Exhibit 10(h)(3)
THIS TRADEMARK LICENSE AGREEMENT (the "Agreement") is made as
of April 14, 1997, by and between XXXXXXXX'X FOODS, INC., a Virginia corporation
("Licensor") and CODDLE ROASTED MEATS, INC., a Virginia corporation
("Licensee").
Licensor and Licensee have entered into an Asset Purchase Agreement
dated as of March 18, 1997 (the "Purchase Agreement"), pursuant to which
Licensor has agreed to sell certain assets of its manufacturing division to
Licensee. Licensee wishes to produce, market and sell the items listed on
Exhibit A (the "Goods"), attached hereto and made a part hereof, under the
Licensor's federally registered (Registration No. 1053389) trademark
"XXXXXXXX'X" (the "Trademark"), and Licensor is willing to grant to Licensee a
license to use the Trademark pursuant to the terms of this Agreement.
NOW, THEREFORE, for good and valuable consideration and the
exchange of obligations and promises contained herein, the parties hereby agree
as follows:
1. Grant of License. Licensor hereby grants to Licensee an
exclusive (except as to Licensor), paid-up license (the "License") for the use
of the trademark XXXXXXXX'X to produce, market, and sell the Goods in the United
States of America, including its territories and protectorates, provided that
such sales are limited to Licensor and to the institutional food service
distributors listed on Exhibit B attached hereto and made a part hereof.
Licensee agrees that it shall not use the Trademark or any form of the
Xxxxxxxx'x name except as expressly permitted by this Agreement and shall not
use the Trademark in connection with (i) any products except the Goods and (ii)
any sales to customers other than Licensor and those listed on Exhibit B.
Nothing herein shall prohibit Licensor's use of the Trademark in connection with
the Goods or otherwise.
2. Term. The term of the License shall be for two (2) years
from the date hereof, unless sooner terminated under the provisions of this
Agreement.
3. Ownership of the Trademark. It is expressly agreed that
Licensor retains ownership of the Trademark and that any and all use of the
Trademark by Licensee will inure to the benefit of Licensor and that the
Licensor shall continue during the term hereof and thereafter to use the
Trademark without restriction under the terms of this Agreement. Licensee shall
not contest the validity, ownership or title of Licensor to any of the Trademark
and Licensee shall not apply for nor assist or aid others in applying for
registrations of the Trademark or any other tradename or trademark which could
be confusingly similar to the Trademark in any state, country or other political
jurisdiction anywhere in the world. In the event the Licensee desires to make
use of the Trademark in a country other than the United States, the Licensee
shall so notify Licensor and advise Licensor of the country or other political
jurisdiction in which Licensee desires to use the Trademark and, at the expense
of and for the account of Licensee, Licensor shall forthwith apply for a
registration in the name of Licensor for the name of the Trademarks. Any
applications for or registrations of the Trademark shall issue and be maintained
in the name of the Licensor and the new applications and/or registrations shall
be included under the terms of this Agreement.
4. Registration of Trademark. Licensor shall, at its expense,
maintain the federal registration for the Trademark "XXXXXXXX'X" with the United
States Patent and Trademark Office for the Goods in the Territory, and shall not
permit the registration to become abandoned. The failure to maintain the
registration of the Trademark shall not diminish Licensee's rights to the use of
same as provided herein.
5. Use of the Trademark.
a. Licensee shall affix the Trademark to the Goods in
a manner consistent with the labels that are used by the Licensor on its
products bearing the same Trademark or as otherwise specified in writing by
Licensor and shall display the Trademark on all written materials utilizing the
Trademark with prominence achieved at a minimum, by capitalizing the initial
letter of the Trademark. The Licensee shall display the circle registration
symbol ((R)) after the Trademark on the Goods and at least once in the written
materials and the Goods, and written materials shall bear the following
ownership notice:
XXXXXXXX'X is a trademark of Xxxxxxxx'x Foods, Inc.
b. Licensee shall provide reasonable assistance to
Licensor in executing documents for the Licensor to obtain whatever additional
protection Licensor deems reasonably necessary to protect Licensor's interest in
the Trademarks.
