EXHIBIT 4.16
COMPANY TRADEMARK SECURITY AGREEMENT
COMPANY TRADEMARK SECURITY AGREEMENT, dated as of December 11, 1997,
made by RBX CORPORATION, a Delaware corporation (the "Company"), in favor of
STATE STREET BANK AND TRUST COMPANY, a Massachusetts trust company, as trustee
(in such capacity, the "Trustee") for the holders of the Notes (as hereinafter
defined) (the "Noteholders"), pursuant to the Indenture, dated as of December
11, 1997 (as amended, supplemented or otherwise modified from time to time,
the "Indenture"), among the Company, Xxxxxxxx Manufacturing Company, Inc.,
Xxxxxx-Xxxxx Rubber Custom Mixing Corp., Midwest Rubber Custom Mixing Corp.,
OleTex Inc., Rubatex Corporation, Universal Polymer & Rubber Inc., Universal
Rubber Company and Waltex Corporation, as guarantors (the "Subsidiary
Guarantors"), and the Trustee.
WITNESSETH
WHEREAS, the Company will issue 12% Senior Secured Notes due 2003 in
the aggregate principal amount of $100,000,000 (the "Notes") pursuant to the
Indenture;
WHEREAS, it is a requirement of the Indenture that the Company shall
have executed and delivered the Company Security Agreement dated of as of
December 11, 1997, (as amended, supplemented or otherwise modified from time
to time, the "Company Security Agreement") to the Trustee for the benefit of
the Trustee and the Noteholders;
WHEREAS, the Company owns, or is licensed to use, each of the
Trademarks and Trademark Licenses (each as hereinafter defined) described on
Schedule 1 hereto;
WHEREAS, pursuant to the terms of the Company Security Agreement,
the Company has pledged and granted to the Trustee, for the benefit of the
Trustee and the Noteholders, a security interest in all right, title and
interest of the Company in, to and under the Collateral (as hereinafter
defined), including the property described on Schedule 1 hereto, whether
presently existing or hereafter arising or acquired, and all Proceeds thereof,
including, without limitation, any and all causes of action which may exist by
reason of infringement thereof for the full term of the Trademarks, to secure
the payment of the Obligations (as hereinafter defined);
WHEREAS, for convenience of reference and recordation, but with no
intention to supersede the terms of the Company Security Agreement, the
parties hereto have entered into this Trademark Security Agreement; and
WHEREAS, it is a further requirement of the Indenture that the
Company shall have executed and delivered this Company Trademark Security
Agreement to the Trustee for the benefit of the Trustee and the Noteholders.
NOW, THEREFORE, in consideration of the premises, the Company hereby
agrees with the Trustee for the benefit of the Trustee and the Noteholders, as
follows:
1. Defined Terms.
(1) Unless otherwise defined herein, terms defined in
the Indenture and used herein shall have the meanings given to them in
the Indenture. The following terms which are defined in the Uniform
Commercial Code in effect in the State of New York on the date hereof
are used herein as so defined: Accounts, Equipment, General
Intangibles, Inventory and Proceeds.
(2) The following terms shall have the following
meanings:
"Closing Date": the date of the Indenture.
"Code": the Uniform Commercial Code as in effect from time to time
in the State of New York.
"Collateral": as defined in Section 2 of this Trademark Security
Agreement.
"Governmental Authority": any nation or government, any state or
other political subdivision thereof and any entity exercising executive,
legislative, judicial, regulatory or administrative functions of or pertaining
to government.
"Material Adverse Effect": a material adverse effect on (a) the
business, assets, operations, property or condition (financial or otherwise)
of the Company and the Subsidiary Guarantors, taken as a whole, (b) the
ability of the Company or any of the Subsidiary Guarantors, to perform their
respective obligations under the Indenture, the Notes, the Subsidiary
Guarantees, the Registration Rights Agreement and the Collateral Documents,
(c) the validity or the enforceability of the Indenture, the Notes, the
Subsidiary Guarantees, the Registration Rights Agreement or the Collateral
Documents or (d) the rights or remedies of the Trustee, for the benefit of the
Trustee and the Noteholders, hereunder or thereunder.
