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Exhibit 10.7
TRADEMARK LICENSE AGREEMENT
THIS AGREEMENT is made and effective as of this 28th day of March,
2000, by and between Cabot Corporation, a corporation organized and existing
under the laws of the State of Delaware and having its corporate offices at 00
Xxxxx Xxxxxx, Xxxxxx, Xxxxxxxxxxxxx 00000 (hereinafter, "CABOT") and Cabot
Microelectronics Corporation, a corporation organized and existing under the
laws of the State of Delaware and having its corporate offices at 000 X. Xxxxxxx
Xxxxx, Xxxxxx 00000 (hereinafter, "CMC").
WHEREAS, CABOT is the owner, both at common law and through
registrations and applications for registration therefor, of certain trademarks,
service marks, trade names and associated goodwill (hereinafter, the "LICENSED
TRADEMARK(s)"), as set forth on Schedule A attached hereto, and is engaged in
the business of manufacturing, distributing and selling worldwide certain
products including, but not limited to, the representative list of products also
set forth on Schedule A (hereinafter "CABOT PRODUCT(s)").
WHEREAS, as a result of a mutually agreed to separation, CMC is the
successor in interest to CABOT's worldwide microelectronics materials and
polishing consumables business and is engaged in manufacturing, distributing and
selling throughout the world certain related products ("CMC PRODUCT(s)"), as
also set forth on Schedule A attached hereto.
WHEREAS, CMC desires to use and continue to use the LICENSED
TRADEMARK(s) on or in connection with the CMC PRODUCT(s) and Cabot is willing to
grant to CMC the right to use the LICENSED TRADEMARK(s) on or in connection with
the CMC PRODUCT(s), such use subject to the terms and conditions of this
Agreement.
NOW THEREFORE, in consideration of the mutual promises and covenants
set forth herein, the parties, intending to be legally bound, hereto agree as
follows:
ARTICLE 1 - GRANT OF LICENSE
1.1 CABOT hereby grants to CMC, and CMC hereby accepts, a non-exclusive,
worldwide, royalty-free license to use the LICENSED TRADEMARK(s) solely on or in
connection with the manufacture, use, sale, offer for sale, distribution or
other disposition of the CMC PRODUCT(s), subject to the limitations set forth in
this Agreement.
1.2 The grant of license in Section 1.1 above includes the right by CMC to grant
sublicenses within the scope of such license to CMC's wholly-owned subsidiaries,
but only for so long as each remains a wholly-owned subsidiary.
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1.3 The license granted herein includes the right to use the designation "CABOT"
as a trade name, individually or in combination with other terms, subject to all
the provisions hereof relating to the LICENSED TRADEMARK(s).
1.4 Except as provided in this Article, all licenses granted herein shall be
nontransferable and nonassignable without the prior written consent of CABOT.
ARTICLE 2 - OWNERSHIP AND USE OF THE LICENSED TRADEMARKS
2.1 CMC acknowledges that CABOT owns the LICENSED TRADEMARK(s) and all rights
therein and that nothing in this Agreement shall give CMC any right, title or
interest in or to the LICENSED TRADEMARK(s). CMC further acknowledges and agrees
that all use of the LICENSED TRADEMARK(s) by CMC shall inure to the benefit of
CABOT.
2.2 CMC agrees that it will do nothing inconsistent with CABOT's ownership of
the LICENSED TRADEMARK(s) and shall not claim adversely to CABOT, or assist any
third party in attempting to claim adversely to CABOT, with regards to such
ownership. CMC agrees that it will not challenge the title of CABOT to the
LICENSED TRADEMARK(s), oppose any registration thereof, or challenge the
validity of this Agreement or the licenses granted herein. Furthermore, CMC will
not register, nor attempt to register, any trade name or trademark which, in
whole or in part, incorporates or is confusingly similar to the LICENSED
TRADEMARK(s).
