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Exhibit 10.74
AMENDED AND RESTATED
TRADEMARK, TRADENAME AND SERVICE XXXX
COLLATERAL ASSIGNMENT AND
SECURITY AGREEMENT
THIS AMENDED AND RESTATED TRADEMARK, TRADENAME AND SERVICE XXXX COLLATERAL
ASSIGNMENT AND SECURITY AGREEMENT (the "Agreement") is made and entered into as
of this 22nd day of November, 1998 by and between MEDICIS PHARMACEUTICAL
CORPORATION, a Delaware corporation ("Assignor"), and NORWEST BANK ARIZONA,
NATIONAL ASSOCIATION, a national banking association ("Lender").
RECITALS:
A. Assignor and Lender, as successor-in-interest to Norwest Business
Credit, Inc. ("NBCI"), are parties to that certain Trademark, Tradename and
Service Xxxx Collateral Assignment and Security Agreement dated August 3, 1995,
as amended (the "Original Collateral Assignment");
B. In connection with Assignor's prior securities offering, Lender agreed
to amend and restate the Collateral Assignment for the purpose of, among other
things, confirming that the Collateral was assigned by Assignor to Lender as
security rather than as an absolute assignment;
C. The Revolving Loan and the Term Credit Facility expired unused on the
Termination Date and Lender has no further obligation to advance any sums under
the Revolving Loan or the Term Credit Facility;
D. Assignor has requested that Lender increase the Acquisitions Credit
Facility to $25,000,000 and extend the term of the Credit and Security Agreement
dated August 3, 1995, as amended (as it may be amended, modified, restated,
extended and/or renewed from time to time, the "Loan Agreement") and the
Acquisitions Credit Facility for an additional two (2) years and make certain
modifications and amendments to the terms of the Loan Agreement and other Loan
Documents, and Lender is willing to do so on certain terms and conditions,
including, without limitation, Assignor's reaffirmation in the form of this
Agreement of Assignor's grant of a security interest to Lender in certain
trademark, tradename and service xxxx rights upon the terms and subject to the
conditions of this Agreement;
NOW, THEREFORE, in consideration of premises, the covenants and agreements
contained herein and other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the Original Collateral Assignment
is hereby amended and restated in its entirety and Assignor hereby agrees with
Lender as follows:
1. Definitions. Except as otherwise defined herein, all capitalized terms
used herein shall have the meanings given to such terms in the Loan Agreement.
2. Grant. For value received, Assignor hereby grants, assigns and conveys
to Lender, not as an ownership interest, but as security for the Obligations
(hereinafter defined), (a)
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all of Assignor's trademarks, trade names, corporate names, company names,
business names, fictitious business names, trade styles, service marks,
certification marks, collective marks, logos, other source of business
identifiers, prints and labels on which any of the foregoing have appeared or
appear, designs and general intangibles of like nature used in connection with
or related to Assignor's business (all of the foregoing items in this clause
(a), as the same may be amended pursuant hereto from time to time, being
collectively called a "Trademark"), now existing anywhere in the world or
hereafter adopted or acquired, whether currently in use or not, all
registrations and recordings thereof, and all applications in connection
therewith, whether pending or in preparation for filing, including
registrations, recordings and applications in the United States Patent and
Trademark Office or in any office or agency of the United States of America or
any state thereof or any foreign country, including, without limitation, those
Trademarks referred to in Schedule A attached hereto and incorporated herein by
this reference; (b) all of Assignor's right, title and interest in Trademark
licenses relating to the Trademarks (whether as licensee or licensor), including
each Trademark license referred to in Schedule A attached hereto and
incorporated herein by this reference; (c) all reissues, extensions or renewals
of any of the items described in clauses (a) and (b) of this Section 2; (d) all
of the goodwill of the business connected with the use of, and symbolized by the
items described in, clauses (a) and (b) of this Section 2; and (e) all proceeds
of, and rights associated with, the foregoing, including any claim by Assignor
against third parties for past, present or future infringement or dilution of
any Trademark, Trademark registration or Trademark license, including any
Trademark, Trademark registration or Trademark license referred to in Schedule
A, or for any injury to the goodwill associated with the use of any such
Trademark or for breach or enforcement of any Trademark license. All of the
foregoing property, interests and rights are hereinafter collectively referred
to as the "Trademark Collateral". Assignor agrees not to sell or assign its
interest in, or grant any license of, the Trademark Collateral without the prior
written consent of Lender, which may be withheld in Lender's sole and absolute
discretion.
