TRADENAME LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT (the
"Agreement") dated as of August 20, 1998, is entered by
and between The Xxxxxx Company (the "Licensor"), a
California corporation, and Gottschalks Inc. (the
"Licensee"), a Delaware corporation.
WHEREAS, Licensor and Licensee have entered
into an Asset Purchase Agreement dated as of July 21,
1998 (the "Sale Agreement"), whereby Licensee agreed to
purchase substantially all of the Assets of Licensor;
and
WHEREAS, Licensor is the owner of certain
tradenames, trademarks and servicemarks used by
Licensor that were not sold to Licensee as part of the
Sale Agreement; and
WHEREAS, Licensee desires to use said
tradenames, trademarks and servicemarks for an
unlimited period of time following the closing of the
transactions contemplated by the Sale Agreement (the
"Closing");
WHEREAS, the parties desire to set forth
their agreement as to the use of said tradenames,
trademarks and servicemarks by Licensor and Licensee
following the Closing.
NOW, THEREFORE, in consideration of the
foregoing and of the mutual promises herein contained,
Licensor and Licensee agree as follows:
1. Definition
The term "Marks" when used herein means the
tradenames, trademarks and servicemarks listed on
Schedule 1 hereto, whether or not such tradenames,
trademarks or servicemarks have been registered by the
Licensor. All capitalized terms not defined herein
shall have the meanings specified in the Sale
Agreement.
2. Grant of License
(a) Licensor hereby grants to Licensee a
royalty-free, exclusive license to use the Marks in
connection with the operation of department stores,
retail or specialty stores or in any related activity
(including in connection with the sale of merchandise
via the Internet) (collectively, the "Field") in the
United States of America for a period of six months
after the Closing Date (the "Transitional License");
except that Licensee shall be entitled to use the Marks
beyond such six-month period in connection with the
following: (i) Licensee may continue to use existing
supplies, including but not limited to, shopping bags
with the Marks, and (ii) Licensee may allow customers
of Licensor to maintain existing customer credit cards
using the Marks rather than replacing such credit cards
with credit cards bearing Licensee's name.
(b) Licensor hereby further grants to Licensee
a perpetual, royalty-free, exclusive license to use the
servicemark "Xxxxxx", but only if used together with
"Gottschalks", in connection with the Field (the
"Perpetual License"). Such Exclusive License is
exclusive to Licensee.
(c) Licensor agrees that it shall not use or
grant to any third party the right to use the Marks or
any derivative thereof in the Field.
(d) Licensee shall not sublicense its rights
hereunder except to any of its wholly-owned
subsidiaries.
3. Representations
Licensor has complete rights to and ownership of
the Marks for use in the Field as set forth in this
Agreement and does not use the Marks in the Field by
consent of any other person and is not required to and
does not make payments to others with respect thereto.
Licensor has not received any notice to the effect (or
is otherwise aware) that its use of the Marks in the
Field conflicts with or infringes (or allegedly
conflicts with or infringes) the rights of any person.
4. Ownership
Licensee acknowledges that the Marks belong, subject to
the terms of this License Agreement, to Licensor.
5. Quality Maintenance
Licensor and Licensee each agree to supply each
other with specimens of Licensor's or Licensee's, as
applicable, use of the Marks upon request. Licensor
and Licensee shall advise each other of any new goods
to be sold or services to be rendered by Licensor or
Licensee, as applicable, using the Marks in order to
enable the other party to confirm that such use of the
Marks complies with the terms of this Agreement.
Licensor and Licensee each warrant and agree that it
shall comply with all applicable laws and regulations
and obtain all appropriate government approvals
pertaining to the sale, distribution and advertising of
goods and services covered by this Agreement.
6. Form of Use
Licensee and Licensor each agree that it will not
use the Marks in any way that would jeopardize, dilute,
degrade, demean, injure, or lessen the value of the
Marks, Licensor or Licensee and/or Licensor's or
Licensee's image nor will Licensor or Licensee allow
any third party to jeopardize, dilute, degrade, demean,
injure or lessen the value of the Marks.
7. Infringement Proceedings
Licensor and Licensee each agree to notify the
other in writing of any unauthorized use of the Marks
by others as soon as it comes to such party's
attention. Licensor agrees, at Licensee's request, to
pursue infringement or other unfair competition
proceedings involving the Marks in the Field (where
Licensee believes that such use is in violation of
Licensee's rights to the Marks as provided herein) at
Licensee's cost with counsel satisfactory to Licensee
but Licensee shall have the right to conduct and
control the proceedings, compromise or settlement if
Licensee chooses to do so. Licensee shall be entitled
to all damages recovered in the event that such use is
in violation of Licensee's rights to the Marks in the
Field as provided herein.
