TRADEMARK LICENSE AGREEMENT
Exhibit 10.1
This TRADEMARK LICENSE AGREEMENT (“Agreement”) is made on this 19th day of April, 1995 among
AmeriGas Propane, Inc., a Pennsylvania Corporation (“Licensor”), AmeriGas Partners, L.P., a
Delaware limited partnership (“Partnership”), and AmeriGas Propane, L.P., a Delaware limited
partnership (“Operating Partnership”). The Partnership and the Operating Partnership may be
referred to in this Agreement individually as “Licensee” or collectively as “Licensees.”
Introduction
1. Licensor owns all right, title and interest in the
trademarks and service marks listed on the attached Schedule A,
including the federal registrations for these marks (the
“Marks”), and the goodwill associated with the Marks.
2. Licensor, through its predecessors in interest and
affiliates, has used the Marks in connection with liquefied
petroleum (“LP”) gas, LP gas products, LP gas equipment, and the
sale, distribution, storage and transportation of LP gas, LP gas
products, and LP gas equipment, including but not limited to
those goods and services covered by the federal registrations
listed in the attached Schedule A (the “Goods and Services”).
3. Licensor desires that Licensees, each of which is
affiliated with Licensor, use the Marks in connection with the
Goods and Services in accordance with the terms and conditions of this Agreement.
4. Each Licensee desires to obtain from Licensor a license to use the Marks in
connection with the Goods and Services in accordance with the terms and conditions of this
Agreement.
NOW, THEREFORE, in consideration of the foregoing and the mutual covenants contained in
this Agreement, and for other good and valuable consideration, the receipt and sufficiency of
which the parties acknowledge, the parties agree as follows:
Agreement
1. Grant of License. Subject to the other provisions of this Agreement, Licensor
grants to each Licensee an exclusive (except as otherwise provided in this Agreement), royalty-free
license during the term of this Agreement to use the Marks in connection with the Goods and
Services. Licensees acknowledge that Licensor and its assignees, designees and licensees may use
the Marks in connection with the Goods and Services and the business of the Partnership and the
Operating Partnership in the same territory as Licensees.
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2. Limitations on Use. Licensees shall not use the
Marks other than in connection with the Goods and Services or use
any of the Marks in their corporate, business or trade names without the prior written
consent of Licensor.
3. Ownership of the Marks. Licensees acknowledge
that Licensor owns all right, title and interest in the Marks and
the goodwill associated with the Marks, and that any use of the
Marks by Licensees and any goodwill associated with such use
shall inure to the benefit of Licensor. Each Licensee agrees not
to attack or contest the Marks or Licensor’s rights in the Marks,
directly or indirectly. Each Licensee agrees not to register or
attempt to register the Marks, or cause the Marks to be
registered, in any country, state or other jurisdiction.
Licensor agrees to take reasonable steps to maintain the Marks.
4. Quality Control
(a) In order to comply with Licensor’s quality
control standards, each Licensee shall: (i) use its best efforts to maintain the quality of the
Marks; (ii) use the Marks only in a manner consistent with past uses of the Marks by Licensor, its
predecessor in interest and its affiliates; (iii) adhere to such other specific reasonable quality
control standards that Licensor may from time to time promulgate and communicate to Licensees with
respect to the Marks; (iv) comply materially with all U.S.
federal, state and local laws and regulations, and, where applicable, Canadian laws and
regulations, governing the use of the Marks and the provision of the Goods and Services; and (v)
not alter or modify the Marks in any way.
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(b) In order to confirm that Licensee’s use of
the Marks complies with this Section 4, Licensor shall have the right, in its sole discretion, (i)
to require that any Licensee submit to Licensor representative samples of any materials bearing the
Marks, and (ii) to inspect, without prior advance notice, any Licensee’s facilities, products,
records and operations in connection with the use of the Marks.
(c) If any Licensee fails to comply with any of
the provisions in this Section 4, such failure shall be deemed to be a material breach of
Licensee’s obligations under this Agreement for the purposes of the termination provisions of
Section 6 below.
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5. Assignment, Collateral Assignment and Sublicensing
(a) Except as provided in subsection (b) below,
Licensees shall not assign or sublicense any right or interest in the Marks or the license granted
in this Agreement, whether voluntarily or by operation of law, without the prior written consent of
Licensor, which consent may be withheld in Licensor’s absolute discretion.