2.3 Notwithstanding the license granted herein, CMC agrees not to use, display
or adopt any style, design, color, font, form or logo similar to any past or
then present style, design, color, form or logo of CABOT including, but not
limited to, the styles illustrated on Schedule B.
2.4 Without the prior written approval of CABOT, CMC is not authorized to use
the LICENSED TRADEMARK(s) in connection with any business activity unrelated to
the CMC's microelectronics materials and polishing consumables business, as
defined by the CMC PRODUCT(s).
2.5 Notwithstanding the license granted herein and any of the provisions hereof,
no rights nor licenses are granted to CMC with respect to any other trademark,
service xxxx, and/or trade name not listed on Schedule A hereto.
2.6 CMC agrees to assist CABOT in recording this Agreement with appropriate
government authorities where such recording is required by law or regulation or
where such recording is permitted or desired by CABOT.
2.7 All costs associated with recording this Agreement, the license granted
herein and registering, maintaining, or renewing LICENSED TRADEMARK(S)
exclusively used by CMC shall be borne by CMC. All costs associated with
registering, maintaining or renewing any LICENSED TRADEMARK(S) also used by
CABOT shall be borne by CABOT.
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ARTICLE 3 - QUALITY PROVISIONS
3.1 CMC agrees that the nature and quality of all CMC PRODUCT(s) sampled, sold,
or otherwise disposed of and covered by the LICENSED TRADEMARK(s) shall conform
to the standards set by and under the control of CABOT (hereinafter, "QUALITY
STANDARD"). Such QUALITY STANDARD shall be reasonable, shall be no greater than
the quality standards imposed by CMC's customers, and shall be at least equal in
quality to the CMC PRODUCT(s) sold by CMC prior to the separation.
3.2 CMC shall, upon CABOT's reasonable request, supply samples of CMC PRODUCT(s)
to CABOT. It shall not be necessary for CABOT to provide constant supervision of
CMC's manufacture of the CMC PRODUCT(s). Alternatively, CABOT may request CMC to
assure that the CMC PRODUCT(s) conform to the QUALITY STANDARD and, to this end,
shall permit reasonable inspection during business hours by an authorized
representative of CABOT of CMC's facilities to inspect the CMC's operations,
methods of manufacture, materials used, storage and packing areas, and the like,
associated with the manufacture of the CMC PRODUCT(s). Any inspections conducted
by CABOT to ensure that the QUALITY STANDARD provided herein shall be at the
expense of CABOT.
3.3 CMC shall deliver to CABOT, upon CABOT's request and without charge to
CABOT, representative samples of labels, containers, advertisements, catalogs,
letterhead, and the like, containing the LICENSED TRADEMARK(s) to enable CABOT
to ensure that the LICENSED TRADEMARKS(s) are properly used.
3.4 CMC shall comply with all applicable laws and regulations, obtain all
appropriate governmental or regulatory approvals pertaining to the sale,
distribution and/or advertising of the CMC PRODUCT(s) and covered by the
LICENSED TRADEMARK(s).
3.5 Any CMC PRODUCT(s) intended to be marketed under the LICENSED TRADEMARK(s)
which fails to attain the QUALITY STANDARD shall, at the expense of CMC, be
withdrawn from production and corrected or properly destroyed.
3.6 CABOT reserves the right to impose on CMC, as necessary, other
specifications or requirements not provided for under this Article to maintain
control over the CMC PRODUCT(s) to ensure the requisite QUALITY STANDARD.
ARTICLE 4 - DURATION OF LICENSE AND TERMINATION
4.1 This Agreement and the license granted herein shall be effective as of the
effective date of this Agreement, and shall remain in effect until terminated in
accordance with this Article 4.
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4.2 Should CMC ever discontinue the use of any LICENSED TRADEMARK(s) with the
intent not to resume such use, CMC shall promptly notify CABOT of such action.
As to any LICENSED TRADEMARK(s) with respect to which use is or has been
discontinued without the intent to resume by CMC, CABOT may terminate the
license with respect to such LICENSED TRADEMARK(s) upon three (3) month notice
to CMC. CMC's intent not to resume use shall be established if any LICENSED
TRADEMARK(s) is not used by CMC for a period of at least twelve (12) months.
