EXHIBIT 10.9
CONCURRENT USE AGREEMENT
THIS CONCURRENT USE AGREEMENT is made the 23rd day of June, 1999,
between Novus, Inc., a corporation organized and existing under the laws of the
commonwealth of Puerto Rico ("Novus"), and Xxxxx and Xxxxxx Shoe Co., a
corporation organized and existing under the laws of the State of Missouri
("Xxxxx").
WHEREAS Xxxxx is a company in the business of the sale, at retail,
footwear and accessories, and
WHEREAS Novus is a company in the business of the sale, at retail, of
footwear and accessories, and
WHEREAS Edison Brothers Stores, Inc., a corporation organized and
existing under the laws of the State of Delaware ("Edison") has adopted and has
used or is using the trademarks, service marks, trade names and copyrights, and
owns the registrations and applications for registration thereof, as listed in
Schedule A attached hereto (the "Marks"), and
WHEREAS Edison and Xxxxx are parties to an Asset Purchase Agreement,
dated as of May 19, 1999, pursuant to which Edison has agreed to assign and
transfer to Xxxxx all of Edison's right, title and interest in and to the Marks,
and the registrations and applications for registration thereof, and the
goodwill associated therewith, subject to the terms and conditions of the
Assignments of Rights (Subject to Concurrent Use) agreement entered into on June
23, 1999 by Edison and Xxxxx (the "Xxxxx Assignment of Rights Agreement") and
this Concurrent Use Agreement; and
WHEREAS Edison and Novus are parties to an Asset Purchase Agreement,
dated as of May 24, 1999, pursuant to which Edison has agreed to assign and
transfer to Novus all of Edison's right, title and interest in and to the Marks,
and the registrations and applications for registration thereof, and the
goodwill associated therewith, subject to the terms and conditions of a
Trademark Assignment Agreement to be entered into by Edison and Novus (the
"Novus Trademark Assignment Agreement") and this Concurrent Use Agreement; and
WHEREAS Xxxxx desires to use, market, advertise, distribute and sell
footwear and accessories (the "Xxxxx Products") using the Marks throughout the
world except within Puerto Rico and the Covered Territory (as defined in
paragraph 2 below); and
WHEREAS Novus desires to use, market, advertise, distribute and sell
footwear, handbags, socks, hosiery and shoe related products and accessories
(the "Novus Products") using the marks only within Puerto Rico and the Covered
Territory; and
WHEREAS Xxxxx and Novus are sophisticated in the marketing and selling
of the Xxxxx Products and the Novus Products, and each party carefully has
examined the marketplace comprising such goods, and each party independently has
determined that there would be no likelihood of confusion among consumers in the
event that Xxxxx uses the Marks in connection with marketing and sale of the
Xxxxx Products throughout the world except for Puerto Rico and
the Covered Territory and Novus uses the Marks solely in connection with the
marketing and sale of the Novus Products within Puerto Rico and the Covered
Territory.
NOW, THEREFORE, based upon the premises and mutual covenants set forth
herein, it is agreed by and between Xxxxx and Novus as follows:
1. Xxxxx and Novus agree jointly to take all necessary steps to
effect a concurrent use registration with the United States Patent and Trademark
Office with respect to the Marks. Each party shall bear its own expenses
(including legal expenses) related to such registration, provided however, that
any joint filing fees which may be associated therewith shall be evenly divided
between Xxxxx and Novus.
2. Xxxxx consents to the use of the Marks by Novus in connection
with the use, marketing, advertising, distribution and sale of the Novus
Products in Puerto Rico, Central and South America, Cuba, Dominican Republic,
the United States Virgin Islands, Bahamas, the Lesser Antilles and Jamaica (all
of the aforegoing excepting Puerto Rico is hereafter collectively referred to as
the "Covered Territory").
3. Novus consents to the use of the Marks by Xxxxx in connection
with the use, marketing, advertising, distribution and sale of the Xxxxx
Products throughout the world except within Puerto Rico and the Covered
Territory.
