Exhibit 10.16
INVENTORY TRADEMARK LICENSE AGREEMENT
This Inventory Trademark License Agreement ("Agreement") is made and
entered into this 14th day of April, 2006, by and between Xxxxxx Laboratories, a
corporation organized and existing under the laws of the State of Illinois and
having a principal place of business at 000 Xxxxxx Xxxx Xxxx, Xxxxxx Xxxx,
Xxxxxxxx 00000 ("Licensor") and ImaRx Therapeutics, Inc., a corporation
organized and existing under the laws of Delaware and having a principal place
of business at 0000 Xxxx 00xx Xxxxxx, Xxxxxx, Xxxxxxx 00000 ("Licensee").
WHEREAS, Licensor and Licensee (each a "Party" and, collectively, the
"Parties") have entered into an Asset Purchase Agreement dated April 10, 2006
(the "Asset Purchase Agreement"), pursuant to which Licensee has agreed to
acquire, and Licensor has agreed to sell, certain assets of the Licensor's
pharmaceutical products division;
WHEREAS, the assets to be transferred include an Inventory of the Products
(as defined in the Asset Purchase Agreement); and
WHEREAS, Licensee desires to obtain a trademark and trade name license to
promote, market and sell certain Products existing as of the Closing Date (as
defined in the Asset Purchase Agreement); and
WHEREAS, Licensor is willing to grant such a license upon the terms and
conditions set forth below.
NOW, THEREFORE, in consideration of entering into the Asset Purchase
Agreement and the mutual agreements and undertakings contained herein and for
other good and valuable consideration (the receipt and sufficiency of which is
hereby acknowledged), the Parties agree as follows.
1. DEFINITIONS:
Capitalized terms used in this Agreement and not otherwise defined herein
shall have the meanings assigned to them in the Asset Purchase Agreement. For
purposes of this Agreement, the following words and phrases shall have the
following meanings:
1.1 "Licensed Marks" shall mean: those trademarks identified on Schedule 1
attached hereto.
1.2 "Losses" shall mean all damages, liabilities, costs and expenses,
including settlement and arbitration costs and reasonable attorneys' fees and
costs.
1.3 "Territory" shall mean, for each Licensed Xxxx, each of those
territories in which Licensor or its Affiliates owns or possesses rights to such
Licensed Xxxx.
2. GRANT
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2.1 During the term of this Agreement, and subject to the terms and
conditions hereof and of the Asset Purchase Agreement, the Licensor hereby
grants to the Licensee, in the Territory, an exclusive, fully paid-up,
non-transferable and non-assignable license, without the right to sublicense
("Inventory Trademark License"), to use the Licensed Marks solely in connection
with the promotion, marketing and sale of the Inventory in the Territory.
2.2 Notwithstanding anything else in this Agreement to the contrary, absent
Licensor's express prior written consent, Licensee's use of the Licensed Marks
shall cease at the end of the earlier of (i) the completion of the sale of all
Inventory by Licensee, and (ii) the date upon which the expiration date for all
Inventory has expired, at which time the Inventory Trademark License shall
automatically terminate without further action by either Party and Licensee
shall cease all use of the Licensed Marks, except for commercially reasonable
ancillary use to the extent required for regulatory purposes relating to the
Inventory for a period of up to 24 months after the termination of this
Agreement.
2.4 Without the prior written consent of Licensor, Licensee shall have no
power or right to, and shall not, sell, assign, sublicense or otherwise transfer
the Inventory Trademark License to any Person, including by a change of control
of Licensee, or by operation of law, except for (i) sublicensing, with
Licensor's prior written consent, within Licensee's trade channels solely for
the purposes of selling and marketing the Inventory, and (ii) to any permitted
assignee of Licensee's rights and obligations under the Asset Purchase Agreement
to the extent permitted therein.
2.5 Licensee shall comply with all applicable laws, rules, regulations,
ordinances, permits and licenses when exercising its rights under this
Agreement, including in the manufacture, promotion, marketing and sale of
Products.
