EXHIBIT 10.13
TRADEMARK LICENSE AGREEMENT
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This TRADEMARK LICENSE AGREEMENT ("Agreement") is dated and effective as of
April 1, 2000 ("Effective Date"), by and between Xxxxxxxx'x Management Corp., a
Delaware corporation having its principal office and place of business at 0 Xxxx
Xxxxx Xxxxxx, Xxxxxxxx, Xxxxxxx 00000 ("Licensor"), and Crescent Jewelers, a
California corporation having its principal office and place of business at 000
00/xx/ Xxxxxx, Xxxxxxx, Xxxxxxxxxx 00000 ("Licensee").
W I T N E S S E T H:
WHEREAS, Licensee desires to obtain the right to use the Xxxxxxxx'x Marks
for goods and services in connection with its retail jewelry stores, and for the
purpose of ensuring the maintenance of high quality standards and reputation to
the public in connection with the use of the Xxxxxxxx'x Marks; and
WHEREAS, Licensor has the right to grant to Licensee a license to use the
Xxxxxxxx'x Marks, and is willing to do so on the terms and conditions provided
below;
NOW THEREFORE, in consideration of the premises and mutual covenants
contained herein, the parties agree as follows:
ARTICLE I:
DEFINITIONS
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1.01 "Change of Control" means and includes each of the following:
(a) A change of control of the company of a nature that would be
required to be reported in response to Item 6(e) of Schedule 14A of
the Securities Exchange Act of 1934, (the "1934 Act") regardless of
whether the company is subject to such reporting requirement;
(b) A change of control of the company through a transaction or
series of transactions, such that any person (as that term is used in
Section 13 and 14(d)(2) of the 1934 Act), excluding affiliates of the
company as of the date of this Agreement, is or becomes the beneficial
owner (as that term is used in Section 13(d) of the 0000 Xxx) directly
or indirectly, of securities of the company representing 50% or more
of the combined voting power of the company's then outstanding
securities;
(c) Any consolidation, merger or share exchange involving the company
in which the company is not the continuing or surviving corporation or
pursuant to which shares of company stock would be converted into
cash, securities or other property, other than a merger of the company
in which the holders of the shares of company stock immediately
before the merger have the same proportionate ownership of common
stock of the surviving corporation immediately after the merger;
(d) The stockholders of the company approve any plan or proposal for
the liquidation or dissolution of the company;
(e) Substantially all of the assets of the company are sold or
otherwise transferred to parties that are not within a "controlled
group of corporations" (as defined in Section 1563 of the Internal
Revenue Code of 1986, as amended) in which the company is a member; or
(f) Any person (as that term is used in Section 13 and 14(d)(2) of
the 1934 Act), including affiliates of the company as of the date of
this Agreement, who is, as of the date of this Agreement, the
beneficial owner (as that term is used in Section 13(d) of the 0000
Xxx) directly or indirectly, of securities of the company representing
50% or more of the combined voting power of the company's outstanding
securities, ceases to be the owner of securities of the company
representing 50% or more of the combined voting power of the company's
outstanding securities.
1.02 "Xxxxxxxx'x Marks" shall mean the trade names, trademarks and service
marks as more particularly identified in Schedule A attached hereto, as may be
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amended by the parties from time to time by written consent.
1.03 "Licensed Trademark Goods" shall mean any goods utilizing the
Xxxxxxxx'x Marks, developed or acquired for sale to the public in connection
with Licensee's retail jewelry stores.
1.04 "Licensed Service Xxxx Services" shall mean Licensee's services
utilizing the Xxxxxxxx'x Marks, performed in connection with Licensee's retail
jewelry stores.
1.05 "Licensed Territory" shall mean those States of the United States of
America, and such other countries or territories as are listed from time to time
on Schedule B hereto. Such Schedule B may be revised from time to time by the
parties hereto, as evidenced by the signature of the parties on such revised
Schedule B.
1.06 "Termination Event" shall mean either (i) the termination of that
certain Warrant to Purchase Common Stock of Crescent Jewelers, Inc., issued in
favor of Xxxxxxxx'x Inc.; or (ii) a Change of Control of Licensee or its parent,
Crescent Jewelers, Inc., a Delaware corporation.