"Obligations": as defined as "Company Obligations" in the Indenture.
"RBX Parties": the Company, the Subsidiary Guarantors and any new
Subsidiary complying with Section 4.14 of the Indenture; individually, a "RBX
Party."
"Requirement of Law": as to any Person, the certificate of
incorporation and by-laws or other organizational or governing documents of
such Person, and any law, treaty, rule or regulation or determination or an
arbitrator or a court of other Governmental Authority, in each case applicable
to or binding upon such Person or any of its material property (including the
properties subject to the Mortgages and Deeds of Trust) or to which such
Person or any of its material property is subject.
"Trademarks": (i) all trademarks, trade names, corporate names,
company names, business names, fictitious business names, trade styles,
service marks, logos and other source or business identifiers, and the
goodwill associated therewith, now existing or hereafter adopted or acquired,
all registrations and recordings thereof, and all applications in connection
therewith, whether in the United States Patent and Trademark Office or in any
similar office or agency of the United States, any state thereof or any other
country or any political subdivision thereof, or otherwise, including, without
limitation, those listed in Schedule 1 hereto, and (ii) all renewals thereof.
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"Trademark License": any agreement, whether written or oral,
providing for the grant by the Company of any right to use any Trademark,
including, without limitation, those listed in Schedule 1 hereto.
"Trademark Security Agreement": this Trademark Security Agreement,
as the same may be amended, supplemented or otherwise modified from time to
time.
2. Security Interest.
2.1 Grant of Security Interest. As collateral security for the
prompt and complete payment and performance when due (whether at the stated
maturity, by acceleration or otherwise) of the Obligations, the Company hereby
grants to the Trustee for the benefit of the Trustee and the Noteholders, and
their successors and assigns, a security interest in all of the following
property now owned or at any time hereafter acquired by the Company or in
which the Company now has or at any time in the future may acquire any right,
title or interest (collectively, the "Collateral"):
(1) all Trademarks;
(2) all Trademark Licenses;
(3) all General Intangibles connected with the use of,
and symbolized by, Trademarks; and
(4) the extent not otherwise included, all Proceeds and
products of any and all of the foregoing.
to have and to hold, together with all rights, titles, interests, powers,
privileges and preferences pertaining or incidental thereto for the benefit of
the Noteholders.
2.2 No Assumption of Liability. The security interest in the
Collateral is granted as security only and shall not subject the Trustee to,
or in any way alter or modify, any obligation or liability of the Company or
the Subsidiary Guarantors with respect to or arising out of the Collateral.
3. Representations and Warranties. The Company hereby
represents and warrants that:
(1) Trademarks. Schedule 1 hereto includes all
Trademarks owned by the Company on the date hereof registered in the
United States Patent and Trademark Office (the "PTO") and all other
Trademarks and Trademark Licenses owned by the Company in its own name
as of the date hereof which are material to the business of the
Company and its Subsidiaries, taken as a whole. To the best of the
Company's knowledge, each Trademark is valid, subsisting, unexpired,
enforceable and has not been abandoned, except to the extent that the
failure to be valid, subsisting, unexpired or enforceable or the
abandonment thereof would not be reasonably likely to have a Material
Adverse Effect. Except as set forth in such Schedule, none of such
Trademarks is the subject of any licensing or franchise agreement. No
holding, decision or judgment has been rendered by any Governmental
Authority which would limit, cancel or question the validity of any
Trademark, except for such holdings,
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decisions or judgments that would not be reasonably likely to have a
Material Adverse Effect. No action or proceeding is pending seeking
to limit, cancel or question the validity of any Trademark, which, if
adversely determined, would be reasonably likely to have a Material
Adverse Effect.
(2) Chief Executive Office. As of the Closing Date, the
Company's chief executive office and chief place of business is
located at 0000 XxxxxxXxxx Xxxxx, Xxxxxxx, XX 00000.
