UNITED STATES TRADEMARK COLLATERAL ASSIGNMENT AND SECURITY AGREEMENT EMERGING VISION, INC.
EXHIBIT 10.11
UNITED
STATES TRADEMARK COLLATERAL ASSIGNMENT
AND
SECURITY AGREEMENT
EMERGING
VISION, INC.
This
UNITED
STATES TRADEMARK
SECURITY AGREEMENT (this “Agreement”) is made as of August 7, 2007, by
EMERGING VISION, INC., a New York corporation, having an
address at 000 Xxxxxxx Xxxxxxxxx Xxxx., Xxxxx 000, Xxxxxx Xxxx, Xxx
Xxxx 00000 (“EV”), to and in favor of MANUFACTURERS AND
TRADERS TRUST COMPANY, a banking association, having an office at One
M&T Plaza, Buffalo, New York 14240 (the “Secured
Party”).
RECITALS
A. Pursuant
to a certain Revolving Line of
Credit and Secured Term Loan Note and Agreement, dated
August , 2007 (the “Note Agreement”), the Secured Party
has agreed to make certain financial accommodations to EV , in the aggregate
amount of up to $6,000,000, subject to, among other conditions, EV’s execution
and delivery of this Agreement to Secured Party.
B. EV
has agreed to secure its obligations under the Note Agreement by, among other
things, executing and delivering this Agreement to Secured Party.
Accordingly,
EV and the Secured Party hereby agree as follows:
1. Definitions
Terms
used herein that are defined in
the Note Agreement shall have the meanings assigned to them therein, unless
otherwise defined herein. References to this “Agreement” shall mean
this United States Trademark Collateral Agreement and Security Agreement,
including all amendments, modifications and supplements and any exhibits or
schedules to any of the foregoing, and shall refer to this Agreement as the
same
may be in effect at the time such reference becomes operative.
2. Grant
of Interest
2.1 Trademarks
and Licenses. EV hereby grants, bargains, mortgages, pledges,
creates in favor of, and conveys to the Secured Party, as security for the
prompt payment of all of EV’s obligations to Secured Party under the Note
Agreement (the “Obligations”) in full when due, a security interest in the
entire right, title and interest of EV, in and to all of its now owned, existing
or filed, or hereafter required, arising or filed:
(a) (i)
trademarks, other marks, trademark registrations, trade names and trademark
applications, including, without limitation, those listed on Schedule A hereto;
(ii) all renewals of any of the foregoing, (iii) all damages or payments for
past due or future
infringements
of any of the foregoing, (iv) the right to xxx for past, present and future
infringements of any of the foregoing, and (v) all rights corresponding to
any
of the foregoing throughout the world (all, collectively, the “Trademarks”);
and
(b) to
the extent assignable without causing a default thereunder, licenses and license
agreements with any other Person under or with respect to any of the Trademarks
(all licenses and license agreements, including, but not limited to, franchise
agreements, assigned to the Secured Party pursuant hereto hereinafter
collectively called the “Licenses”).
2.2 Restrictions
on Future Agreements. EV agrees that until the Obligations shall
have been paid and performed in full, and except as otherwise permitted under
the Note Agreement, EV will not, without the Secured Party’s prior written
consent, enter into any agreement, including, without limitation, any license
agreement, that grants to any Person other than the Secured Party rights to
or
interests in any Trademarks and is inconsistent with EV’s obligations
under this Agreement; provided, however, that, prior to the occurrence of a
default (after any required notice and the expiration of any applicable cure
and/or grace provision provided for therein), under and as that term is defined
in the Note Agreement (an “Event of Default”), EV may, without consent of, or
notice to, the Secured Party, grant licenses to use any of EV’s Trademarks or
Licenses in the ordinary course of EV’s business (including, but not limited to,
the right to enter into Franchise Agreements, License Agreements and Management
Agreements), and to grant, to others, the right and license to use one or more
of the Trademarks. EV further agrees that, except as
otherwise expressly permitted by the Note Agreement and/or this Agreement,
it
will not take any action, or permit any action to be taken by any affiliate
of
EV or other Person subject to EV’s control, including, without limitation,
licensees, or fail to take any action, that would adversely affect, in any
material respect, the validity or enforcement of the rights granted to the
Secured Party under this Agreement, taken as a whole.
