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EXHIBIT 10.41
LICENSE AGREEMENT
This Trademark License Agreement (the "Agreement" is made and entered
into as of April 30, 1997 (the "Effective Date") by and between Chemtrak
Incorporated, a Delaware corporation ("ChemTrak"), and Parent's Alert, Inc., a
Georgia Corporation ("Parent's Alert").
RECITALS
WHEREAS, Parent's Alert owns and has the right to exploit the trademark
"Parent's Alert", as reflected on Exhibit A hereto, and such additional marks
as the parties may agree from time to time (collectively, the "Licensed Marks")
in connection with the sale of home drug testing kits, which are described in
Exhibit B hereto (collectively, the "Products");
WHEREAS, Parent's Alert is the owner of a United States federal
registration for the xxxx "Parent's Alert";
WHEREAS, Parent's Alert desires to grant, and ChemTrak desires to
obtain, the right to market and sell the Products under the Licensed Marks in
the United States;
WHEREAS, concurrently with the effective date hereof, ChemTrak,
Parent's Alert and Sunny Cloud ("Cloud"), the president of Parent's Alert, are
entering into a Consulting Agreement (the "Consulting Agreement") whereby
Parent's Alert and Cloud will agree to perform certain marketing and promotional
services on behalf of the Products; and
AGREEMENT
NOW, THEREFORE, in consideration of the foregoing promises and the
mutual covenants and obligations contained herein and in the Consulting
Agreement, the parties agree as follows:
1. GRANT AND SCOPE OF LICENSES
1.1 GRANT OF LICENSE TO CHEMTRAK. Subject to the limitations set
forth below, Parent's Alert grants to ChemTrak an exclusive, royalty-bearing
license to use the Licensed Marks in connection with the promotion and sale of
the Products in [*].
1.2 SUBLICENSES. With the prior written consent of Parent's Alert,
which may be withheld in Parent Alert's sole discretion, ChemTrak may grant
sublicenses under such rights to third parties who agree in writing to be bound
by the terms of this Agreement, including but not limited to the quality control
provisions of Section 6.2.
1.3 RESTRICTIONS ON CHEMTRAK. ChemTrak shall not use the Licensed
Marks in connection with any other goods or in any other activities without
prior written consent of
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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Parent's Alert. ChemTrak agrees that, unless it obtains the prior written
consent of Parent's Alert, which Parent's Alert may withhold in its sole
discretion, it shall sell the Products only in connection with the use of the
Licensed Marks.
1.4 RESTRICTIONS ON PARENT'S ALERT. During the term hereof and
except as provided in Section 10.3, Parent's Alert will not use the Licensed
Marks for commercial purposes in the United States. Notwithstanding the
foregoing, Parent's Alert retains the right, for itself and its other licensees
to use the Licensed Marks to market and sell any products outside the United
States; provided, however, that in the event either Parent's Alert or ChemTrak
determines that a market for the Products exists in countries outside the United
States, Parent's Alert and Chemtrak agree to negotiate, for a period not to
exceed 45 days, the terms and conditions of the extension of the license granted
in Section 1.1 to such countries.
1.5 ADDITIONAL MARKS. The Parties may by mutual written agreement
extend this Agreement to cover additional marks for use with the Products, which
Parent's Alert may acquire and desire to license to ChemTrak or to cover
additional products. In such event, the terms and conditions of such extension
shall be as agreed by the parties.
1.6 FDA INTERIM GUIDELINES. The parties acknowledge that the license
is being granted pursuant to interim guidelines promulgated by the Unites States
Food and Drug Administration, which permit the Products to be marketed to
consumers without a Premarket Approval application (the "FDA Interim
Guidelines"). In the event the FDA Interim Guidelines are changed, subsequent to
the Effective Date, in a manner that has a material adverse effect on ChemTrak's
ability to market the Products, this Agreement will be terminable under Section
8.2(c) hereof. In the event ChemTrak elects to challenge or take such actions as
may be required to comply with any such change to the FDA Interim Guidelines in
lieu of terminating this Agreement, so long as ChemTrak diligently pursues such
challenge or compliance actions, ChemTrak's obligation to pay Quarterly Minimum
Royalties hereunder shall be suspended, provided that the period of any such
suspension shall not exceed thirty months.