4. Covenants. The Company covenants and agrees with the Trustee
and the Noteholders that, from and after the date of this Trademark Security
Agreement until the payment in full or Legal Defeasance of all principal of,
interest on, premium, if any, and Liquidated Damages, if any, with respect to
the Notes and any other Obligations for the payment of money then due and
owing to any Noteholder or the Trustee under the Indenture or any Collateral
Document:
(1) Further Documentation. At any time and from time to
time, upon the written request of the Trustee, and at the sole expense
of the Company, the Company will promptly and duly execute and deliver
such further instruments and documents and take such further action as
the Trustee may reasonably request for the purpose of obtaining or
preserving the full benefits of this Trademark Security Agreement and
of the rights and powers herein granted.
(2) Indemnification.
(1) The Company agrees to pay, and to save the
Trustee and the Noteholders harmless from, any and all
liabilities, costs and expenses (including, without
limitation, reasonable legal fees and expenses) (i) with
respect to, or resulting from, any delay or failure by the
Company in paying any and all excise, sales or other taxes
which may be payable or determined to be payable with respect
to any of the Collateral, (ii) with respect to, or resulting
from, any delay in complying or failure to comply with any
Requirement of Law applicable to any of the Collateral or
(iii) in connection with any of the transactions contemplated
by this Copyright Trademark Agreement. In any suit,
proceeding or action brought by the Trustee or any Noteholder
for any sum owing thereunder, the Company will save, indemnify
and keep the Trustee and such Noteholder harmless from and
against all expense, loss or damage suffered by reason of any
defense, setoff, counterclaim, recoupment or reduction or
liability whatsoever of the account debtor or obligor
thereunder, arising out of a material breach by the Company of
any obligation thereunder or arising under any other
agreement, indebtedness or liability at any time owing to or
in favor of such account debtor or its successors from the
Company. The Trustee may have separate counsel and the
Company shall pay the reasonable fees and expenses of such
counsel. The Company need not pay for any settlement made
without its consent, which consent shall not be unreasonably
withheld.
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(2) Before the Trustee acts or refrains from acting,
it may require an Officers' Certificate or an Opinion of
Counsel or both. The Trustee shall not be liable for any
action it takes or omits to take in good faith in reliance on
such Officers' Certificate or Opinion of Counsel. The Trustee
may consult with counsel and the written advice of such
counsel or any Opinion of Counsel shall be full and complete
authorization and protection from liability in respect of any
action taken, suffered or omitted by it hereunder in good
faith and in reliance thereon.
(3) Trademarks.
(1) The Company will, except with respect to any
Trademark that is not material to the business of the Company
and its Subsidiaries taken as a whole, to the extent
consistent with its business judgment, (A) continue to use
each Trademark on the same goods and services it is currently
used on (except that the Company, in its reasonable business
judgment, may also decide not to reissue or renew Trademark
License agreements to which it is a party), (B) maintain
quality control over all products manufactured, distributed or
sold, and all services offered under each Trademark, (C) not
knowingly do or omit to do any act which would result in the
invalidation of any Trademark, and (D) take all steps which in
its business judgment are commercially reasonable to prevent a
licensee from doing or omitting to do any act which would
result in the invalidation or any Trademark.
(2) The Company will notify the Trustee of any (A)
abandonment of a Trademark; (B) abandonment of an application
to register a Trademark; or (C) determination by a court or
tribunal in the country where (1) the Trademark is registered,
or (2) the Trademark application is pending, or (3) the
unregistered Trademark is used, that the Company does not own
all right, title and interest to the Trademark or Trademark
application, or of any other adverse determination of such
court or tribunal relating to any Trademark or Trademark
application; provided that (x) the Company has actual notice
of such event and (y) such Trademark or Trademark application
is material to the business of the Company and its
Subsidiaries, taken as a whole.