2.3 New
Trademarks. EV represents and warrants that, except as otherwise
set forth on Schedule A: (i) the Trademarks listed in Schedule A
hereto are owned by EV; and (ii) the Trademarks constitute all of the Trademarks
registered in the name of EV in United States. If, during the term of
this Agreement, EV shall (i) obtain any new Trademarks or rights thereto, or
(ii) become entitled to the benefit of any new Trademark, EV shall give to
the
Secured Party prompt written notice thereof and shall enter into a supplement
to
this Agreement incorporating herein such new Trademarks.
2.4 Royalties
and Terms. EV agrees that upon the occurrence and continuance of
an Event of Default under the Note Agreement, the Secured Party (or any designee
of the Secured Party) may, subject to applicable law and to any then-existing
Licenses granted by EV of any such Trademarks, use any or all of the Trademarks
or Licenses worldwide without any liability to EV for royalties or other related
charges. The term of the right to use granted in this Section 2.4
shall extend until the earlier of (i) the expiration of all rights under each
of
the respective Trademarks or Licenses securing the Note Agreement; (ii) the
payment and performance in full of the Obligations and the Note Agreement;
or
(iii) any other release of the security interest granted hereunder, as otherwise
required by the terms of this Agreement and/or the Note Agreement.
2.5 Release. Upon
the payment and performance in full of the Obligations, or as otherwise may
be
required under the Note Agreement or this Agreement, the Secured Party shall
execute and deliver to EV, at EV’s request, such releases, satisfactions, deeds,
assignments and other instruments as may be necessary to relinquish any of
the
Secured Party’s rights in such of the Trademarks or Licenses as shall not have
been previously sold or disposed of, by the Secured Party, pursuant to the
terms
of this Agreement.
2.6 Duties
of EV. Until the Obligations shall have been paid and performed
in full, or until the security interest is released, as otherwise required
hereunder, EV shall (i) prosecute diligently any patent application and any
trademark application pending as of the date hereof, and (ii) preserve and
maintain all rights in the Trademarks. Any expenses incurred in
connection with such application shall be borne by EV. EV shall not
abandon any Trademark or License or the right to file any Trademark application
unless EV, in its reasonable discretion, determines that to take such action
in
a particular instance would be in the best commercial interest of
EV.
2.7 Secured
Party’s Right to Xxx. If an Event of Default shall have occurred
and be continuing, the Secured Party shall have the right, but shall in no
way
be obligated, to bring suit on behalf of EV to enforce any of the Trademarks
or
Licenses in the event EV declines to bring such suit and, if the Secured Party
shall commence any such suit, EV shall, at the request of the Secured Party,
do
any and all lawful acts and execute any and all proper documents required by
the
Secured Party in aid of such enforcement and EV shall promptly pay, or reimburse
and indemnify the Secured Party upon demand, for all out-of-pocket costs and
expenses (including, without limitation, reasonable attorney’s fees) incurred by
the Secured Party in the exercise of its rights under this Section
2.7.
|
3.
|
Filings
and Consents
|
EV
shall deliver to the Secured Party,
upon the execution and delivery of this Agreement, in form and substance
reasonably satisfactory to the Secured Party, such instruments and documents
as
shall be necessary, in the reasonable opinion of the Secured Party, to perfect
the interests granted by EV to the Secured Party hereby (other than with respect
to trademarks, trademark registrations, trade names and trademark applications
governed by the laws of any jurisdiction other than the United States or any
political subdivision thereof), including, without limitation, filings with
the
United States Patent and Trademark Office.
4. Covenants
EV
agrees that so long as any of the
Obligations are outstanding, or until the Secured Party is otherwise required
to
terminate its security interest hereunder, and except as may otherwise be
provided in the Note Agreement, or in this Agreement, unless the Secured Party
agrees otherwise in writing: (a) it will, at its sole cost and expense, forever
warrant and defend the Trademarks and Licenses from any and all claims and
demands of any other Person; (b) it will not grant, create or permit to exist
any Lien on, or security interest in, any of the Trademarks or Licenses in
favor
of any other Person; and (c) it will not enter into any agreement that is
inconsistent with EV’s obligations under this Agreement.
