Exhibit 10.16
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement ("Agreement") is made effective this 30th
day of September, 2003, and is by and between Solartech, Inc., a Michigan
corporation having it principal place of business at 00000 Xxxxxxx Xxxxx Xxxxx
Xxxxx, Xxxxxxxx Xxxxxxxx, Xxxxxxxx 00000, ("Licensor") and PocketSpec
Technologies Inc., a Colorado corporation having it principal place of business
at 0000 Xxxx 0xx Xxxxxx, Xxxxxx, Xxxxxxxx 00000 ("Licensee").
RECITALS
WHEREAS, Licensor is engaged in design, development and sale of portable
hand held solar meters, each of the current solar meters can be viewed on
Licensor's web site xxx.xxxxxxxxxx.xxx . (the "Licensor Meters") Licensor is in
the practice of branding all of its meters with its distinctive xxxx
"Solarmeter(R)" (the "Licensed Xxxx").
WHEREAS, Licensee is in the business of, among other things, manufacturing
and sales of electronic color analyzer devices, including by way of example, a
tanning industry product line described as, a) an handheld color measurement
device that electronically generates a TanTone(TM) number. branded as
Bronz(check). In connection this tanning industry product, Licensee is in
development of software packages for marketing to the tanning industry. One of
the software applications contemplated by Licensee is the creation of solar
devices that work on the principals and with all or part of the technology
embodied in the Licensor Meters. Limited and exclusive rights to use the
technologies in the Licensor Meters was granted to Licensee by technology
transfer and product distribution agreement of even effective date herewith. In
that technology transfer and product distribution agreement, Licensee was also
granted certain distribution rights for Licensee to buy and resell the Licensor
Meters. In connection with all of Licensee's rights granted by Licensor,
Licensee seeks to have permission to use the Licensed Xxxx where deemed
appropriate by Licensee.
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WHEREAS, Licensor has agreed to grant a license to Licensee which will
authorize the use of the Licensed Xxxx as deemed appropriate by Licensee.
WHEREAS, the parties have elected to set down in writing their mutual
understandings, covenants and agreements.
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AGREEMENT
In consideration of the mutual covenants contained herein and for other
good and`valuable consideration, including the technology transfer agreement and
the distribution agreement between the parties, the sufficiency of which is
hereby acknowledged, the parties agree as follows:
1. LICENSE GRANT.
1.1. Subject to all the terms and conditions hereof, Licensor grants to
Licensee a non-exclusive right to use the Licensed Xxxx in the United
State of America and Worldwide, solely in connection with the
manufacturing, marketing and sales of tanning industry products and in
the promotion of the Licensor Meters, and the rights to sublicense
such uses. Licensee shall use the Licensed Xxxx only in the form and
manner and with appropriate legends and markings as prescribed from
time to time by Licensor.
2. QUALITY CONTROL.
2.1. Licensee agrees that all services promoted and/or provided under the
Licensed Xxxx, shall be of good quality and with respect to the
tanning industry products, Licensee agrees that no product or software
bearing the Licensed Xxxx shall in any way be used to encourage or
endorse the exceeding of manufacture's suggested maximum operating
time for tanning beds. Use of the Licensed Xxxx xxx be used in
Licensee's web sites, its literature and other written documentation
and promotional materials.
3. RIGHTS OF THE PARTIES.
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3.1. Licensee agrees that all use of the Licensed Xxxx by Licensee
described herein shall inure to the benefit of Licensee, and its
assigns, and Licensor shall retain all current rights to use the
Licensed Xxxx in its Licensor Meters, its web site and any other
materials in connection therewith. Licensee acknowledges that Licensor
is the sole owner of all right, title and interest in and to the
Licensed Xxxx. Licensor shall be responsible for taking all actions to
maintain the current registration of the Licensed Xxxx in the U.S.
Patent and Trademark Office at Serial #78178830.
4. ENFORCEMENT AND PROTECTION OF LICENSED RIGHTS.
4.1. Licensor shall have the sole and exclusive right, with Licensee's
reasonable cooperation, to pursue protection of the Licensed Xxxx and
to enforce Licensor's rights in the Licensed Xxxx against third party
infringers. The expenses of any such enforcement, including legal
proceedings relating thereto, shall by paid by Licensor and any and
all recoveries from a lawsuit or settlement shall go solely to
Licensor. Licensee agrees to notify Licensor promptly of any suspected
infringement of the Licensed Xxxx which may come to its attention and
further agrees to assist Licensor, at Licensor's reasonable request,
in any lawsuit or any other dispute involving the Licensed Xxxx. In
the event Licensor fails to enforce its rights, Licensee may do so,
and in such case Licensor's rights to all recoveries from a lawsuit or
settlement shall go to Licensor.
