Exhibit 10.8
ASSIGNMENT OF TRADEMARK APPLICATIONS AND COMMON LAW
TRADEMARKS
THIS ASSIGNMENT, effective the date of last signature below,
is by and between GENERAC CORPORATION, a Wisconsin corporation ("Assignor") and
GENERAC PORTABLE PRODUCTS, INC. (F/K/A GPPC, INC.), a Delaware corporation
("Assignee").
RECITALS
X. Xxxxxxxx is the owner of certain rights in various
intellectual properties, including the trademark applications and common law
trademarks used by Assignor's Portable Products Division, all as listed in
Schedule A attached hereto (the "Trademarks").
B. Assignor desires to assign to Assignee all of Assignor's
right, title and interest in and to the Trademarks, and Assignee desires such an
assignment as part of the purchase of Assignor's Portable Products Division and
in accordance with the parties' Asset Purchase and Sale Agreement.
AGREEMENTS
In consideration of the recitals and mutual promises contained
herein and other good and valuable consideration, the receipt and sufficiency of
which is hereby acknowledged, the parties agree as follows:
1. ASSIGNMENT OF TRADEMARKS. Assignor hereby assigns and
transfers to Assignee, its successors and assigns, Assignor's entire right,
title and interest in and to the Trademarks, together with the goodwill
associated therewith.
2. ASSIGNOR WARRANTY. Assignor hereby warrants and represents
that it has the unrestricted right to make this Assignment free and clear of all
liens, encumbrances, security interests and rights of any third party. Assignor
further represents and warrants that no assignment, sale, license, agreement or
any other encumbrance has been or will be made or entered into which would
conflict with this Assignment.
3. ASSIGNOR COOPERATION. Assignor and its successors and
assigns further agree to, without further consideration, promptly provide
Assignee with all pertinent documents relating to the Trademarks and will, upon
Assignee's reasonable request, provide Assignee with all pertinent facts
relating thereto. Assignor further agrees to testify as to said facts and
documents in any litigation or proceeding related thereto.
Assignor will promptly execute and deliver to Assignee or its legal
representatives, and will undertake all reasonable efforts to secure the same
from its employees, agents, officers and directors, any and all papers,
instruments, documents, affidavits or declarations determined by Assignee in its
reasonable judgment as required by Assignee to apply for, obtain, maintain,
issue or enforce any of the Trademarks.
4. ASSIGNMENT OF ACCRUED ENFORCEMENT RIGHTS. Assignor assigns
and transfers to Assignee any and all claims or causes of action for
infringement of any of the Trademarks that may have accrued prior to the
effective date of this Assignment, together with the right to bring suit for
and/or initiate any proceeding to collect any and all damages arising from said
claim or cause of action.
5. COUNTERPARTS. This Assignment may be executed in
counterparts, each of which shall be deemed an original, but both of which taken
together shall constitute one and the same instrument.
[Signatures on the following page]
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IN WITNESS WHEREOF, we have hereunto set our hands and seal.
For Assignor, Generac Corporation:
BY: /s/ Xxxxxx X. Xxxx
-------------------------------
Printed Name: Xxxxxx X. Xxxx
Title: Chairman of the Board
State of Wisconsin )
: SS
_________ County )
On this ____ day of _____________, 1998, before me appeared
to me personally known, who, being by me duly sworn, did say that he is
of Generac Corporation, and that said instrument was signed on behalf of said
corporation by authority of the Board of Directors.
[Seal] Notary Public, State of
My commission
For Assignee, Generac Portable Products, Inc. (f/k/a GPPC, Inc.):
BY /s/ Xxxx X. Xxxxxxxxx
--------------------------------
Printed Name: Xxxx X. Xxxxxxxxx
Title: President
State of _________ )
: SS
__________ County )
On this ____ day of ______________, 1998, before me appeared
______________________ to me personally known, who, being by me duly sworn, did
say that he is of Generac Portable Products, Inc. (f/k/a GPPC, Inc.), and that
said instrument was signed on behalf of said corporation by authority of the
Board of Directors.
[Seal] Notary Public, State of
My commission
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SCHEDULE A
Pending U.S. federal trademark applications:
1. GRIPSTART (U.S. serial no. 75/203,329, filed 11/25/96)
2. MEGAFORCE (U.S. serial no. 75/249,372, filed 02/27/97)
3. SAFETY FLOW (U.S. serial no. 75/203,328, filed 11/25/96)
4. SMARTWELD (U.S. serial no. 75/331,792, filed 07/28/97)
5. TRIGGER UP (U.S. serial no. 75/203,332, filed 11/25/96)
6. WATER CHECK (U.S. serial no. 75/203,331, filed 11/25/96)
Common law trademarks used in connection with Assignor's portable products:
1. LITEHOUSE
2. NIAGARA
3. HOME AND AWAY (also sometimes used as HOME & AWAY)
4. SPORT AND HOME (also sometimes used as SPORT & HOME)
5. G-FORCE
6. SV
7. SVP
8. SVT
9. XL
10. EC
11. ET
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