INTELLECTUAL PROPERTY SECURITY AGREEMENT
Exhibit 10.2
INTELLECTUAL PROPERTY SECURITY AGREEMENT
This INTELLECTUAL PROPERTY SECURITY AGREEMENT (as amended, amended and restated, supplemented or otherwise modified from time to time, the “IP Security Agreement”) dated as of July 23, 2012, is made by the Persons listed on the signature pages hereof (collectively, the “Grantors”) in favor of Xxxxx Fargo Bank, National Association, a national association bank, as collateral agent (the “Collateral Agent”) for the Secured Parties. All capitalized terms used but not otherwise defined herein have the meanings given to them in Security Agreement (as defined below).
WHEREAS, on March 9, 2012, UR Financing Escrow Corporation, a Delaware corporation (“Funding SPV”) and a wholly-owned unrestricted subsidiary of United Rentals, Inc., a Delaware corporation (“Holdings”) entered into the Indenture pursuant to which the 5.75% Senior Secured Notes due 2018 were issued;
WHEREAS, on April 30, 2012, (i) Funding SPV merged with and into United Rentals (North America), Inc., a Delaware corporation (the “Company”) (with the Company as the surviving company), and the Company assumed all of the obligations of Funding SPV under the Indenture Documents on such date and (ii) Holdings and certain Subsidiaries of the Company became guarantors of the Indenture;
WHEREAS, pursuant to the Indenture, the Grantors are permitted to incur Additional Second Lien Debt constituting Additional Second Lien Obligations;
WHEREAS, each Grantor has executed and delivered that certain Security Agreement dated as of July 23, 2012 made by the Grantors, certain other parties and the Collateral Agent (as amended, amended and restated, supplemented or otherwise modified from time to time, the “Security Agreement”);
WHEREAS, under the terms of the Security Agreement, the Grantors have granted to the Collateral Agent, for the ratable benefit of the Secured Parties, a security interest in, among other property, certain intellectual property of the Grantors, and have agreed as a condition thereof to execute this IP Security Agreement for recording with the U.S. Patent and Trademark Office, the United States Copyright Office and, to the extent agreed upon and applicable, other foreign governmental authorities; and
WHEREAS, the relative rights, remedies and priorities of the Secured Parties and the First Lien Secured Parties in respect of the Collateral are governed by the Intercreditor Agreement, dated as of March 9, 2012 (as amended, restated, supplemented or otherwise modified from time to time, the “Intercreditor Agreement”), among the Credit Agreement Agent, each Additional First Lien Agent (as defined therein) from time to time party thereto, the Note Trustee, the Collateral Agent, and any Additional Second Lien Agent from time to time party thereto;
NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, each Grantor agrees as follows:
SECTION 1. Grant of Security. Each Grantor hereby grants to the Collateral Agent for the ratable benefit of the Secured Parties a security interest in all of such Grantor’s right, title and interest in and to the following (the “Collateral”):
(A) the patents and patent applications set forth in Schedule A hereto (the “Patents”);
(B) the trademark and service xxxx registrations and applications set forth in Schedule B hereto (provided that no security interest shall be granted in United States intent-to-use trademark applications to the extent that, and solely during the period in which, the grant of a security interest therein would impair the validity or enforceability of such intent-to-use trademark applications under applicable federal law), together with the goodwill symbolized thereby (the “Trademarks”);
(C) all copyrights, whether registered or unregistered, now owned or hereafter acquired by such Grantor, including, without limitation, the copyright registrations and applications set forth in Schedule C hereto (the “Copyrights”);
(D) all reissues, divisions, continuations, continuations-in-part, extensions, renewals and reexaminations of any of the foregoing, and, to the extent applicable, all rights in the foregoing provided by international treaties or conventions, all rights corresponding thereto throughout the world and all other rights of any kind whatsoever of such Grantor accruing thereunder or pertaining thereto;
(E) any and all claims for damages and injunctive relief for past, present and future infringement, dilution, misappropriation, violation, misuse or breach with respect to any of the foregoing, with the right, but not the obligation, to xxx for and collect, or otherwise recover, such damages; and
(F) any and all proceeds of, collateral for, income, royalties and other payments now or hereafter due and payable with respect to, and supporting obligations relating to, any and all of the Collateral of or arising from any of the foregoing.