3. Obligations Secured. The foregoing collateral assignment and grant of
security interest is made for the purpose of securing (in such order of priority
as Lender may elect) the following (the "Obligations"):
(a) The payment of indebtedness in the total principal amount of up
to $25,000,000, with interest thereon, evidenced by the Loan Agreement and
Acquisitions Revolving Note;
(b) Payment of all sums advanced by Lender to protect the Trademark
Collateral pursuant to the Loan Agreement and/or this Agreement, with interest
thereon at a rate equal to the Default Rate (which rate of interest is
hereinafter referred to as the "Agreed Rate");
(c) Payment of all fees and late charges now or hereafter due
pursuant to the Loan Documents and other sums, with interest thereon, that may
hereafter be loaned to Assignor, or its successors or assigns, by Lender, or its
successors and assigns, when evidenced by a promissory note or notes reciting
that they are secured by this Agreement;
(d) Performance of every obligation of Assignor contained in the
Loan Documents;
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(e) Performance of every obligation, covenant and agreement of
Assignor contained in any agreement, document or instrument now or hereafter
executed by Assignor reciting that the obligations thereunder are secured by
this Agreement or the Loan Documents; and
(f) For the benefit of Lender, compliance with and performance of
each and every provision of any other agreement, document, instrument, law, rule
or regulation by which the Trademark Collateral is bound or may be affected.
4. Representations and Warranties. Assignor represents, warrants,
covenants and agrees that:
(a) The Trademarks referred to on Schedule A hereto are existing and
have not been adjudged invalid or unenforceable, in whole or in part;
(b) Except as provided in this Agreement and the other Loan
Documents, Assignor is the exclusive owner of the entire and unencumbered right,
title and interest in and to the Trademark Collateral except those items of
Trademark Collateral in respect of which Assignor is licensor, and to the best
knowledge of Assignor, except as set forth on Schedule A, no claim has been made
that the use of any Trademark Collateral does or may violate the asserted rights
of any third party;
(c) To the best knowledge of Assignor, Assignor owns directly or is
entitled to use, by license or otherwise, all Trademark Collateral and rights
with respect thereto used in, necessary for, or of importance to the conduct of
Assignor's business; and
(d) Assignor has the unqualified right to enter into this Agreement
and perform its terms.
5. Notification of Lender. Assignor shall immediately notify Lender in
writing of any change in the legal, trade or fictitious business names used by
Assignor and shall, upon Lender's request, execute any additional financing
statements and other assignments, agreements and certificates necessary, in
Lender's opinion, to reflect the change in trade names or fictitious business
names.
6. Use of Trademark Collateral. Assignor shall have the duty, through
counsel experienced in trademark matters and reasonably acceptable to Lender, to
prosecute diligently any Trademark applications of the Trademarks pending as of
the date of this Agreement or thereafter until the Assignor's obligations to
Lender shall have been paid in full, to file and prosecute opposition and
cancellation proceedings and to do any and all acts which are necessary or
desirable to preserve and maintain all rights in the Trademarks, except those
items of Trademark Collateral which are not necessary for or used in the
operation of the Assignor's business. Any expenses incurred in connection with
the Trademarks shall be borne by Assignor. Assignor shall not abandon any
Trademark without the consent of the Lender, which consent shall not be
unreasonably withheld.
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7. Abandonment. Assignor shall notify Lender immediately if it knows, or
has reason to know, that any application or registration relating to any item of
the Trademark Collateral listed on Schedule A hereto may be suspended,
cancelled, or dedicated to the public or placed in the public domain, or of any
material adverse final determination or development (including any such
determination or development in, any proceeding in the United States Patent and
Trademark Office, the United States Copyright Office, or any foreign counterpart
thereof or any court) regarding Assignor's ownership of any of the Trademark
Collateral, its right to register the same, or to keep and maintain and enforce
the same.
8. Applications. Assignor shall provide Lender with notice of the adoption
of any new Trademarks necessary for or related to the operation of Assignor's
business, and upon request of Lender, Assignor shall execute and deliver any and
all agreements, instruments, documents and papers as Lender may reasonably
request to evidence Lender's security interest in such Trademark Collateral and
the goodwill and general intangibles of Assignor relating thereto or represented
thereby. Assignor shall take all reasonable steps, including in any proceeding
before the United States Patent and Trademark Office or any similar office or
agency in any other country or any political subdivision thereof, to maintain
and pursue any application with respect to the Trademark Collateral listed on
Schedule A hereto (and any other Trademark Collateral with respect to which
Assignor is obligated to give the notice described in Section 7 above). Assignor
shall appear in and contest any action or proceeding purporting to affect this
Agreement or the rights or powers of Lender, and shall pay all costs and
expenses (including, without limitation, costs of litigation and attorneys'
fees) in any such action or proceeding in which Lender may appear.