6. Quality Control.
a. All Goods marketed and sold by Licensee under the
Trademark shall not be of a quality less than the quality of such Goods now
being sold under the Trademark by Licensor, and Licensee shall consistently
apply good manufacturing practices in all phases of production, packaging,
storage, and shipment of the Goods. For the purpose of ensuring such quality,
Licensor may at any reasonable time during regular business hours inspect the
processing facilities of Licensee, inspect the Goods at the places where they
are processed or stored and take reasonable samples thereof.
b. At least once per calendar year upon receipt of
Licensor's written request, Licensee shall furnish to Licensor two (2) cases of
Goods and representative samples of labels, packaging and advertising materials
bearing the Trademarks.
c. Licensee shall comply with all applicable federal
and state laws and regulations regarding the processing and packaging of the
Goods, and its failure to do so will be deemed a material breach of this
Agreement.
d. Licensee acknowledges that Licensor has an
overriding interest in protecting the reputation of Licensor and of XXXXXXXX'X
branded products. Accordingly, Licensee shall, immediately upon notice thereof,
fully inform Licensor as to any actual or proposed action, by any governmental
agency, consumer or environmental group, media or other organization directed
toward removing any quantity of any of the Goods from the market in all or any
portion of the Territory, based on alleged injury or death, alleged
unwholesomeness or potential for harm, alleged contamination, tampering or
similar act and/or alleged violation of law in connection with production,
labeling, packaging, storage, shipment, advertising and/or sale. Except for the
removal of the Goods from the inventories of third parties in the ordinary
course of normal quality maintenance as established by industry norms based on
the shelf life of the Goods, Licensee shall likewise immediately and full inform
Licensor as to any proposal on Licensee's part to remove any quantity of any of
the Goods from the market in all or in any portion of the Territory on account
of suspected nonconformity with the specifications, improper labeling,
unwholesomeness, possibility of consumer harm and/or violation of any law(s).
Licensee shall closely coordinate with Licensor in respect to any proposed
actions and public statements in respect to the foregoing, and shall carefully
consider, and if reasonable to do so, follow all requests of Licensor in respect
thereto. Licensee shall not issue any public statement implying that Licensor
has any responsibility for the manufacture, packaging, labeling, shipping,
advertising or any other activity related to the sale of the Goods. All
information pertaining to the matters dealt with in this Section 7.d shall be
held in absolute confidence, except only as between Licensee and Licensor and
their respective attorney(s) or as ordered by any court or agency of competent
jurisdiction. Any violation of Licensee's obligations described in this Section
7.d shall be grounds for immediate termination of this Agreement.
7. Infringement. Licensee shall immediately notify Licensor of
any use of the Trademark by third parties which infringes the License during the
term of this Agreement. Licensor shall have the option to pursue any
infringement of the Trademark at Licensor's expense. Licensee agrees to
reasonably cooperate with Licensor in pursuing infringements of the Trademark,
and Licensor agrees to pay Licensee any expenses incurred by Licensee in
connection with the action. In the event Licensor files suit and is successful
in obtaining a decision of infringement, any monetary award of the court in
Licensor's favor shall be for Licensor's sole account. In the event that
Licensor takes no action against an infringer of the Trademark, Licensee may do
so at Licensee's expense and may join Licensor as a party. Licensor agrees to
reasonably cooperate with Licensee for the prosecution of the case, and Licensee
agrees to pay Licensor for any expenses incurred by Licensor in connection with
the action. In the event the Licensee is awarded a monetary judgment for the
successful prosecution of the infringement, the award shall be for the sole
account of the Licensee. Licensee shall not enter into any settlement agreement
with any infringers that permits the continuing use of the infringing xxxx
unless Licensor has been advised of all the terms of the settlement and has
agreed in writing to Licensor's acceptance of such terms.
8. Assignability.
a. This Agreement shall be assignable by Licensee
upon written approval of Licensor, which approval shall not be unreasonably
withheld. It is, however, understood and agreed that it shall not be
unreasonable for Licensor to withhold its approval of such an assignment to a
direct competitor of Licensor.
b. Licensor shall have the unrestricted right to
assign this Agreement.
9. Termination. In addition to any other termination
provisions in this Agreement, Licensor may immediately terminate this Agreement:
a. after providing written notice to Licensee for any
material breach by Licensee of any of its obligations hereunder, and such breach
has not been cured within sixty (60) days from receipt of such notice; or
b. if Licensee becomes insolvent, ceases sale of the
Goods bearing the Trademark for a period of one year, and/or files for
bankruptcy under the provisions of Chapter 7 of the Bankruptcy Code.
10. Notices. All notices, requests or other communications
hereunder shall be in writing, addressed to Licensor or Licensee, at the
following addresses:
(i) If to Licensor:
Xx. Xxxxxx Mules, Chairman
Xxxxxxxx'x Foods, Inc.