SECTION 2. Security for Obligations. The grant of a security interest in, the Collateral by each Grantor under this IP Security Agreement secures the payment of all Secured Obligations of such Grantor now or hereafter existing under or in respect of the Second Lien Documents, whether direct or indirect, absolute or contingent, and whether for principal, reimbursement obligations, interest, premiums, penalties, fees, indemnifications, contract causes of action, costs, expenses or otherwise. Without limiting the generality of the foregoing, this IP Security Agreement secures, as to each Grantor, the payment of all amounts that constitute part of the Secured Obligations and that would be owed by such Grantor to any Secured Party under the Second Lien Documents but for the fact that such Secured Obligations are unenforceable or not allowable due to the existence of a bankruptcy, reorganization or similar proceeding involving a Grantor.
SECTION 3. Recordation. Each Grantor authorizes and requests that the Register of Copyrights, the Commissioner for Patents and the Commissioner for Trademarks and, to the extent agreed upon and applicable, any other applicable government office, record this IP Security Agreement.
-2-
SECTION 4. Execution in Counterparts. This IP Security Agreement may be executed in any number of counterparts, each of which when so executed shall be deemed to be an original and all of which taken together shall constitute one and the same agreement.
SECTION 5. Grants, Rights and Remedies. This IP Security Agreement has been entered into in conjunction with the provisions of the Security Agreement. Each Grantor does hereby acknowledge and confirm that the grant of the security interest hereunder to, and the rights and remedies of, the Collateral Agent with respect to the Collateral are more fully set forth in the Security Agreement, the terms and provisions of which are incorporated herein by reference as if fully set forth herein.
SECTION 6. Governing Law. This IP Security Agreement shall be governed by, and construed in accordance with, the laws of the State of New York.
SECTION 7. INTERCREDITOR AGREEMENT. REFERENCE IS HEREBY MADE TO THE INTERCREDITOR AGREEMENT. NOTWITHSTANDING ANYTHING HEREIN TO THE CONTRARY, (I) THE LIENS AND SECURITY INTERESTS GRANTED PURSUANT TO THIS AGREEMENT ARE EXPRESSLY SUBJECT AND SUBORDINATE TO THE LIENS AND SECURITY INTERESTS GRANTED PURSUANT TO THE FIRST LIEN COLLATERAL DOCUMENTS (AS SUCH TERM IS DEFINED IN THE INTERCREDITOR AGREEMENT) AND (II) THE EXERCISE OF ANY RIGHT OR REMEDY HEREUNDER IS SUBJECT TO THE LIMITATIONS AND PROVISIONS OF THE INTERCREDITOR AGREEMENT. IN THE EVENT OF ANY CONFLICT BETWEEN THE TERMS OF THE INTERCREDITOR AGREEMENT AND THE TERMS OF THIS AGREEMENT, THE TERMS OF THE INTERCREDITOR AGREEMENT SHALL GOVERN.
[Remainder of this Page Intentionally Left Blank]
-3-
IN WITNESS WHEREOF, each of the parties hereto has caused this Agreement to be executed and delivered by its duly authorized officer as of the date first set forth above.