5. Default
|
5.1
|
Remedies.
|
(a) Upon
the occurrence and during the continuance of an Event of Default, the Secured
Party, in its discretion, may, upon not less than five (5) business days
notice:
(i) collect,
receive, appropriate and realize upon the Trademarks and Licenses, or any part
thereof;
(ii) to
the extent not prohibited by law, enter, with our without process of
law and without breach of the peace, any premises where the Trademarks and/or
Licenses or the books and records of EV related thereto are or may be located,
and without charge or liability to the Secured Party therefor seize and remove
the Trademarks and Licenses (and copies for EV’s books and records in any way
relating to the Trademarks and Licenses) from said premises and/or remain upon
such premises and use the same (together with said books and records) for the
purpose of collecting, preparing and disposing of the Trademarks and Licenses;
or
(iii) sell
or otherwise dispose, including, without limitation, the granting of licenses,
of any of the Trademarks and/or Licenses at public or private sale for cash
or
credit in accordance with applicable law.
(b) Upon
the occurrence and during the continuance of an Event of Default, the Secured
Party, in its discretion, may exercise any one or more of the rights and
remedies accruing to a secured party under the UCC as adopted in the relevant
state or states and any other applicable law upon default of a debtor (other
than those providing for any of the rights set forth in Section 5.1(a)
above). EV recognizes that in the event EV fails to perform, observe
or discharge any of its obligations or liabilities under this Agreement, no
remedy of law will provide adequate relief to the Secured Party, and EV agrees
that the Secured Party shall be entitled to temporary and permanent injunctive
relief in any such case without the necessity of proving actual
damages.
(c) Any
notice required to be given by the Secured Party of a sale, lease, other
disposition of the Trademarks and/or Licenses or any other intended action
by
the Secured Party, delivered by telex, facsimile transmission or overnight
mail
courier service, postage prepaid and duly addressed to EV at its address set
forth in Section 6.5 hereof, not less than ten (10) Business Days prior to
such
proposed action, shall constitute commercially reasonable and fair notice
thereof to EV.
(d) The
Secured Party shall have the right at any time, in its discretion, without
notice thereof to EV, to take control, in any manner, of any item of payment
for
or proceeds of any of the Trademarks or Licenses of EV.
(e) The
Secured Party may, if the Secured Party deems it reasonable, postpone or adjourn
any sale of the Trademarks and/or Licenses, or any part thereof, from time
to
time, by an announcement at the time and place of sale or by announcement at
the
time and place of such postponed or adjourned sale, without being required
to
give a new notice of sale.
(f) All
cash proceeds received by the Secured Party in respect of any sale of,
collection from, or other realization upon all or any part of the Trademarks
and
Licenses of EV may, in the discretion of the Secured Party, be held by the
Secured Party as collateral for, and/or then or at any time thereafter applied
(after payment of any amounts payable to the Secured Party as reimbursement
for
costs and expenses, including, without limitation, reasonable attorneys’ fees
incurred by it in connection with the sale of the Trademarks and/or Licenses),
in whole or in part, by the Secured Party to the payment of all the
Obligations. Any surplus of such cash or cash proceeds held by the
Secured Party and remaining after payment in full of all amounts due under
the
Note Agreement, shall be paid over to EV, subject to the rights of any holder
of
a subordinate lien on the Trademarks and Licenses of which the Secured Party
has
actual notice.
5.2 Waiver
by EV. Except as otherwise provided for in this Agreement and/or
the Note Agreement, and to the extent permitted under applicable law, EV waives
(i) all rights to notice and a hearing prior to the Secured Party’s taking
possession or control of, or to the Secured Party’s replevy, attachment or levy
upon, any of the Trademarks and/or Licenses or any bond or security that might
be required by any court prior to allowing the Secured Party to exercise any
of
the Secured Party’s taking possession or control of, or to the Secured Party’s
exercise of any of the Secured Party’s remedies hereunder, and (ii) the benefit
of all valuation, appraisal and exemption laws.
5.3 Cumulative
Remedies. All of the Secured Party’s rights and remedies with
respect to the Trademarks and Licenses, whether established hereby or by the
Note Agreement, any other agreements by law, shall be cumulative and may be
exercised singularly or concurrently.
6. Miscellaneous
6.1 Waivers. No
course of detailing between EV and the Secured Party, nor any failure to
exercise, nor any delay in exercising, on the part of the Secured Party, any
right, power or privilege under this Agreement or the Note Agreement, shall
operate as a waiver thereof; nor shall any single or partial exercise of any
right, power or privilege hereunder or thereunder preclude any other or future
exercise thereof or the exercise of any other right, power or
privilege.