X.X. Xxx 0000
000 Xxxxxxxxxx Xxxxxx
Xxxxxxxxxx, XX 00000
Telephone (000) 000-0000
with copy to:
Xxxxxxx X. Xxxxxxx, Esquire
McGuire, Woods, Battle and Xxxxxx, L.L.P.
Xxxxx Xxxxx Xxxxxx - Xxxxx 0000
000 Xxxx Xxxx Xxxxxx
Xxxxxxx, XX 00000-0000
Telephone: (000) 000-0000
Telecopier: (000) 000-0000
(ii) If to Licensee:
Xx. Xxxxx X. Xxxxxx
000 Xxxxxx Xxxx
Xxxxxxxx Xxxxx, XX 00000
Telephone: (000) 000-0000
with copy to:
Xxxxxxx X. Xxxxx, Esquire
Payne, Gates, Xxxxxxxx & Radd, P.C.
Attorneys and Counsellors at Law
Fifteenth Floor, Dominion Tower
000 Xxxxxxxxx Xxxxx
Xxxxxxx, XX 00000
Telephone: (000) 000-0000
Telecopier: (000) 000-0000
The address of either party may be changed by giving notice in writing at any
time to the other party. Any notice to be given under this Agreement shall be
deemed duly given if (i) delivered personally, (ii) sent by telecopy and
acknowledged by recipient, (iii) delivered by overnight express, or (iv) sent by
United Stated registered or certified mail, postage prepaid. Any notice that is
delivered personally, or sent by telecopy or overnight express in the manner
provided herein shall be deemed to have been duly given to the party to whom it
is directed upon actual receipt (and, in the case of telecopy acknowledgment) by
such party. Any notice that is addressed and mailed in the manner provided
herein shall be conclusively presumed to have been given to the party to which
it is addressed at the closed of business, local time of the recipient, on the
third day after it is so placed in the mail.
11. Captions. The captions used in connection with the
paragraphs and subparagraphs of this Agreement are inserted only for the purpose
of reference. Such captioning shall not be deemed to govern, limit, modify, or
in any 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.
12. Governing Law. This Agreement shall be construed in
accordance with the law of the State of Virginia and the United States of
America.
13. Entire Understanding. This Agreement constitutes the
entire understanding of the parties with respect to the subject matter hereof.
No alterations, changes or amendments hereto shall be effective unless made in
writing signed by both parties.
14. Indemnification.
a. By Licensee. Licensee shall be liable for and
hereby agrees promptly, competently, completely and at no cost to Licensor, to
defend, release, discharge, fully indemnify and hold Licensor and each of its
directors, officers, employees and agents harmless from and against any and all
claims, demands, damage, liability, actions, causes of action, loss, cost and
expenses of any nature whatsoever (including with limitation, investigation
costs and expenses and accountant's fees and expenses and attorneys' fees and
expenses incident thereto) by reason of any actual or alleged injury, including
death of any person whomsoever, or any actual or alleged financial loss to any
person or other entity, whomsoever or whatsoever, or any actual or alleged loss,
damage or destruction of property of every class and description owned by or in
the possession of any person or other entity, whomsoever or whatsoever, in any
manner and however arising out of or attributed to Licensee's production,
manufacture, marketing, or sale of the Goods pursuant to this Agreement, except
for any cause of action for infringement by reason of use of the Trademark
licensed hereunder.
b. By Licensor. Licensor shall be liable for and
hereby agrees promptly, competently, completely and at no cost to Licensee, to
defend, release, discharge, fully indemnify and hold Licensee and each of its
directors, officers, employees and agents harmless from and against any and all
claims, demands, damage, liability, actions, causes of action, loss, cost and
expenses of any nature whatsoever (including with limitation, investigation
costs and expenses and accountant's fees and expenses and attorneys' fees and
expenses incident thereto) arising by reason of Licensor's breach of any of its
representations, warranties, or covenants contained in this Agreement.
IN WITNESS WHEREOF, the parties hereto have cause this
Agreement to be executed by their duly authorized officers the day and year
first above written.
XXXXXXXX'X FOODS, INC.
By: /s/ Xxxxxx X. Xxxxxxxxx
Its: Senior Vice President
CODDLE ROASTED MEATS, INC.
By: /s/ Xxxxx X. Xxxxxx
Its: Secretary
EXHIBIT A: GOODS
EXHIBIT B: INSTITUTIONAL FOOD SERVICE DISTRIBUTORS