(3) Whenever the Company, either by itself or through
any agent, employee, licensee or designee, shall file an
application for the registration of a Trademark with the PTO
or any similar office or agency in any other country or any
political subdivision thereof, the Company shall report such
filing to the Trustee and the Noteholders within five Business
Days after the last day of the calendar year in which such
filing occurs (or, if the Trustee reasonably so requests in
writing, at such other times). Upon request of the Trustee,
the Company shall execute and deliver any and all agreements,
instruments, documents, and papers as the Trustee may
reasonably request to evidence the Trustee's security interest
(for the benefit of the Trustee and the Noteholders) in any
Trademark and the Goodwill, Proceeds and General
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Intangibles, if any, of the Company relating thereto or
represented thereby, and the Company hereby constitutes the
Trustee its attorney-in-fact to execute and file all such
writings for the purposes of so evidencing the Trustee's
security interest (and the Trustee agrees to notify the
Company that any such filing has been made, provided that any
failure to so notify shall not invalidate any such actions by
the Trustee), all lawful acts of such attorney-in-fact being
hereby ratified and confirmed; such power being coupled with
an interest is irrevocable until the Obligations are paid in
full and have been terminated.
(4) The Company will, except with respect to any
Trademark application or registration that is not material to
the business of the Company and its Subsidiaries, taken as a
whole, take all reasonable and necessary steps, as it shall
deem appropriate under the circumstances, in accordance with
its reasonable business judgment, including, without
limitation, in any proceeding before the PTO, or any similar
office or agency in any other country or any political
subdivision thereof, to maintain and pursue each trademark
application (and to obtain the relevant registration and to
maintain such registration), including, without limitation,
where appropriate filing of applications for renewal,
affidavits of use and affidavits of incontestability.
(5) In the event that any Trademark included in the
Collateral is materially infringed or misappropriated or any
Trademark is diluted by a third party, the Company shall
promptly notify the Trustee after it learns thereof and shall,
unless the Company shall reasonably determine that such
Trademark is not of material economic value to the Company,
take such actions as the Company shall reasonably deem
appropriate under the circumstances to protect such Trademark.
5. Limitation on Duties Regarding Preservation of Collateral.
The Trustee's sole duty with respect to the custody, safekeeping and physical
preservation of the Collateral in its possession, under Section 9-207 of the
Code or otherwise, shall be to deal with it in the same manner as the Trustee
deals with similar property for its own account. Neither the Trustee, any
Noteholder, nor any of their respective directors, officers, employees or
agents shall be liable for failure to demand, collect or realize upon all or
any part of the Collateral or for any delay in doing so or shall be under any
obligation to sell or otherwise dispose of any Collateral upon the request of
the Company or any other Person.
6. Severability. Any provision of this Trademark Security
Agreement which is prohibited or unenforceable in any jurisdiction shall, as
to such jurisdiction, be ineffective to the extent of such prohibition or
unenforceability without invalidating the remaining provisions hereof, and any
such prohibition or unenforceability in any jurisdiction shall not invalidate
or render unenforceable such provision in any other jurisdiction.
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7. Section Headings. The section and subsection headings used
in this Trademark Security Agreement are for convenience of reference only and
are not to affect the construction hereof or be taken into consideration in
the interpretation hereof.
8. Amendments in Writing; No Waiver; Cumulative Remedies. (a)
None of the terms or provisions of this Trademark Security Agreement may be
waived, amended, supplemented or otherwise modified except by a written
instrument executed by the Company and the Trustee, provided that any
provision of this Trademark Security Agreement may be waived by the Trustee
and the Noteholders in a letter or agreement executed by the Trustee or by
telex or facsimile transmission from the Trustee.
(b) Neither the Trustee nor any Noteholder shall by any
act (except by a written instrument pursuant to paragraph 8(a)
hereof), delay, indulgence, omission or otherwise be deemed to have
waived any right or remedy hereunder or to have acquiesced in any
Default or Event of Default or in any breach of any of the terms and
conditions hereof. No failure to exercise, nor any delay in
exercising, on the part of the Trustee or any Noteholder, any right,
power or privilege hereunder shall operate as a waiver thereof. No
single or partial exercise of any right, power or privilege hereunder
shall preclude any other or further exercise thereof or the exercise
of any other right, power or privilege. A waiver by the Trustee or any
Noteholder of any right or remedy hereunder on any one occasion shall
not be construed as a bar to any right or remedy which the Trustee or
such Noteholder would otherwise have on any future occasion.
