EXHIBIT 10.127
TRADEMARK LICENSE AGREEMENT
This Agreement dated June _, 2002, the last date any party signed below,
("Effective Date") by and between Aris Industries, Inc. a New York Corporation,
located and doing business at 0000 Xxxxxxxx, Xxx Xxxx, Xxx Xxxx 00000 ("Aris");
XOXO Clothing Company, Inc., a Delaware corporation, located and doing business
at 0000 Xxxxxxxx, Xxx Xxxx, Xxx Xxxx 00000 ("XOXO") BP Clothing, Inc. ("BP") and
Europe Craft Imports, Inc., a New Jersey corporation, located and doing business
at 000 Xxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000 (hereinafter "ECI") (hereinafter
collectively "Licensor") on the one hand and Xxxxxxx Apparel, Inc., a Delaware
corporation (hereinafter "Licensee"), on the other.
WHEREAS, XOXO is the owner of the trademark XOXO for women's and children's
clothing and shoes and is the owner of U.S. Registration No. 2,484,317 for the
xxxx XOXO IN AMERICA AND ABROAD & Design and U.S. Registration No. 2,043,508 for
the xxxx XOXO IN AMERICA AND ABROAD & Design (collectively hereinafter the
"Trademarks");
WHEREAS, ECI owns the trademark MEMBERS ONLY for clothing and apparel and
is the owner of, inter alia, U.S. Registration Nos. 1,086,489; 1,256,728;
1,249,072; 1,412,098; 1,408,149; 2,178,733; and 2,193,994 for the xxxx MEMBERS
ONLY and U.S. Registration No. 2,159,622 for the xxxx MEMBERS ONLY & Design;
WHEREAS, BP is the exclusive licensee of the trademark BABY PHAT for
clothing;
WHEREAS, XOXO, BP and ECI are wholly owned subsidiaries of Aris;
WHEREAS, Licensee is in the business of, among other things, distributing
and selling clothing;
WHEREAS, Licensee is desirous of obtaining an exclusive license to
manufacture, sell, distribute, sell and advertise clothing and apparel under the
trademarks XOXO, MEMBERS ONLY and BABY PHAT (hereinafter "Trademarks");
NOW, THEREFORE, in consideration of the mutual promises and obligations of
the respective parties, it is hereby contracted, covenanted and agreed as
follows:
1. Grant of License for the Licensed Products - Subject to the terms
and conditions of this Agreement, Licensor hereby grants to Licensee an
exclusive license to use the XOXO trademark and MEMBERS ONLY trademark to
manufacture, market, promote, advertise and sell women's, men's children's
clothing, jeanswear and sportwear and the BABY PHAT trademark to
manufacture, market, promote, sell and advertise the goods permitted in the
Baby Phat license agreement (hereinafter the "Licensed Products") in the
United States, not including United States territories and possessions
(hereinafter the "Territory") during the Term of this Agreement.
2. Rights Not Granted - Licensee agrees and covenants that it will not
use the Trademarks for any goods or services, except as expressly provided
for in this Agreement.
3. Rights Reserved By Licensor - Licensor retains all rights to
manufacture, distribute, sell, advertise, promote and market any products,
other than the Licensed Products, bearing the Trademarks. Licensor further
retains all rights to establish, operate and maintain retail stores and
outlet stores products bearing the Trademarks.
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4. Ownership of Trademarks - Licensor represents and warrants that it
is the sole owner of the Trademarks, free and clear of all liens, except
that it is the licensee of the BABY PHAT trademark and does not own the
BABY PHAT trademark and there is an existing lien of CIT Commercial Group
Services, Inc. on the XOXO xxxx to secure a loan. Licensee agrees that all
right, title and interest to all registrations, applications and common law
rights to the Trademarks, except the BABY PHAT trademark, are the exclusive
property of Licensor and that Licensee shall not challenge the validity of
the marks or Licensor's ownership thereof.
