Exhibit 9(q)
LICENSE AGREEMENT
This Agreement is made as of and for this 1st day of December, 1995, by and
between COMPASS CAPITAL FUNDS, a Massachusetts business trust having an office
at 000 Xxxxxxxx Xxxxxxx, Xxxxx 000, Xxxxxxxxxx, Xxxxxxxx 00000 ("Licensor"), and
COMPASS CAPITAL GROUP, INC., a Delaware corporation having an office at 000 Xxxx
Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000 ("Licensee").
WHEREAS, Licensor is an open-end management investment company registered
under the Investment Company Act of 1940, as amended, and issues series of
shares, each of which represents interests in a portfolio of securities; and
WHEREAS, Licensee serves as a co-administrator for the Licensor pursuant to
a Co-Administration Agreement, dated December 1, 1995; and
WHEREAS, Licensor is the owner of the service marks listed in Schedule A to
this Agreement; and
WHEREAS, Licensee desires to use the marks listed in Schedule A to this
Agreement and any other marks that Licensor may develop using the term "COMPASS
CAPITAL" ("collectively referred to herein as the "Licensed Marks") in
connection with the services it provides to Licensor as a co-administrator,
including Licensee's product management, marketing and sales support activities
with the public on behalf of the Licensor (the "Services") and Licensor is
willing and able to grant Licensee the right to use the Licensed Marks to
identify the Services on the terms and conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the premises and mutual covenants
herein contained and intending to be legally bound hereby, the parties hereto
agree as follows:
1. Licensor grants, nunc pro tunc, Licensee and Licensee accepts a
---- --- ----
revocable, royalty-free, non-exclusive license to use and display the Licensed
Marks, which license will remain in effect as long as Licensee uses the Licensed
Marks in accordance with this Agreement.
2. Licensee acknowledges that the Licensed Marks and any associated
goodwill are the sole property of Licensor; that all use or display of the
Licensed Marks by Licensee will inure to Licensor's benefit; and that Licensee
shall not at any time acquire any rights in such Licensed Marks by virtue of any
use it may make of such Licensed Marks. Licensor accepts those benefits that
inure to it from Licensee's use of the Licensed Marks in lieu of payment of any
monies to it by Licensee under this Agreement. Licensor acknowledges that it
has received and will continue to receive good and valuable consideration from
Licensee during the term of this Agreement. Licensee shall use the Licensed
Marks solely in connection with rendering the Services for and on behalf of
Licensor.
3. Licensee agrees to hold harmless, indemnify and defend Licensor,
Licensor's affiliates, and all of their officers, directors, trustees,
employees, shareholders, agents, successors and assigns (collectively, the
"Indemnitees") from third party claims (including reasonable attorneys' fees)
that may be asserted against the Indemnitees due to or arising out of Licensee's
use or display of the Licensed Marks.
4. Licensee will not use or seek to register any xxxx that Licensor
reasonably believes to be confusingly similar to the Licensed Marks.
5. Licensee will cooperate fully with Licensor to procure or maintain any
federal or state registration for the Licensed Marks, including executing any
documents or supplying any specimens of Licensee's use of the Licensed Marks
that Licensor reasonably believes necessary for such procurement or maintenance.
Licensor, if it so desires, may commence or prosecute any trademark and/or
service xxxx infringement claims or suits in its own name or join Licensee or
its sublicensees as a party thereto. In addition, Licensee shall notify
Licensor in writing of any infringements or imitations by others of the Licensed
Marks which may come to Licensee's attention, and Licensor shall have the sole
right to determine whether or not any action shall be taken on account of any
such infringements or imitations. Licensee will not challenge or assist in the
challenging of the validity of or Licensor's rights in, to, or under the
Licensed Marks or any federal or state trademark or service xxxx registration or
application.
6. Licensee agrees to provide and maintain the quality of the Services
being rendered under the Licensed Marks commensurate with its present activities
and the business positions of the parties involved. Licensee also agrees to
make periodic reports to the Board of Trustees of the Licensor regarding the
Services. To control and monitor the quality of the Services, Licensor may
inspect, during regular business hours and upon reasonable prior notice, the
premises operated by Licensee for the development and distribution of the
services identified by the Licensed Marks.
If Licensor believes that the Services rendered by Licensee do not meet
the quality standards herein prescribed, Licensor shall with reasonable
promptness furnish Licensee with written notice specifying in detail in what
respects the services fail to meet such standards of quality and allow the
Licensee a reasonable period of time not exceeding sixty (60) days in which to
cure such quality problem.
7. This Licensing Agreement is terminable, on not less than sixty (60)
days' notice, by either party. Upon termination of this Agreement, Licensee
will immediately cease any and all use or display of the Licensed Marks and will
destroy or provide to Licensor any and all materials, documents, and forms
bearing the Licensed Marks within 10 days of termination. In addition, Licensee
shall promptly change its corporate name to one that is not confusingly similar
to that of Licensor. Upon and after the expiration or termination of this
Agreement, all rights granted to Licensee hereunder shall forthwith revert to
Licensor, which shall continue to be free to license others to use the Licensed
Marks.
