1
EXHIBIT 2.6
TRADEMARK AGREEMENT
THIS TRADEMARK AGREEMENT dated as of the ________ day of ____________
199___, is by and among Ralcorp Holdings, Inc., a Missouri corporation
("Ralcorp"), ____________________, a Missouri corporation wholly owned by
Ralcorp ("New Ralcorp"), and ____________________, a Delaware corporation
("Branded Subsidiary").
W I T N E S S E T H:
WHEREAS, Ralcorp, and General Xxxxx, Inc., a Delaware corporation
("Acquiror"), and General Xxxxx Missouri, Inc., a Missouri corporation and a
wholly owned subsidiary of Acquiror ("Merger Sub"), have entered into an
Agreement and Plan of Merger dated August 13, 1996 (as amended on October ___,
1996, the "Merger Agreement") pursuant to which Merger Sub is being merged with
and into Ralcorp immediately after the consummation of the transactions
contemplated hereby (the "Merger"); and
WHEREAS, in connection with the Merger, the parties hereto desire to
transfer or license certain intellectual property assets to each other on the
terms and conditions set forth in (i) that certain Technology Agreement by and
between Ralcorp, New Ralcorp and Branded Subsidiary dated as of the date hereof
(the "Technology Agreement") and (ii) this Agreement;
NOW, THEREFORE, in consideration of the mutual covenants herein contained
and for other good and valuable consideration, the parties agree as follows:
1. Definitions
a. The term "Trademarks" shall mean and include trademark(s), service
xxxx(s), trade dress, and copyright(s) and all registrations and
applications for registrations relating thereto; however, the term
"trademark" shall mean only a word, symbol or device registrable as a
trademark under the trademark laws.
b. The term "Designated Products" shall mean cereals, cereal based snacks and
snack mixes, and products which are identical to or substantially similar
in form or in overall appearance to those products, which have been
offered for sale in connection with any form of the CHEX trademark or the
COOKIE CRISP trademark prior to the date hereof, whether or not any of
such products are (i) similar in flavor to those products which have been
offered for sale in connection with such trademarks or (ii) used in
association with ingredients (e.g., raisins) different from the
ingredients used in the products which have been offered for sale
2
in connection with such trademarks; provided, however, that this term
shall not include the hexagonally shaped products currently sold under the
CRISPY HEXAGON designation or those wheat cereals denominated or described
as SHREDDED WHEAT and similar in nature to other shredded wheat products
currently offered by other cereal manufacturers.
c. The term "Private Label Trademark(s)" shall mean those trademarks and
trade names owned by a grocery retailer, a wholesaler, or broker, which is
not a cereal producer or primarily in the cereal business, which are used
by such persons or entities to identify grocery products sold by such
parties or entities and in which New Ralcorp (as successor by merger to
Xxxxxxx Foods, Inc. ("Foods")) and its Affiliates have no rights, except
for the right to produce products utilizing such Trademarks and trade
names for such parties or entities or their licensees, but which shall
not, in any event, include any Trademark or trade name described in
Section 2(d)(i) or Section 2(d)(ii) hereinbelow.
d. The term "Reorganization Agreement" shall mean the Agreement by this name
dated as of the date hereof by and among Ralcorp, New Ralcorp, Foods,
Branded Subsidiary, and Acquiror.
e. The term "Control Brand" shall mean those Trademarks and trade names which
(i) are utilized by New Ralcorp and/or its subsidiaries on a line of
products, the vast majority of which are sold utilizing Private Label
Trademarks, which are typically offered by New Ralcorp to re-sellers of
grocery products who normally do not utilize their own Private Label
Trademarks on such grocery products, in lieu of a Private Label Trademark
on such products and (ii) New Ralcorp and/or its subsidiaries do not
themselves advertise to consumers.
f. All other capitalized terms used but not otherwise defined herein shall
have the meanings ascribed thereto in the Reorganization Agreement.