2. REPRESENTATIONS AND WARRANTIES
2.1 REPRESENTATIONS AND WARRANTIES OF PARENT'S ALERT. Parent's Alert
hereby represents and warrants that:
(a) it is duly organized and validly existing under the laws of
the state of Georgia and has full corporate power and authority to enter into
this Agreement and to carry out the provisions hereof;
(b) it is duly authorized to execute and deliver this Agreement
and to perform its obligations hereunder;
(c) this Agreement is a legal and valid obligation binding upon
it and enforceable in accordance with its terms. The execution, delivery and
performance of this Agreement by Parent's Alert does not conflict with any
agreement to which it is a party or by
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which it may be bound, nor violate any law or regulation of any court,
governmental body or administrative or other agency having jurisdiction over it;
(d) it is the sole owner of all rights, title and interest in
the Licensed Marks and has not granted any interest in any Licensed Marks to any
third party prior to the Effective Date;
(e) to the knowledge of Parent's Alert the use of the Licensed
Marks by ChemTrak in conformance with this Agreement and the guidelines of
Parent's Alert will not infringe upon the rights of any third party, and will
not infringe any other rights of Parent's Alert; and
(f) it is not aware of any infringement claims pending or
threatened by any third party with respect to the Licensed Marks.
2.2 REPRESENTATIONS AND WARRANTIES OF CHEMTRAK. ChemTrak hereby
represents and warrants that:
(a) it is duly organized and validly existing under the
laws of the state of Delaware and has full corporate power and authority to
enter into this Agreement and to carry out the provisions hereof;
(b) it is duly authorized to execute and deliver this
Agreement and to perform its obligations hereunder; and
(c) this Agreement is a legal and valid obligation binding
upon it and enforceable in accordance with its terms. The execution, delivery
and performance of this Agreement by ChemTrak does not conflict with any
agreement to which it is a party or by which it may be bound, nor violate any
law or regulation of any court, governmental body or administrative or other
agency having jurisdiction over it.
3. OWNERSHIP OF LICENSED MARKS
3.1 OWNERSHIP OF LICENSED MARKS. ChemTrak shall not acquire any
right, title or interest in the Licensed Marks other than the limited license
set forth in Section 1.1. ChemTrak acknowledges that Parent's Alert is the sole
and exclusive owner of the Licensed Marks and all intellectual property rights
therein, and ChemTrak agrees that it will do nothing inconsistent with such
ownership, and that its use of the Licensed Marks and the goodwill associated
therewith shall inure to the benefit of Parent's Alert.
3.2 ADVERSE USE. ChemTrak agrees to inform Parent's Alert of any
adverse use by a third party of the Licensed Marks or of a xxxx or name
confusingly similar to the Licensed Marks. ChemTrak agrees to take no action
with respect thereto except with the prior written authorization of Parent's
Alert. Parent's Alert may thereupon take such action as it in its sole
discretion deems advisable for the protection of its rights in and to the
Licensed Marks.
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If Parent's Alert elects not to take action with respect to such adverse use, it
shall permit ChemTrak to bring and prosecute a claim against such third party at
ChemTrak's expense. ChemTrak further agrees to provide full cooperation with any
legal or equitable action by Parent's Alert to protect Parent's Alert's rights,
title and interest in the Licensed Marks.
3.3 REGISTRATION. ChemTrak agrees that it shall not. apply for
registration or protection or claim or seek to obtain ownership of any Licensed
Xxxx or any intellectual property rights therein in any nation or other
political subdivision. ChemTrak shall not, at any time during or after the
effective term of the Agreement dispute or contest, directly or indirectly,
Parent's Alert's exclusive right and title to the Licensed Marks and
intellectual property rights therein or the validity thereof.
4. OBLIGATIONS OF PARENT'S ALERT
Parent's Alert agrees that during the term of this Agreement it
shall neither fund nor be engaged in any manner, directly or indirectly through
any third party, in the development, manufacture, marketing, promotion,
distribution or sale of any products for in-home testing, through urine
sampling and laboratory analysis, for use of drugs of abuse including but not
limited to, [*] ("Home Drug Testing Products") in the United States, except with
the prior written consent of ChemTrak.
5. ROYALTIES
5.1 QUARTERLY ROYALTIES. In consideration of the license granted
herein, ChemTrak shall pay Parent's Alert the royalties as set forth herein
beginning with the first full calendar quarter after the Effective Date of the
Agreement.
