Trademark Consent Agreement
Exhibit 10.32
This Agreement, made this 31st day of July, 2003, by and between North Atlantic Trading Company, Inc. (hereinafter referred to as “NATC”), a Delaware corporation, whose address is 000 Xxxx Xxxxxx Xxxxx, Xxx Xxxx, Xxx Xxxx 00000; North Atlantic Operating Company, Inc. (hereinafter referred to as “NAOC”), a Delaware corporation, whose address is 000 Xxxx Xxxxxx Xxxxx, Xxx Xxxx, Xxx Xxxx 00000; and Bolloré S.A., formerly know as Bolloré Technologies, S.A., a French corporation whose address is Odet 29500 Ergue Gaberic, Commune d’Ergue Gaberic, France (hereinafter referred to as “Bolloré”).
WHEREAS, NATC, through its subsidiary, NAOC, is the owner of, inter alia, the marks shown on Schedule A, and where applicable the registrations and applications relating thereto (“NATC/NAOC Marks”) attached hereto; and
WHEREAS, Bolloré is the owner of, inter alia, the marks shown on Schedule B, and where applicable the registrations and applications relating thereto (“Bolloré Marks”) attached hereto;
WHEREAS, NATC/NAOC desires to use and register the NATC/NAOC Marks set forth in Schedule A, for the goods specified therein; and
WHEREAS, Bolloré desires to use and register the Bolloré Marks set forth in Schedule B, for the goods recited therein; and
Whereas, the Parties have exchanged information regarding their respective products, channels of trade, and the like, and have concluded that co-existence without confusion is possible based on the different nature of the Parties’ products and channels of trade.
WHEREAS, NATC/NAOC and Bolloré mutually recognize the validity of each other’s marks as set forth in the attached Schedules.
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NOW, THEREFORE, for good and valuable consideration, the parties hereby agree and state as follows:
1. NATC/NAOC believes there is no likelihood of confusion or conflict between its NATC/NAOC Marks shown on Schedule A, and the Bolloré Marks shown on Schedule B.
2. Bolloré believes there is no likelihood of confusion or conflict between its Bolloré Marks shown on Schedule B, and the NATC/NAOC Marks shown on Schedule A.
3. NATC will take no action to interfere with the use and/or registration of the Bolloré Marks shown on Schedule B.
4. Bolloré will take no action to interfere with the use and/or registration of the NATC/NAOC Marks shown on Schedule A.
5. In view of the differences between the Parties’ respective marks as used and as agreed to be used in the future pursuant to this agreement, and given the differences in the goods, the Parties agree that their respective products can co-exist without consumer confusion.
6. Pursuant to an agreement between the parties, NATC/NAOC is the exclusive United States distributor of cigarette paper, filter tubes, injector machines and filter tips sold under the Bolloré Marks. Each booklet bears a statement identifying NATC/NAOC simply as distributor.
7. NATC/NAOC and Bolloré acknowledge that the purchasing public is not and will not be harmed by the relationship between the parties. The parties acknowledge that their respective marks have been used in the United States on their respective products, for more than 25 years, without any known confusion of the purchasing public.
8. Except as otherwise agreed between the parties, in order to avoid any potential confusion, NATC/NAOC agrees not to use the NATC/NAOC Marks within the United States on cigarette papers, filter tubes, injector machines or filter tips and Bolloré agrees not to use the Bolloré Marks on any tobacco products within the United States.
9. In the unlikely event that any consumers are confused as to the source or origin of either party’s goods, the parties agree to take such further steps as are reasonable and necessary under the circumstances to correct such confusion.
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10. NATC/NAOC consents to the use and registration by Bolloré of the Bolloré Marks which are shown on Schedule B, for the goods recited therein.
11. Bolloré consents to the use and registration by NATC/NAOC of the NATC/NAOC Marks which are shown on Schedule A, for the goods recited therein.
12. Each party will reasonably cooperate with the other in obtaining and preserving registrations for the Marks shown on the Schedules by providing the other with Letters of Consent or any other such documents which may be reasonably required in order to overcome any official actions or objections which may be made by the trademark office in any country or territory. Any expenses associated with the preparation and filing of any such letters or documents will be borne by the requesting party.
13. Each party will have the right, but not the obligation, to terminate all of the rights granted hereunder if the other party is in material breach of any of its obligations hereunder.
14. This Agreement and the provisions herein will be binding at all times upon and inure to the benefit of the parties hereto, their successors, subsidiaries and assigns. This Agreement may be executed simultaneously in one or more counterparts, each of which will be deemed an original, but all of which together will constitute one and the same Agreement.
