EXHIBIT (e)(3)
TRADEMARK LICENSE AGREEMENT
THIS LICENSE AGREEMENT ("Agreement") is made as of the 28th day of
February, 1997, by and between DOUGHTIES'S FOODS, INC., a Virginia corporation
with offices located in Portsmouth, Virginia (the "Licensor") and SMITHFIELD HAM
AND PRODUCTS COMPANY, INCORPORATED (the "Licensee").
W I T N E S S E T H T H A T:
WHEREAS, Licensor is the owner of the federally registered (Registration
No. 1053389) trademark XXXXXXXX'X; and,
WHEREAS, Licensee wishes to produce, market and sell Xxxxxxxx'x BBQ
products, Chili Products, Sauces, Soups, and Stews, under the Trademark; and
WHEREAS, Licensor is willing to grant to Licensee licenses to use the
trademark on the Goods pursuant to the terms of this Agreement, and to pursue
the registration of the said Trademark with the United States Patent Office.
NOW, THEREFORE, for good and valuable consideration and the exchange of
obligations and promises contained herein, the parties hereby agree as follows:
1. Definitions. For the purposes of this Agreement, the terms below are
defined as follows:
"Goods" means the items shown on Exhibit A.
"Territory" means the United States, its territories and protectorates.
"Trademark" means the trademark "XXXXXXXX'X" as federally registered.
2. Grant of Licenses. Licensor hereby grants to Licensee:
a. an exclusive paid-up license (the "Retail License"), to the
exclusion of Licensor as well as third parties, for the use of the trademark
XXXXXXXX'X to produce, market, and sell the Goods in the Territory to retail
groceries, including, without limitation, Sam's Club and similar wholesale
clubs, mass merchandisers, military commissaries, convenience stores and vending
machines, and all other retail outlets that sell to the general public without
repackaging; and
b. a non-exclusive paid-up license (the "Institutional
License") for the use of the trademark XXXXXXXX'X, to produce, market, and sell
the Goods in the Territory to the institutional food service distributors listed
on Exhibit B attached hereto and made a part hereof; and
c. Licensee agrees that it shall not use the Trademark or any
form of the XXXXXXXX'X name except as expressly permitted by this Agreement.
Licensee may add BBQ products, cili products, and BBQ or chile sauces (but not
other products) to its "XXXXXXXX'X" product line without the consent of Licensor
provided that each such added product meets the quality standards of Section 7
herein. Each such added product shall be subject to the terms and conditions of
this Agreement.
3. Term.
a. The term of the Retail License shall be for a period of
five (5) years from the date hereof, automatically renewable for successive
twenty (20) year terms, unless sooner terminated under the provisions of this
Agreement.
b. The term of the Institutional License shall be for two (2)
years from the date hereof, unless sooner terminated under the provisions of
this Agreement.
4. Ownership of the Trademark. It is expressly agreed that Licensor
retains ownership of the Trademark and that any and all use of the Trademark by
Licensee will inure to the benefit of the Licensor and that the Licensor shall
continue during the term hereof and thereafter to use the Trademark for all
products other than the Goods. Licensee shall not contest the validity,
ownership or title of Licensor to any of the Trademark and Licensee shall not
apply for nor assist or aid others in applying for registrations of the
Trademark or any other tradename or trademark which could be confusingly similar
to the Trademark in any state, country or other political jurisdiction anywhere
in the world. In the event the Licensee desires to make use of the Trademark in
a country other than the United States, the Licensee shall so notify Licensor
and advise Licensor of the country or other political jurisdiction in which
Licensee desires to use the Trademark and, at the expense of and for the account
of Licensee, Licensor shall forthwith apply for a registration in the name of
the Licensor for the name of the Trademarks. Any applications for or
registrations of the Trademark shall issue and be maintained in the name of the
Licensor and the new applications and/or registrations shall be included under
the terms of this Agreement.
5. Registration of Trademark. Licensor shall, at its expense, maintain
the federal registration for the Trademark "XXXXXXXX'X" with the United States
Patent and Trademark Office for the Goods in the Territory, and shall not permit
the registration to become abandoned. The failure to maintain the registration
of the Trademark shall not diminish Licensee's rights to the use of same as
provided herein.
