TRADEMARK LICENSE AGREEMENT
Exhibit
10.4
This
TRADEMARK LICENSE AGREEMENT (this “Agreement”)
is made and effective as of July 28, 2008 (the “Effective
Date”) by and between Xxxxxxx Investments, LLC, a limited liability
company organized under the laws of the State of Delaware (the “Licensor”),
and Xxxxxxx Capital, Inc., a corporation organized under the laws of the State
of Maryland (the “Licensee”)(each
a “party,”
and collectively, the “parties”).
RECITALS
WHEREAS,
Licensor has a pending application for the trademark and trade name “XXXXXXX,”
Assigned Serial No. 77524660, (the “Licensed
Xxxx”) for the United States (the “Territory”)
in connection with financial and investment services in the field of securities,
private equity and debt financing, public offerings, venture capital and private
equity investment, and portfolio and fund management; investment products
including open- and closed-end investment funds; management services related to
assisting private companies in becoming public reporting and trading companies
and assisting public companies on capital markets strategies;
WHEREAS,
the Licensor is an investment adviser registered under the Investment Advisers
Act of 1940, as amended (the “Advisers
Act”);
WHEREAS,
the Licensee is a newly organized closed-end management investment company that
intends to elect to be treated as a business development company under the
Investment Company Act of 1940, as amended (the “1940
Act”);
WHEREAS,
pursuant to the Investment Advisory and Administrative Services Agreement, dated
as of July 28, 2008, by and between the Licensor and the Licensee (the “Advisory
Agreement”), the Licensee has engaged the Licensor to act as the
investment adviser to the Licensee and to provide certain administrative
services to the Licensee necessary for it to operate;
WHEREAS,
the Licensee desires to use the Licensed Xxxx in connection with the operation
of its business, and the Licensor is willing to permit the Licensee to use the
Licensed Xxxx, subject to the terms and conditions of this Agreement;
and
NOW,
THEREFORE, in consideration of the mutual covenants and agreements set forth
herein, and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties agree as
follows:
ARTICLE
1
LICENSE GRANT TO THE
LICENSEE
1.1 License. Subject
to the terms and conditions of this Agreement, Licensor hereby grants to
Licensee, and the Licensee hereby accepts from Licensor, a non-exclusive,
royalty-free right and license to use the Licensed Xxxx solely and exclusively
as an element of the Licensee’s own company name and in connection with the
business operations of the Licensee. Except as provided above,
neither the Licensee nor any affiliate, owner, director, officer, employee, or
agent thereof shall otherwise use the Licensed Xxxx or any derivative thereof
without the prior express written consent of the Licensor in its sole and
absolute discretion. All rights not expressly granted to the Licensee
hereunder shall remain the exclusive property of Licensor.
1.2 Licensor’s
Use. Nothing in this Agreement shall preclude Licensor or any
of its respective successors or assigns from using or permitting other entities
to use the Licensed Xxxx whether or not such entity directly or indirectly
competes or conflicts with the Licensee’s business in any manner.
ARTICLE
2
OWNERSHIP
2.1
Ownership. The Licensees acknowledge and agree that Licensor is the
owner of all right, title, and interest in and to the Licensed Xxxx, and all
such right, title, and interest shall remain with the Licensor. The
Licensees shall not otherwise contest, dispute, or challenge Licensor’s right,
title, and interest in and to the Licensed Xxxx.
2.2
Goodwill. All goodwill and reputation generated by Licensee’s use of
the Licensed Xxxx shall inure to the benefit of Licensor. The
Licensee shall not by any act or omission use the Licensed Xxxx in any manner
that disparages or reflects adversely on Licensor or its business or
reputation. Except as expressly provided herein, no party may use any
trademark or service xxxx of another party without that party’s prior written
consent, which consent shall be given in that party’s sole
discretion.
ARTICLE
3
COMPLIANCE
3.1 Quality
Control. In order to preserve the inherent value of the
Licensed Xxxx, the Licensee agrees to use reasonable efforts to ensure that it
maintains the quality of the Licensee’s business and the operation thereof equal
to the standards prevailing in the operation of the Licensor’s and the
Licensee’s business as of the date of this Agreement. The Licensee
further agrees to use the Licensed Xxxx in accordance with such quality
standards as may be reasonably established by Licensor and communicated to the
Licensee from time to time in writing, or as may be agreed to by the parties
from time to time in writing. The Licensee acknowledges that the
Licensor retains the right to inspect the books and records of the Licensee from
time to time to determine whether the Licensee is maintaining such quality
standards.
