EXHIBIT 10.2
ASSIGNMENT OF TRADEMARK
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This ASSIGNMENT OF TRADEMARK is made as of this 1st day of March, 2004
("Effective Date"), by and between XSTREAM BRANDS, INC., a Florida corporation
with its principal place of business at 0000 X.X. 00xx Xxxxxx, Xxx 0-X, Xx.
Xxxxxxxxxx, XX 00000 ("Assignee") and THE MAUI JUICE COMPANY, INC., a Hawaiian
corporation with mailing address at X.X. Xxx 0000, Xxxxxxx, Xxxxxx 00000
("Assignor").
RECITALS
WHEREAS Assignor hereby agrees to sell, transfer and assign the Xxxx
"MAUI JUICE COMPANY" for juice drinks, and related common law rights to that
xxxx, subject to the terms and conditions of this Agreement.
WHEREAS Assignee hereby agrees to purchase the Xxxx "MAUI JUICE
COMPANY" for juice drinks, subject to the terms and conditions of this
Agreement.
NOW, THEREFORE, for the good and valuable consideration, the receipt
and sufficiency of which is hereby acknowledged and described more particularly
herein, Assignor and Assignee, intending to be legally bound, agree as follows:
INCORPORATION OF RECITALS The recitals set forth above are expressly
incorporated herein by reference in their entireties to form part of the terms
and conditions of this Agreement.
ARTICLE I
ASSIGNMENT OF TRADEMARKS
SECTION 1.1 ASSIGNMENT. Assignor desires to transfer to Assignee all of
his rights and interests in the Xxxx "MAUI JUICE COMPANY" for juice drinks,
including all variations thereof such as any spelling, formatives, phonetic
variations and stylized designs of the same, and including, but not limited to
(i) Application Serial No. 75/320,247 for the Xxxx "MAUI JUICE COMPANY" for
"juice drinks", filed before the United States Patent and Trademark Office on
July 7 1986, (ii) Registration No. 2,258,542 for the Xxxx "MAUI JUICE COMPANY"
for "juice drinks", now registered in the United States Patent and Trademark
Office, and (iii) all goodwill associated therewith (the "Marks"). Assignor has
agreed to sell and has hereby sold, assigned, and transferred unto Assignee,
including its successors, assigns, heirs and administrators, all of Assignor's
individual and jointly held rights, title and interests in and to the Marks and
the application thereof, including any confusingly similar marks and the right
to xxx for damages for all past infringements occurring prior to the effective
date of this Assignment, and to any and all marks and registrations which may
evolve therefrom; and including all goodwill associated with the Marks
transferred hereby. Assignee hereby accepts the assignment of the Marks from
Assignor.
Assignor also assigns all of its individual and jointly held rights,
title and interests in and to the Marks in all foreign countries, and all
applications for registration of the Marks in foreign
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countries and any registration(s) which may evolve therefrom, including the
right to claim International Convention priority.
SECTION 1.2 ABBREVIATED ASSIGNMENT EXHIBIT. Assignor shall execute the
abbreviated assignment document shown in Exhibit A to this Agreement, which will
permit Assignee to request recordal of the assignments made herein without
making of record the entire Agreement between the parties.
SECTION 1.3 WAIVER. Assignor shall not, at any time, contest the
validity of the Marks, or take any action that would impair the value of the
Marks. Without limitation of the foregoing, Assignor expressly represents and
warrants that it shall not resume use of the Marks, or any word or symbol that
is confusingly similar to the Marks or a colorable imitation thereof.
SECTION 1.4 TRANSFERABILITY. In the event that Assignee shall transfer
the Marks to an entity other than a subsidiary or affiliated company of Xstream
Beverage Group, Inc. ("the Transfer") then Assignee shall, within 90 days
following the effective date of such Transfer pay Assignor any and all amounts
owing to Assignor under this Assignment of Trademark Agreement and shall on the
same date pay any and all amounts owing to Xxxxxxxx Xxxxxx under the Business
Consulting Agreement between Xxxxxxxx Xxxxxx and Beverage Network of Hawaii, Inc
dated March 1st 2004.