(a) ChemTrak shall determine the Actual Royalties it owes
Parent's Alert based upon the Selling Price of all the Products sold during each
calendar quarter. The first calculation shall include all sales of Products
through the end of the first full calendar quarter after the Effective Date of
this Agreement.
"Actual Royalties" shall mean the greater of: (i) [*] of the
Selling Price of all Products sold for the first [*] of cumulative Product
sales, [*] of the next [*] of cumulative Product sales, and [*] thereafter; and
(ii) a minimum of [*] for each unit of Product sold (provided that if the actual
royalties payable for each unit of Product fall below [*] per unit for [*]
consecutive quarters, the parties agree to discuss in good faith the reduction
of the per unit royalty).
"Selling Price" shall mean the actual price ChemTrak charges its
nonaffiliated customers for the purchase of the Products, less: (i) reasonable
commissions actually paid to ChemTrak brokers for sale of the Products, provided
that such commissions shall not exceed [*]; (ii) the price of actual returns;
(iii) sales taxes added to the price of the Products and paid by ChemTrak; and
(iv) a maximum of [*] from its Product list price
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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for promotional discounts, which discounts shall not be provided [*] more than
[*]. If ChemTrak sells Products to one of its affiliates who then sells to
nonaffiliated customers, the Selling Price for such Products shall mean the
price that the affiliate charges its nonaffiliated customers for the purchase of
the Products.
Products shall be deemed to have been "sold" when invoiced,
whether or not collection by ChemTrak is made, or if not invoiced, then when
delivered, shipped or paid for, whichever is first.
(b) Each calendar quarter ChemTrak shall pay Parent's Alert
royalties equal to the greater of either the Actual Royalties or the Quarterly
Minimum Royalties due for such calendar quarter.
"Quarterly Minimum Royalties" shall be equal to [*] for the
first [*] following the Effective Date, [*] for [*] after the Effective Date,
[*] for [*] after the Effective Date, and [*] for [*], and thereafter,
commencing on the first day of [*] after the Effective Date and each anniversary
of the Effective Date thereafter (each such date an "Adjustment Date"), during
the term and any renewal thereof, the annualized Quarterly Minimum Royalties
shall be increased to an amount equal to the product of (i) the total [*]
payable for [*] such anniversary, and (ii) a fraction, the numerator of which
shall be [*] and the denominator of which shall be, for the first Adjustment
Date, product of: (a) the sum of [*] and [*] and (b) [*], and for the second and
each Adjustment Date thereafter, [*]. As used herein, "CPI" shall mean the
Revised Consumer Price Index for all Urban Consumers - U.S. City Average
(1982-1984 - 100)" published by the Bureau of Labor Statistics of the United
States Department of Labor. If, at any time during the term of this Agreement,
neither the CPI nor a comparable successor index is compiled or published by the
Bureau of Labor Statistics, the index for "all items" compiled and published by
any other branch or department of the Federal government shall be used for the
adjustments required by this paragraph, and if no such index is compiled and
published by any branch of the Federal government, the statistics reflecting
cost of living increases as compiled by any institution or organization or
individual generally recognized as an authority by financial and insurance
institutions shall be used as a basis for such adjustments in order to obtain
substantially the same result as would have been obtained if the CPI had not
been discontinued or revised.
5.2 PAYMENT. ChemTrak shall pay Parent's Alert the Royalties due
each calendar quarter within forty-five (45) days after the end of such calendar
quarter and shall be paid to Parent's Alert in cash or by check at the address
that Parent's Alert may from time to time specify in writing. Notwithstanding
the foregoing, a different method of payment or credit arrangement may be agreed
to in writing by the parties in which case such other method of payment or
credit arrangement will govern until Parent's Alert gives ChemTrak thirty (30)
days written notice that it will require payment as noted above.
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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5.3 LATE FEES ON DELINQUENT PAYMENTS. In the event ChemTrak does not
pay any amounts due Parent's Alert pursuant to this Agreement, ChemTrak shall
pay late charges on such past due amounts at a monthly rate of [ * ] (or, if
less, the maximum interest rate then allowed under applicable law).