3. PROTECTION OF THE LICENSED MARKS
3.1 Licensee understands and agrees that (a) Licensee shall not directly or
indirectly challenge Licensor's sole and exclusive ownership of all right, title
and interest in and to the Licensed Marks, including the goodwill associated
therewith, and (b) all goodwill arising from the use of the Licensed Marks shall
inure solely to the benefit of Licensor. Furthermore, Licensee shall not assist
any third party in challenging Licensor's right, title and interest in and to
the Licensed Marks.
3.2 Nothing contained in this Agreement shall be construed as an assignment
to the Licensee of any right, title or interest in the Licensed Marks, it being
understood that all rights, title and interests relating to the Licensed Marks
are expressly reserved by the Licensor except for the rights being expressly
licensed hereunder.
3.3 No right or license as to any of Licensor's intellectual property or
products is being granted hereunder, except as expressly provided herein.
3.4 Licensee shall not use the Licensed Marks other than as permitted
hereunder and, in particular, shall not incorporate Licensor's name or the
Licensed Marks in Licensee's
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corporate or business name in any manner whatsoever. In using the Licensed
Marks, Licensee will in no way represent that it has any rights, title or
interest in the Licensed Marks other than those expressly granted under the
terms of this Agreement, and Licensee shall not represent itself as an
"authorized representative of," or indicate in any other way any affiliation
with, Licensor.
3.5 Licensor shall, at its expense, use commercially reasonable efforts to
maintain in full force and effect all existing registrations of the Licensed
Marks until the termination of this Inventory Trademark License. Licensee shall,
at Licensor's expense, take all actions reasonably requested by Licensor to
assist Licensor in defending or prosecuting any action or suit relating to the
Licensed Marks as used in connection with this Agreement.
3.6 Licensee shall notify Licensor promptly if Licensee learns of any
infringement or pending or threatened litigation involving the Licensed Marks as
used in connection with this Agreement.
3.7 Licensee agrees not to adopt or use any trade name or trademark which
is confusingly similar or likely to cause confusion with the Licensed Marks.
Furthermore, Licensee agrees not to seek registration of any of the Licensed
Marks or any trade name or trademark confusingly similar thereto.
4 QUALITY CONTROL
4.1 Licensee shall use the Licensed Marks only with respect to the
promotion, marketing and sale of the Inventory as provided herein, and shall not
affix any Licensed Marks to any products other than Products, or use any
Licensed Marks in connection with any service (other than as necessary to market
and sell Products).
4.2 All Products promoted, marketed and sold by Licensee under the Licensed
Marks shall be of the same quality as the Products sold by Licensor under the
Licensed Marks immediately prior to the Closing Date, and Licensee shall
otherwise use the Licensed Marks in a manner consistent with Licensor's use,
immediately prior to the Closing Date, of the Licensed Marks in connection with
the Products. At Licensor's request, Licensee shall provide to Licensor
representative samples of Licensee's use of the Licensed Marks and permit
Licensor to inspect Licensee's facilities as necessary for Licensor to confirm
Licensee's compliance with this Article 4, provided that Licensor agrees to
provide a minimum of ten (10) days' prior written notice before conducting any
such inspection, and any such inspection shall be conducted during regular
business hours and in a manner that is not disruptive to Licensee's business
operations.
4.3 In using the Licensed Marks as permitted hereunder in connection with
the promotion, marketing and sale of the Inventory, Licensee shall duly include
all notices and legends with respect to the Licensed Marks as may be required by
applicable federal, state or local trademark laws or which may be reasonably
requested by Licensor.
5. GOODWILL AND IRREPARABLE HARM
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5.1 Licensee acknowledges that its failure to manufacture, sell, promote,
and distribute the Products or otherwise use the Licensed Marks in accordance
with the provisions of this Agreement will result in immediate and irreparable
damage to Licensor and that Licensor may have no adequate remedy at law for such
failures by Licensee.
5.2 Licensee further agrees that in the event of any breach of this
Agreement by Licensee, Licensor, in addition to all other remedies available to
it hereunder, shall be entitled to injunctive relief against any such breach as
well as such other relief as any court with jurisdiction may deem just and
proper.