(b) Notwithstanding the foregoing, the Operating
Partnership may grant a sublicense to any “Subsidiary” (defined
below) for use in connection with the Goods and Services as long
as the Subsidiary agrees in writing to the terms and conditions
of this Agreement and collaterally assign this Agreement to any
of its secured lenders or any person acting on their behalf. For
the purposes of this subsection, “Subsidiary” shall have the same
meaning as in the Amended and Restated Agreement of Limited
Partnership of the Partnership or the Operating Partnership,
respectively. Any Licensee may also assign all of its right,
title and interest in and to its rights under this Agreement by
way of collateral security to any creditor of the Licensee (the
“Secured Creditors”) and upon any realization on the collateral
afforded by such collateral assignment, such Secured Creditors
(or their authorized representative) shall have the right to
assign Licensee’s rights and responsibilities under this
Agreement to any purchaser or purchasers of the Business with
respect to which the Marks have been used (a “Permitted Transferee”) provided only that such
Permitted Transferee shall agree in writing to be bound by the provisions of this Agreement. A
Permitted Transferee shall be a Licensee hereunder and shall have rights of transfer of rights and
responsibilities to additional parties succeeding to all or a portion of the Business and who shall
also be Permitted Transferees hereunder.
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(c) Licensor may assign, transfer, delegate or otherwise dispose of any and all of its rights
and/or responsibilities under this Agreement to an “Affiliate” of the Partnership or Operating
Partnership, subject to the prior written consent of any collateral assignee if this Agreement is
then subject to a collateral assignment for security purposes. For the purposes of this subsection,
“Affiliate” shall have the same meaning as in the Amended and Restated Agreement of Limited
Partnership of the Partnership or the Operating Partnership, respectively.
6. Term and Termination
(a) The license granted in this Agreement shall remain in effect unless terminated by mutual
agreement of the parties or by Licensor as provided below, provided that any termination pursuant
to this Section shall be subject to the prior written consent of any collateral assignee if this
Agreement is then subject to a collateral assignment for security
purposes.
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(b) Licensor may terminate this Agreement as to
any Licensee, or as to all Licensees, if (i) the Licensor ceases to be the sole general partner of
the Partnership or the Operating Partnership, or (ii) Licensor deems it necessary, in its sole
discretion, to terminate the Agreement in order to settle any claim of infringement, unfair
competition or similar claim, against Licensor and/or any Licensee, that arises out of or relates
to the use of any of the Marks by Licensor or any Licensee, provided that no such
termination pursuant to subsection (b)(i) shall be permitted with respect to any Licensee that is a
Permitted Transferee. Termination pursuant to subsection (b)(ii) shall be effective immediately
upon receipt of written notice to the affected Licensee(s).
(c) Licensor may terminate this Agreement as to
any Licensee that materially breaches any of the provisions of this Agreement, provided
that such Licensee shall have 15 days after receiving written notice from Licensor within which
to cure such breach. If such Licensee has not accomplished such cure to the reasonable
satisfaction of Licensor, in Licensor’s sole discretion, at the end of said 15 day period, then
Licensor may terminate the Agreement effective immediately upon further written notice to such
Licensee.
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(d) In the event of termination as to any
Licensee, such Licensee shall promptly cease all use of the Marks in any form. Such Licensee shall
use all commercially reasonable efforts to remove the Marks promptly from all property owned or
controlled by Licensee, including without limitation any signs, storage units, facilities, or
promotional materials. Any sublicenses granted pursuant to Section 5(b) of this Agreement shall
automatically terminate.
(e) If the General Partner has ceased to be the
general partner of the Partnership or the Operating Partnership
for any reason except removal other than for cause, and Licensor
terminates this Agreement pursuant to subsection (b)(i), Licensor
shall pay to the Operating Partnership a fee equal to the fair
market value of the Xxxx. Otherwise, Licensor shall not owe any
fee to any Licensee upon termination.
7. Indemnification. Each Licensee shall, jointly and severally with the other
Licensees, indemnify and hold Licensor, its successors and assigns, and all of their respective
directors, officers, employees, shareholders, principals, agents and legal representatives harmless
against any and all damages, losses, costs and expenses (including, without limitation, legal fees
and other expenses) that arise out of or relate to (i) any Licensee’s use of any of the Marks in a
manner other than as specifically contemplated by this Agreement, or (ii) any other breach of this Agreement by any
Licensee.
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8. Infringement Proceedings
(a) Each Licensee shall promptly notify Licensor
of any known, threatened or suspected infringement, imitation or unauthorized use of any of the
Marks by any third party brought to the attention of any of its officers or in-house counsel.
Licensor, in its sole discretion, shall determine what action, if any, should be taken in response
to any infringement, imitation or unauthorized use of any of the Marks by a third party. Licensees
shall cooperate with Licensor in any action taken by Licensor to enforce Licensor’s rights in the
Marks. No Licensee shall itself take any action to prevent any infringement, imitation or
unauthorized use of any of the Marks without the prior written approval of Licensor, which Licensor
may withhold in its sole discretion.
(b) Licensor shall have the sole right, at its
expense, to defend and settle for monetary and/or other damages any claim made against Licensor or
any Licensee by a third party alleging that the use of any of the Marks infringes upon any rights
of others. Licensor expressly reserves the right to terminate this Agreement, pursuant to Section
6(b)(ii) above, to settle any such claim. If Licensor decides to defend against any such claim, Licensees
shall cooperate with Licensor to a reasonable extent, at Licensor’s expenses.