2
8. Without Licensor's prior written consent, Licensee may not assign or
transfer this Agreement or the license granted by it.
9. Licensor hereby grants to Licensee the right to grant non-exclusive
sublicenses to third parties to utilize the Licensed Marks solely and in
connection with the sale, offering for sale and advertising of the Services.
Licensor hereby appoints Licensee as its agent for the purposes of exercising
control over the nature and quality of the services provided by each sublicensee
that utilizes the Licensed Marks. Licensee will take all necessary steps to
ensure that the services provided by each sublicensee under the Licensed Marks
meet or surpass the same standards set forth in section 6 of this Agreement and
that each sublicensee complies with the requirements of sections 4, 5 and 6 of
this Agreement as they relate to the use of the Licensed Marks. In addition,
Licensor also retains its right to exercise control over the nature, quality and
style of the services provided by each sublicensee utilizing the Licensed Marks.
Licensee agrees to advise Licensor of the full name and address of each
sublicensee within fifteen (15) days of the granting of the sublicense.
10. This Agreement is between independent parties and will not create a
partnership, joint venture, or agency of any kind. The rights and obligations
it establishes will be binding upon and for the benefit of the permitted
licensees, assignees, licensors, or assignors, or other successors of the
parties.
11. This Agreement may only be amended in a writing signed by both
parties. Any waiver of any provision in this Agreement will not be effective
unless made expressly in writing, executed in the name of the party to be
charged. The failure of a party to insist on performance of any of the terms,
covenants, or conditions of this Agreement will not constitute a waiver or
relinquishment of any rights granted by it or of the future performance of any
such term, covenant, or condition; rather, the obligations of the parties will
continue in full force and effect. This Agreement will be governed by the United
States Trademark Act of 1946, 15 U.S.C. (S)1051, et seq., and the laws of the
------
State of Delaware without giving effect to the principles of conflicts of law
thereof.
12. The names "Compass Capital Funds" and "Trustees of Compass Capital
Funds" refer respectively to the trust created and the Trustees, as trustees but
not individually or personally, acting from time to time under a Declaration of
Trust dated December 22, 1988 which is hereby referred to and a copy of which is
on file at the office of the State Secretary of the Commonwealth of
Massachusetts and at the principal office of the Licensor. The obligations of
"Compass Capital Funds" entered into in the name or on behalf thereof by any of
the Trustees, officers, representatives or agents are made not individually, but
in such capacities, and are not binding upon any of the Trustees, shareholders,
officers, representatives or agents of the Licensor personally, but bind only
the Trust Property (as defined in the Declaration of Trust), and all persons
dealing with any class of shares of the Licensor must look solely to the Trust
Property belonging to such class for the enforcement of any claims against the
Licensor
3
13. If any portion of this Agreement is found to be void, such a finding
will not affect the enforceability of the remaining portions of the Agreement.
14. All communications made under this Agreement ("Notices") will be in
writing and either delivered in person, by facsimile, by certified first class
mail, or by overnight courier, as follows:
If to Licensor, addressed to:
Compass Capital Funds
000 Xxxxxxxx Xxxxxxx
Xxxxxxxxxx, XX 00000
If to Licensee, addressed to:
Compass Capital Group, Inc.
000 Xxxx Xxxxxx
Xxx Xxxx, XX 00000
Attn: Xxxxx Xxxxxx, President
Notices will be deemed received at the time of personal or facsimile delivery
or, if sent by mail, five business days after the date mailed or, if sent by
overnight courier, one business day after such sending. Either party may change
its address under this Agreement by giving the other party written notice.
15. This Agreement constitutes the entire agreement between the parties
hereto with respect to the subject matter hereof. No agreement, representation,
warranty or covenant has been made by either party except as expressly set forth
herein and any oral statements or representations or prior written matter with
respect to the subject matter of the Agreement not contained herein shall have
no force or effect. Schedule A attached to this Agreement is hereby
incorporated herein and made a part of this Agreement.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first written above.
COMPASS CAPITAL FUNDS COMPASS CAPITAL GROUP, INC.
By: /s/Xxxxxx X. Xxxxx By: /s/Xxxxx X. Xxxxxx
---------------------------------- -------------------------------
Name: Xxxxxx X. Xxxxx Name: Xxxxx X. Xxxxxx
-------------------------------- -------------------------------
Title: Secretary Title: President
------------------------------- -------------------------
4
SCHEDULE A
----------
1. THE COMPASS CAPITAL GROUP
(Reg. No. 1,640,757 issued by the U.S. Patent and Trademark Office on
April 9, 1991)
2. COMPASS CAPITAL FUNDS
3. COMPASS FUNDS
5