| GRANTORS: | ||
| UNITED RENTALS, INC. | ||
| By: | /s/ Xxxxx Xxxxxxxxx | |
| Name: Xxxxx Xxxxxxxxx | ||
| Title: Senior Vice President and Treasurer | ||
| UNITED RENTALS (NORTH AMERICA), INC. | ||
| By: | /s/ Xxxxx Xxxxxxxxx | |
| Name: Xxxxx Xxxxxxxxx | ||
| Title: Senior Vice President and Treasurer | ||
| UNITED RENTALS (DELAWARE), INC. | ||
| By: | /s/ Xxxxx Xxxxxxxxx | |
| Name: Xxxxx Xxxxxxxxx | ||
| Title: Vice President and Treasurer | ||
| UNITED RENTALS FINANCING LIMITED PARTNERSHIP | ||
| By its General Partner, United Rentals of Nova Scotia (No. 1), ULC | ||
| By: | /s/ Xxxxx Xxxxxxxxx | |
| Name: Xxxxx Xxxxxxxxx | ||
| Title: Vice President and Treasurer | ||
| UNITED RENTALS HIGHWAY TECHNOLOGIES GULF | ||
| By its Sole Initial Member, United Rentals (North America), Inc. | ||
| By: | /s/ Xxxxx Xxxxxxxxx | |
| Name: Xxxxx Xxxxxxxxx | ||
| Title: Senior Vice President and Treasurer | ||
[Signature Page to IP Security Agreement]
| UNITED RENTALS REALTY, LLC | ||
| By its Managing Member, United Rentals (North America), Inc. | ||
| By: | /s/ Xxxxx Xxxxxxxxx | |
| Name: Xxxxx Xxxxxxxxx | ||
| Title: Senior Vice President and Treasurer | ||
[Signature Page to IP Security Agreement]
| COLLATERAL AGENT: | ||
| XXXXX FARGO BANK, NATIONAL ASSOCIATION, as Collateral Agent | ||
| By: | /s/ Xxxx Xxxxxxxx | |
| Name: Xxxx Xxxxxxxx | ||
| Title: Vice President | ||
[Signature Page to IP Security Agreement]
SCHEDULE A
PATENTS
| Patent | App Number |
Reg Number |
File Date | |||||||||
| System and Method for Utilization-Based Computing of Emissions Attributable to Specific Equipment |
61390901 | Pending | 7-Oct-2010 | |||||||||
SCHEDULE B
TRADEMARKS
| Trademark | App Number |
Reg Number |
Status | Country | File Date | Reg Date | Class | Owner | ||||||||
| A.I.M.S. |
78/185,104 | Pending | United States of America |
14-Nov-2002 | 14489 | UNITED RENTALS, INC. | ||||||||||
| MISCELLANEOUS DESIGN |
75/449,000 | 0000000 | Registered | United States of America |
12-Mar-1998 | 21-Nov-2000 | 035,037 & 042 | UNITED RENTALS, INC. | ||||||||
| XXXXX |
78/143,367 | Pending | United States of America |
12-Jul-2002 | 035, 037, 042 | UNITED RENTALS, INC. | ||||||||||
| THE RIGHT EQUIPMENT. RIGHT NOW! |
75/921,000 | 0000000 | Registered | United States of America |
17-Feb-2000 | 09-Jan-2001 | 035, 042 | UNITED RENTALS, INC. | ||||||||
| THE SOLUTION |
Unfiled | United States of America |
35 | UNITED RENTALS, INC. | ||||||||||||
| THE UNDERGROUND EQUIPMENT SPECIALIST |
75/756,000 | 0000000 | Registered | United States of America |
21-Jul-1999 | 05-Dec-2000 | 37 | UNITED RENTALS, INC. | ||||||||
| THE UNITED RENTALS SOLUTION |
Unfiled | United States of America |
35 | UNITED RENTALS, INC. | ||||||||||||
| UNITED RENTALS |
75/445,000 | 0000000 | Registered | United States of America |
05-Mar-1998 | 07-Aug-2001 | 035, 037, 042 | UNITED RENTALS, INC. | ||||||||
| UNITED RENTALS—DESIGN ONLY |
75/449,210 | 2,406,720 | Registered | United States of America |
12-Mar-1998 | 12-Nov-2000 | 035, 037, 042 | UNITED RENTALS, INC. | ||||||||
| UNITED RENTALS EL EQUIPO ADECUADO. AL MOMENTO |
78/251,710 | Pending | United States of America |
19-May-2003 | 035, 042 | UNITED RENTALS, INC. | ||||||||||
| UNITED RENTALS EL EQUIPO ADECUADO. AL MOMENTO! |
77/315,951 | Refiled | United States of America |
29-Oct-2007 | 3537 | |||||||||||
| URDATA |
28079 | 2497914 | Registered | United States of America |
24-Mar-2000 | 16-Oct-2001 | 35 | UNITED RENTALS, INC. |
| Trademark | App Number |