5.4 TAXES. All taxes imposed as a result of the existence of this
Agreement or the performance by the parties hereunder shall be borne and paid by
the party required to do so by applicable law.
5.5 PAYMENT OF ROYALTIES UPON TERMINATION. Upon the termination or
expiration of this Agreement, ChemTrak shall pay Royalties to the Parent's Alert
according to the formula in Section 5.1 above except that, for the calendar
quarter in which the termination or expiration occurs, ChemTrak shall only owe
the greater of either the Actual Royalties or the pro rata share of the
Quarterly Minimum Royalties, calculated by multiplying the Quarterly Minimum
Royalties due by the number of days in the calendar quarter through the date the
Agreement was terminated or expired, and then dividing such amount by the number
of days in such calendar quarter.
5.6 REPORTING REQUIREMENT. Within forty-five (45) days after the end
of each calendar quarter, and within sixty (60) days after the end of each
calendar year, ChemTrak shall prepare and deliver to Parent's Alert an unaudited
report, certified by an officer of ChemTrak attesting to its correctness,
showing:
(a) the Selling Price of all Licensed Products sold by ChemTrak
during such calendar quarter or calendar year; and
(b) the royalties due pursuant to this Article 5 with respect to
such calendar quarter or calendar year.
5.7 RECORDS. During the term of this Agreement and any renewal, and
for a period of two (2) years thereafter, ChemTrak shall keep accurate and
complete records of all data necessary for the computation of all royalties due
hereunder. From time to time upon five (5) days written notice to ChemTrak,
Parent's Alert's designated independent public accountant shall have the right
at reasonable times during normal business hours to examine the records of
ChemTrak applicable to the calculation of the royalties for the purpose of
verifying the amounts owed to Parent's Alert and the accuracy of the reports
furnished by ChemTrak hereunder; provided, however, that before obtaining access
to and examining such records, Parent's Alert shall cause its independent public
accountant to execute and deliver, a confidentiality agreement in form and
substance reasonably acceptable to ChemTrak regarding ChemTrak's records and the
information contained therein. If the records show that ChemTrak has
underreported the Selling Price of the Licensed Products sold or the amount of
royalties due by more than three percent (3%) during any calendar quarter,
ChemTrak shall pay all costs associated with the examination of the records. If
the records show that ChemTrak has overreported the Selling Price of the
Licensed Products sold or the amount of royalties due by more than three percent
(3%) during any calendar quarter, ChemTrak shall be entitled to reduce the
royalties payable
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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in the following quarter by the amount of the overpayment.
6. OTHER OBLIGATIONS OF CHEMTRAK
6.1 FIRST COMMERCIAL SALE; MARKETING OBLIGATIONS. ChemTrak agrees to
make the first commercial sale of a product (the "First Commercial Sale") no
later than 6 months from the Effective Date. ChemTrak further agrees to spend a
minimum of [*] on expenditures related to Product advertising, promotion,
marketing, sales and other commercial functions within [*] from the date of
First Commercial Sale. Thereafter ChemTrak agrees to spend each year a minimum
of [*] of projected annual Selling Price of all Products to be sold in each
calendar year.
6.2 QUALITY CONTROL. ChemTrak acknowledges that the maintenance and
protection of the Parent's Alert's name, image and goodwill are material
conditions of this Agreement and that Parent's Alert depends upon the high
quality and proper use of the Licensed Marks and the channels through which the
Licensed Marks are distributed. Pursuant thereto, ChemTrak agrees that it shall:
(a) display the Licensed Xxxx on all Products only in the form
and manner and with the appropriate legends as approved by Parent's Alert from
time to time;
(b) provide to Parent's Alert, at ChemTrak's cost and expense, a
sample of all tags, labels and packaging to be used in association therewith
prior to any commercial sale or use of the Products and shall not sell or use
the same without the prior written consent of Parent's Alert;
(c) not use the Licensed Marks in any marketing and advertising
materials for the Products, including any marketing or advertisement over
electronic media such as television, radio, and the internet without the prior
written consent of Parent's Alert;
(d) be responsible for ensuring that all regulatory requirements
relating to the labelling, packaging and marking and other such matters are
complied with;
(e) not alter, modify or otherwise misuse the Licensed Marks;
and
(f) not use any other trademark, name or artwork confusingly
similar to the Licensed Marks in respect of any Products, either during or after
the term of this Agreement; and
(g) not use any Licensed Marks as part of ChemTrak's corporate
or trade name.