ARTICLE II
REPRESENTATIONS AND WARRANTIES
SECTION 2.1 TITLE TO ASSETS. Assignor has full power and authority to
own the Marks and Application ("Assets") and good and marketable title to the
Assets covered by this Agreement. Assignor's title to the Assets are free and
clear of any liens, encumbrances, or other defects.
SECTION 2.2 AUTHORITY TO SELL. Assignor has full power and authority to
own the Assets and has complied with all the requirements of any applicable law
of the States of Florida and Hawaii relative to the sale of the Assets described
in this Agreement and of the consents and approvals that may be required by law
or by agreements to which Assignors may be a party will be obtained.
SECTION 2.3 LIABILITIES. There are no other liabilities to which
Assignor or its Assets are subject.
SECTION 2.4 LITIGATION. There is now no litigation pending against
either Assignor of which it or its officers are aware that will, might, or could
affect consummation of the transfer of title of the Assets in good and
marketable condition to Assignee and Assignor is not aware of any threatened
litigation which may affect the consummation of the conveyance described in this
Agreement.
SECTION 2.5 CORPORATE ACTION. All necessary corporate action has been taken
by Assignor to authorize the execution, delivery and performance of this
Assignment, which has
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been duly and validly authorized, executed and delivered by Assignor and
constitutes the valid and binding obligation of Assignor enforceable against
them.
SECTION 2.6 CONSENTS. All consents and approval required for
transferring the Assets hereunder have been obtained or will be obtained. No
consent of any court, governmental agency or other public authority is required
as a condition to the enforceability of this assignment.
SECTION 2.7 NO ENCUMBRANCE. Assignor acknowledges that the Assets being
transferred are not encumbered by any liens or the subject matter of any known
or anticipated litigation. Assignor further acknowledges and agrees that the
consideration paid by Assignee for the Assets is fair and adequate
consideration.
SECTION 2.8 NO INFRINGEMENT. Assignor has not received any notice that
it is infringing upon the research, development, processes, methods, techniques,
inventions, know how, patents, patent rights, trade name, trademarks and service
marks of any other party.
SECTION 2.9 CONTINUED USE. Assignor represents that it, together with
and through its predecessors-in-interest, has adopted and continuously used the
Marks, since at least as early as July 7 1986, to identify juice drinks.
ARTICLE III
FURTHER ACTIONS BY THE ASSIGNOR
SECTION 3.1 ACTIONS BY ASSIGNOR. Assignor, without the payment of any
additional consideration, agrees to execute any other documents or to provide
any further materials or documentation necessary in order to fulfill the
provisions of or the purpose of this Assignment or to substantiate Assignee's
use and ownership of the Marks.
ARTICLE IV
PURCHASE PRICE
SECTION 4.1 CONSIDERATION
A. at the Closing, the Assignee shall pay the Assignor Twenty
Five Thousand Dollars ($25,000) in cash;
B. on the first day of each calendar quarter or the next
business day if such date is not a business day and continuing for three (3)
consecutive quarters, beginning on July 1, 2004 , the Assignee shall pay the
Assignor Assignor Twenty Five Thousand Dollars ($25,000) in cash. On the first
day of each calendar quarter or the next business day if such date is not a
business day and continuing for thirty two (32) consecutive quarters, beginning
on April 1, 2005 the Assignee shall pay the Assignor Six Thousand Two Hundred
and Fifty Dollars ($6,250) in cash. All payments required hereunder will be
deemed received on a timely basis provided Assignor has received the required
payment within ten (10) days of any required payment date.
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ARTICLE V
MISCELLANEOUS
SECTION 5.1 NOTICES All notices relating to this Agreement must be in
writing and delivered either in person or by certified mail or registered mail,
postage prepaid, return receipt requested, to the person(s) and address
specified on the first page of this Agreement or such updated address as either
party may subsequently designate by notice in writing. Notice shall be effective
immediately upon receipt.
