FORM OF TRADEMARK LICENSE
Exhibit 10.12
This Trademark License (the “Agreement”) is made and entered into between TreeHouse Foods, Inc., a Delaware corporation (“TreeHouse”) and Xxxx Foods Company, a Delaware corporation (“Xxxx”), Xxxx Intellectual Property Services II, L.P., a Delaware limited partnership (“Xxxx IP II”), and Xxxx Specialty Intellectual Property Services, L.P., a Delaware limited partnership (“Xxxx IP”), as of the Distribution Date set forth below.
WHEREAS, Xxxx, through its subsidiaries, operates the Specialty Foods Group, and the MochaMix®, SecondNature®, and food service dressings businesses (the “Transferred Businesses”);
WHEREAS, the Board of Directors of Xxxx has determined that it would be advisable and in the best interests of Xxxx and its stockholders for Xxxx to transfer and assign, or cause to be transferred and assigned, to TreeHouse the business, operations, assets and liabilities related to the Transferred Businesses;
WHEREAS, Xxxx desires to transfer and assign, or cause to be transferred or assigned, to the TreeHouse Parties (as defined in that certain Distribution Agreement between Xxxx and TreeHouse, dated as of the date hereof (the “Distribution Agreement”)) the assets and properties of the Transferred Businesses and the TreeHouse Parties desire to accept the transfer and assignment of such assets and to assume, or cause to be assumed, the liabilities and obligations arising out of or relating to the Transferred Businesses as provided in the Distribution Agreement;
WHEREAS, the date on which the above transaction is to become effective is referred to as the "Distribution Date” as defined in the Distribution Agreement; and
WHEREAS, the parties hereto deem it to be appropriate and in the best interests of the Xxxx Licensors (as defined in Section 1(b) below) and the TreeHouse Entities (as defined in Section 1(c) below) that the Xxxx Licensors grant to the TreeHouse Entities a license to use certain trademarks, trade names and logos under the terms and conditions set forth herein;
NOW, THEREFORE, in consideration of the mutual promises contained herein, the parties hereto agree as follows:
1. Definitions. As used in this Agreement, the following terms shall have the meaning set forth in this Section 1.
(a) “Affiliates” means, with respect to any entity, any other entity that directly or indirectly controls, is controlled by or is under common control with such entity. For the purpose of this definition, the term “control” means the power to direct the management of an entity, directly or indirectly, whether through the ownership of voting securities, by contract or otherwise; and the term “controlled” has the meaning correlative to the foregoing.
Page 2
(b) “Xxxx Licensors” means Xxxx, Xxxx IP II and Xxxx IP.
(c) “TreeHouse Entities” means TreeHouse and its Affiliates, but only for so long as they remain Affiliates.
2. License of Licensed Marks. During the term of this Agreement, and subject to termination pursuant to Section 10 below, the Xxxx Licensors hereby grant to the TreeHouse Entities an exclusive, royalty-free, non-transferable license to display and use the trademarks, trade names, trade dress and logos set forth on Exhibit A hereto (the “Licensed Marks”) worldwide in connection with the products produced, marketed or sold by the Transferred Businesses.
3. Restrictions on Use.
(a) The TreeHouse Entities may not register or reserve any Licensed Xxxx or any words or images confusingly similar thereto as a trademark, trade name, corporate name or domain name anywhere in the world. The TreeHouse Entities may not attack or challenge the title and interest of the Xxxx Licensors in or to the Licensed Marks.
(b) If any Xxxx Licensor at any time finds that the Licensed Marks are being used other than in accordance with the terms of this Agreement (“Unauthorized Use”), such Xxxx Licensor may notify TreeHouse in writing of such Unauthorized Use. If the relevant TreeHouse Entity fails to correct or have corrected such Unauthorized Use within thirty (30) days after receipt of such notice, or if such correction can not reasonably be accomplished within such 30-day period if commercially reasonable steps to correct the Unauthorized Use have not been taken during such 30 day period, the relevant Xxxx Licensor may, at its election, suspend any or all of the licenses granted under this Agreement until such time as such Unauthorized Use is corrected to such Xxxx Licensor’s reasonable satisfaction.