2. Trademark Assignments and Licenses
a. New Ralcorp on behalf of itself and its subsidiaries, other than Branded
Subsidiary, hereby assigns and agrees to cause any applicable subsidiaries
to assign, effective as of the Distribution Date, to the Branded
Subsidiary all of New Ralcorp's and its subsidiaries' rights, title and
interest, together with all of the goodwill associated therewith, in (i)
the Trademarks and recipe names listed on Schedule 2(a) attached hereto
and registrations and applications for registrations related to the
trademarks listed in Schedule 2(a), and (ii) any other Trademarks, other
than the XXXXXXX, XXXXXXX FOODS, and red, stylized R trademarks
(collectively, the "Xxxxxxx Trademarks") and the SUN FLAKES and SPIDERMAN
Trademarks, previously used or currently owned by New Ralcorp or licensed
to
2
3
New Ralcorp (as successor by merger to Foods) or its subsidiaries which
are or have been almost always associated with the Branded Business or
intended almost always for use therein (collectively, the Trademarks
described in this Section 2(a) constitute the "Branded Trademarks"). New
Ralcorp hereby grants (without assuming any liability, as to Puerto Rico,
that may arise as a result of or in connection with such grant, including,
without limitation, with respect to the Distributorship Agreement),
effective as of the Distribution Date, to Branded Subsidiary a
non-exclusive royalty free right to use the Xxxxxxx Trademarks in the
United States, its territories and possessions and the Commonwealth of
Puerto Rico and military installations on any product packaging,
promotional or advertising materials for a period of one (1) year
following the Distribution Date; provided however, that such term may be
extended (for a period of no more than one (1) additional year) for the
purpose of permitting the Branded Subsidiary to use, sell or otherwise
dispose of product packaging and advertising or promotional materials that
remain on hand on the one year anniversary of the Distribution Date. The
Branded Subsidiary, on behalf of itself and its Affiliates and
subsidiaries, hereby agrees that it will (i) make reasonable efforts to
conclude the use of such product packaging and promotional and advertising
materials by the one year anniversary of the Distribution Date and (ii)
not place any orders for such product packaging and advertising or
promotional materials at any time after the one year anniversary of the
Distribution Date. Nothing herein shall prevent the Branded Subsidiary
from ordering such product packaging and promotional and advertising
materials within the initial one (1) year period following the
Distribution Date.
b. Ralcorp hereby assigns to New Ralcorp all of Ralcorp's rights, title and
interest, together with all the goodwill associated therewith, in and to
(i) the trademarks listed on Schedule 2(b) attached hereto and
registrations and applications for registrations related thereto and (ii)
any other Trademarks owned by Ralcorp, other than the Branded Trademarks
(collectively, the Trademarks described in this Section 2(b) constitute
the "Other Trademarks").
c. Each of Ralcorp and the Branded Subsidiary hereby acknowledge and agree
that New Ralcorp, or its Affiliates and subsidiaries, will retain, and
that neither Ralcorp, nor the Branded Subsidiary will have any rights in
the Other Trademarks, except, as otherwise provided in Section 2(a), with
respect to use of the Xxxxxxx Trademarks.
d. New Ralcorp, on behalf of itself and its Affiliates hereby acknowledges
and agrees that neither it nor any of them will retain nor will they have
any rights to the Branded Trademarks. For the respective periods set out
below, New Ralcorp, on behalf of itself and its present and future
Affiliates, further agrees, and shall cause such Affiliates to agree, that
New Ralcorp and such Affiliates shall not directly or indirectly use
(including, without limitation, any use in connection with any Private
3
4
Label Trademark or Control Brand products, any contract packing
arrangement or otherwise in connection with producing product for third
parties), register, seek to register, license or otherwise grant rights in
any of the following Trademarks or statements, as the case may be, in any
state, country or territory anywhere in the world:
(i) the Branded Trademarks and any Trademarks or trade names
confusingly similar to any of such Branded Trademarks, including, with
respect to cereals and snack mixes, without any limitation of the
generality of the foregoing, any one syllable Trademark or trade name
concluding with an "EX" type sound; provided, however, that nothing in
this Agreement shall prevent New Ralcorp or its Affiliates from using
(A) the Branded Trademarks in connection with any legally permissible
comparative advertising or (B) the word "mix" in or in connection with
any Trademark or trade name otherwise permitted to be used hereunder
for any cereal, snack mix or snack mix recipe;
(ii) with respect to the Designated Products, (A) PURINA,
CHECKERBOARD, any checkerboard or checkered logo or symbol, and any
Trademarks or trade names confusingly similar to any of the foregoing
trademarks or (B) any statement which indicates that any CHEX-type
ready to eat cereal Designated Products were produced at any time
prior to the Distribution Date, or that any other Designated Products
were produced at any time prior to the date which is 18 months after
the Distribution Date, in either case, by Xxxxxxx Purina Company ("RP
Co.") or New Ralcorp or their Affiliates; and
(iii) with respect to the Designated Products, any trademarks or trade
names, other than Private Label Trademarks.