(c) The rights and remedies herein provided are
cumulative, may be exercised singly or concurrently and are not
exclusive of any other rights or remedies provided by law.
9. Notices. All notices, requests and demands to or upon the
Trustee or the Company to be effective shall be in writing (or by telex, fax
or similar electronic transfer confirmed in writing) and shall be deemed to
have been duly given or made (1) when delivered by hand or (2) if given by
mail, three days after deposited in the mails by certified mail, return
receipt requested, postage prepaid or (3) if by telex, fax or similar
electronic transfer, when sent and receipt has been confirmed, addressed as
follows:
(1) if to the Trustee, at its address or transmission
number for notices provided in Section 13.02 of the Indenture; and
(2) if to the Company, at its address or transmission
number for notices provided in Section 13.02 of the Indenture.
The Trustee and the Company may change their addresses and transmission
numbers for notices by notice in the manner provided in this Section.
10. Successors and Assigns. This Trademark Security Agreement
shall be binding upon the successors and assigns of the Company and shall
inure to the benefit of the Trustee and the Noteholders and their successors
and assigns.
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11. Submission To Jurisdiction; Waivers. The Company hereby
irrevocably and unconditionally:
(1) submits for itself and its property in any legal
action or proceeding relating to this Trademark Security Agreement,
the Company Security Agreement and the other Collateral Documents to
which it is a party, or for recognition and enforcement of any
judgment in respect thereof, to the non-exclusive general jurisdiction
of the courts of the State of New York, the courts of the United
States of America for the Southern District of New York, and appellate
courts from any thereof;
(2) consents that any such action or proceeding may be
brought in such courts and waives any objection that it may now or
hereafter have to the venue of any such action or proceeding in any
such court or that such action or proceeding was brought in an
inconvenient court and agrees not to plead or claim the same;
(3) agrees that service of process in any such action or
proceeding may be effected by mailing a copy thereof by registered or
certified mail (or any substantially similar form of mail), postage
prepaid, to the Company at its address set forth in Section 13.02 of
the Indenture or at such other address of which the Trustee shall have
been notified pursuant thereto;
(4) agrees that nothing herein shall affect the right to
effect service of process in any other manner permitted by law or
shall limit the right to xxx in any other jurisdiction; and
(5) waives, to the maximum extent not prohibited by law,
any right it may have to claim or recover in any legal action or
proceeding referred to in this Section any special, exemplary,
punitive or consequential damages.
12. Acknowledgments. The Company hereby acknowledges that:
(1) it has been advised by counsel in the negotiation,
execution and delivery of this Trademark Security Agreement, the
Security Agreement and the other Collateral Documents to which it is a
party;
(2) neither the Trustee nor any Noteholder has any
fiduciary relationship with or duty to it or any other RBX Party
arising out of or in connection with this Trademark Security
Agreement, the Company Security Agreement or any of the other
Collateral Documents, and the relationship between the Trustee and
Noteholders, on one hand, and the RBX Parties, on the other hand, in
connection herewith or therewith is solely that of debtor and
creditor; and
(3) no joint venture is created hereby or by the other
Collateral Documents or otherwise exists by virtue of the transactions
contemplated hereby among the Noteholders, the Trustee and the RBX
Parties.
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13. WAIVER OF JURY TRIAL. THE COMPANY HEREBY IRREVOCABLY AND
UNCONDITIONALLY WAIVES TRIAL BY JURY IN ANY LEGAL ACTION OR PROCEEDING
RELATING TO THIS TRADEMARK SECURITY AGREEMENT OR ANY OTHER DOCUMENT AND FOR
ANY COUNTERCLAIM THEREIN.
14. GOVERNING LAW. THIS TRADEMARK SECURITY AGREEMENT SHALL BE
GOVERNED BY, AND CONSTRUED AND INTERPRETED IN ACCORDANCE WITH, THE LAWS OF THE
STATE OF NEW YORK WITHOUT REGARD TO CONFLICTS OF LAWS PROVISIONS THEREOF.
