EXHIBIT 10.5
TRADEMARK ASSIGNMENT AND JOINT OWNERSHIP AGREEMENT
THIS AGREEMENT is made and entered into this __ day of ___________, by
and between F.N.B. Corporation, a Florida corporation with an office and
principal place of business at Xxx X.X.X. Xxxxxxxxx, Xxxxxxxxx, Xxxxxxxxxxxx
00000 (hereinafter referred to as "Assignor"), and First National Bankshares of
Florida, Inc., a Florida corporation with its office and principal place of
business at 0000 Xxxxxxxxx Xxxx Xxxxx, Xxxxxx, Xxxxxxx 00000 (hereinafter
referred to as "Assignee") (collectively referred to as "the parties").
WITNESSETH:
WHEREAS, Assignor owns the United States trademark registration for the
trademark set forth in the attached "Exhibit A" and the goodwill of its business
associated therewith (hereinafter collectively referred to as "the Xxxx");
WHEREAS, in connection with the transactions contemplated by the
Distribution Agreement dated as of the date hereof between Assignor and Assignee
(the "Distribution Agreement"), Assignor desires to assign to Assignee and
Assignee desires to obtain from Assignor a fifty-percent (50%) interest in the
Xxxx to use the Xxxx throughout its assigned territory set forth herein;
NOW, THEREFORE, for and in consideration of the promises, covenants,
representations and warranties hereinafter set forth, and other good and
valuable consideration, the receipt and adequacy of which are hereby
acknowledged, Assignor and Assignee agree as follows:
1. Assignment. Assignor does hereby assign unto Assignee
fifty-percent (50%) of all the right, title and interest in and to the Xxxx and
its federal registration, together with the good will of the business symbolized
by said xxxx, effective as of the date above. The assignment will result in the
parties being joint owners of the Xxxx and the good will of the business
associated therewith. The assignment is one of the Corporate Transactions (as
defined in the Distribution Agreement) contemplated by the Distribution
Agreement.
2. Territories. In conjunction with the assignment of a
fifty-percent (50%) interest in the Xxxx, Assignor and Assignee agree that each
party shall have the exclusive and sole right to use the Xxxx in its designated
Territory, as set forth below; provided, however, that Assignor and Assignee may
use the Xxxx on their Internet web sites in conjunction with conducting their
businesses in their respective designated Territories.
2.1 Assignee's Territory. Initially, Assignee shall have
the exclusive and sole right to use the Xxxx in the State of Florida. Assignee
may, at any time, also use the Xxxx in any State that is not included at such
time in the Assignor Territory, and from and after such use Assignee shall have
the exclusive and sole right to use the Xxxx in such State. The term "Assignee
Territory," as used herein, shall mean, at any given time, those States as to
which Assignee has the exclusive and sole right to use the Xxxx pursuant to this
Section 2.1.
2.2 Assignor's Territory. Initially, Assignor shall have
the exclusive and sole right to use the Xxxx in the States of Pennsylvania, Ohio
and Tennessee. Assignee may, at any time, also use the Xxxx in any State that is
not included at such time in the Assignee Territory, and from and after such use
Assignor shall have the exclusive and sole right to use the Xxxx in such State.
The term "Assignor
Territory," as used herein, shall mean, at any given time, those States as to
which Assignor has the exclusive and sole right to use the Xxxx pursuant to this
Section 2.2.
3. Renewal of Registration for the Xxxx. Assignor, or any future
parties who acquire Assignor's rights in the Xxxx, shall take all reasonable
steps at its own expense to keep the registration for the Xxxx in full force and
effect at all times, including, but not limited to, preparing those documents
necessary to renew the registration for the Xxxx, forwarding the same to
Assignee, or any party to whom Assignee advises Assignor it has assigned its
rights in the Xxxx, for its approval and execution in accordance with the
acceptable delivery methods for providing notice set forth in this Agreement and
filing the same documents with the U.S. Patent and Trademark Office in a timely
manner.
4. Successors, Assigns and Licensees. Either party may assign or
license the Xxxx for use within its Territory without the consent of the other
party. All the provisions hereof shall bind and inure to the benefit of the
parties hereto and their successors, assigns and licensees.
5. Indemnification. Each party ("Indemnitor") shall, at its own
expense, defend, indemnify and hold harmless the other party ("Indemnitee"), and
Indemnitee's directors, officers, employees, representatives and agents, against
claims involving the Indemnitor's use of the Xxxx. The Indemnitee party may
participate in the defense of any claim or action in which it is a party, at its
own expense and through its own counsel.
6. Third Party Infringement. Each of the parties shall notify the
other party of any violations of either party's right, title and interest in the
Xxxx of which it has notice. Upon receipt of notice that a third party is
infringing the right, title and interest of the Assignor or Assignee in and to
the Xxxx, the party which has within its Territory the location of the principal
place of business of the infringer shall be solely responsible for taking those
actions necessary to terminate such violation (the "Responsible Party"). The
Responsible Party shall prosecute and defend at its own expense all suits or
proceedings before governmental agencies and the courts which involve in any way
validity of, title to, or infringement of the Xxxx. Each of the parties also
agrees not to commit, permit or suffer any immoral or illegal act which would
bring the Xxxx in disrepute in the eyes of the general public.
7. Notices. All communications hereunder shall be in writing and
shall deemed to have been duly given and delivered if mailed, certified mail,
postage prepaid:
To Licensor:
F.N.B. Corporation
Attention: Chief Executive Officer
Xxx X.X.X. Xxxxxxxxx
Xxxxxxxxx, Xxxxxxxxxxxx 00000
Telephone: (000) 000-0000
To Licensee:
First National Bankshares of Florida, Inc.