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9. Waiver. Waiver by Licensor of any breach of any
condition or covenant of this Agreement by any Licensee shall not
be deemed a waiver of any subsequent breach of the same or any
other condition of this Agreement. No waiver shall be effective
unless made in writing.
10. Entire Agreement. This Agreement contains all
agreements of the parties with respect to the subject matter of
this Agreement. No prior agreement or understanding pertaining
to any such matter shall be effective. This Agreement may only
be modified in a written instrument executed by the pertinent
parties. Each party acknowledges that no representations,
inducements, promises or agreements have been made, orally or
otherwise, by any party, or anyone acting on behalf of any party,
which are not expressly embodied in this Agreement. Each
Licensee acknowledges that Licensor might later agree to modify
this Agreement with respect to an individual Licensee and has no
obligation to so modify this Agreement with respect to any other
Licensee.
11. Governing Law. This Agreement shall be governed
by, and construed in accordance with, applicable federal law and the laws of the Commonwealth of Pennsylvania without giving effect to the choice of law
provisions thereof.
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12. Successors. Subject to Section 5, above, this
Agreement shall be binding upon and shall inure to the benefit of
the parties to this Agreement and their permitted respective
successors, representatives and assigns.
13. Notices. All notices that are required or may be
given pursuant to the terms of this Agreement shall be in writing
and shall be sufficient in all respects if (1) delivered or
mailed by registered or certified mail, postage prepaid; (2) sent
by fax (in each case promptly confirmed by registered or
certified mail, postage prepaid); or (3) sent by overnight
courier as follows:
If to Licensor, to:
|
AmeriGas Propane, Inc. 000 Xxxxx Xxxxx Xxxx Xxxx xx Xxxxxxx, XX 00000 |
|
| Attention: General Counsel Fax: (000) 000-0000 |
||
If to Partnership, to:
|
AmeriGas Partners, L.P. 000 Xxxxx Xxxxx Xxxx Xxxx xx Xxxxxxx, XX 00000 |
|
| Attention: General Counsel Fax: (000) 000-0000 |
||
If to Operating Partnership,
to:
|
AmeriGas Propane, L.P. 000 Xxxxx Xxxxx Xxxx Xxxx xx Xxxxxxx, XX 00000 |
|
| Attention: General Counsel Fax: (000) 000-0000 |
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or to such other address as any party shall have designated by notice in writing to the other
parties. Unless otherwise provided in this Agreement, all notices, demands and requests sent in
the manner provided in this Agreement shall be effective upon the earlier of (1) delivery thereof;
(2) three days after the mailing of such notice, demand or request by registered or certified mail;
or (3) the next business day if sent by overnight courier.
14. No Rights by Implication. Licensees acknowledge that Licensor does not grant any
rights or licenses with respect to the Marks other than those rights or licenses expressly granted
in this Agreement.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be duly executed and delivered
by their respective duly authorized representatives as of the date above written.
| AmeriGas Propane, Inc. |
||||
| By: | /s/ Xxxxx X. Xxxxxx | |||
| Name: | Xxxxx X. Xxxxxx | |||
| Title: | V.P. — Finance and Accounting | |||
|
AmeriGas Partners, L.P. |
||||
| By: | AmeriGas Propane, Inc., as its General Partner |
|||
| By: | /s/ Xxxxx X. Xxxxxx | |||
| Name: | Xxxxx X. Xxxxxx | |||
| Title: | V.P. — Finance and Accounting | |||
| AmeriGas Propane, L.P. |
||||
| By: | AmeriGas Propane, Inc., as its General Partner |
|||
| By: | /s/ Xxxxx X. Xxxxxx | |||
| Name: | Xxxxx X. Xxxxxx | |||
| Title: | V.P. — Finance and Accounting | |||
SCHEDULE A
LICENSED XXXXX
| Xxxx | Reg. Date | Reg. No. | Goods/Services | |||||
AMERICA’S PROPANE COMPANY
|
2/8/94 | 1,820,258 | Distributorship services in the field of LP gas, LP gas products and equipment, in Class 42 | |||||
AMERICA’S PROPANE COMPANY
|
9/19/89 | 1,557,440 (Supplemental Register) |
Distributorship services in the field of LP gas, and LP gas products and equipment, in Class 42 | |||||
CAL GAS
|
7/11/78 | 1,095,654 | Liquefied natural gases — namely, propane, butane, pentane and ethane, in Class 4 | |||||
CAL GAS and Design
|
6/16/64 | 771,362 | Liquefied gases — namely, propane and butane, in Class 4 | |||||
CAL GAS and Design
|
7/11/78 | 1,095,653 | Liquefied natural gases — namely, propane, butane, pentane and ethane, in Class 4 | |||||