5. Best Efforts - Licensee shall use its best efforts to manufacture,
market, sell, distribute and advertise the Licensed Products in order to
meet the demand for the Licensed Products in the Territory. Licensee shall
maintain an organization that is capable of effectively soliciting orders
for the sales of the Licensed Products in the Territory and meet the demand
for the Licensed Products in the Territory.
6. Term - This Agreement shall become effective upon execution by the
parties hereto and shall remain in force for a period of one (1) calendar
years and three (3) months (hereinafter "First Term"). The First Term shall
end on December 31, 2003. Thereafter, this Agreement may be automatically
renewed for a further one (1) year term (hereinafter "Renewal Term"),
unless Licensee notifies Licensor of its intention to terminate at least
three (3) months before the expiration of the First Term or unless Licensor
provides written notice of cancellation three (3) months prior to the end
of the First Term.
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7. Royalty Payments - In consideration of the license granted herein,
Licensee agrees to pay Licensor in an amount equal to 6 percent (6%) of the
Nets Sales of the Licensed Products. Net Sales shall mean Licensee's gross
sales, as determined by the gross invoice amount billed to customers of the
Licensed Products, less actual returns, freight and bona fide trade
discounts actually granted by Licensee. Licensee shall provide Licensor
with reasonable documentation evidencing any and all allowances,
deductions, returns, or credits.
8. Licensee's Statements - The Licensee shall furnish to Licensor with
each within 30 days of the end of each quarterly period a statement (the
"Statement"), setting forth (i) a complete description, including the total
number, of Licensed Products manufactured by the Licensee during the
relevant three month period covered by the Statement, and (ii) a complete
description, including the total number, stock number, item, units sold,
description, quantity shipped, customer, gross invoice, amount billed to
customer, less discounts, allowances, returns, and reportable sales for
each of the Licensed Products shipped or sold by the Licensee during the
relevant three month period covered by the Statement. Licensee shall keep
true, complete and accurate records and books of account showing all of its
sales and shipments of Licensed Products.
9. Annual Reports - For each calendar year during the term of this
Agreement, Licensee shall submit to Licensor an annual statement for each
calendar year within ninety (90) days period ending December 31 ("Annual
Report"). The Annual Report shall detail and provide a cumulative account
of all transactions of the Licensed Products, including, without
limitation, all sales, all returns, all bona fide trade
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discounts, the direct cost of the Licensed Products included in the Net
Sales for the year and all royalties paid and payable, all Licensed
Products returned as substandard, all orders cancelled for non-delivery and
such other information as Licensor may, from time to time, reasonably
request.
10. Marking - As a condition to the grant of rights hereunder,
Licensee agrees to xxxx the Licensed Products (including samples and
designs) with the appropriate common law or statutory trademark or
copyright notice, TM or (R) or (C), as is appropriate.
11. Quality of Goods/Product Standards - The parties agree that
Licensee is fully familiar with the quality standards of Licensor. Licensee
agrees to meet Licensors quality standards for all Licensed Products.
Licensor hereby appoints Licensee as its agents for inspection and
maintaining the high quality standard whenever the Trademarks are used
pursuant to this Agreement. In the event Licensee receives written notice
from Licensor that the Licensed Products do not comply with Licensor's
quality standards, Licensee shall cure such breach within twenty-one (21)
days of receipt of such notice.
12. Trademarks Copyrights and Patents - Licensor may seek, at its own
expense, to obtain copyright, trademark or patent protection for the
Licensed Products. It is agreed to by the parties that Licensor shall own
all copyrights, trademarks, patents and designs and all modifications and
improvements thereto made in the Licensed Products pursuant to the terms of
this Agreement.
13. Licensor's Rights. All use of the Trademarks by Licensee and in
any variation thereof shall inure to the exclusive benefit of Licensor. All
rights in the
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Trademarks other than those specifically granted to Licensee hereunder are
reserved to Licensor.