The obligations set forth in Section 2(d)(i) shall continue and remain in
effect as long as the Branded Subsidiary and its Affiliates, successors in
interest, assigns and licensees shall not have abandoned all use of the
applicable Branded Trademark and all Trademarks confusingly similar
thereto and all registrations for such applicable Branded Trademark and
all Trademarks confusingly similar thereto shall not have expired. The
obligations set forth in Section 2(d)(ii) shall continue and remain in
effect as long as the Branded Subsidiary and its Affiliates, successors in
interest, assigns and licensees shall not have permanently discontinued
(which shall be deemed to have occurred if any such Designated Product
shall not have been offered for sale for a period of two (2) consecutive
years or more unless such discontinuance is a result of a force majeure
event) offering all products which are identical to or substantially
similar to the applicable Designated Product. The obligations set forth
in Section 2(d)(iii) shall continue and remain in effect for a period of
three (3) years from the Distribution Date; provided, however, that (A)
commencing two (2) years after the Distribution Date, New Ralcorp shall
have the
4
5
right to use the Xxxxxxx Trademarks as a Control Brand (provided that all
requirements of Section 2(d)(i) and Section 2(d)(ii) are met), and any
other Control Brands which otherwise comply with the requirements of this
Section 2(d), in connection with any Designated Product, and (B)
commencing three (3) years after the Distribution Date, New Ralcorp shall
have the right to use the Xxxxxxx Trademarks in connection with the
Designated Products (without limiting its rights to use the Xxxxxxx
Trademarks on any other products) only as a house brand in the same manner
as it does for its other cereal products and only on the conditions that
the Xxxxxxx Trademarks are less prominently displayed than the primary
trademark or product name in all uses on the principal display panels of
the products and in advertising thereof, and the other requirements of
Section 2(d)(i) and Section 2(d)(ii) are otherwise satisfied and the
Xxxxxxx Trademarks shall not be used as part of the product name.
Notwithstanding the foregoing, the restrictions contained in Section
2(d)(iii) hereinabove shall not in and of themselves restrict in any
manner whatsoever, the use of any pre-existing Trademarks or Trademarks
confusingly similar thereto, in the business of any third party which may
acquire New Ralcorp or its Affiliates through a merger, consolidation or
other acquisition transaction. All of the foregoing provisions of this
paragraph (d) are subject to the terms of the Technology Agreement which
shall control in the event of any conflict, difference or ambiguity
existing between this Agreement and the Technology Agreement.
e. All assignments made pursuant to this Trademark Agreement by Ralcorp are
on a quitclaim basis. All grants and assignments made by New Ralcorp are
made on the same basis as set forth in the Merger Agreement and the
Reorganization Agreement with respect to Intellectual Property. The
Branded Subsidiary hereby acknowledges that it has assumed limitations,
undertakings and liabilities related to the Branded Trademarks pursuant
to, and in accordance with, the terms of the Reorganization Agreement,
including, without limitation, such limitations, undertakings and
liabilities arising out of that certain Trademark Agreement dated as of
March 31, 1994 (which has not been amended since such date other than the
amendment dated March 28, 1995) by and between Ralcorp and Xxxxxxx Purina
Company (the "Prior Trademark Agreement") which agreement is attached
hereto as Exhibit A. New Ralcorp hereby acknowledges that it has assumed
limitations, undertakings and liabilities related to the Other Trademarks
pursuant to, and in accordance with, the terms of the Reorganization
Agreement, including, without limitation, the limitations, undertakings
and liabilities arising out of the Prior Trademark Agreement.
f. U.S. and Canadian assignments in recordable form, as applicable, relating
to the Branded Trademarks shall be delivered effective as of the
Distribution Date to the Branded Subsidiary at Closing. To the extent
registrations and/or applications relating to the Branded Trademarks exist
in more than one country, a single multi-country assignment shall be
delivered effective as of the Distribution Date to the
5
6
Branded Subsidiary at Closing. At the Branded Subsidiary's request and
expense, separate country-specific assignments will be delivered to the
Branded Subsidiary or its designee at a reasonable time following each
such request. All taxes, transfer fees and other costs required to record
title to the Branded Trademarks shall be borne by the Branded Subsidiary.