4. Reservation of Rights. The Xxxx Licensors reserve all rights in the Licensed Marks and other Xxxx intellectual property not expressly granted in this Agreement.
5. Ownership of Intellectual Property. The TreeHouse Entities acknowledge and agree that the Licensed Marks, and all applications, registrations and renewals thereof, and all associated goodwill therein, are owned by and vested in the Xxxx Licensors. All use by the TreeHouse Entities of the Licensed Marks hereunder shall inure to the benefit of the Xxxx Licensors. The TreeHouse Entities agree not to challenge, directly or indirectly, the rights of any Xxxx Licensor in or to the Licensed Marks. The TreeHouse Entities will cause the Licensed Marks to be accompanied by an appropriate trademark symbol (either â or TM or a corresponding foreign symbol) as specified by any Xxxx Licensor. The Xxxx Licensors shall maintain all the Licensed Marks at their expense.
6. Quality Control. The TreeHouse Entities shall maintain and adhere to any and all trademark guidelines for display of the Licensed Marks or other reasonable quality control standards for products bearing the Licensed Marks that the Xxxx Licensors may promulgate from
Page 3
time to time which conform with applicable laws. Nothing herein shall otherwise limit the TreeHouse Entities’ ability to change, modify or determine the way in which it promotes any of its products, except that all such promotion of products bearing the Licensed Marks shall be in compliance with applicable law.
7. Injunctive Relief. Because unauthorized use of the Licensed Marks or any violation of the authorization and license granted in paragraph 2 above, respectively, will diminish substantially the value of such intellectual property and irrevocably harm the Xxxx Licensors, if the TreeHouse Entities breach any provision of paragraph 2 above, the Xxxx Licensors shall be entitled to injunctive and/or other equitable relief, in addition to other remedies afforded by law, to prevent a breach of such provision of this Agreement.
8. Indemnification. The Xxxx Licensors agree to indemnify TreeHouse and to hold TreeHouse harmless from and against any and all liabilities, losses, damages, claims, causes of action, costs and expenses, including reasonable legal fees and expenses that may be incurred by TreeHouse, arising out of a third party claim that the TreeHouse Entities’ use of the Licensed Marks within the scope of the license granted by this Agreement infringes that third party’s intellectual property rights in any respect. The TreeHouse Entities shall provide the Xxxx Licensors with prompt written notice of any third-party claim for which indemnification is sought and cooperate fully with the Xxxx Licensors in allowing the Xxxx Licensors to control the defense of such claim. So long as the Xxxx Licensors are contesting the third-party claim in good faith, the TreeHouse Entities may not settle any such claim without the express prior written consent of Xxxx unless (i) there is no finding or admission of any violation of any law or any rights, (ii) the sole relief provided is monetary damages that are paid in full by the TreeHouse Entities, and (iii) the Xxxx Licensors shall not have any liability with respect to any such settlement. The TreeHouse Entities shall have the right, at its own expense, to participate in the defense of such claim.
9. Term. This Agreement will become effective on the Distribution Date and, unless and until terminated as provided in Section 10 below, shall continue in full force and effect until TreeHouse’s supply of packaging materials existing on the Distribution Date and bearing any of the Licensed Marks is depleted.
10. Termination. This Agreement may be terminated:
(a) by either party upon written notice if the other party becomes insolvent, files or has filed against it a petition under any chapter of the United States Bankruptcy Code, 11 U.S.C. § 101 et seq. (or any similar petition under any insolvency law of any jurisdiction), proposes any dissolution, liquidation, composition, financial reorganization or recapitalization with creditors, makes an assignment or trust mortgage for the benefit of creditors, or if a receiver, trustee, custodian or similar agent is appointed or takes possession with respect to any property or business of such party; and
(b) by either party at any time upon any material breach by the other party of
Page 4
the terms of this Agreement which remains uncured thirty (30) days following written notice of such breach, or if such breach cannot reasonably be cured within said 30 day period, unless commercially reasonable steps have not been taken to cure such breach within such 30 day period.
11. Effect of Termination. Upon any termination or expiration of this Agreement, all rights and obligations of the parties shall terminate, except the rights and obligations of the parties provided in paragraphs 8 and 13 of this Agreement, which shall survive the termination or expiration of this Agreement.