Reg Number |
Status | Country | File Date | Reg Date | Class | Owner | ||||||||
| US RENTALS (AND DESIGN) |
74/141,973 | 1735268 | Registered | United States of America |
25-Feb-1991 | 24-Nov-1992 | 37 | UNITED RENTALS, INC. | ||||||||
| VERTICADE |
76/141,032 | 2613339 | Registered | United States of America |
04-Oct-2000 | 27-Aug-2002 | 9 | UNITED RENTALS, INC. | ||||||||
| GOT TOOLS? |
78/401,442 | 3,034,458 | Registered | United States of America |
14-Apr-2004 | 27-Dec-2005 | Int’l Cl. 37 | URNA (ASSIGNMNT TO URI PENDING) | ||||||||
| ALL THE RIGHT TOOLS |
76/376,777 | 3,069,631 | Registered | United States of America |
28-Feb-2002 | 21-Mar-2006 | Int’l Cl. 37 | URNA (ASSIGNMNT TO URI PENDING) | ||||||||
| THE TOOLS TO SATISFY |
78/622,914 | 3,085,242 | Registered | United States of America |
04-May-2005 | 25-Apr-2006 | Int’l Cl. 37 | URNA (ASSIGNMNT TO URI PENDING) | ||||||||
| LEASCO |
76/376,463 | 2,921,928 | Registered | United States of America |
28-Feb-2002 | 28-Feb-2002 | Int’l Cl. 37 | URNA (ASSIGNMNT TO URI PENDING) | ||||||||
| BRAND ON COMMAND |
78/757,357 | 3,219,696 | Registered | United States of America |
20-Mar-2007 | UNITED RENTALS (NORTH AMERICA), INC. | ||||||||||
| E2T |
77/859,863 | 3,840,358 | Registered | United States of America |
31-Aug-2010 | UNITED RENTALS (NORTH AMERICA), INC. | ||||||||||
| 5S AND DESIGN |
78/599,527 | 3,353,413 | Registered | United States of America |
11-Dec-2007 | UNITED RENTALS (NORTH AMERICA), INC. | ||||||||||
| RENT OUR EQUIPMENT CUT YOUR COSTS |
78/570,582 | 3,147,687 | Registered | United States of America |
26-Sep-2006 | UNITED RENTALS (NORTH AMERICA), INC. | ||||||||||
| RENT OUR EQUIPMENT RAISE YOUR PROFITS |
78/560,196 | 3,191,151 | Registered | United States of America |
2-Jan-2007 | UNITED RENTALS (NORTH AMERICA), INC. | ||||||||||
| RSC |
78/795,158 | 3,249,167 | Registered | United States of America |
5-Jun-2007 | UNITED RENTALS (NORTH AMERICA), INC. | ||||||||||
| RSC |
78/654,302 | 3,403,076 | Registered | United States of America |
25-Mar-2008 | UNITED RENTALS (NORTH AMERICA), INC. | ||||||||||
| RSC AND DESIGN | 75/319,879 | 2,264,049 | Registered | United States of America | 27-Jul-1999 | UNITED RENTALS (NORTH AMERICA), INC. |
| Trademark | App Number |
Reg Number |
Status | Country | File Date | Reg Date | Class | Owner | ||||||||
| RSC EQUIPMENT RENTAL |
78/492,564 | 3,136,868 | Registered | United States of America |
29-Aug-2006 | UNITED RENTALS (NORTH AMERICA), INC. | ||||||||||
| RSC EQUIPMENT RENTAL | 78/492,574 | 3,313,502 | Registered | United States of America |
16-Oct-2007 | UNITED RENTALS (NORTH AMERICA), INC. | ||||||||||
| RSC ONLINE |
78/534,413 | 3,111,367 | Registered | United States of America |
4-Jul-2006 | UNITED RENTALS (NORTH AMERICA), INC. | ||||||||||
| RSC RENTAL SERVICE CORPORATION AND DESIGN |
74/709,781 | 2,028,379 | Registered | United States of America |
7-Jan-1997 | UNITED RENTALS (NORTH AMERICA), INC. | ||||||||||
| RSC’S BRAND ON COMMAND |
78/757,380 | 3,217,309 | Registered | United States of America |
13-Mar-2007 | UNITED RENTALS (NORTH AMERICA), INC. | ||||||||||
| TOTAL CONTROL |
76/510,869 | 2,850,473 | Registered | United States of America |
8-Jun-2004 | UNITED RENTALS (NORTH AMERICA), INC. |
SCHEDULE C
COPYRIGHTS
| Copyright | Reg Number |
Date of Publication |
Description | |||||||||
| Total Control |
TX5-866-708 | 23-Oct-2003 | Computer program | |||||||||
| Total Control (2010 ed) |
TXu001720977 | 4-Oct-2010 | Computer program | |||||||||
