EXHIBIT 2.19
SECONDARY TRADEMARK ASSIGNMENT AND LICENSE AGREEMENT
THIS SECONDARY TRADEMARK ASSIGNMENT AND LICENSE AGREEMENT ("Agreement") is
made as of the 13th day of August, 1999, between XXXXXX CORPORATION, a Delaware
corporation ("Xxxxxx"), and INTERSIL HOLDING CORPORATION, a Delaware corporation
("Parent").
WHEREAS, Xxxxxx, Intersil Corporation, a Delaware corporation, and Parent
have entered into an Amended and Restated Master Transaction Agreement dated as
of June 2, 1999 (the "Master Agreement"), which provides for the sale by the
Sellers (as defined in Exhibit A to the Master Agreement) and the purchase by
Buyer of certain of the assets used in the operations of the Business (as
defined in Exhibit A to the Master Agreement);
WHEREAS, the trademarks set forth in the attached Schedule A ("Trademarks")
have been or are being used by the Business with respect to Products and are
owned by Xxxxxx; and
WHEREAS, Buyer, as a part of its acquisition of the Transferred Assets,
desires to acquire all right, title, and interest in and to Trademarks, and
Xxxxxx is prepared to grant the same.
NOW, THEREFORE, in consideration of the mutual promises contained herein
and in the Master Agreement, and for other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties hereto
agree as follows:
1. Definitions and Rules of Construction. Exhibit A to the Master Agreement
is incorporated herein by reference.
2. Representations and Warranties of Xxxxxx. Xxxxxx represents and warrants
to Buyer as hereinafter set forth:
(a) To Sellers' IP Knowledge, Schedule A lists all Trademarks owned by
Xxxxxx that have been or are being used with respect to Products other than
those covered by the Xxxxxx Trademark License Agreements.
(b) To Sellers' IP Knowledge, Xxxxxx has good and transferable title
to all of the Trademarks, except as set forth in Schedule A.
(c) To Sellers' IP Knowledge, no third party has asserted any claim
with respect to the Trademarks, or has any ownership interest in said
Trademarks, which would prevent use of the Trademarks by Buyer with respect
to Products after the Closing Date, except as set forth in Schedule A.
3. Trademark Transfers to Buyer. Xxxxxx hereby transfers and assigns to
Buyer all of its entire right, title and interest in the Trademarks, or a
trademark with which a Trademark may have a likelihood of confusion or actual
confusion, and all the goodwill associated therewith, subject to any
restrictions arising out of exceptions noted in Schedule A. Buyer hereby grants
to Xxxxxx and its Subsidiaries a worldwide, non-exclusive, royalty-free license
to use the Trademarks on existing data sheets, manuals, marketing, promotional
and sales literature and other documentation for a period of one (1) year from
the Closing Date.
4. Post-Closing Recording of Transfers Concerning Trademarks. Promptly
after the Closing Date, Xxxxxx, at its sole expense, will deliver to Buyer
assignments and other documents in form and substance reasonably satisfactory to
Buyer and its counsel concerning Trademarks to allow Buyer or its designated
Subsidiaries, at their sole expense, to record the transfer of Trademarks in the
United States Patent and Trademark Office and in appropriate offices of foreign
jurisdictions.
5. Further Assurances Concerning Trademarks. At any time and from time to
time after the Closing Date, Xxxxxx will upon the request of Buyer perform,
execute, acknowledge, and deliver all such further assignments, transfers,
conveyances, powers of attorney and confirmatory documents as may be reasonably
required by Buyer to effect or evidence the ownership of, transfer to, and
possession by Buyer of the Trademarks in accordance with this Agreement.
6. Unlisted Trademarks. Xxxxxx agrees to supplement Schedule A if any
additional trademarks are identified in the future which should have been
included in Schedule A, and Xxxxxx agrees to take with respect to such later
identified Trademarks all action required under this Agreement.
7. Reassignment of Trademarks to Xxxxxx. Buyer agrees that, upon Xxxxxx'
reasonable request, Buyer shall reassign to Xxxxxx any trademarks that were
inadvertently included in Schedule A or that may have been inadvertently
transferred by Xxxxxx to Buyer.
8. Additional Agreements.
(a) All trademark application filing costs, all prosecution costs for
pending applications and all maintenance costs for Trademark registrations
included in the Trademarks shall be borne by Xxxxxx, or its Subsidiaries,
if due or incurred prior to the Closing Date, and shall be borne by Buyer,
or its Subsidiaries, from and after the Closing Date.
(b) No warranty or representation is hereby given or implied with
respect to the validity of any Trademark, nor that any Trademark is or can
be used free and clear of any claim of third parties. Moreover, it is
understood that no rights in or to the Trademarks are herein transferred or
assigned with respect to use relative to products in fields unrelated to
the field of Products.
(c) Except as otherwise expressly provided herein, no obligation is
hereby assumed by Buyer or Xxxxxx to maintain, prosecute, enforce or
litigate, file, assert, or defend any of the Trademarks.
(d) In the event that Buyer shall contemplate or commence any judicial
or administrative proceedings under any Trademarks, Xxxxxx shall cooperate
with Buyer in respect to such proceeding or contemplated proceeding.
Xxxxxx' cooperation shall include providing relevant information and
documents that are in Xxxxxx' possession, making personnel available on
reasonable request for interview by counsel, and providing deposition and
trial testimony if reasonably deemed necessary or desirable. Buyer shall
reimburse Xxxxxx for all of Xxxxxx' expenses.
9. Survival. The representations and warranties of Sellers in this
Agreement, including the Schedules hereto, shall survive until the fifth
anniversary of the Closing Date.
10. Agreement Conventions. Exhibit B to the Master Agreement is
incorporated herein by reference.
IN WITNESS WHEREOF, the parties each have caused this Agreement to be duly
executed by a duly authorized officer and delivered in its name and on its
behalf, all as of the day and year first above written.
XXXXXX CORPORATION
By: /s/ Xxxxxx X. Xxxxxxx
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Name: Xxxxxx X. Xxxxxxx
Title: Vice President
INTERSIL CORPORATION
By: /s/ Xxxxxxx X. Xxxxxxxx
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Name: Xxxxxxx X. Xxxxxxxx
Title: CEO
Schedule A
Trademarks Owned by Transferred Subsidiaries
Schedule A
Trademarks Owned by Xxxxxx Corporation
Registered Trademarks
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