Exhibit 10.5
COLLATERAL ASSIGNMENT OF TRADEMARKS
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This COLLATERAL ASSIGNMENT OF TRADEMARKS (the "Assignment"), dated as
of June 13,1997, is made and given by OMEGA CABINETS, LTD., a Delaware
corporation (the "Assignor") to FIRST BANK NATIONAL ASSOCIATION, a national
banking association, as Agent (in such capacity, together with any successor in
such capacity, the "Assignee") for the Banks (the "Banks") party to the Credit
Agreement described below.
RECITALS
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A. The Assignor, together with certain of its affiliates, the
Assignee and the Banks have entered into a Credit Agreement dated as of June 13,
1997 (as the same may hereafter be amended, supplemented, extended, restated, or
otherwise modified from time to time, the "Credit Agreement") pursuant to which
the Banks agreed to extend to the Assignor certain credit accommodations.
B. The Assignor has pledged and granted to the Assignee a security
interest in the property described in a Security Agreement of even date herewith
(as the same may be amended, supplemented, extended, restated or otherwise
modified from time to time, the "Security Agreement") by and between Assignor
and Assignee, which property includes general intangibles, including, without
limitation, applications for patents, applications for trademarks, trademarks,
trade names, copyrights, patents, inventions and trade secrets.
C. In order to induce the Banks to enter into the Credit Agreement
and extend the credit accommodations to the Assignor thereunder, and in order to
secure the payment and performance of (i) all liabilities and obligations of the
Assignor to the Assignee and the Banks arising under the Credit Agreement,
whether now existing or hereafter arising; and (ii) all liabilities and
obligations of the Assignor to the Assignee and the Banks under the Security
Agreement or any other "Loan Document" (as defined in the Credit Agreement)
whether now existing or hereafter at any time arising; (the liabilities and
obligations set forth in the preceding clauses (i) and (ii) being hereinafter
referred to as the "Liabilities"), the Assignor is willing to enter into this
Assignment.
NOW, THEREFORE, in consideration of the premises and to induce the
Banks to extend credit accommodations under the Credit Agreement, the parties
hereto agree as follows:
1. The Assignor does hereby assign all of its right, title and
interest in and to all of the present registered trademarks and applications
therefor owned by the Assignor (the "Trademarks"), including but not limited to
those set forth on Exhibit A hereto, and
including, without limitation, all proceeds thereof together with the right to
recover for past, present and future infringements, all rights corresponding
thereto throughout the world and all renewals and extensions thereof, together
with the goodwill of the business associated with said Trademarks, said
Trademarks to be held and enjoyed by the Assignee for the benefit of the Banks,
and for their legal representatives, successors and assigns, as fully and
entirely as the same would have been held by the Assignor had this Assignment
not been made. The foregoing assignment shall be effective only upon the
occurrence of an Event of Default under the Credit Agreement and upon written
notice by the Assignee to the Assignor of the acceptance by the Assignee of this
Assignment, which written notice shall constitute conclusive proof of the
matters set forth therein.
2. The Assignor hereby covenants and warrants that:
(a) to the best of the Assignor's knowledge, the Trademarks are
subsisting and have not been adjudged invalid or unenforceable, in whole or
in part;
(b) to the best of the Assignor's knowledge, each of the Trademarks
is valid and enforceable;
(c) except as set forth on Exhibit A hereto, no claim has been made
to the Assignor or, to the knowledge of the Assignor, to any other person,
that use of any of the Trademarks does or may violate the rights of any
third person and no claim has been made by the Assignor that any other
person is infringing upon the rights of the Assignor under the Trademarks;
(d) the Assignor has the power and authority to enter into this
Assignment and perform its terms;
(e) the Assignor will be, until the Liabilities shall have been
satisfied in full and the Loan Documents shall have been terminated, in
compliance with statutory notice requirements relating to its use of the
Trademarks;
(f) to the best of the Assignor's knowledge, except as set forth on
Exhibit A hereto, the Assignor is the sole and exclusive owner of the
entire and unencumbered right, title and interest in and to each of the
Trademarks, free and clear of any liens, charges and encumbrances,
including without limitation, licenses and covenants by the Assignor not to
xxx third persons;
(g) the Trademarks are all of the Trademarks owned or used by the
Assignor; and
(h) the Assignor will, at any time upon request, communicate to the
Assignee, its successors and assigns, any facts relating to the Trademarks
or the history
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thereof as may be known to the Assignor or its officers, employees and
agents, and cause such officers, employees and agents to testify as to the
same in any infringement or other litigation at the request of the Assignee
without the Assignee's prior written consent.
3. The Assignor agrees that, until the rights of the Assignee in the
Trademarks are terminated pursuant to Section 6, it will not enter into any
agreement that is inconsistent with its obligations under this Assignment.
4. If, before the Liabilities shall have been satisfied in full, the
Assignor shall obtain rights to any new trademark, or become entitled to the
benefit of any trademark application or registration or any renewal or extension
of any trademark registration, such shall be included in the definition of
"Trademarks" as used in this Assignment. Section 1 hereof shall automatically
apply thereto and the Assignor shall give to the Assignee prompt notice thereof
in writing. The Assignor authorizes the Assignee to modify this Assignment,
without the consent of the Assignor, by amending Exhibit A hereto to include any
such future registered trademark or application therefor.
5. The Assignor agrees not to sell, assign or encumber its interest
in, or grant any license with respect to, any of the Trademarks, except for the
licenses, if any, listed on Exhibit B hereto or otherwise with the Assignee's
prior written consent.