9. Inspections. Assignor hereby grants to Lender and its employees and
agents the right to visit Assignor's facilities which relate to any of the
Trademark Collateral, and to inspect the facilities upon prior written notice at
reasonable times during regular business hours.
10. Trademark Enforcement. If no Event of Default shall have occurred and
be continuing, Assignor shall have the right, and if an Event of Default shall
have occurred and be continuing, Assignor shall have the right, with the prior
written consent of Lender, which will not be unreasonably withheld, to bring any
opposition proceedings, cancellation proceedings or lawsuit in its own name to
enforce or protect the Trademarks, in which event Lender may, if necessary, be
joined as a nominal party to such suit if Lender shall have been satisfied that
it is not thereby incurring any risk of liability because of such joinder.
Assignor shall promptly, upon demand, reimburse and indemnify Lender for all
damages, costs and expenses, including attorneys' fees, incurred by Lender in
the fulfillment of the provisions of this Section.
11. Other Agreements. Assignor agrees that, until all of the Obligations
shall have been satisfied in full, it will not enter into any agreement which is
inconsistent with Assignor's obligations or Lender's rights under this
Agreement, without Lender's prior written consent in Lender's sole and absolute
discretion. Assignor shall not amend or modify in any material respect any of
the license agreements listed on Schedule A hereto without the consent of Lender
in Lender's sole and absolute discretion.
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12. Events of Default. If any Event of Default shall have occurred and be
continuing and applicable contractual cure and grace periods shall have expired,
Lender shall have, in addition to all other rights and remedies given it by this
Agreement, those allowed by law and the rights and remedies of a secured party
under the Uniform Commercial Code as enacted in any jurisdiction in which the
Trademark Collateral may be located and, without limiting the generality of the
foregoing, the Lender may immediately, without demand of performance and without
other notice (except as set forth next below) or demand whatsoever to Assignor,
all of which are hereby expressly waived, and without advertisement, sell at
public or private sale or otherwise realize upon, in Phoenix, Arizona, or
elsewhere, all or from time to time any of the Trademark Collateral, or any
interest which the Assignor may have therein, and after deducting from the
proceeds of sale or other disposition of the Trademark Collateral all expenses
(including all reasonable expenses for brokers' fees and legal services), shall
apply the balance of proceeds as provided with respect to other personal
property securing the Loan. Notice of any sale or other disposition of the
Trademark Collateral shall be given to Assignor at least thirty (30) days before
the time of any intended public or private sale or other disposition of the
Trademark Collateral is to be made, which Assignor hereby agrees shall be
reasonable notice of such sale or other disposition. At any such sale or other
disposition, any holder of the Note or Lender may, to the extent permissible
under applicable law, purchase the whole or any part of the Trademark Collateral
sold, free from any right of redemption on the part of Assignor, which right is
hereby waived and released.
13. Fees and Costs. Any and all fees, costs and expenses, of whatever kind
or nature, including, without limitation, (i) attorneys' fees and expenses
incurred by Lender in connection with the preparation of this Agreement and all
other documents relating hereto and the consummation of this transaction, the
filing or recording of any documents (including all taxes in connection
therewith) in public offices, (ii) the payment or discharge of any taxes,
maintenance fees, encumbrances and (iii) those incurred in or otherwise
protecting, maintaining or preserving the Trademark Collateral after Assignor
shall have failed to do so in accordance with the terms of this Agreement and/or
the Loan Documents, or in defending or prosecuting any actions or proceedings
arising out of or related to the Trademark Collateral, shall be borne and paid
by Assignor on demand by Lender and until so paid shall be added to the
principal amount of the Obligations and shall bear interest at the Agreed Rate.