g. U.S. and Canadian assignments in recordable form, as applicable, relating
to the Other Trademarks shall be delivered effective as of the
Distribution Date to New Ralcorp at Closing. To the extent registrations
and/or applications relating to the Other Trademarks exist in more than
one country, a single multi-country assignment shall be delivered
effective as of the Distribution Date to New Ralcorp at Closing. At New
Ralcorp's request and expense, separate country-specific assignments will
be delivered to New Ralcorp at a reasonable time following each such
request. All taxes, transfer fees and other costs required to record
title to the Other Trademarks shall be borne by New Ralcorp.
h. If for any reason a Trademark required to be assigned to the Branded
Subsidiary hereunder cannot be assigned without also assigning rights used
in or associated with businesses not related to the Branded Business, the
parties will work together in good faith to accomplish the goal that such
Trademark will reside in the Branded Subsidiary, or its designee, for
Branded Business purposes and, if for any reason, a Trademark required to
be assigned to New Ralcorp hereunder cannot be assigned without also
assigning rights used in or associated with the Branded Business, the
parties will work together in good faith to accomplish the goal that such
Trademark will reside in the Branded Subsidiary for purposes of the
Branded Business and in New Ralcorp or its designee for other purposes.
3. License Agreements and Contracts.
a. To the extent assignable without third-party consent, and, if not, to the
extent such consents have been obtained heretofore, the license agreements
and contracts listed on Schedule 3(a) attached hereto (which Schedule 3(a)
shall include all license agreements and contracts related to the Branded
Trademarks, including those that may have been entered into from and after
August 13, 1996, in accordance with the terms of the Merger Agreement) and
related to the rights in the Branded Trademarks between New Ralcorp and
unaffiliated third parties are hereby assigned, effective as of the
Distribution Date, to the Branded Subsidiary. Branded Subsidiary hereby
acknowledges that, effective as of the Distribution Date, it has assumed
the obligations under the license agreements and other contracts listed on
Schedule 3(a) pursuant to and in accordance with the terms of the
Reorganization Agreement. To the extent they are non-assignable, New
Ralcorp shall use reasonable efforts to place the Branded Subsidiary in
the same position as the
6
7
Branded Subsidiary would have been had the rights under such agreements
been assigned.
b. To the extent assignable without third-party consent, and, if not, to the
extent such consents have been obtained heretofore, the license agreements
and contracts related to the rights in the Other Trademarks between
Ralcorp and unaffiliated third parties are hereby assigned, effective as
of the Distribution Date, to New Ralcorp. New Ralcorp hereby acknowledges
that, effective as of the Distribution Date, it has assumed the
obligations under such license agreements and other contracts pursuant to
and in accordance with the terms of the Reorganization Agreement. To the
extent they are non-assignable, Ralcorp shall use reasonable efforts to
place New Ralcorp in the same position as New Ralcorp would have been had
the rights under such agreements been assigned.
4. Scope and Modification.
Except as set forth in the Technology Agreement, the Merger Agreement and the
Reorganization Agreement, each of which shall control in the event of any
conflict, this Trademark Agreement sets forth the entire agreement between
the parties and supersedes all prior agreements and understandings between
the parties relating to the subject matter hereof. None of the terms of this
Trademark Agreement may be waived or modified except as expressly agreed to,
in writing, by each of the parties or their Affiliates.
5. Successors and Assigns.
This Trademark Agreement and all the provisions hereof shall be binding upon
and inure to the benefit of the parties and each of their respective
successors and assigns.
6. Interpretation.
The section headings contained in this Trademark Agreement are solely for the
purpose of reference, are not part of the agreement of the parties hereto,
and shall not in any way affect the meaning or interpretation of this
Trademark Agreement.
7. Counterparts.
This Trademark Agreement may be executed in two or more counterparts, each of
which may be deemed an original, but all of which together shall constitute
one and the same instrument.
7
8
8. Governing Law.
This Trademark Agreement shall be governed by and construed and
interpreted in accordance with the laws of the State of Missouri.
9. Additional Documents.
The parties agree to execute or cause to be executed such additional
documents as may be reasonably required to give effect to their
undertakings in this Trademark Agreement.
10. Dispute Resolution.
The dispute resolution provisions of Article XII of the Reorganization
Agreement will control in the event of any dispute in relation to this
Agreement.
IN WITNESS WHEREOF, the parties hereto have executed this Trademark Agreement
as of the date first above written.
RALCORP HOLDINGS, INC.
By:_________
Name:_______
Title:________
NEW RALCORP HOLDINGS, INC.
By:_________
Name:_______
Title:________
CHEX, INC.
By:_________
Name:_______
Title:________
8