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ARTICLE II:
GRANT OF LICENSES
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2.01 Subject to the terms and conditions specified in this Agreement,
Licensor hereby grants to Licensee a non-exclusive, nontransferable license to
use the Xxxxxxxx'x Marks in connection with the Licensed Service Xxxx Services
and Licensed Trademark Goods in the Licensed Territory during the Term.
ARTICLE III:
ROYALTY
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3.01 In exchange for the licenses granted herein, Licensee shall pay to
Licensor an initial royalty (the "Initial Royalty") equal to one hundred
thousand dollars ($100,000) for the period from the Effective Date until
September 30, 2000, and an annual royalty ("Annual Royalty") equal to eighty
thousand dollars ($80,000) for each fiscal year thereafter through September 30,
2005. Thereafter, the Annual Royalty shall be automatically revised every five
years to be equal to the one-fifth of .4% of the Total Revenue of Licensee for
the twelve month period ending on September 30, the last day in each five year
period. Each such five-year period, including the initial period ending on
September 30, 2005, shall hereinafter be referred to as a "Royalty Period."
For purposes of this Agreement, a fiscal year shall begin on October 1 and
end on September 30 of each year. The Initial Royalty and each Annual Royalty
(collectively the "Royalty") shall be paid in United States dollars.
3.02 Licensor and Licensee agree that the Royalty is a reasonable and fair
royalty for Licensee's use of the Xxxxxxxx'x Marks pursuant to the licenses
granted herein.
3.03 Licensor and Licensee agree that the Initial Royalty shall be due
and payable in full on or before September 30, 2000. Licensor and Licensee
agree that each Annual Royalty is to be paid on a quarterly basis each year and
shall be due and payable in full by the first day of each quarter. Any Royalty
which is not timely remitted as provided for under this article shall bear
interest at the annual rate of ten percent (10%), or the maximum legal rate
allowed by law, whichever is less, and such interest shall begin to accrue as of
the first day when said payment was initially due.
ARTICLE IV:
OWNERSHIP OF XXXXXXXX'X MARKS
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4.01 Licensor shall have and retain full and complete ownership of the
Xxxxxxxx'x Marks and the goodwill associated therewith during the entire term of
this Agreement, and Licensee agrees that nothing contained herein shall vest or
otherwise give to Licensee any right, title or interest in or to any of the
Xxxxxxxx'x Marks, except the right to use the same in accordance with the terms
of this Agreement.
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4.02 Licensor shall be responsible for maintaining the Xxxxxxxx'x Marks in
full force and effect by, among other means, preparing and filing any and all
necessary applications, affidavits, renewals, registered user registrations,
and/or other documents as may be required by law to maintain the active status
of the Xxxxxxxx'x Marks and any registrations therefor.
4.03 Licensee agrees that its use of the Xxxxxxxx'x Marks under this
Agreement and the goodwill associated with such use inures to the benefit of
Licensor, and Licensee agrees to execute any and all documents requested by
Licensor confirming the same, and/or confirming Licensor's title and ownership
of the Xxxxxxxx'x Marks.
4.04 Licensee agrees that it shall not, during the Term of this Agreement
or thereafter, assert any claim adverse to Licensor's right, title or interest
in or to any of the Xxxxxxxx'x Marks or to any distinctive features used in
connection therewith, and that Licensee shall not use any of the Xxxxxxxx'x
Marks in any way that could prejudice Licensor's rights therein.
ARTICLE V:
QUALITY CONTROL
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5.01 Licensee agrees to maintain the highest standards respecting the
nature and quality of Licensed Service Xxxx Services and Licensed Trademark
Goods in accordance with such quality control standards and procedures provided
from time to time by Licensor during the Term of this Agreement. Licensee
recognizes that, as a result of many years of advertising, investment and
dependable service to the consuming public, the Xxxxxxxx'x Marks have acquired a
high degree of fame and favorable recognition with the purchasing public in
connection with the goods and services in connection with which the Xxxxxxxx'x
Marks have been used.
5.02 Licensee agrees to use its best efforts to preserve the high standards
and goodwill of the Xxxxxxxx'x Marks and to exercise such supervision and
control with respect to all of the Licensed Service Xxxx Services and Licensed
Trademark Goods so as to preserve and enhance the goodwill of the Xxxxxxxx'x
Marks and the high and favorable recognition with the purchasing public that the
Xxxxxxxx'x Marks now carry and to otherwise protect the public from confusion
and deception.