14. Power of Attorney. Assignor hereby makes, constitutes and appoints
Lender or any officer or agent of Lender as Lender may select as Assignor's true
and lawful attorney-in-fact, with the power to endorse Assignor's name on all
applications, documents, papers and instruments necessary to Lender to use the
Trademark Collateral, or to grant or issue any exclusive or non-exclusive
license under the Trademark Collateral to anyone else, or necessary for Lender
to assign, pledge, convey or otherwise transfer title in or dispose of the
Trademark Collateral to anyone else. Assignor hereby ratifies all that such
attorney shall lawfully do or cause to be done by virtue hereof. This power of
attorney shall be irrevocable for the life of this Agreement and may be
exercised by Lender only at any time after the occurrence and during the
continuance of an Event of Default.
15. Indemnification. Assignor shall and does hereby agree to indemnify,
defend and hold Lender harmless for, from and against any and all liability,
loss or damage which it may or
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might incur under or by reason of the Trademark Collateral or under or by reason
of this Agreement and for, from and against any and all claims and demands
whatsoever which may be asserted against Lender by reason of any alleged
obligation or undertaking in its part to perform or discharge any of the terms,
covenants or agreements under or by reason of the Trademark Collateral or under
or by reason of this Agreement; provided, however, that the foregoing agreement
to indemnify, defend and hold harmless shall not apply to the extent that such
claims and demands arise from the gross negligence or intentional misconduct of
Lender. Except as provided in the immediately preceding sentence, should Lender
incur any such liability, loss or damage, or in the defense of any such claim or
demand, the amount thereof, including costs, expenses and reasonable attorneys'
fees, together with interest thereon at the Agreed Rate, shall be secured hereby
and by the other Loan Documents, and Assignor shall reimburse Lender therefor
(together with such interest) immediately upon demand. Upon receiving knowledge
of any suit, claim or demand asserted by a third party that Lender believes is
covered by this indemnity, Lender shall give Assignor notice of the matter and
the opportunity to defend it, at Assignor's sole cost and expense, with legal
counsel satisfactory to Lender. Lender may require Assignor to defend the
matter. If Assignor promptly undertakes its responsibility to defend the matter,
Assignor shall, at reasonable intervals, keep Lender apprised of the status of
the matter and Assignor's actions pertaining thereto. In addition, even if
Assignor accepts and undertakes its responsibility to defend the matter, Lender
may, at its sole cost and expense, retain separate legal counsel to advise
Lender with respect to the matter. Assignor or its counsel shall cooperate with
such separate counsel of Lender. If Assignor does not promptly accept and
undertake its responsibility to so defend the matter, Lender may employ an
attorney or attorneys to protect its rights hereunder, and in the event of such
employment, Assignor shall upon demand pay Lender all reasonable attorneys' fees
and expenses incurred by Lender, whether or not an action is actually commenced.
16. Release. Upon payment in full and performance of all Obligations
secured hereby and termination of all obligations of Lender to make loans and
advances and otherwise extend credit to Assignor (other than by reason of the
exercise by Lender of its rights and remedies), this Agreement shall become and
be void and of no effect, but the affidavit of any officer of Lender showing
that any such conditions to release have not been satisfied shall be and
constitute conclusive evidence of the validity, effectiveness and continuing
force of this Agreement, and any person may and is hereby authorized to rely
thereon. Upon such termination, all the estate, right, title, interest, claim
and demand of Lender in and to the Trademark Collateral shall revert to
Assignor, and Lender shall, at the request of Assignor and at the sole cost and
expense of Assignor, deliver to Assignor one or more instruments canceling the
Assignment and reassigning the Agreement to Assignor.
17. Notices. All notices, requests, demands and consents to be made
hereunder to the parties hereto shall be in writing and shall be delivered by
hand or sent by certified mail, postage prepaid, return receipt requested,
through the United States Postal Service to the addresses set forth in the Loan
Agreement or such other address which the parties may provide to one another in
accordance with the Loan Agreement. Such notices, requests, demands and
consents, if sent by mail shall be deemed given when delivered.
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18. No Prior Assignments. Assignor hereby represents and warrants to
Lender that no previous assignment of its interest in the Trademark Collateral
has been made (except for the Original Collateral Assignment and such as have
been terminated or reassigned to Assignor) and, except for transfers to Lender,
Assignor agrees not to assign, sell, pledge, transfer, or otherwise encumber its
interest in the Trademark Collateral so long as this Agreement is in effect.
19. No Release. This Agreement shall not effect the release of any other
collateral now or hereafter held by Lender as security for the Obligations, nor
shall the taking of additional security for the Obligations hereafter effect a
release or termination of this Agreement or any terms or provisions hereof.