4.3 CABOT shall have the right to terminate the license granted herein with
respect to any LICENSED TRADEMARK(s) upon two (2) months prior written notice to
CMC in the event that CMC breaches any provision of this Agreement, including
but not limited to failure by CMC to comply with the QUALITY STANDARD
established under Article 3, if such breach shall be continuing at the end of
such two (2) month period.
4.4 CABOT shall have the right to terminate immediately this Agreement, or any
or all licenses granted herein, upon written notice to CMC in the event of the
winding-up, sale, insolvency, consolidation or merger where CMC or one of its
wholly-owned subsidiaries is not the survivor, or any sequestration by
governmental authority of CMC.
4.5 Upon the termination of this Agreement with respect to the LICENSED
TRADEMARK(s), or the termination of all licenses under this Agreement, CMC
agrees to immediately discontinue all use of such LICENSED TRADEMARK(s) and/or
any similar trade name which contain "CABOT" as a part thereof, as the case may
be. In this connection, CMC agrees:
(a) that it will immediately take all steps to refrain, as promptly as
possible, from using the LICENSED TRADEMARK(s) as part of CMC's
company name, and shall refrain from using the LICENSED
TRADEMARK(s) in advertising, commercial registers, directories,
internet and company web-sites, telephone listings, and all other
similar listings.
(b) to use its best efforts and due diligence to obtain whatever
approvals are necessary, either governmental or otherwise, to
change its company name to exclude the LICENSED TRADEMARK(s)
therefrom, such change to be effected within three(3) months after
the termination of this Agreement.
ARTICLE 5 - PROTECTION
5.1 At the request of CMC, CABOT shall apply to register any unregistered
LICENSED TRADEMARK(s) in any country in the name of CABOT for the CMC PRODUCT(s)
provided herein, shall use its best efforts to obtain registrations thereof,
shall maintain such registrations in full force and effect, and shall apply to
register CMC as a registered user of the LICENSED TRADEMARK(s) in countries
which require such registration. CMC shall cooperate with CABOT to obtain and
maintain said registrations. The cost of obtaining and
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maintaining any unregistered LICENSED TRADEMARK(s) exclusively used by CMC shall
be borne by CMC. The cost of obtaining and maintaining any unregistered LICENSED
TRADEMARK(s) also used by CABOT shall be borne by CABOT. If CMC notifies CABOT
that it is no longer interested in a trademark filed by CABOT under the
provisions of this paragraph, CABOT shall be free to discontinue prosecution
and/or maintenance of any application or registration for said LICENSED
TRADEMARK(s), and CMC shall have no obligation for any expense with respect
thereto incurred after the notice from CMC to CABOT.
5.2 In the event that registration is refused for any presently pending or
subsequently filed application for registration of the LICENSED TRADEMARK(s),
CABOT shall have the right to discontinue the prosecution thereof. Before
discontinuing any such prosecution, CABOT shall give CMC one (1) months' notice
and permit CMC, at CMC's expense, to take over prosecution thereof on CABOT's
behalf.
5.3 If any opposition, cancellation, or similar proceeding is initiated by any
third party with respect to the LICENSED TRADEMARK(s) or applications to
register any LICENSED TRADEMARK(s), CABOT shall notify CMC of such proceeding,
and CMC shall have one (1) month to notify CABOT if CMC wants such proceedings
to be contested. If CMC informs CABOT that CMC wants to contest such proceeding,
CABOT will defend such LICENSED TRADEMARK(s) in the proceeding or, at the option
of CABOT, permit CMC to take over the defense of such proceeding on behalf of
CABOT. CMC shall bear the expenses of such proceeding for the LICENSED
TRADEMARK(s). If CMC does not notify CABOT that CMC wants such proceeding to be
contested, CABOT shall have the right to proceed as it chooses with regard to
such proceeding and such LICENSED TRADEMARK(s), including, without limitation,
abandoning or cancelling such LICENSED TRADEMARK(s) or any application or
registration therefor without any liability to CMC.