6.2 Severability. The
provisions of this Agreement are severable, and if any clause or provision
shall
be held invalid and unenforceable, in whole or in part, in any jurisdiction,
then such invalidity or unenforceability shall affect only such clause or
provision or part thereof in such jurisdiction, and shall not, in any manner,
affect such clause or provision in any other jurisdiction, or any other clause
or provision of this Agreement in any jurisdiction.
6.3 Modification. This
Agreement cannot be altered, amended or modified in any way, except by a writing
signed by the parties hereto.
6.4 Binding
Effect; Benefits. This Agreement shall be binding upon EV and its
successors and assigns and shall inure to the benefit of the Secured Party
and
its respective successors and assigns.
6.5 Notices. All
notices and other communications hereunder shall be made at the address, in
the
manner and with the effect provided, in the Note Agreement.
6.6 Headings. The
Section titles and headings in this Agreement are and shall be without
substantive meaning or context of any kind whatsoever and are for conveniences
of reference only.
6.7 Execution
in Counterparts. This Agreement may be executed in one
or more counterparts, each of which shall be deemed an original and all of
which, when taken together, shall constitute one and the same
instrument.
6.8 Governing
Law; Jurisdiction. THIS AGREEMENT AND THE LEGAL REGULATIONS
BETWEEN THE PARTIES HERETO SHALL BE GOVERNED BY AND CONSTRUED AND ENFORCED
IN
ACCORDANCE WITH THE LAWS OF THE STATE OF NEW YORK, WITHOUT GIVING EFFECT TO
THE
PRINCIPLES OF CONFLICTS OF LAWS THEREOF. THE PARTIES HERETO CONSENT
THAT ANY LEGAL OR EQUITY PROCEEDING BROUGHT IN CONNECTION WITH OR ARISING OUT
OF
ANY MATTER RELATING TO THIS AGREEMENT, AS WELL AS ANY DOCUMENT OR INSTRUMENT
EXECUTED AND/OR TO BE EXECUTED IN CONNECTION WITH THE CONSUMMATION OF THE
TRANSACTION SET FORTH HEREIN, SHALL BE INSTITUTED ONLY IN A FEDERAL OR STATE
COURT OF NEW YORK; AND EACH OF THE PARTIES HERETO HEREBY IRREVOCABLY CONSENTS
TO
AND SUBMITS TO THE JURISDICTION OF THE COURTS OF THE STATE OF NEW YORK, AND
WAIVES ANY OBJECTION HE/SHE/IT MAY HAVE TO EITHER THE JURISDICTION OR
VENUE OF SUCH COURTS.
[BALANCE
OF THIS PAGE INTENTIONALLY
BLANK]
IN
WITNESS WHEREOF, EV
has caused this Agreement to be duly executed by its authorized officer on
the
day and year first above written.
EMERGING
VISION,
INC.
By:/s/Xxxxxxxxxxx
X.
Xxxxx
Xxxxxxxxxxx
X. Xxxxx, CEO
SECURED
PARTY:
MANUFACTURERS
AND TRADERS TRUST
COMPANY
|
|
By:/s/Xxxxx
Xxxxxxxxxxx
|
Xxxxx
Xxxxxxxxxxx
Vice-President
SCHEDULE
A
TO
TRADEMARK AGREEMENT
NAME: APPLICATION
NO.: REGISTRATION
NO./DATE:
BEYOND
20/20 78785771 PENDING
EASYWEAR 78177566 2846666
– 5/25/2004
OPTI-CASH 77141609 PENDING
OPTIMUM
EYECARE 78967880 PENDING
OWL
DESIGN 23631
(CALIF.) 23631
– 7/2/1985
SAFESITE 75131029 2251660
– 6/8/1999
SEE
WHAT
YOU’RE
MISSING 78649037 3188848
– 12/26/2006
SITE
FOR
SORE
EYES 76617813 PENDING
STERLING
55 78410553 2948017
– 5/10/2005
STERLING
55 &
DESIGN 76591470 2963803
– 6/28/2005
STERLING
OPTICAL 72360420 0948511
– 12/12/1972
STERLING
OPTICAL
EXPRESS 78177561 PENDING
SURE
SIGHT 78649094 3203489
– 1/30/2007
SURE
SIGHT
(STYLIZED) 78649138 3205127
– 2/6/2007
THE
VISION
DOCTOR 78967874 PENDING
VISION
FOR
LIFE 78240242 3012864
– 11/8/2005