15. Authority of Trustee. The Company acknowledges that the
rights and responsibilities of the Trustee under this Trademark Security
Agreement with respect to any action taken by the Trustee or the exercise or
non-exercise by the Trustee of any option, right, request, judgment or other
right or remedy provided for herein or resulting or arising out of this
Trademark Security Agreement shall, as between the Trustee and the
Noteholders, be governed by the Indenture, but, as between the Trustee and the
Company, the Trustee shall be conclusively presumed to be acting as agent for
the Noteholders with full and valid authority so to act or refrain from
acting, and the Company shall not be under any obligation, or entitlement, to
make any inquiry respecting such authority.
16. Incorporation of Security Agreement Provisions. The Company
hereby acknowledges and affirms that the rights and remedies of the Trustee
with respect to the security interest in the Collateral made and granted
hereby are more fully set forth in the Company Security Agreement, the terms
and provisions of which are incorporated by reference herein as if fully set
forth herein. Nothing in this Trademark Security Agreement shall defer or
impair the attachment or perfection of any security interest in any collateral
covered by the Company Security Agreement which would attach or be perfected
pursuant to the terms thereof without action by the Company or any other
Person.
17. Release of Collateral and Termination.
(1) Upon the payment in full or Legal Defeasance of all
principal of, interest on, premium, if any, and Liquidated Damages, if
any, with respect to the Notes and any other Obligations for the
payment of money then due and owing to any Noteholder or the Trustee
under the Indenture and the Collateral Documents, the Collateral shall
be released from the Liens created hereby, and this Trademark Security
Agreement and all obligations (other than those expressly stated to
survive such termination) of the Trustee and the Company hereunder
shall terminate, all without delivery of any instrument or performance
of any act by any party, and all rights to the Collateral shall revert
to the Company. Upon request of the Company following any such
termination, the Trustee shall deliver (at the sole cost and expense
of the Company) to the Company any Collateral held by the Trustee
hereunder, and execute and deliver (at the sole cost and expense of
the Company) to the Company such documents as the Company shall
reasonably request to evidence such termination.
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(2) If any of the Collateral shall be sold, transferred
or otherwise disposed of by the Company in a transaction permitted by
the Indenture, then the Trustee shall execute and deliver to the
Company (at the sole cost and expense of the Company) all releases,
termination statements or other documents reasonably necessary for the
release of the Liens created hereby on such Collateral.
18. Contradictory Provisions. In the event any one or more of
the provisions of this Trademark Security Agreement shall be found in a final
judgment of any New York State court or Federal court of the United States of
America sitting in New York City, and any appellate court from any thereof, to
contradict or otherwise limit any provision in the Indenture, the provision in
the Indenture shall control.
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IN WITNESS WHEREOF, the Company has caused this Trademark Security
Agreement to be duly executed and delivered as of the date first above
written.
RBX CORPORATION
By: /s/ Xxxx X. Xxxxxxx
----------------------------
Name: Xxxx X. Xxxxxxx
Title: Chief Financial Officer
S-1
RBX CORPORATION
STATE OF )
: ss.:
COUNTY OF )
On the 11th day of December, 1997, before me personally came
_____________, to me personally known and known to me to be the person
described in and who executed the foregoing instrument as __________ of
___________, who, being by me duly sworn, did depose and say that he resides
at __________; that he is ____________ of ___________, one of the corporations
described in and which executed the foregoing instrument; that he knows the
seal of said corporation; that the seal affixed to said instrument is such
corporate seal; that said instrument was signed and sealed on behalf of said
corporation by order of its Board of Directors; that he signed his name
thereof by like order; and that he acknowledged said instrument to be the free
act and deed of said corporation.
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Name:
[NOTARIAL SEAL]
S-2
Schedule 1 to
Trademark Security Agreement
----------------------------
TRADEMARK AND TRADEMARK LICENSES
--------------------------------
Trademark Registration
Number or (Application Registration or
Trademarks Serial Number) (Filing Date) Country
---------- ---------------------- --------------- -------
RBX None indicated 31-Oct-1997 USA