Attention: Chief Executive Officer
0000 Xxxxxxxxx Xxxx Xxxxx
Xxxxxx, Xxxxxxx 00000
Telephone: (000) 000-0000
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8. Miscellaneous.
8.1 Waiver; Modification. No change or modification of
this Agreement shall be valid or binding on the parties hereto, nor shall any
waiver of any term or condition be deemed a waiver of any such term or condition
in the future, unless such change or modification or waiver shall be in writing
and signed by the parties hereto.
8.2 Severability. In the event any provision or portion
of this Agreement shall be declared invalid by any court of competent
jurisdiction, said declaration shall have no effect upon the remaining
provisions of this Agreement, all of which shall remain in full force and effect
and shall constitute the complete understanding of the parties.
8.3 Applicable Law. The validity and effect of this
Agreement shall be governed by and construed and enforced in accordance with the
laws of the State of Pennsylvania.
8.4 Counterparts. This Agreement may be executed in any
number of counterparts, each of which shall be deemed to be an original and all
of which together shall be deemed one and the same instrument.
8.5 Incorporation of Exhibit. Exhibit A attached is
expressly made part of this Agreement, is incorporated by reference, and shall
be given the same force and effect as if said Exhibit was included within the
body of this Agreement.
8.6 Singulars and Plurals. Where required to conform to
common English usage and to permit a consistent, reasonable construction of this
Agreement, words appearing in the singular shall be deemed to be in the plural,
words in the plural shall be deemed to be in the singular, and subjects and
verbs shall be deemed to agree with each other in the proper sense.
IN WITNESS WHEREOF, Assignor and Assignee caused this Agreement to be
executed and their corporate seals affixed by their duly authorized corporate
officers, all as of the day and year first above written.
F.N.B. Corporation
By:
--------------------------------------
Xxxxxxx X. Xxxxxxxxx
Vice Chairman
First National Bankshares of Florida, Inc.
By:
---------------------------------------
Xxxx X. Xxxx
Chairman and Chief Executive Officer
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EXHIBIT A
REGISTRATION NO. - 2,726,003
[LOGO]
XXXX -
SERVICES - BANKING SERVICES; DEPOSITORY SERVICES, NAMELY CHECKING ACCOUNT
SERVICES, SAVINGS ACCOUNT SERVICES, CERTIFICATE OF DEPOSIT ACCOUNT SERVICES AND
MONEY MARKET ACCOUNT SERVICES; FINANCIAL SERVICES IN THE NATURE OF AN INVESTMENT
SECURITY; FINANCIAL INFORMATION IN THE NATURE OF RATES OF EXCHANGE, FINANCIAL
EXCHANGE, FINANCIAL FORECASTING AND FINANCIAL GUARANTEE AND SURETY; FINANCIAL
INFORMATION PROVIDED BY ELECTRONIC MEANS; FINANCIAL MANAGEMENT; FINANCIAL
PLANNING; FINANCIAL PORTFOLIO MANAGEMENT; FINANCIAL RESEARCH; FINANCIAL
VALUATION OF PERSONAL PROPERTY AND REAL ESTATE; LOAN FINANCING; LEASE-PURCHASE
FINANCING; FINANCING SERVICES; FINANCIAL PORTFOLIO MANAGEMENT; AND INVESTMENT
SERVICES, NAMELY INVESTMENT BROKERAGE; CAPITAL INVESTMENT CONSULTATION;
COMMODITY INVESTMENT ADVICE; FUND INVESTMENT CONSULTATION; INVESTMENT
CONSULTATION; FINANCIAL INVESTMENT IN THE FIELD OF SECURITIES; FUNDS INVESTMENT;
MUTUAL FUNDS INVESTMENT; REAL ESTATE INVESTMENT; COMMODITY INVESTMENT ADVICE;
INVESTMENT ADVICE; INVESTMENT BROKERAGE; INVESTMENT CLUBS; CAPITAL INVESTMENT
CONSULTATION; INVESTMENT MANAGEMENT; MAINTAINING ESCROW ACCOUNTS FOR
INVESTMENTS; INVESTMENT OF FUNDS FOR OTHERS; INSURANCE SERVICES, NAMELY
INSURANCE UNDERWRITING, BROKERAGE AND EXTENDED WARRANTY CONTRACTS IN THE FIELDS
OF LIFE, HEALTH, ACCIDENT, FIRE, MARINE, MEDICAL AND PRE-PAID HEALTH CARE AND
LEGAL SERVICES; INSURANCE ADMINISTRATION IN THE FIELD OF LIFE, HEALTH, ACCIDENT,
FIRE, MARINE, MEDICAL AND PRE-PAID HEALTH CARE AND LEGAL SERVICES; INSURANCE
AGENCIES IN THE FIELDS OF LIFE, HEALTH, ACCIDENT, FIRE, MARINE, MEDICAL AND
PRE-PAID HEALTH CARE AND LEGAL SERVICES; APPRAISALS FOR INSURANCE CLAIMS OF
PERSONAL PROPERTY AND REAL ESTATE; INSURANCE BROKERAGE, CONSULTATION,
SUBROGATION AND ACTUARIAL SERVICES IN THE FIELDS OF LIFE, HEALTH, ACCIDENT,
FIRE, MARINE, MEDICAL AND PRE-PAID HEALTH CARE AND LEGAL SERVICES. AND
INFORMATION SERVICES FOR ALL OF THE FOREGOING PROVIDED VIA A GLOBAL COMPUTER
NETWORK.
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