8. Termination for Cause
Licensor shall have the right to terminate this
Agreement in the event of (i) any affirmative act of
insolvency by Licensee, (ii) the appointment of any
receiver or trustee to take possession of the
properties of Licensee or upon the winding up of
Licensee or (iii) in the event of a material breach of
this Agreement by Licensee, if such breach remains
uncured after ten (10) days' written notice to
Licensee.
9. Effect of Termination
Upon termination of this Agreement, Licensee
agrees to discontinue all use of the Marks as promptly
as reasonably practicable, and to cooperate with
Licensor or its appointed agent to apply to the
appropriate authorities to cancel recording of this
Agreement from all government records.
10. Governing Law
It is agreed that this Agreement shall be
governed by the Laws of the State of California.
11. Relationship of the Parties
This Agreement does not create a partnership or
joint venture between the parties.
12. Assignment
The license granted to Licensee hereunder shall
not be assigned by either party, except that Licensee
may assign its rights hereunder to any wholly-owned
Subsidiary of Licensee, and Licensor may assign its
rights hereunder to any Affiliate of Licensor.
13. No Waivers
Failure by either party to enforce any rights
under this Agreement shall not be construed as a waiver
of such rights nor shall a waiver or default in one or
more instances be construed as constituting a
continuing waiver or as a waiver in other instances.
14. Specific Performance
Licensor and Licensee each acknowledge that, in
view of the uniqueness of the Marks and the license
thereto being granted by this Agreement, neither
Licensor nor Licensee would have an adequate remedy at
law in the event that this Agreement has not been
performed in accordance with its terms, and therefore
agrees that each party shall be entitled to specific
enforcement of the terms hereof in addition to any
other remedy to which each may be entitled at law or in
equity.
15. Attorney's Fees
In the event of any action, complaint, suit
or other proceeding by any party arising under or out
of, in connection with or in respect of, this Agreement
and the license of the Marks contemplated hereby, the
prevailing party shall be entitled to reasonable
attorney's fees, costs and expenses incurred in such
action, complaint, suit or other proceeding.
Attorney's fees incurred in enforcing any judgment in
respect of this Agreement are recoverable as a separate
item. The parties intend that the preceding sentences
be severable from the other provisions of this
Agreement, survive any judgment and, to the maximum
extent by law, not be deemed merged into such judgment.
16. Consent to Jurisdiction
Each party hereby irrevocably submits to
and accepts for itself and its properties, generally
and unconditionally, the exclusive jurisdiction of and
service of process pursuant to the laws of the State of
California and the rules of its courts, waives any
defense of forum nonconveniens and agrees to be bound
by any judgement rendered thereby arising under or out
of in respect of or in connection with this Agreement
or any related document or obligation. Each party
further irrevocably agrees that service of process in
any such proceeding in any such court may be made by
registered or certified mail, return receipt requested,
to Licensor or Licensee.
17. Agreement to Arbitrate
The provisions of Article 13 of the Sale
Agreement are incorporated by reference herein as if
set forth in full herein.
18. Titles
Articles and paragraph titles used in this
Agreement are for convenience only and shall not be
deemed to affect the meaning or construction of any of
the terms, provisions, covenants or conditions of this
Agreement.
19. Entire Agreement
This Agreement contains all of the terms
and conditions agreed upon by the parties hereto with
reference to the subject matter hereof. No other
agreements, oral or otherwise, pertaining to the
subject matter hereof shall be deemed to exist or to
bind any of the parties hereto and all such prior
agreements and understandings are superseded hereby.
No officer or employee or agent of Licensor or Licensee
has any authority to make any representation or promise
not contained in this Agreement.
IN WITNESS WHEREOF, the parties hereto have
caused this Agreement to be executed as of the day and
year first above written.
THE XXXXXX COMPANY,
Licensor
/S/ XXXXXXXX DEL NOGAL
/S/ XXXXXX XXXXXXXX
GOTTSCHALKS INC.,
Licensee
/S/ XXXXX XXXXXXXXX
SCHEDULE 1
"Xxxxxx Stores"
"Xxxxxx"
