1
EXHIBIT 10.28
CONDITIONAL TRADEMARK ASSIGNMENT
(Elite Information Systems, Inc.)
THIS CONDITIONAL TRADEMARK ASSIGNMENT made as of July 23, 1997 by and
between ELITE INFORMATION SYSTEMS, INC., a California corporation with a
principal place of business at 0000 Xxxxx Xxxxxxxxx Xxxxxxxxx, Xxxxx 000, Xxx
Xxxxxxx, Xxxxxxxxxx 00000 ("Assignor") and FLEET NATIONAL BANK, a national
banking association created and existing under the laws of the United States
with a principal place of business at 00 Xxxxx Xxxxxx, Xxxxxx, Xxxxxxxxxxxxx
00000, acting as Agent for itself and each of the other Lenders who now or
hereafter become parties to the hereinafter defined Loan Agreement ("Assignee").
WHEREAS, Assignee has this day entered into a certain Loan Agreement
with Assignor and the hereinafter defined Other Borrowers pursuant to the terms
of which Lenders have agreed to make loans to the hereinafter defined Borrower
(the "Loan Agreement"); and
WHEREAS, capitalized terms used herein and not otherwise defined herein
shall have the meaning set forth in the Loan Agreement; and
WHEREAS, Broadway & Seymour, Inc., a Delaware corporation, Elite
Information Systems International, Inc., a California corporation, The
MiniComputer Company of Maryland, Inc., a Maryland corporation and Pragmatix
Telephony Solutions, Inc., a North Carolina corporation are herein collectively
referred to as the "Other Borrowers"; and the Other Borrowers together with
Assignor are herein collectively referred to as the "Borrower"; and
WHEREAS, Pursuant to the terms of a Security Agreement of even date
herewith by and between each Assignor and Assignee (collectively, as amended
from time to time, the "Security Agreement"), Assignor has concurrently granted
to Assignee a security interest in all of Assignor's assets to secure, inter
alia, the payment and performance of the Obligations of Borrower to Assignee
under the Loan Agreement; and
WHEREAS, To evidence and perfect the rights of Assignee as grantee of a
security interest that has attached in certain of said assets as described
below, Assignor has executed and delivered to Assignee this Conditional
Trademark Assignment.
NOW THEREFORE, FOR GOOD AND VALUABLE CONSIDERATION, THE RECEIPT OF
WHICH IS HEREBY ACKNOWLEDGED, AND SUBJECT TO THE CONDITIONS SET FORTH HEREIN,
Assignor does hereby conditionally assign, sell, transfer and grant unto
Assignee all of Assignor's right, title and interest in, to and under the
following, whether presently existing or hereafter arising or acquired:
(i) each trademark and servicemark (whether registered or
unregistered), and each registration thereof, and each trademark and servicemark
registration application (whether federal or state, and whether foreign or
domestic) owned by Assignor, including, without limitation, each
2
such trademark, servicemark or trademark or servicemark registration application
set forth on Schedule A, attached hereto and incorporated herein by reference;
(ii) all products and proceeds of the foregoing, including, without
limitation, any claim or causes of action of Assignor against any third parties
for past, present or future infringement of any of the foregoing, with the right
to xxx and recover the same in the Assignee's own name and for its own use and
behoove; and
(iii) the goodwill of Assignor's business symbolized by each of the
foregoing;
(all of the foregoing, individually and collectively, the
"Trademarks").
PROVIDED, HOWEVER, THAT ASSIGNOR'S RIGHTS IN THE TRADEMARKS SHALL
CONTINUE UNTIL, AND ASSIGNEE SHALL HAVE NO OBLIGATIONS WITH RESPECT TO THE
TRADEMARKS UNTIL, AND ASSIGNEE SHALL BE ENTITLED TO EXERCISE ITS RIGHTS AND
REMEDIES HEREUNDER IN AND WITH RESPECT TO THE TRADEMARKS ONLY UPON, SATISFACTION
OF THE FOLLOWING CONDITIONS SUBSEQUENT:
(a) The occurrence and continuation of an Event of Default as defined
in the Loan Agreement; or
(b) The exercise by Assignee of any or all of its rights or remedies
under the Security Agreement in respect of the Trademarks.
1. Assignor does hereby acknowledge, affirm and represent that:
(i) the rights and remedies of Assignee with respect to its
interest in the Trademarks are more fully set forth in the Security Agreement,
the terms and provisions of which are incorporated by reference herein as if
fully set forth herein.
(ii) that nothing in this Conditional Trademark Assignment
shall be in derogation of the rights and remedies of Assignee in and to the
Trademarks as set forth in the Security Agreement and as shall be available at
law or in equity.
(iii) Schedule A contains a true and complete record of (a)
all registered (state, federal and international) trademarks and servicemarks in
which Assignor has any interest and (b) all applications pending for
registration of trademarks and servicemarks in which Assignor has any interest.
(iv) The Trademarks are subsisting and have not been adjudged
invalid or unenforceable, in whole or in part.
(v) Each of the Trademarks is valid and enforceable.
2
3
(vi) Assignor is the sole and exclusive owner of the entire
and unencumbered right, title and interest in and to each of the Trademarks,
free and clear of any liens, charges and encumbrances, including, without
limitation, licenses and covenants by Assignor not to xxx third persons.
2. Assignor covenants that, until all of the Obligations shall have
been satisfied in full, it will not enter into any agreement (for example, a
license agreement) which is inconsistent with Assignor's obligations under this
Assignment, without the Assignee's prior written consent.
3. Assignor covenants that if, before the Obligations shall have been
satisfied in full, Assignor shall obtain rights to any additional registered
trademarks or servicemarks, or become entitled to the benefit of any
registration applications for trademarks or servicemarks, the provisions of this
Assignment shall automatically apply thereto and Assignor shall give to the
Assignee prompt notice thereof in writing.
4. Assignor shall indemnify, defend and hold Assignee, its affiliates
and their respective directors, officers, employees and agents ("Assignee's
Indemnified Parties") harmless from and against all damages, losses or expenses
suffered or paid as a result of any and all claims, demands, suits, causes of
action, proceedings, judgments and liabilities, including reasonable attorneys'
fees incurred in litigation or otherwise assessed, incurred or sustained by or
against Assignee's Indemnified Parties or any of them with respect to or arising
out of or in any way connected with this Assignment.
5. Assignor authorizes the Assignee to modify this Assignment by
amending Schedule A to include any future trademarks, servicemarks, or trademark
or servicemark applications of which Assignor may acquire an interest.
6. At such time as Borrower shall completely and finally satisfy all of
the Obligations, the Assignee shall execute and deliver to Assignor all deeds,
assignments and other instruments as may be necessary or proper to re-vest in
Assignor full title to the Trademarks, subject to any disposition thereof which
may have been made by the Assignee pursuant to the Security Agreement.
IN WITNESS WHEREOF, Assignor has caused this Conditional Trademark
Assignment to be duly executed by its duly authorized officer as of the date
first set forth above.
ELITE INFORMATION SYSTEMS, INC.
By: ___________________________
Xxxx X. Xxxxxxxx,
Executive Vice President
3
4
FLEET NATIONAL BANK
as Agent for itself and the Lenders
By: ____________________________
Xxxxxxx X. Xxxxxxx
Assistant Vice President
4
5
CONDITIONAL ASSIGNMENT OF TRADEMARKS
SCHEDULE A
Trademark/Servicemark Registration or
Serial Number
5
