all prior agreements and understandings
between the parties with respect to such subject matter, including the Implied
License. In the event of a conflict between any provision of this Agreement, on
the one hand, and any provision of the Intercompany Agreement, on the other
hand, this Agreement shall control; provided that this Agreement shall not limit
the parties' rights to use Marks granted under the Intercompany Agreement
pursuant to the terms thereof.
Section 8.10 Drafting of Language. Each of TIC and TPC agrees that the
drafting of the language contained in this Agreement was a cooperative effort,
that each party was equally responsible for such drafting, and that it would be
inequitable for either party to be deemed the "drafter" of any specific language
contained herein pursuant to any judicial doctrine or presumption relating
thereto.
Section 8.11 Force Majeure. Neither of the parties shall be liable or be
in breach of any provision of this Agreement for any failure or omission on its
part to perform any obligation because of force majeure, including, but not
limited to war, riot, fire, explosion, flood, sabotage, terrorism, accident or
breakdown of machinery, or other impediments, hindrances, or cause beyond the
control of the party; and provided that such failure or omission resulting from
one of the above causes is cured as soon as practicable after the occurrence of
one or more of the above-mentioned causes. A party claiming a right to excused
performance under this Section shall promptly notify the other party in writing
of the extent of its inability to perform, which notice shall specify the
occurrence beyond its reasonable control that prevents such performance.
Section 8.12 Further Assurances. Each party hereto shall, on notice of
request from the other party hereto, take such further action not specifically
required hereby at the expense of the requesting party, as the requesting party
may reasonably request for the implementation of the transactions contemplated
hereby, including without limitation executing any required consents or making
any required or appropriate filings with any Secretary of State's office or with
applicable trademark authorities.
Section 8.13 Waiver. The waiver of a party with respect to the breach of
any provision hereof shall not be deemed a waiver with respect to any subsequent
breach of the same provision or any breach of any other provision hereof.
Section 8.14 Exhibits. If either party identifies additional matter that
as of the Effective Date should have been, but was not, included in any Exhibit
hereto, then at that party's written request and subject to the other party's
written approval (such approval not to be unreasonably withheld or delayed),
such matter shall be added to the applicable Exhibit and shall be deemed part of
that Exhibit for all purposes under this Agreement.
Section 8.15 Descriptive Headings. The descriptive headings of the several
articles and sections of this Agreement are inserted for reference only and
shall not limit or otherwise affect the meaning hereof.
Section 8.16 Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, but both of which
together shall constitute one and the same instrument.
IN WITNESS HEREOF, the parties have caused this Agreement to be
executed and delivered as of the date written below.
THE TRAVELERS INSURANCE COMPANY
/s/ Xxxxxx X. Xxxxxx
----------------------------------------------
Name: Xxxxxx X. Xxxxxx
Title: Vice President and Secretary
Date: August 19, 2002
TRAVELERS PROPERTY CASUALTY CORP.
/s/ Xxxxx X. Xxxxxxxx
----------------------------------------------
Name: Xxxxx X. Xxxxxxxx
Title: General Counsel and Secretary
Date: August 19, 2002