6.3 APPROVALS. Any approvals of Parent's Alert required by Section 6.2
shall not be unreasonably withheld. Any approvals or rejections shall be
communicated by Parent's Alert to ChemTrak within fifteen (15) days of the
receipt of ChemTrak's written request for
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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approval. If Parent's Alert does not notify ChemTrak of its approval or
rejection within such fifteen (15) day period, Parent's Alert shall be deemed to
have approved.
6.4 Efforts. ChemTrak shall use commercially reasonable efforts to:
(a) exploit fully the license throughout the United States; and
(b) offer for sale the Products so they may be sold to the
consumer on a timely basis.
6.5 RIGHTS TO ARTWORK. All rights with respect to any Product
specific designs, logos, photography or artwork which ChemTrak may incorporate
or use in conjunction with the Licensed Marks shall be deemed the sole and
exclusive property of Parent's Alert. In this regard, if necessary, ChemTrak
agrees to assign to Parent's Alert all right, title and interest in and to such
designs, logos, photography and/or artwork including all copyright and
trademarks rights associated therewith and to take such other action as may be
necessary to vest ownership in Parent's Alert. All rights with respect to any
other designs, logos, photography or artwork which ChemTrak may incorporate or
use in conjunction with the Licensed Marks shall be deemed the sole and
exclusive property of ChemTrak, including, but not limited to any designs, logos
or artwork which ChemTrak uses in conjunction with other products as well as the
Products.
6.6 INCONSISTENT USE. ChemTrak shall promptly cease any use of the
Licensed Marks not consistent with the terms of this Agreement upon Parent's
Alert's reasonable request.
7. INDEMNIFICATION
Parent's Alert shall indemnify, defend and hold ChemTrak harmless from
and against all losses, claims, damages, liabilities, costs and expenses
(including but not limited to reasonable attorneys' fees) arising out of or in
connection with any claim, judgment or adjudication against ChemTrak that the
Licensed Marks infringe any trademark right of any third party, provided that
ChemTrak (a) promptly notifies Parent's Alert in writing of any such claim and
(b) provides Parent's Alert with an opportunity to assume sole control of the
defense and/or settlement of such claim. ChemTrak shall cooperate with Parent's
Alert in defending or settling such claim, and ChemTrak may join in the defense
with counsel of its choice at ChemTrak's expense. Parent's Alert shall have no
liability hereunder to the extent that the infringement arises solely from any
use or modification of the Licensed Marks not permitted hereunder, and to the
extent of any damages, liabilities, costs and expenses that exceed the amount
paid by ChemTrak to Parent's Alert hereunder and under the Consulting Agreement.
8. TERM AND TERMINATION
8.1 TERM. this Agreement shall begin on the Effective Date and shall
end seven years thereafter (the "Termination Date"); provided, however, that
this Agreement shall be automatically renewed for successive one-year periods
unless either party gives the other
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written notice of its intent not to renew the Agreement at least sixty (60) days
before the Termination Date or before the end of any renewal period. Section 7
shall survive expiration of this Agreement for a period of five years.
8.2 TERMINATION. This Agreement shall be terminable prior to the
Termination Date or any renewal term on forty-five (45) days prior written
notice:
(a) by either party, in the event of a material breach by the
other party of this Agreement and the breaching party does not correct or
eliminate the default within such 45 day notice period;
(b) by either party, upon termination or cancellation of the
Consulting Agreement in accordance with the provisions of the Consulting
Agreement as a result of a breach thereof by the other party;
(c) by ChemTrak with 30 days prior written notice, in the event
the FDA Interim Guidelines are changed in a manner that ChemTrak determines may
have a material adverse effect on ChemTrak's ability to market the Products;
(d) by ChemTrak, at any time prior to the date 90 days from
Effective Date, in the event that the results of the independent market study
commissioned by ChemTrak prior to the Effective Date lead ChemTrak to conclude,
in its sole discretion, that there is not sufficient market potential for
ChemTrak with respect to the Products to justify proceeding with ChemTrak's
plans to market the Products;
(e) by Parent's Alert in the event ChemTrak's Actual Royalties
payable in each of [*] are less than [*];
(f) by ChemTrak if, in the [*] Contract Year (as hereinafter
defined) the aggregate Selling Price for all Products sold is less than [*], or,
in any subsequent Contract Year, the aggregate Selling Price for all Products
sold in any Contract Year is less than [*]. A "Contract Year" shall mean any
twelve month period beginning on the anniversary of the Effective Date; or
(g) By ChemTrak, by notice delivered at any time prior to the
date forty-five (45) days after the Effective Date, if ChemTrak reasonably
determines that the sale of Products under the Licensed Marks would infringe the
rights of any third party and that such infringement would materially and
adversely affect ChemTrak's gain from the sale of the Products; provided,
however that the parties agree to use commercially reasonable efforts to resolve
any such conflict before terminating this Agreement.