3.2 Compliance With
Laws. The Licensee agrees that the business operated by it in
connection with the Licensed Xxxx shall comply with all laws, rules, regulations
and requirements of any governmental body in the Territory or elsewhere as may
be applicable to the operation, advertising and promotion of the business, and
that it shall notify Licensor of any action that must be taken by the Licensee
to comply with such law, rules, regulations or requirements.
3.3 Sample
Right. The Licensor shall have the right to receive, upon
request made to the Licensee, samples of each use of the Licensed Xxxx by the
Licensee.
3.4 Notification of
Infringement. The Licensee shall immediately notify the
Licensor and provide to the Licensor all relevant background facts upon becoming
aware of (i) any registrations of, or applications for registration of, marks in
the Territory that do or may conflict with the Licensed Xxxx, and (ii) any
infringements, imitations, or illegal use or misuse of the Licensed Xxxx in the
Territory.
ARTICLE
4
REPRESENTATIONS AND
WARRANTIES
4.1 Mutual
Representations. Each party hereby represents and warrants to
the other parties as follows:
2
(a) Due
Authorization. Such party is a corporation or limited
liability company, as applicable, duly organized or formed, as applicable, and
in good standing as of the Effective Date, and the execution, delivery and
performance of this Agreement by such party have been duly authorized by all
necessary action on the part of such party.
(b) Due
Execution. This Agreement has been duly executed and delivered
by such party and, with due authorization, execution and delivery by the other
party, constitutes a legal, valid and binding obligation of such party,
enforceable against such party in accordance with its terms.
(c) No
Conflict. Such party’s execution, delivery and performance of
this Agreement do not: (i) violate, conflict with or result in the breach of any
provision of the charter or by-laws (or similar organizational documents) of
such party; (ii) conflict with or violate any law or governmental order
applicable to such party or any of its assets, properties or businesses; or
(iii) conflict with, result in any breach of, constitute a default (or event
which with the giving of notice or lapse of time, or both, would become a
default) under, require any consent under, or give to others any rights of
termination, amendment, acceleration, suspension, revocation or cancellation of
any contract, agreement, lease, sublease, license, permit, franchise or other
instrument or arrangement to which it is a party.
ARTICLE
5
TERM AND
TERMINATION
5.1 Term. This
Agreement shall expire (i) upon expiration or termination of the Advisory
Agreement; (ii) if the Licensor ceases to serve as investment adviser to the
Licensee; (iii) upon any material breach of the Agreement by the Licensee that
is not cured within 15 days; or (iv) upon sixty (60) days’ written notice of
termination by the Licensor or the Licensee to the other party.
5.2 Upon
Termination. Upon expiration or termination of this Agreement
pursuant to Paragraph 5.1 above, all rights granted to the Licensee under this
Agreement with respect to the Licensed Xxxx shall cease, and the Licensee shall
immediately discontinue use of the Licensed Xxxx; provided, however, that
notwithstanding the foregoing, so long as the Licensee promptly makes all
reasonable efforts to change its name so as not to include the Licensed Xxxx
immediately upon expiration or termination of this Agreement, the continued use
of the Licensed Xxxx by the Licensee as part of its own company name shall not
constitute a breach of this Agreement.
ARTICLE
6
MISCELLANEOUS
6.1 Assignment. This
Agreement shall be binding upon and inure to the benefit of the parties hereto
and their respective successors and permitted assigns. No party may
assign, delegate or otherwise transfer this Agreement or any of its rights or
obligations hereunder without the prior written consent of the other
parties. No assignment by any party permitted hereunder shall relieve
the applicable party of its obligations under this Agreement. Any
assignment by a party in accordance with the terms of this Agreement shall be
pursuant to a written assignment agreement in which the assignee expressly
assumes the assigning party’s rights and obligations hereunder.