5.4 CMC shall promptly notify CABOT of any and all infringements, imitations,
simulations or other illegal use or misuse of the LICENSED TRADEMARK(s) which
come to CMC's attention. As the sole owner of the LICENSED TRADEMARK(s), CABOT
shall determine whether to take any action to prevent the infringement,
imitation, simulation or other illegal use or misuse of the LICENSED
TRADEMARK(s). If CABOT elects not to take such action, CMC shall have the right
to take such action at CMC's expense. In this event, CABOT shall, at CMC's
expense, cooperate in such action with CMC including, without limitation,
joining as a party. Any money recovered by way of damages or otherwise with
respect to such action shall be kept by the party which bore the costs of such
action; or, in any case where the parties have shared the costs, such money
shall be shared in proportion to the costs borne by each party.
5.5 CMC shall render CABOT all reasonable assistance in connection with any
matter pertaining to the protection, enforcement or infringement of LICENSED
TRADEMARK(s) used by CMC, whether in the courts, administrative or
quasi-judicial agencies, or otherwise.
ARTICLE 6 - NEW TRADEMARKS
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6.1 Should CMC desire to develop new trademarks using the prefix "CABOT" on the
CMC PRODUCT(s), it must first consult with and obtain the written approval of
CABOT, which approval will not be unreasonably withheld. Such newly developed
trademarks will be registered in the name of CABOT, and will be deemed to be
LICENSED TRADEMARK(s) licensed to CMC hereunder and will be subject to all of
the terms and conditions of this Agreement. Such approval will not be contingent
upon the payment of any fee or royalties to CABOT, however the cost of obtaining
and maintaining such new trademarks shall be borne solely by CMC.
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ARTICLE 7 - INDEMNIFICATION
7.1 CMC agrees to indemnify and hold harmless CABOT and its directors, officers
and employees from any and all claims for damage or injury to persons or
property or for loss of life or limb whereby CABOT has been found liable to any
third party under any product liability, tort liability or similar action
arising out of or in connection with the use by CMC of the LICENSED
TRADEMARK(s).
7.2 For purposes of indemnification, CMC shall purchase an insurance policy
covering at a minimum product and tort liability with a face value of ten
million dollars ($10,000,000), such policy naming CABOT as co-insured. CMC shall
pay any and all premiums of such policy on a timely basis, receipt of which
shall be furnished to CABOT.
ARTICLE 8 - MISCELLANEOUS
8.1 Entire Agreement. This Agreement contains the entire agreement of the
parties regarding the subject matter hereof and supersedes all prior agreements,
understandings and negotiations, whether written or oral, regarding the same.
This Agreement may not be changed, modified, amended or supplemented except by a
written instrument signed by both parties. Furthermore, it is the intention of
the parties that this Agreement be controlling over additional, different or
ambiguous terms of any separation agreement, asset transfer agreement or any
similar document, even if accepted in writing by both parties.
8.2 Assignability. This Agreement may not be assigned nor transferred by CMC
without the prior consent of CABOT.
8.3 Extension of Rights. All rights and obligations incurred hereunder by CABOT
or CMC shall extend to and be binding upon their respective domestic and
international divisions, subsidiaries, other controlled companies, affiliates
and related entities.
8.4 Waiver. The waiver by CABOT of a breach of any provision contained herein
shall be in writing and shall no way be construed as a waiver of any subsequent
breach of such provision or the waiver of the provision itself.
8.5 Injunctive Relief. CMC acknowledges that monetary relief would not be an
adequate remedy for a breach or threatened breach by CMC of the provisions of
this Agreement and that CABOT shall be entitled to the enforcement of this
Agreement by injunction, specific performance or other equitable relief, without
prejudice to any other rights and remedies that CABOT may have.