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IN WITNESS WHEREOF, the parties have executed this Agreement on the day and year first above written.
| BOLLORÉ | NORTH ATLANTIC OPERATING COMPANY, INC. | |||||
| By: | /s/ Xxxxxx Bollore |
By: | /s/ Xxxxx X. Xxxxxxx | |||
| Name: | Xxxxxx Bolloré | Name: | Xxxxx X. Xxxxxxx | |||
| Title: | Director, Industrial Divisions | Title: | Senior Vice President | |||
| Date: | Date: | |||||
| NORTH ATLANTIC TRADING COMPANY, INC. | ||||||
| By: | /s/ Xxxxx X. Xxxxxxx | |||||
| Name: | Xxxxx X. Xxxxxxx | |||||
| Title: | Senior Vice President | |||||
| Date: | ||||||
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SCHEDULE A
to Trademark Consent Agreement among
North Atlantic Trading Company, Inc. (“NATC”),
North Atlantic Operating Company, Inc. (“NAOC”) and
Bolloré, S.A. (“Bolloré”)
NATC/NAOC Trademarks in the United States
ZIG-ZAG
for: tobacco in tubular or non-tubular form consisting of cigarettes, cigars, smoking tobacco, chewing tobacco, roll-your-own cigarette tobacco and snuff;
and
The Smoking Man Design
(as shown in any and all of the applications and registrations listed hereinbelow) for: tobacco in tubular or non-tubular form consisting of cigarettes, cigars, smoking tobacco, chewing tobacco, roll-your-own cigarette tobacco and snuff;
NATC/NAOC Trademark Applications and Registrations in the United States
| Xxxx/Goods | Registration/ Application No. | Registered/Filed | |||
| ZIG-ZAG | |||||
| for: cigars | 1,133,291 | April 15, 1980 | |||
| ZIG-ZAG and Design for: cigarette tobacco |
1,512,985 | November 15, 1988 | |||
| ZIG ZAG | |||||
| for: cigarette tobacco | 1,472,580 | January 12, 1988 | |||
| ZIG-ZAG and Design | |||||
| for: smoking tobacco | 1,775,416 | June 8, 1993 | |||
| ZIG ZAG GOLD STANDARD | |||||
| for: cigarette tobacco | 2,122,646 | December 23, 1997 | |||
| ZIG-ZAG (stylized) | |||||
| for: cigars | 75/824,284 | October 15, 1999 | |||
| ZIG-ZAG and Design | |||||
| for: cigars | 75/824,282 | October 15, 1999 | |||
| ZIG-ZAG | |||||
| for: cigarettes | 2,582,490 | June 18, 2002 | |||
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| Xxxx/Goods | Registration/ Application No. | Registered/Filed | |||
| ZIG-ZAG (stylized) | |||||
| for: cigarettes | 2,512,921 | November 27, 2001 | |||
| Design of Smoking Man | |||||
| for: cigars | 75/824,285 | October 15, 1999 | |||
| ZIG ZAG CLASSIC | |||||
AMERICAN BLEND |
|||||
| for: smoking tobacco | 78/084,504 | September 19, 2001 | |||
| ZIGARETTES | 76/042,035 | May 5, 2000 | |||
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SCHEDULE B
to Trademark Consent Agreement among
North Atlantic Trading Company, Inc. (“NATC”),
North Atlantic Operating Company, Inc. (“NAOC”) and
Bolloré, S.A. (“Bolloré”)
Bolloré Trademarks in the United States
ZIG-ZAG
for: cigarette paper booklets, filter tubes, injector machines and filter tips
and
The Smoking Man Design
(as shown in any and all of the applications
and registrations listed hereinbelow)
for: cigarette paper booklets, filter tubes. injector machines and filter tips
Bolloré Trademark Applications and Registrations in the United States
| Xxxx/Goods | Registration/ Application No. | Registered/Filed | |||
| ZIG-ZAG (stylized) | 610,530 | August 16, 1955 | |||
| for: cigarette paper | |||||
| ZIG ZAG | 1,127,946 | December 18, 1979 | |||
| for: cigarette papers | |||||
| Design of Smoking Man | 2,169,540 | June 30, 1998 | |||
| for: cigarette papers | |||||
| ZIG-ZAG | 2,309,274 | January 18, 2000 | |||
| for: cigarette lighters (not of precious metals), pocket machines for rolling cigarettes, cigarette tubes and pocket machines for filling cigarette tubes |
|||||
| ZIG-ZAG | 2,309,438 | January 18, 2000 | |||
| for: filter tips for cigarettes | |||||
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| Xxxx/Goods | Registration/ Application No. | Registered/Filed | |||
| Design of Smoking Man | 2,380,641 | August 29, 2000 | |||
| for: cigarette lighters not of precious metal; cigarette tubes; pocket machines for rolling cigarettes and filling cigarette tubes |
|||||
| Design of Smoking Man | 75/664,349 | March 19, 1999 | |||
| for: filter tips for cigarettes | |||||
| ZIG ZAG | 76/419,433 | June 11, 2002 | |||
| for: pocket knives, sports knives, and multi-task knives |
|||||
| Design of Smoking Man | |||||
| for: pocket knives, sports knives, and multi-task knives |
78/185,050 | November 14, 2002 | |||
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