6. The Assignor agrees that it will authorize, execute and deliver
to Assignee all documents reasonably requested by Assignee to facilitate the
purposes of this Assignment, including but not limited to documents required to
record Assignee's interest in any appropriate office in any domestic or foreign
jurisdiction. At such time as the Credit Agreement and the other Loan Documents
shall have been terminated in accordance with their terms, the Assignee shall on
demand of the Assignor execute and deliver to the Assignor all termination
statements and other instruments as may be necessary or proper to terminate this
Assignment and assign to the Assignor all the Assignee's rights in the
Trademarks, subject to any disposition thereof which may have been made by the
Assignee pursuant to this Assignment or the Loan Documents
7. The Assignor shall have the duty, through counsel reasonably
acceptable to the Assignee, (i) to prosecute diligently any pending Trademark
application as of the date of this Assignment or thereafter until the Credit
Agreement and the Loan Documents shall have been terminated in accordance with
their terms; provided, that, subject to the final sentence of this Section 7,
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the Assignor may abandon any such application upon thirty days' written notice
to the Assignee, (ii) to make application on those trademarks and tradenames
which are unregistered but capable of being registered and which a prudent
person would reasonably cause to be registered and (iii) to preserve and
maintain all rights in all Trademarks which a prudent person would reasonably
preserve and maintain. Any expenses incurred in connection with applications
that constitute Trademarks shall be borne by the Assignor. The Assignor
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shall not abandon any application presently pending that constitutes a Trademark
without the written consent of the Assignee.
8. Upon the occurrence and during the continuance of an Event of
Default, the Assignee shall have the right but shall in no way be obligated to
bring suit in its own name, the name of the Assignor, or the name of the Banks
to enforce or to defend the Trademarks and any license thereunder if the
Assignor has failed to bring such suit in circumstances in which a prudent
person would have brought such suit. The Assignor shall at the request of the
Assignee do any and all lawful acts and execute any and all proper documents
required by the Assignee in aid of such enforcement or defense (including
without limitation participation as a plaintiff or defendant in any proceeding)
and the Assignor shall promptly, upon demand, reimburse and indemnify the
Assignee for all reasonable costs and expenses incurred by the Assignee in the
exercise of its rights under this Section.
9. This Assignment shall also serve to evidence the security
interest in the registered Trademarks and applications therefor granted by the
Assignor to the Assignee pursuant to the Security Agreement.
10. No course of dealing with the Assignor and the Assignee, failure
to exercise, nor any delay in exercising, on the part of the Assignee, any
right, power or privilege hereunder shall operate as a waiver thereof; nor shall
any single or partial exercise of any right, power or privilege hereunder
preclude any other or further exercise thereof or the exercise of any other
right, power or privilege.
11. All of the Assignee's rights and remedies with respect to the
Trademarks, whether established hereby, by any other agreements or by law shall
be cumulative and may be exercised singularly or concurrently.
12. This Assignment is subject to modification only by a writing
signed by the parties, except as provided in Section 4 hereof.
13. This Assignment shall inure to the benefit of and be enforceable
by the Assignee and its successors, transferees and assigns, and be binding upon
the Assignor and its successors and assigns.
14. This Assignment and the rights and obligations of the parties
hereunder shall be construed in accordance with and governed by the laws
(without giving effect to the conflicts of law principles thereof) of (i) any
state as to rights or interests hereunder which arise under the laws of such
state, (ii) the United States of America as to rights and interests hereunder
which are registered or for the registration of which application is pending
with the United States Patent and Trademark Office and (iii) the State of
Minnesota in all other respects. Whenever possible, each provision of this
Assignment and any other statement, instrument or transaction contemplated
hereby or relating hereto shall be interpreted in such
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manner as to be effective and valid under applicable law, but if any provision
of this Assignment or any other statement, instrument or transaction
contemplated hereby or relating hereto shall be held to be prohibited or invalid
under applicable law, such provision shall be ineffective only to the extent of
such prohibition or invalidity, without invalidating the remainder of such
provision or the remaining provisions of this Assignment or any other statement,
instrument or transaction contemplated hereby or relating hereto. In the event
of any conflict within, between or among the provisions of this Assignment, any
other Loan Document or any other statement, instrument or transaction
contemplated hereby or thereby or relating hereto or thereto, those provisions
giving the Assignee the greater right shall govern.
THE REMAINDER OF THIS PAGE IS INTENTIONALLY LEFT BLANK.
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IN WITNESS WHEREOF, the Assignor has executed this instrument as of the
date first above written.
OMEGA CABINETS, LTD.
By____________________________________
Name__________________________________
Title_________________________________
Address for Assignee:
First Bank National Association
First Bank Place
000 Xxxxxx Xxxxxx Xxxxx
Xxxxxxxxxxx, Xxxxxxxxx 00000-0000
Attention: Xxxx X. Xxxxx, XXXX0000
Telecopier No.: (000) 000-0000
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EXHIBIT A TO OMEGA CABINETS
COLLATERAL ASSIGNMENT
OF TRADEMARKS
List of all present trademarks and trade names and the registrations and
applications therefor presently owned by the Assignor.
Registered Trademarks
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Trademark Reg. No. Country Expiration
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1. OMEGA 1,623,711 U.S. November 20, 2000
Trademark Infringements
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1. Omega is aware that there is a company called Omega in Michigan.
Management is currently considering what action to take against this
company.
2 Omega is aware that there is a company called Omega Industries in Indiana
which manufactures wood accessories. Management has made a decision not to
take action against this company.
EXHIBIT B TO OMEGA CABINETS
COLLATERAL ASSIGNMENT
OF TRADEMARKS
Licenses granted with respect to the Assignor's trademarks.
None.