6. REPRESENTATIONS AND WARRANTIES
6.1 Licensor represents and warrants to Licensee that it has all rights,
power and authority necessary to grant the rights set out in this Agreement.
6.2 Licensor represents and warrants that Licensee's exercise of its rights
under the Inventory Trademark License in accordance with the terms of this
Agreement will not, to Licensor's knowledge, infringe upon the trademark rights
of any third party. Licensor shall defend, indemnify and hold harmless Licensee
and its agents and employees from and against any and all Losses arising out of
any claim that, if true, would mean that Licensor has breached the above
representation and warranty.
6.3 Licensee shall defend, indemnify and hold harmless Licensor and its
agents and employees from and against any and all Losses arising out of any
claim by a third party relating directly or indirectly to Licensee's labeling of
the Inventory.
7. TERM
This Agreement shall commence and be effective upon the Closing Date and
shall remain in full force and effect for the term set forth in Section 2.3,
unless earlier terminated as follows:
(a) by mutual written consent of the Parties at any time;
(b) upon written notice by Licensor if Licensee is in material breach of
this Agreement, including exceeding the scope of the Inventory Trademark
License or failing to comply with the provisions of Article 4, and Licensee
fails to correct said breach to Licensor's reasonable satisfaction within
fifteen (15) days after receipt of written notice of such breach from
Licensor;
(c) upon written notice by Licensor if Licensee commits any breach other
than a material breach, and Licensee fails to correct said breach to
Licensor's reasonable satisfaction within thirty (30) days after receipt of
written notice of such breach from Licensor; or
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(d) automatically in the event that Licensee is adjudged bankrupt or
insolvent, or shall generally not pay its debts as they become due, or
makes an assignment for the benefit or creditors, or an arrangement
pursuant to any bankruptcy law, or if the Licensee discontinues its
business related to the Products, or if a receiver is appointed for the
Licensee or for the Licensee's business.
8. TERMINATION
Immediately upon, and at all times after, termination of this Agreement:
(a) Sections 3.1, Section 3.2, Sections 3.3, and Sections 7 through 16 in
their entirety shall survive termination of this Agreement.
(b) All rights granted to the Licensee shall revert to the Licensor.
(c) Licensee shall claim no rights to the Licensed Marks, either directly
or indirectly, in connection with the manufacture, sale, promotion or
distribution of Licensee's products or any other part of Licensee's
business.
9. NOTICES
All communications, notices and consents provided for herein shall be in
writing and be given in person or by means of telex, facsimile or other means of
wire transmission (with request for assurance of receipt in a manner typical
with respect to communications of that type), by overnight courier or by mail,
and shall become effective: (a) on delivery if given in person; (b) on the date
of transmission if sent by telex, facsimile or other means of wire transmission;
(c) one (1) business day after delivery to the overnight service; or (d) four
(4) business days after being deposited in the United States mails, with proper
postage and documentation, for first-class registered or certified mail,
prepaid.
Notices shall be addressed as follows:
If to Licensee, to:
ImaRx Therapeutics, Inc.
0000 Xxxx 00xx Xxxxxx
Xxxxxx, Xxxxxxx 00000
Attn: Xxxx Xxxx
Facsimile Number: (000) 000-0000
with copies to:
DLA Xxxxx Xxxxxxx Xxxx Xxxx LLP
000 Xxxxx Xxxxxx, Xxx 000
Xxxxxxx, Xxxxxxxxxx 00000
Attn: Xxxx Xxxxxx
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Facsimile Number: (000) 000-0000
If to Licensor, to:
Xxxxxx Laboratories
000 Xxxxxx Xxxx Xxxx
Xxxxxxxx XX0X, Department 364
Xxxxxx Xxxx, Xxxxxxxx 00000-0000
Attn: General Counsel
Facsimile Number: (000) 000-0000
provided, however, that if any party shall have designated a different address
by notice to the others, then to the last address so designated.
10. RELATIONSHIP OF THE PARTIES
This Agreement does not create an employment agreement, agency,
partnership, franchise or joint venture relationship between the Parties, and
the Licensee shall have no power to obligate or bind the Licensor in any manner
whatsoever.