6.2 Independent
Contractor. Except as expressly provided or authorized in the
Advisory Agreement, no party shall have, or shall represent that it has, any
power, right or authority to bind the other parties to any obligation or
liability, or to assume or create any obligation or liability on behalf of the
other parties.
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6.3 Notices. All
notices, requests, claims, demands and other communications hereunder shall be
in writing and shall be given or made (and shall be deemed to have been duly
given or made upon receipt) by delivery in person, by overnight courier service
(with signature required), by facsimile, or by registered or certified mail
(postage prepaid, return receipt requested) to the respective parties at the
following addresses:
|
If
to the Licensor:
Xxxxxxx
Investments, LLC
0000
XXX Xxxxxxx, Xxxxx 0000
Xxxxxxxxx
Xxxxxxx, XX 00000
Tel.
No.: (000) 000-0000
Attn:
Xxxxxxx X. Xxxxxxx
|
|
If
to the Licensee:
Xxxxxxx
Capital, Inc.
0000
XXX Xxxxxxx, Xxxxx 0000
Xxxxxxxxx
Xxxxxxx, XX 00000
Tel.
No.: (000) 000-0000
Attn:
Xxxxxxx X. Xxxxxxx
|
6.4 Governing
Law. This Agreement shall be governed by, and construed in
accordance with, the laws of the State of Colorado applicable to contracts
formed and to be performed entirely within the State of Colorado without giving
effect to the conflicts of law principles thereof, to the extent such principles
would require to permit the application of the laws of another
jurisdiction. The parties unconditionally and irrevocably consent to
the exclusive jurisdiction of the courts located in the State of Colorado and
waive any objection with respect thereto, for the purpose of any action, suit or
proceeding arising out of or relating to this Agreement or the transactions
contemplated hereby.
6.5 Amendment. This
Agreement may not be amended or modified except by an instrument in writing
signed by all parties hereto.
6.6 No
Waiver. The failure of any party to enforce at any time for
any period the provisions of or any rights deriving from this Agreement shall
not be construed to be a waiver of such provisions or rights or the right of
such party thereafter to enforce such provisions, and no waiver shall be binding
unless executed in writing by all parties hereto.
6.7 Severability. If
any term or other provision of this Agreement is invalid, illegal or incapable
of being enforced by any law or public policy, all other terms and provisions of
this Agreement shall nevertheless remain in full force and effect so long as the
economic or legal substance of the transactions contemplated hereby is not
affected in any manner materially adverse to any party. Upon such
determination that any term or other provision is invalid, illegal or incapable
of being enforced, the parties hereto shall negotiate in good faith to modify
this Agreement so as to effect the original intent of the parties as closely as
possible in an acceptable manner in order that the transactions contemplated
hereby are consummated as originally contemplated to the greatest extent
possible.
6.8 Headings. The
headings contained in this Agreement are for convenience of reference only and
shall not affect in any way the meaning or interpretation of this
Agreement.
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6.9 Counterparts. This
Agreement may be executed in one or more counterparts, each of which when
executed shall be deemed to be an original instrument and all of which taken
together shall constitute one and the same agreement.
6.10 Entire
Agreement. This Agreement constitutes the entire agreement of
the parties with respect to the subject matter hereof and supersedes all prior
agreements and undertakings, both written and oral, among the parties with
respect to such subject matter.
6.11 Third-Party
Beneficiaries. Nothing in this Agreement, either express or
implied, is intended to or shall confer upon any third party any legal or
equitable right, benefit or remedy of any nature whatsoever under or by reason
of this Agreement.
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IN WITNESS
WHEREOF, each party has caused this Agreement to be executed as of the Effective
Date by its duly authorized officer.
| LICENSOR: | |||
| XXXXXXX INVESTMENTS, LLC | |||
|
|
By:
|
/s/ Xxxxxxx X. Xxxxxxx | |
| Xxxxxxx X. Xxxxxxx | |||
| Managing Member | |||
| LICENSEE: | |||
| XXXXXXX CAPITAL, INC. | |||
|
|
By:
|
/s/ Xxxxxxx X. Xxxxxxx | |
| Xxxxxxx X. Xxxxxxx | |||
| President and Chief Executive Officer | |||
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