14. Goodwill - Licensee acknowledges and agrees that all goodwill and
publicity associated with the Trademarks, copyrights or designs of the
Licensed Products shall belong exclusively to Licensor.
15. Termination - Licensor may terminate this agreement on thirty (30)
days notice if Licensee fails to sell Licensed Products for a period of
more than sixty (60) days. Either party may terminate this agreement on
thirty (30) days notice for a material breach default or failure to
perform. If, within the thirty (30) days the breach, default or failure to
perform is not cured, this Agreement may be terminated.
16. Infringement - Licensee agrees that if during the Term of this
Agreement any Trademarks shall in the opinion of Licensee be infringed or
used without authorization by any other person, firm, corporation or other
entity, Licensor shall have the sole and exclusive right, but not the
obligation, to take any and all steps in its name, or in the name of the
Licensee or in their joint names, as Licensor (in its sole discretion) may
deem advisable, including, without limitation, the institution of any
action or proceeding to seek damages for and/or to enjoin such infringement
or unauthorized use, and to prosecute, settle, compromise or otherwise
dispose of the same.
17. No Agency - Nothing in this Agreement shall constitute the parties
hereto as principal and agent, partners or joint venturers for any purpose
and Licensee shall have no power or authority to bind Licensor or to incur
any obligations on Licensor's behalf.
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18. Entire Agreement - This Agreement, together with the exhibits
hereto, sets forth the entire understanding of the parties with respect to
its subject matter and merges and supersedes all prior understandings of
the parties hereto with respect to its subject matter.
19. Successors and Assigns - This Agreement shall be binding on,
enforceable against and inure to the benefit of the parties hereto and
their respective successors and permitted assigns, and nothing herein is
intended to confer any right, remedy or benefit upon any other person.
Neither party may assign its rights or delegate its obligations under this
Agreement without the express written consent of the other party.
20. Governing Law; Jurisdiction - This Agreement shall in all respects
be governed by and construed in accordance with the laws of the State of
New York applicable to agreements made and to be performed wholly within
such jurisdiction. Each of the parties hereto expressly and irrevocably
submits to the non-exclusive personal jurisdiction of the United States
District Court, Southern District of New York and to the jurisdiction of
any other competent court of the State of New York located in New York City
in connection with all disputes arising out of or in connection with this
Agreement or the transactions contemplated herein and agrees not to
commence any litigation relating thereto, except in such courts.
21. Savings Clause - If any provision of this Agreement is held to be
invalid or unenforceable by any court or tribunal of competent
jurisdiction, the remainder of this Agreement shall not be affected
thereby, and such provision shall be carried out as
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nearly as possible according to its original terms and intent to eliminate
such invalidity or unenforceability.
22. Counterparts - This Agreement may be executed in multiple
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
23. Construction - Headings contained in this Agreement are for
convenience only and shall not be used in the interpretation of this
Agreement. References herein to the Agreement shall be deemed to include
all Exhibits hereto. As used herein, the singular includes the plural, and
the masculine, feminine and neuter gender each includes the others where
the context so indicates.
24. Confidentiality - The parties, their respective subsidiaries,
affiliates, employees, shareholders, officers, attorneys, successors and
assigns, agree to maintain the terms of this Agreement on a confidential
basis. The terms of the Agreement may only be disclosed as required to
enforce this Agreement or in response to legal process or court order on
notice to the other party and, to the extent permitted, subject to a
protective order that maintains confidentiality.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the day and year first above written.
Aris Industries, Inc.:
By:
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Xxxxxx X. Xxxxx
Title: Chief Executive Officer
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Date:
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XOXO Clothing Company:
By:
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Xxxxxx X. Xxxxx
Title: Chief Executive Officer
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Date:
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European Craft Imports, Inc.
By:
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Xxxxxx X. Xxxxx
Title:
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Date:
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BP Clothing, Inc.
By:
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Xxxxxx X. Xxxxx
Title:
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Date:
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Xxxxxxx Apparel, Inc.
By:
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Title:
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Date:
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