11. APPLICABLE LAW
This Agreement shall be construed and enforced in accordance with and
governed by the laws of the State of Delaware without regard to the conflicts of
laws provisions of any jurisdiction.
12. NO ASSIGNMENT
(a) The rights, duties, benefits and obligations of each Party hereto shall
inure to the benefit of and be binding upon any successors, assigns or
delegates permitted under this Section 12.
(b) Licensee shall not assign or otherwise transfer (whether by change of
control, merger, consolidation, operation of law or otherwise) this
Agreement, or sublicense or delegate any of its rights or benefits, duties
or obligations hereunder without Licensor's prior written consent. Any
attempted assignment or other transfer or delegation without Licensor's
prior written consent shall be null, void and without effect. The
restrictions in this Section 12(b) shall not apply to any transfer or
assignment of Licensee's rights and obligations under the Asset Purchase
Agreement which are permitted under the terms of that agreement.
13. CAPTIONS
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The captions used in connection with the paragraphs and sub-paragraphs of
this Agreement are inserted only for purpose of reference. Such captions shall
not be deemed to govern, limit, modify or in any other manner affect the scope,
meaning or intent of the provisions of this Agreement or any part thereof, nor
shall such captions otherwise be given any legal effect.
14. CONSTRUCTION
The language in all parts of this Agreement shall be construed, in all
cases, according to its fair meaning. The Parties acknowledge that each Party
and its counsel have reviewed and revised this Agreement and that any rule of
construction to the effect that any ambiguities are to be resolved against the
drafting Party shall not be employed in the interpretation of this Agreement.
Words in the singular shall be deemed to include the plural and vice versa and
words of one gender shall be deemed to include the other gender as the context
requires. The terms "hereof," "herein," and "herewith" and words of similar
import shall, unless otherwise stated, be construed to refer to this Agreement
as a whole and not to any particular provision of this Agreement. Article,
Section and Schedule references are to the Articles, Sections and Schedules to
this Agreement unless otherwise specified. Unless otherwise stated, all
references to any agreement shall be deemed to include the exhibits, schedules
and annexes to such agreement. The word "including" and words of similar import
when used in this Agreement shall mean "including, without limitation," unless
the context otherwise requires or unless otherwise specified. The word "or"
shall not be exclusive. Unless otherwise specified in a particular case, the
word "days" refers to calendar days. References herein to this Agreement or any
other agreement shall be deemed to refer to this Agreement or such other
agreement as of the date of such agreement and as it may be amended thereafter,
unless otherwise specified.
15. ENTIRE AGREEMENT; NO WAIVER
This Agreement and the provisions of any other agreement specifically
referenced herein constitute the entire understanding between the parties
concerning the subject matter hereof and supersede all written or oral prior
agreements or understandings with respect thereto. No waiver or modification of
any terms of this Agreement shall be valid unless in writing and signed by an
authorized representative of both parties. The failure of either Party to
enforce any condition or part of this Agreement at any time shall not be
construed as a waiver of that condition or part, nor shall it forfeit any rights
to future enforcement thereof.
16. SEVERABILITY
In the event that any provision of this Agreement is judicially determined
to be void or unenforceable, such provision shall be construed to be separable
from the other provisions of this Agreement which shall retain full force and
effect.
17. CONSIDERATION
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The parties' mutual obligations under this Agreement and their agreement to
enter into the Asset Purchase Agreement constitute good and valuable
consideration, the sufficiency of which is hereby acknowledged.
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IN WITNESS WHEREOF, each of the Parties hereto has caused this Agreement to
be executed on its behalf by its duly authorized officer, all as of the date
first set forth above.
IMARX THERAPEUTICS, INC.: XXXXXX LABORATORIES:
BY: /s/ Xxxx X. Xxxxx BY: /s/ Xxxx X. Xxxxxx
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Xxxx X. Xxxxx Xxxx X. Xxxxxx
TITLE: President and CEO TITLE: Vice President, Global Licensing/
New Business Development
DATE: April 18, 2006 DATE: April 17, 2006
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SCHEDULE 1
ABBOKINASE