5.03 Licensor has the right to provide such quality control standards and
procedures and the manner in which Xxxxxxxx'x Marks are used as may be
reasonably necessary to ensure the quality of the Licensed Service Xxxx Services
and the Licensed Trademark Goods and to protect the goodwill of the Xxxxxxxx'x
Marks. Licensor (by itself or through its authorized agent) reserve the right
to inspect each establishment operated by Licensee in the provision of the
Licensed Service Xxxx Services and Licensed Trademark Goods, to approve samples
of any and all Licensed Trademark Goods manufactured by or for Licensee and
which are merchandised by Licensee, and to review all advertising and
promotional materials using the Xxxxxxxx'x Marks, all for the purpose of
ensuring that the nature and quality of goods and services and use of the
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Xxxxxxxx'x Marks are maintained as required herein. At the request of Licensor
(or its authorized agent(s)), Licensee shall furnish to Licensor, without
charge, specifications for any Licensed Trademark Goods, together with any other
relevant data available from such suppliers. Licensee shall permit Licensor
and/or its authorized agents to make on-site inspections of any of its
establishments at the request of Licensor during normal business hours and upon
reasonable notice.
5.04 In the event Licensor determines that Licensee has failed to meet the
quality control standards and procedures established by Licensor, then Licensor
shall furnish Licensee written notice specifying in reasonable detail the
respects in which Licensee has failed, and if reasonably necessary, specifying
steps to be taken to cure the failure. Licensee shall, upon receipt of such
notification from Licensor, immediately commence, and thereafter diligently
pursue, curing any default with respect to the quality control standards and
procedures and shall achieve the cure within a reasonable time. If Licensee
fails to do so, then Licensee shall immediately cease and terminate shipments of
any of the Licensed Trademark Goods upon which the failure of standards and
procedures has occurred and shall immediately discontinue any Licensed Trademark
Service in which the failure of standards and procedures has occurred and not
resume the use of any such good or service until it has received authorization,
in writing, from Licensor to resume such activity.
ARTICLE VI:
TRADEMARK USAGE AND NOTICES
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6.01 Licensee agrees to maintain a reasonable degree of continuity
respecting the appearance, design and usage of the Xxxxxxxx'x Marks in
accordance with the standards and procedures provided by Licensor, and Licensee
further agrees to use the federal trademark notice of registration, "(R)", or
other appropriate notice as specified by Licensor in connection with its use of
the Xxxxxxxx'x Marks whenever practical.
6.02 Licensee agrees not to use the Xxxxxxxx'x Marks in a descriptive or
generic manner.
ARTICLE VII:
INFRINGEMENT AND UNAUTHORIZED USE BY THIRD PARTIES
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7.01 Licensee agrees to promptly notify Licensor in the event Licensee
determines that any of the Xxxxxxxx'x Marks are being infringed or are adversely
affected by any unauthorized and unlawful use by any third party, and Licensee
further agrees to take no action of any kind with respect to such infringement
or adverse use, except by and in accordance with an express written
authorization of Licensor.
7.02 Licensor shall take all action reasonably necessary to prevent
infringement and unauthorized use of any of the Xxxxxxxx'x Marks, and shall
prosecute such persons and entities and seek to cancel all registrations or
applications for registration which unreasonably infringe upon or dilute any of
the Xxxxxxxx'x Marks and Licensor's interest
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in connection therewith, and all cost for any such action will be borne by
Licensor, and all recoveries from any such action would be the sole and
exclusive property of Licensor or its designee.
7.03 Licensor shall commence or prosecute any claims or suits in its own
name, or at its discretion, it may join Licensee as a party thereto, and
Licensee shall assist Licensor to the extent necessary in the protection of
Licensor's rights to any of the Xxxxxxxx'x Marks.
7.04 Licensor agrees to indemnify, defend and hold harmless Licensee from
and against any and all loss, costs, expenses (including reasonable attorneys'
fees and expenses), claims, demands, causes of action, damages and liabilities
arising out of Licensee's use of the Xxxxxxxx'x Marks in accordance with the
terms of this Agreement.
7.05 Licensee agrees to indemnify, defend and hold harmless Licensor from
and against any and all loss, costs, expenses (including reasonable attorneys'
fees and expenses), claims, demands, causes of action, damages and liabilities
arising out of any of the following: (a) any unauthorized use of or infringement
of the Xxxxxxxx'x Marks by Licensee; (b) any breach by Licensee of this
Agreement; and (c) libel or slander against, or invasion of the right of
privacy, publicity or property of, or violation or misappropriation of any other
right of any third party by Licensee.