8.6 Disclaimer of Agency, Partnership and Joint Venture. Nothing herein shall be
deemed to create an agency, distributorship, joint venture or partnership
relationship between the parties hereto.
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8.7 Severability. If any provision of this Agreement shall be held illegal or
unenforceable, that provision shall be limited or eliminated to the minimum
extent necessary so that this Agreement shall otherwise remain in full force and
effect and enforceable.
8.8 Notice and Reports. All notices, consents or approvals required by this
Agreement shall be in writing sent by certified, registered, or Express Mail
service, postage prepaid or by facsimile (confirmed by such certified,
registered, Express Mail or other overnight courier service) to the parties at
the following addresses or such other addresses as may be designated in writing
by the respective parties:
if to CABOT, to:
Cabot Corporation
00 Xxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
Attn: General Counsel
with copies to:
Cabot Corporation
Law Department
000 Xxxxxxx Xxxx
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
Attn: Chief Intellectual Property Counsel
if to CMC to:
Cabot Microelectronics Materials Corporation
000 X. Xxxxxxx Xxxxx
Xxxxxx, Xxxxxxxx 00000
Attn: General Counsel
with copy to:
Cabot Microelectronics Materials Corporation
000 X. Xxxxxxx Xxxxx
Xxxxxx, Xxxxxxxx 00000
Attn: President
Notices shall be deemed effective on the date of mailing.
8.9 Jurisdiction. This Agreement shall be binding in every jurisdiction
worldwide.
8.10 Governing Law. This Agreement shall be governed by, and construed in
accordance with, the laws of the Commonwealth of Massachusetts, without regard
to conflict of laws principles.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their duly authorized officers or agents as of the day and year
first above written.
CABOT CORPORATION CABOT MICROELECTRONICS
CORPORATION
By: /s/ Xxxxxx X. Xxxxxx By: /s/ Xxxxxxx Xxxxxxx
Name: Xxxxxx X. Xxxxxx Name: Xxxxxxx Xxxxxxx
Title: Chairman and CEO Title: President and CEO
Date: March 28, 2000 Date: March 28, 2000
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SCHEDULE A
CABOT TRADEMARKS
CABOT with or without a logo or design,
block letters or stylized, as such
may be used as a trademark, service
xxxx or trade name, individually or
in combination with other names or
marks of CABOT.
CABOT & DEVICE with or without a logo or design,
block letters or stylized, as such
may be used as a trademark, service
xxxx or trade name, individually or
in combination with other names or
marks of CABOT, as depicted in U.S.
Reg. Nos. 613,329, 615,516, 615,689,
1,619,285, 1,827,952, and 1,833,580.
CAB AND CABO formatives and derivatives, with or
without a logo or design, block
letters or stylized, as such may be
used in combination with one or more
prefixes, suffixes or combinations
thereof.
CABOT
MICROELECTRONICS with or without a logo or design,
block letters or stylized, as such
may be used as a trademark, service
xxxx or trade name, individually or
in combination with other names or
marks of CABOT.
CAB-O-SPERSE with or without a logo or design,
block letters or stylized, as such
may be used as a trademark, service
xxxx or trade name, individually or
in combination with other names or
marks of CABOT.
CABOT PRODUCTS
Including, but not limited to, carbon black; metal, metalloid oxides
and alloys thereof such as silica, alumina, tantalum, niobium, cesium,
rubidium, tellurium, germanium and the like; cesium formate and related
drilling fluids; barium titanate; masterbatches and granulated
concentrates for use in such masterbatches; plastics; liquified natural
gas; coal; and any articles, applications, or dispersions formed from
any of the above, whether in a finished or unfinished state for use in
numerous end product applications.
CMC PRODUCTS
CMC PRODUCTS means polishing consumables for use in the semiconductor,
electronic, rigid disk and magnetic head industries, such as polishing
slurries, polishing pads, cleaning compositions, precursor
compositions, and related consumables.
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SCHEDULE B
[CABOT]
[Cabot logo, CABOT]
[Cabot logo, CABOT, creating what matters]
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