4. Xxxxx is hereby prohibited from using, marketing, advertising,
distributing or selling the Novus Products in connection with the Marks in any
manner in Puerto Rico and the Covered Territory.
5. Novus is hereby prohibited from using marketing, advertising,
distributing or selling the Xxxxx Products in connection with the Marks in any
manner throughout the world except within Puerto Rico and the Covered Territory.
6. In the event that Xxxxx and/or Novus grant to any affiliate,
subsidiary, representative, agent or any third party any rights in and to the
Marks, any such grant of rights shall include a requirement that such party
abide by the terms of this Concurrent Use Agreement such that any such use of
the Marks by such party shall be subject to the same territorial and other
restrictions set forth herein.
7. The parties acknowledge and agree that the limitations set
forth herein as to their respective rights to use the Marks in connection with
the Xxxxx Products and the Novus Products will prevent any likelihood of
confusion, mistake or deception as to the source of the parties' respective
products.
8. The parties agree to cooperate with each other in order to
obtain the concurrent registration of the Marks in the Patents and Trademarks
Office of the United States.
9. The parties agree to cooperate and consult with one another,
in good faith, should future conditions or developments suggest to either the
possibility that the parties' respective Marks might be likely to be confused
with one another, all with the view to insuring that no
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substantial likelihood of confusion between the parties' respective Marks, as
they are used in commerce, shall occur.
10. The parties to this Concurrent Use Agreement may each apply
for state or federal registration of their respective rights, so long as such
applications do not seek registration of marks or rights in conflict with the
provisions of this Concurrent Use Agreement, and so long as such registrations
do not grant rights in conflict with the provisions of this Concurrent Use
Agreement. Should any party to this Concurrent Use Agreement believe that such
an application or registration violates the terms or provisions of the
Concurrent Use Agreement, registration of the applied for xxxx xxx be opposed,
or its cancellation sought, without violating this Concurrent Use Agreement.
11. Both parties to this Concurrent Use Agreement may license or
assign their respective rights hereunder and under the Marks, in whole or in
part, provided that such license or agreement does not extend beyond the
provisions of this Concurrent Use Agreement.
12. Novus acknowledges that Xxxxx has notified it that Xxxxx has
granted a security interest (the "Security Interest") in all of its assets,
including but not limited to all right, title and interest of Xxxxx in and to
the Marks, to Foothill Capital Corporation, for itself and as agent for certain
other lenders ("Foothill"). By its signature hereto, Novus consents to the
Security Interest and the exercise by Foothill of any and all rights and
remedies granted in connection with such Security Interest, including but not
limited to the sale or the other transfer of the Marks by Foothill, subject and
subordinated to Novus' rights under this Agreement. Xxxxx acknowledges that
Novus has notified it that Novus will grant a security interest (the "BPPR
Security Interest") in some of its assets, including but not limited to, all
right, title and interest of Novus in and to the Marks, to Banco Popular de
Puerto Rico ("BPPR"). By its signature hereto, Xxxxx consents to the BPPR
Security Interest and the exercise by BPPR of any and all rights and remedies
granted in connection with such BPPR Security Interest, including but not
limited to, the sale or other transfer of the Marks by BPPR, subject and
subordinated to Xxxxx' rights under this Agreement.
13. This Concurrent Use Agreement constitutes a contract made
under the laws of the State of Missouri, and shall be interpreted and construed
in accordance with such laws.
14. This Concurrent Use Agreement is being signed in multiple
copies. Each copy shall be considered an original for all purposes.
[The balance of this page has been left blank intentionally.]
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IN WITNESS WHEREOF, the parties hereto have caused this Concurrent Use
Agreement to be signed and delivered by their duly authorized officers, all as
of the date first hereinabove written.
"Xxxxx"
Xxxxx and Xxxxxx Shoe Co.
By: /s/ Xxxxx Xxxxxx
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Name: Xxxxx Xxxxxx
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Title: President
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"Novus"
Novus, Inc.
By: /s/ Xxxxxx Xxxxxxxxx
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Name: Xxxxxx Xxxxxxxxx
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Title: President
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