SECTION 5.2 ENTIRE AGREEMENT AND AMENDMENT This Agreement supersedes
all prior discussions and agreements between the parties with respect to the
subject matter hereof and contains the sole and entire agreement between the
parties hereto with respect to the subject matter hereof. This Agreement may be
amended, supplemented or modified only by a written instrument duly executed by
or on behalf of the Assignor and the Assignee. The terms and provisions of this
Agreement are intended solely for the benefit of each party hereto and their
respective successors or permitted assigns, and it is not the intention of the
parties to confer third-party beneficiary rights, and this Agreement does not
confer any such rights, upon any other person.
SECTION 5.3 EXPENSES Except as otherwise provided in this Agreement,
each party will pay its own costs and expenses incurred in connection with this
Agreement and the transactions contemplated hereby.
SECTION 5.4 CUMULATIVE REMEDIES The rights, remedies, powers and
privileges herein provided are cumulative and not exclusive of any rights,
remedies, powers and privileges provided by law.
SECTION 5.5 HEADINGS AND REFERENCES Headings are included solely for
convenience, are not themselves to be considered a part of the terms and
conditions of this Agreement and are not intended to be full and accurate
descriptions of the contents thereof. Any reference to a paragraph shall be
construed to refer to all subparts and/or other portions of that paragraph.
SECTION 5.6 WAIVER Any term or condition of this Agreement may be
waived at any time by the party that is entitled to the benefit thereof, but no
such waiver shall be effective unless set forth in a written instrument duly
executed by or on behalf of the party waiving such term or condition.
SECTION 5.7 BINDING EFFECT This Agreement nor any right, interest or
obligation hereunder may be assigned (by operation of law or otherwise) by the
Assignor or the Assignee without the prior written consent of the Assignor or
the Assignee, and any attempt to do so will be void. Subject to the preceding
sentence, this Agreement is binding upon, inures to the benefit of and is
enforceable by the parties hereto and their respective heirs, executors,
personal representatives, successors and assigns.
SECTION 5.8 SEVERABILITY If any provision of this Agreement is held to
be illegal, invalid or unenforceable under any present or future law, and if the
rights or obligations of any party hereto under this Agreement will not be
materially and adversely affected thereby, (a) such
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provision will be fully severable, (b) this Agreement will be construed and
enforced as if such illegal, invalid or unenforceable provision had never
comprised a part hereof, (c) the remaining provisions of this Agreement will
remain in full force and effect and will not be affected by the illegal, invalid
or unenforceable provision or by its severance here from and (d) in lieu of such
illegal, invalid or unenforceable provision, there will be added automatically
as a part of this Agreement a legal, valid and enforceable provision as similar
in terms to such illegal, invalid or unenforceable provision as may be possible.
SECTION 5.9 GOVERNING LAW, JURISDICTION AND VENUE The validity,
construction and performance of this Agreement, and the legal relations between
the parties to this Agreement, each shall be governed by and construed in
accordance with the laws of the State of Florida (excluding that body of law
applicable to choice of laws). Each of the parties hereby agrees that, except
for any appeals, the sole and exclusive venue for any and all disputes relating
to this Agreement, its making, construction, validity, enforceability and/or
performance shall be in the state courts sitting in Broward County, Florida
and/or the United States District Court for the Southern District of Florida and
each hereby voluntarily consents to the personal jurisdiction of said courts and
waives any and all objections to such personal jurisdiction and/or venue.
SECTION 5.10 CONSTRUCTION The parties hereto intend that each
representation, warranty, and covenant contained herein shall have independent
significance. If any party has breached any representation, warranty or covenant
contained herein in any respect, the fact that there exists another
representation, warranty or covenant relating to the same subject matter
(regardless of the relative levels of specificity) that the party has not
breached shall not detract from or mitigate the fact that the party is in breach
of the first representation, warranty or covenant.
SECTION 5.11 COUNTERPARTS This Agreement may be executed by the parties
in one or more counterparts, each of which when so executed shall be deemed an
original hereof and all of which, individually and collectively, shall
constitute one single contract between the parties.This Agreement may be
executed and delivered via facsimile transmission.