5. TERM.
5.1. The term of this Agreement shall commence on the Effective Date and
Continue for a period of ten (10) years. This term shall automatically
be renewed for an additional ten (10) Years, unless by mutual
agreement, the parties elect not to renew the term by written
agreement.
6. RELATIONSHIP OF THE PARTIES.
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6.1. Licensor and Licensee agree that their relationship is that of owner
and non-exclusive licensee, respectively, of the Licensed Xxxx. This
Agreement does not establish any agency, joint venture, or partnership
relationship between the`parties. Licensee shall have no right or
authority to act for, or to bind the Licensor in any way, or to sign
the name of Licensor or to represent that Licensor is in any way
responsible or liable for the acts, written or oral statements, or
omissions of Licensee.
7. LIMITATIONS OF LIABILITY AND INDEMNIFICATION.
7.1. LICENSOR ASSUMES NO LIABILITY TO LICENSEE OR THIRD PARTIES WITH
RESPECT TO ANY SERVICES OFFERED OR GOODS MANUFACTURED AND SOLD BY
LICENSEE IN CONNECTION ITH ANY RIGHTS GRANTED UNDER THIS AGREEMENT.
7.2. Licensee agrees to indemnify and hold harmless Licensor, its officers,
directors, agents, employees, subsidiaries, and attorneys against all
claims, demands, liabilities, suits, actions, or losses, including all
reasonable expenses and attorneys' fees, incurred by or imposed on
Licensor, its agents or employees, through claims, demands, suits or
actions of third parties involving any services provided or goods
manufactured, marketed and sold by Licensee in connection with use of
the Licensed Xxxx.
8. GENERAL PROVISIONS.
8.1. Transferability. This Agreement may have significant value to the
products of Licensee, and in the event the business that sells those
products, may be sold to another, through merger, sublicense, or
otherwise. The Licensor understands this and any assignee of this
license must agree in writing to be bound by its terms and conditions,
and Licensee is not released from the responsibilities even if so
assigned, unless specifically agreed to in writing by Licensor.
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8.2. Entire Agreement. This Agreement sets forth the entire Agreement and
understanding of the parties hereto and supersedes all previous oral
and written representations or agreements relating to the subject
matter hereof.
8.3. Modifications. No modifications, amendments or supplements to this
Agreement shall be effective for any purpose unless agreed to in
writing signed by both parties.
8.4. Governing Law. This Agreement shall be governed and construed in
accordance with the laws of the State of Michigan. The parties further
agree that all lawsuits or other legal actions relating to or arising
from this Agreement shall be commenced and prosecuted only in courts
of competent jurisdiction located within the State of Michigan.
8.5. Severability/Non-waiver. Licensor and Licensee acknowledge that if any
provision of this Agreement violates or contravenes any law, such
provision shall be deemed severed and not a part hereof and the
remainder hereof shall be in full force and effect. The parties
further acknowledge that no delay or omission on the part of either
party in exercising any right under this Agreement shall operate as a
waiver of such right or any other right; that no waiver of any right
under this Agreement shall be binding unless it is in writing and
signed by a duly authorized representative of both Licensor and
Licensee; and that a waiver on one occasion shall not be construed as
a bar to or a waiver of any right on any future occasion.
8.6. Notices. Any required notices hereunder shall be given in writing by
certified mail or overnight express delivery service (such as FedEx)
at the address of each party at the above addresses, or to such other
address or as either party may substitute by written notice. Notice
shall be deemed served when delivered or, if delivery is not
accomplished by reason or some fault of the addressee, when tendered.
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8.7. Facsimile signatures. It is agreed that facsimile signatures shall be
binding in this Agreement.
IN WITNESS WHEREOF, each party hereto has had this Agreement executed by
there duly authorized representative.
Solartech, Inc., a Michigan corporation
By: /s/ Xxxxxx X. Xxxxxx
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Xxxxxx X. Xxxxxx, its President
PocketSpec Technologies Inc.
By: /s/ F. Xxxxxxx Xxxxxx
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F. Xxxxxxx Xxxxxx, its President
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