20. Further Assurances. Assignor, upon request of Lender, shall execute
and deliver such further documents, as may be reasonably necessary to carry out
the intent of this Agreement and to perfect and preserve the rights and
interests of Lender hereunder and the priority thereof.
21. No Waiver. No failure or delay on the part of Lender in exercising any
right, power or remedy hereunder shall operate as a waiver thereof, nor shall
any single or partial exercise of any right, power, or remedy hereunder preclude
any other or further exercise thereof or the exercise of any other right, power
or remedy. The rights, powers and remedies hereunder are cumulative and may be
exercised by Lender either independently of or concurrently with any other
right, power or remedy contained herein or in any document or instrument
executed in connection with the Obligations.
22. GOVERNING LAW. THIS AGREEMENT SHALL BE GOVERNED BY AND CONSTRUED AND
INTERPRETED IN ACCORDANCE WITH THE LAWS OF THE STATE OF ARIZONA, WITHOUT GIVING
EFFECT TO CONFLICT OF LAWS PRINCIPLES.
23. Cumulative Rights. All of Lender's rights and remedies with respect to
the Trademark Collateral, whether established hereby or by the Loan Agreement,
or by any other agreements or by law shall be cumulative and may be exercised
singularly or concurrently.
24. Severability. The provisions of this Agreement are severable, and if
any clause or provision shall be held invalid and unenforceable in whole or in
part in any jurisdiction, then such invalidity or unenforceability shall affect
only such clause or provision, or part thereof, in such jurisdiction, and shall
not in any manner affect such clause or provision in any other jurisdiction, or
any other clause or provision of this Agreement in any jurisdiction.
25. Successors and Assigns. The benefits and burdens of this Agreement
shall inure to the benefit of and be binding upon the respective successors and
permitted assigns of the parties.
26. Authority of Assignor and Signatories. Assignor hereby represents and
warrants to Lender that all necessary consents and approvals have been obtained
and that this Agreement has been duly authorized by all necessary action and
that it constitutes and will constitute a valid and binding obligation of
Assignor. Assignor hereby represents and warrants that the signatory
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executing this Agreement on behalf of the Assignor has been duly authorized by
Assignor to execute this Agreement on behalf of Assignor as an officer of
Assignor.
27. Number and Gender. In this Agreement, the singular shall include the
plural and the masculine shall include the feminine and neuter gender, and vice
versa, if the context so requires.
28. Counterparts. This Agreement may be executed and acknowledged in
counterparts, all of which executed and acknowledged counterparts shall together
constitute a single document. Signature and acknowledgment pages may be detached
from the counterparts and attached to a single copy of this Agreement to form
physically one document, which may be recorded.
29. Integration. The Loan Documents contain the complete understanding and
agreement of Assignor and Lender and supersede all prior representations,
warranties, agreements, arrangements, understandings and negotiations.
30. Survival. Subject to the applicable provisions of the Loan Agreement,
the representations, warranties and covenants of Assignor in the Loan Documents
shall survive the execution and delivery of the Loan Documents and the making of
the Loan described therein.
31. Filing/Recordation. This Agreement may be filed/recorded in such
public offices and with such governmental authorities as Lender may determine
from time to time. Lender may so file/record this Agreement as a "security
interest", "collateral assignment", "assignment" or similar designation as
Lender may determine (so long as such designation is consistent with the terms
of this Agreement) and Lender may from time to time rerecord/refile or take
other action to change the designation under which this Agreement is recorded
(so long as such designation is consistent with the terms of this Agreement).
32. Affirmation of Security Interest. This Agreement amends, restates and
supersedes (except as provided herein) the Original Collateral Assignment.
Notwithstanding the amendment and restatement of the Original Collateral
Assignment, Assignor acknowledges that consideration has been given by Lender
for this Agreement and nothing contained herein is intended to impair, limit or
otherwise affect Lender's continuing first lien priority security interest in
the Trademark Collateral.
IN WITNESS WHEREOF, this Agreement is made as of the date first above
written.
MEDICIS PHARMACEUTICAL CORPORATION,
a Delaware corporation
By: /s/ Xxxx X. Xxxxxxxx, Xx.
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Name: Xxxx X. Xxxxxxxx, Xx.
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Title: Chief Financial Officer
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NORWEST BANK ARIZONA, NATIONAL
ASSOCIATION, a national banking
association
By: /s/ Xxx Xxxxxxxx
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Name: Xxx Xxxxxxxx
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Title: Vice President
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SCHEDULE A
LIST OF TRADEMARK COLLATERAL