12. Remedies. The demand for one remedy does not constitute a waiver or estoppel with regards to any or all other available remedies for the specific breach or default in question.
13. Choice of Law. This Agreement shall be governed by and construed and enforced in accordance with the substantive laws of the State of Delaware and the federal laws of the United States of America applicable therein, as though all facts and omissions related hereto occurred in Delaware.
14. Notices. All notices and other communications required or permitted to be given hereunder shall be in writing and shall be deemed given upon (a) a transmitter’s confirmation of a receipt of a facsimile transmission (but only if followed by confirmed delivery of a standard overnight courier the following business day or if delivered by hand the following business day), (b) confirmed delivery of a standard overnight courier or when delivered by hand or (c) the expiration of five business days after the date mailed by certified or registered mail (return receipt requested), postage prepaid, to the parties at the following addresses (or at such other addresses for a party as shall be specified by like notice):
If to the Xxxx Licensors, to:
Xxxx Foods Company
0000 XxXxxxxx Xxxxxx
Xxxxx 0000
Xxxxxx, Xxxxx 00000
Telephone: (000) 000-0000
Fax: (000) 000-0000
Attention: General Counsel
with a copy (which shall not constitute effective notice to):
Xxxxxx Xxxxxx Xxxxxxxxx Xxxx and Xxxx LLP
0000 X Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Telephone: (000) 000-0000
Fax: (000) 000-0000
Attention: Xxxxx X. Xxxxxxxx
Page 5
If to the TreeHouse Entities, to:
TreeHouse Foods, Inc.
857-897 School Place
X.X. Xxx 00000
Xxxxx Xxx, Xxxxxxxxx 00000
Telephone: (000) 000-0000
Fax: (000) 000-0000
Attention: General Counsel
with a copy (which shall not constitute effective notice) to:
Winston and Xxxxxx LLP
00 X. Xxxxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000
Telephone: (000) 000-0000
Fax: (000) 000-0000
Attention: Xxxxx X. Xxxx
Either party may, by written notice to the other parties, change the address or the party to which any notice, request, instruction or other documents is to be delivered.
15. Partial Invalidity. Wherever possible, each provision hereof shall be interpreted in such a manner as to be effective and valid under applicable law, but in case any one or more of the provisions contained herein shall, for any reason, be held to be invalid, illegal or unenforceable in any respect, such provision or provisions shall be ineffective to the extent, but only to the extent, of such invalidity, illegality or unenforceability without invalidating the remainder of such provision or provisions or any other provisions hereof, unless such a construction would be unreasonable.
16. Entire Agreement; Amendment. This Agreement contains the entire understanding of the parties with respect to this subject matter and supersedes any previous agreements (oral, written or otherwise) and may be altered or amended only by a written instrument duly executed by both parties.
17. Assignment. This Agreement shall not be assignable by either party hereto without the prior written consent of the other party hereto. When duly assigned in accordance with the foregoing, this Agreement shall be binding upon and shall inure to the benefit of the assignee.
18. Non-Waiver. The failure of a party in any one or more instances to insist upon strict performance of any of the terms and conditions of this Agreement does not constitute a waiver or
Page 6
relinquishment, to any extent, of the right to assert or rely upon any such terms or conditions on any future occasion.
19. Independent Contractor. The parties are acting as independent contractors under this Agreement and the parties hereby acknowledge that they do not intend to create a joint venture, partnership or any other type of agency between them.
-— Signature page follows —
Page 7
The parties hereby acknowledge that they have read and understand this Agreement and all exhibits and addenda hereto, and agree to all terms and conditions stated herein and attached hereto.
| XXXX FOODS COMPANY | ||
By: |
By: |
|
Name: |
Name: |
|
Title: |
Title: |
|
| XXXX INTELLECTUAL PROPERTY SERVICES, II, L.P. | ||
| By: |
||
| Name: |
||
| Title: |
||
| XXXX SPECIALTY INTELLECTUAL PROPERTY SERVICES, L.P. | ||
| By: |
||
| Name: |
||
| Title: |