SECTION 5.12 INDEMNIFICATION BY ASSIGNOR. Assignor shall defend,
indemnify and hold harmless Assignee under this Agreement from and against any
and all claims losses, costs, liabilities and expenses, including reasonable
fees of attorneys and other professionals, arising out of or related to any
breach or claimed breach of any of Assignor's representations and warranties
contained in Article II above. Assignee agrees to provide to Assignor prompt
written notice of any third party claim covered by the foregoing indemnity that
is made against and received by Assignee and to provide Assignor with such
reasonable cooperation and assistance as Assignor may request from time to time
in the defense or settlement thereof.
SECTION 5.13 FORCE MAJEURE Neither of the parties shall be responsible
for failure to fulfill its obligations under this Agreement due to causes beyond
its reasonable control, including but not limited to failure of non parties to
furnish equipment, software, parts or labor, war, sabotage, insurrection, riots,
civil disobedience and the like, acts of governments and agencies thereof, labor
disputes, accidents, fires or Acts of God. In such event, the delayed party
shall perform its obligations hereunder within a reasonable time after the cause
of the failure has been remedied, and the other party shall be obligated to
accept such delayed performance. During any
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period that performance of its obligations by one party is delayed or suspended
pursuant to this Paragraph 6.13, the performance of the obligations of the other
party shall be similarly delayed or suspended, including, without limitation,
any obligation of a party to pay money owed based on delayed performance of
obligations of the other party.
SECTION 5.14 VOLUNTARY AGREEMENT/REVIEW The parties each acknowledge,
represent and warrant that they have reviewed and understand this Agreement in
its entirety and that they have entered into this Agreement freely and
voluntarily.
SECTION 5.15 NO JOINT VENTURE Neither party is and neither party shall
represent itself to be the agent, employee, franchise, joint venturer, officer
or partner of the other party. Nothing herein contained shall be construed to
place the parties in the relationship of partners or joint venturers, and
neither party shall have the power to obligate or bind the other party in any
manner whatsoever.
SECTION 5.16 CONFIDENTIALITY OF AGREEMENT. Each party agrees to keep
confidential and not to disclose to any third party the terms and conditions of
this Agreement or the fact that the parties have entered into this Agreement;
provided, however, that each party may disclose the terms and conditions of this
Agreement (i) in confidence, to its banks, lawyers, accountants, other
professional advisors, and potential investors, (ii) in connection with its
enforcement of rights under this Agreement, and (iii) as may be required by law.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the day and year first above written.
ASSIGNOR:
Signed, sealed and delivered MAUI JUICE COMPANY, INC.
in the presence of:
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By:________________________
Its:
STATE OF _________________________)
) SS:
COUNTY OF ________________________)
The foregoing Assignment of Trademark was acknowledged before me this _____ day
of February, 2004, by Xxxxxxxx X. Xxxxxx, the President of MAUI JUICE COMPANY,
INC., a Hawaiian corporation, on behalf of the corporation, who is personally
known to me OR who produced __________________________________ as identification
and who did take an oath.
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Notary Signature
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Print Notary Name
NOTARY PUBLIC
State of _________ at Large
My Commission Expires:
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ASSIGNEE:
Signed, sealed and delivered XSTREAM BRANDS, INC.
in the presence of:
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By:_______________________
Its:
STATE OF ___________________)
) SS:
COUNTY OF __________________)
The foregoing Trademark Assignment Agreement was acknowledged before me this
_____ day of February, 2004, by Xxxxxxxx X. Xxxxxx, the President of MAUI JUICE
COMPANY, INC., a Hawaiian corporation, on behalf of the corporation, who is
personally known to me OR who produced __________________________________ as
identification and who did take an oath.
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Notary Signature
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Print Notary Name
NOTARY PUBLIC
State of _________ at Large
My Commission Expires:
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ASSIGNEE: XSTREAM BRANDS, INC
By:
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Print:
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Title:
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Date:
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Before me personally appeared the individual signing on behalf of
Assignee, known to me or proved to me on the basis of satisfactory evidence to
be the person who represents the Assignee subscribed to in this Agreement, and
acknowledged that he/she executed the same.
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Notary Public