8.3 CONSEQUENCES OF TERMINATION. In the event of any early
termination of this Agreement (but not expiration under Section 8.1), ChemTrak
agrees to discontinue immediately all use of the Licensed Marks and promptly to
return to Parent's Alert, at Parent's Alert's expense, or at the option of
Parent's Alert to destroy, all advertising or promotional
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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materials, stationery or other material that bear the Licensed Marks. Section 7
shall survive for a period of two years following any such termination. In the
event of any termination of this Agreement pursuant to Section 8.1, ChemTrak
agrees to discontinue all use of the Licensed Marks within ninety (90) days
after the expiration of this Agreement and thereafter promptly to return to
Parent's Alert, at Parent's Alert's expense, or at the option of Parent's Alert
to destroy, all advertising or promotional materials, stationery or other
material that bear the Licensed Marks.
9. CONFIDENTIAL INFORMATION
9.1 CONFIDENTIAL INFORMATION. During the term of this Agreement, and
for a period of five (5) years after expiration or termination thereof, Parent's
Alert will maintain all Confidential Information in trust and confidence and
will not disclose any such Confidential Information to any third party or use
any Confidential Information for any unauthorized purpose. "Confidential
Information" shall mean all information provided by ChemTrak to Parent's Alert
that is identified in writing as confidential, including but not limited to
ChemTrak sales information. Parent's Alert may use such Confidential Information
only to the extent required to accomplish the purposes of this Agreement.
Confidential Information shall not be used for any purpose or in any manner that
would constitute a violation of any laws or regulations, including without
limitation, the export control laws of the United States. Confidential
Information shall not be reproduced in any form except as required to accomplish
the intent of this Agreement. No Confidential Information shall be disclosed to
any employee, agent, or consultant who does not have a need for such
information. To the extent that disclosure is authorized by this Agreement,
Parent's Alert will obtain prior agreement from its employees, agents,
consultants, or other parties to whom disclosure is to be made to hold in
confidence and not make use of such information for any purpose other than those
permitted by this Agreement. Parent's Alert will promptly notify ChemTrak upon
discovery of any unauthorized use or disclosure of the Confidential Information.
9.2 EXCEPTIONS. Confidential Information shall not include any
information which:
(a) is now, or hereafter becomes, through no act or failure to
act on the part of Parent's Alert, generally known or available, or
(b) is the subject of a written permission to disclose provided
by ChemTrak.
Parent's Alert agrees that the material financial terms of this
Agreement will be considered Confidential Information of both parties.
Notwithstanding the foregoing, Parent's Alert may disclose both the existence of
this Agreement and the terms thereof to bona fide prospective investors,
corporate partners, lenders and bona fide potential Sublicensees; in connection
with any such disclosure, Parent's Alert will use its best efforts to secure
confidential treatment of such information.
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9.3 AUTHORIZED DISCLOSURE. Notwithstanding any other Provision of
this Agreement, Parent's Alert may disclose Confidential Information if such
disclosure is in response to a valid order of a court or other governmental body
of the United States or any political subdivision thereof, or is otherwise
required by law; provided, however, that Parent's Alert shall first have given
notice to ChemTrak and shall have made a reasonable effort to obtain a
protective order requiring that the Confidential Information so disclosed be
used only for the purposes for which the order was issued.