ARTICLE VIII:
TERM AND TERMINATION
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8.01 The term of this Agreement shall begin on the Effective Date and shall
expire on the date any Termination Event occurs (the "Term"), unless terminated
earlier pursuant to the terms of this Agreement.
8.02 Licensee shall have the right to terminate this Agreement upon written
notice delivered to Licensor not less than thirty (30) days prior to the end of
each Royalty Period.
8.02 In the event Licensee commits any breach of any covenant or agreement
contained herein, then, in any such case if Licensee fails to remedy such
default or breach within thirty (30) days after receipt of written notice
thereof by Licensor, Licensor shall have the right, at its option and by written
notice, to terminate this Agreement forthwith. Failure of Licensor to terminate
this Agreement for any default or breach shall not be deemed a waiver of its
right to do so upon a default or breach of a continuing nature or upon any other
default or breach, either of the same or different character.
8.03 Licensor shall have the right to terminate this Agreement upon thirty
(30) days written notice to Licensee in the event Licensee shall make any
assignment of assets for the benefit of creditors, or if a trustee or receiver
is appointed to administer or conduct its business or affairs, or if it is
adjudged in any legal proceeding to be either voluntarily or involuntarily
bankrupt, unless such condition is cured by Licensee within the thirty
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(30) day notice period, and the termination of this Agreement shall be effective
at the end of said notice period.
8.04 Upon the effective date of any termination of this Agreement as
provided herein, Licensee shall no longer be licensed under any of the
Xxxxxxxx'x Marks and shall promptly discontinue all use of the same; provided,
however, that Licensee shall have a period of ninety (90) days following the
effective date of termination to dispose of any and all Licensed Trademark Goods
which it has in inventory and to discontinue all use of the Xxxxxxxx'x Marks,
provided Licensee maintains the high standards with respect to the nature and
quality of the Licensed Trademark Goods and Licensed Service Xxxx Services as
provided under this Agreement during said ninety (90) day period.
ARTICLE IX:
OWNERSHIP AND ASSIGNABILITY OF LICENSE
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9.01 This Agreement and the rights and license granted hereunder shall in
no way be construed to be an assignment, conveyance, or sale of any interest in
any of the Xxxxxxxx'x Marks covered by this Agreement. The rights and licenses
granted hereunder shall be personal to Licensee and shall not be sold, assigned,
divided or transferred by Licensee either voluntarily or by operation of law
without the prior written consent of Licensor, which consent may be granted or
withheld at the sole discretion of Licensor.
9.02 This Agreement and all of the terms and conditions provided herein
shall inure to the benefit of Licensor and to its successors and assigns,
without limitation.
ARTICLE X:
MISCELLANEOUS
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10.01 This Agreement may be executed in one or more counterparts, each of
which shall be deemed an original and all of which shall constitute one and the
same instrument. This Agreement shall become binding when it is fully executed
and delivered to Licensor at its principal office as set forth above.
10.02 This Agreement has been made in Georgia and shall be construed and
interpreted in accordance with the laws of the State of Georgia. Both parties
consent to the jurisdiction of the courts of the State of Georgia for any
dispute arising hereunder.
10.03 Neither Licensor nor Licensee shall have any power to represent the
other or to obligate or bind the other in any manner whatsoever; nor shall
either party have any fiduciary relationship with the other or, subject to the
terms of this Agreement, any duty or obligation to represent the interests of
the other or to conduct its activities for the benefit of the other.
10.04 Any notice required or permitted under this agreement shall be in
writing, and for purposes of this Agreement, the addresses of the parties shall
be the addresses
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provided above, unless either party provides written notice to the other of a
change in address.
10.05 This Agreement constitutes the entire agreement between Licensor and
Licensee and may be modified or amended only by duly executed written agreement.
10.06 Except as provided to the contrary herein, all the provisions hereof
shall bind and inure to the benefit of the parties hereto and their permitted
successors and assigns.
IN WITNESS WHEREOF, the parties hereto have caused this instrument to be
executed by their duly authorized officers as of the Effective Date.
XXXXXXXX'X MANAGEMENT CORP. CRESCENT JEWELERS
By: _________________________ By: ___________________________
Name:________________________ Name:__________________________
Title:_______________________ Title:_________________________
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