10. MISCELLANEOUS
10.1 GOVERNING LAW AND DISPUTE RESOLUTION. This Agreement shall be
governed by and construed in accordance with federal laws as they apply to
trademark matters and in accordance with the laws of the State of California as
applied to contracts entered into and to be performed entirely within the State
of California. The parties agree that personal jurisdiction and venue shall be
proper in state and federal courts in Xxxx and Xxxxxx Counties, Georgia, in all
lawsuits relating to or arising out of this Agreement. Any lawsuits filed by
either party arising out of or relating to this Agreement shall be filed in one
of these courts. The parties hereby waive any defense of improper personal
jurisdiction or venue in these courts.
10.2 NOTICES. Any notice or other communication required or which
may be given hereunder shall be in writing and shall be delivered personally,
telegraphed, telexed or sent by facsimile, or sent by certified, registered or
express mail, postage prepaid and shall be deemed given when so delivered
personally, telegraphed or telexed or sent by facsimile or computer
transmission, or if mailed, five (5) days after the date of mailing, as follows:
If to Company to:
ChemTrak Inc.
000 Xxxx Xxxxxx Xxxxxx
Xxxxxxxxx, XX 00000-0000
ATTN: Xx. Xxxxxx X. Xxxxxx
President and Chief Executive Officer
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
With a copy to:
Xxxxxx Godward LLP
Five Palo Alto Square
3000 E1 Camino Real
Xxxx Xxxx, Xxxxxxxxxx 00000-0000
ATTN: Xxxx X. Xxxxxxxxx. Esq.
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
If to Parent's Alert:
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Parent's Alert
Xxxxx 000, 0000 Xxx Xxxxxxxx
Xxxxxxx, Xxxxxxx 30339-2022
ATTN: Xx. Xxxxx X. Xxxxxx, Xx., Vice President
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
and
Parent's Alert, Inc.
X.X. Xxx 000000
Xxxxxxx, Xxxxxxx 00000-0000
ATTN: Ms. Sunny L. Cloud, President
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
With a copy to:
Paul, Hastings, Xxxxxxxx & Xxxxxx LLP
Suite 2400, 000 Xxxxxxxxx Xxxxxx, XX
Xxxxxxx, Xxxxxxx 00000-0000
ATTN: W. Xxxxxx Xxxxx, Esq.
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
10.3 ENTIRE AGREEMENT. This Agreement, the Consulting Agreement and
the Letter Agreement between the parties hereto dated as of the Effective Date
constitute the complete, final and exclusive embodiment of the parties'
agreement with respect to the subject matter hereof, and supersede all prior
agreements, whether written or oral, and whether explicit or implicit, which
have been entered into before the execution hereof.
10.4 AMENDMENT AND WAIVER. No provision of this Agreement may be
amended or waived except by a writing signed by both parties.
10.5 SEVERABILITY. Any invalidity, in whole or in part, of one
provision of this Agreement shall not affect the validity of any other provision
of this Agreement.
10.6 SUCCESSORS. Subject to the prohibitions against assignment
contained herein, this Agreement shall inure to the benefit of and shall be
binding on the parties hereto and their respective successors and permitted
assigns.
10.7 ASSIGNMENT. This Agreement and the rights and obligations
created hereunder shall not be assignable by either party, either voluntarily or
by operation of the law, without the prior written consent of the other party;
provided, however, that ChemTrak shall be entitled to assign its right and
obligations hereunder to the purchaser of a majority of the ChemTrak stock in a
purchase approved by the Securities and Exchange Commission, provided
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that the purchaser agrees in writing to be bound by the terms of this Agreement.
Any assignment without required consent shall be null and void.
IN WITNESS WHEREOF, the parties have executed this Agreement as of
the date first above written.
CHEMTRAK INCORPORATED PARENT'S ALERT, INC.
By:_________________________________ By:___________________________________
Name:_______________________________ Name:_________________________________
Title:______________________________ Title:________________________________
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EXHIBIT A
PARENT'S ALERT LICENSED MARKS
The following trademarks are the subject of the foregoing license:
Word Marks: PARENT'S ALERT
United States Patent and Trademark Office, Principal Register Reg.
No. 2,017,030, Nov. 19, 1996.
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EXHIBIT B
PARENT'S ALERT PRODUCTS
Parent's Alert Drug Test Kit:
Kits for in-home urine testing and SAMHSA approved laboratory analysis for use
of drugs of abuse including but not limited to, [*].
* Certain information on this page has been omitted and filed
separately with the Commission. Confidential treatment has
been requested with respect to the omitted portions.
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