6. Use of the Trademark.
a. Licensee shall affix the Trademark to the Goods in a manner
consistent with the labels that are used by the Licensor on its products bearing
the same Trademark or as otherwise specified in writing by Licensor and shall
display the Trademark on all written materials utilizing the Trademark with
prominence achieved at a minimum, by capitalizing the initial letter of the
Trademark. The Licensee shall display the circle registration symbol (a) after
the Trademark on the Goods and at least once in the written materials and the
Goods, and written materials shall bear the following ownership notice:
XXXXXXXX'X is a trademark of Xxxxxxxx'x Foods, Inc.
b. Licensee shall provide reasonable assistance to Licensor in
executing documents for the Licensor to obtain whatever additional protection
Licensor deems reasonably necessary to protect Licensor's interest in the
Trademarks.
7. Quality Control.
a. All Goods marketed and sold by Licensee under the Trademark
shall not be of a quality less than the quality of such Goods now being sold
under the Trademark by Licensor, and Licensee shall consistently apply good
manufacturing practices in all phases of production, packaging, storage, and
shipment of the Goods. For the purpose of ensuring such quality, Licensor may at
any reasonable time during regular business hours inspect the processing
facilities of Licensee, inspect the Goods at the places where they are processed
or stored and take reasonable samples thereof.
b. At least once per calendar year upon receipt of Licensor's
written request, Licensee shall furnish to Licensor two (2) cases of Goods and
representative samples of labels, packaging and advertising materials bearing
the Trademarks.
c. Licensee shall comply with all applicable federal and state
laws and regulations regarding the processing and packaging of the Goods, and
its failure to do so will be deemed a material breach of this Agreement.
d. Licensee acknowledges that Licensor has an overriding
interest in protecting the reputation of Licensor and of XXXXXXXX'X branded
products. Accordingly, Licensee shall, immediately upon notice thereof, fully
inform Licensor as to any actual or proposed action, by any governmental agency,
consumer or environmental group, media or other organization directed toward
removing any quantity of any of the Goods from the market in all or any portion
of the Territory, based on alleged injury or death, alleged unwholesomeness or
potential for harm, alleged contamination, tampering or similar act and/or
alleged violation of law in connection with production, labeling, packaging,
storage, shipment, advertising and/or sale. Except for the removal of the Goods
from the inventories of third parties in the ordinary course of normal quality
maintenance as established by industry norms based on the shelf life of the
Goods, Licensee shall likewise immediately and full inform Licensor as to any
proposal on Licensee's part to remove any quantity of any of the Goods from the
market in all or in any portion of the Territory on account of suspected
nonconformity with the specifications, improper labeling, unwholesomeness,
possibility of consumer harm and/or violation of any law(s). Licensee shall
closely coordinate with Licensor in respect to any proposed actions and public
statements in respect to the foregoing, and shall carefully consider, and if
reasonable to do so, follow all requests of Licensor in respect thereto.
Licensee shall not issue any public statement implying that Licensor has any
responsibility for the manufacture, packaging, labeling, shipping, advertising
or any other activity related to the sale of the Goods. All information
pertaining to the matters dealt with in this Section 7.d shall be held in
absolute confidence, except only as between Licensee and Licensor and their
respective attorney(s) or as ordered by any court or agency of competent
jurisdiction. Any violation of Licensee's obligations described in this Section
7.d shall be grounds for immediate termination of this Agreement.
8. Infringement. Licensee shall immediately notify Licensor of any use
of the Trademark by third parties which
infringes the Retail License or the Institutional License during their
respective terms. Licensor shall have the obligation to pursue any infringements
of the Trademark at Licensor's expense; provided however that Licensor may at
its option, in lieu of such defense, transfer and convey the Trademark to
Licensee for use on and in connection with the Goods and any other items
Licensor may have approved under Section 2 hereof If Licensor makes such
transfer, Licensee shall grant to Licensor a perpetual, paid-up license for all
uses not then covered by Licensee's license, on terms comparable to those set
out herein excluding the provisions herein dealing with the duty to defend the
Trademark. In the event Licensor files suit and is successful in obtaining a
decision of infringement, any monetary award of the court in Licensor shall be
for Licensor's sole account. Licensor shall not enter into any settlement
agreements with any infringers that permits the continuing use of the infringing
xxxx unless Licensee has been advised of all of the terms of the settlement and
has agreed in writing to the Licensor's acceptance of such terms. Licensee
agrees to reasonably cooperate with Licensor in pursuing infringements of the
Trademark. In the event that Licensor takes no action against an infringer of
the Trademark, Licensee may do so at Licensor's expense and may join Licensor as
a party, and Licensor shall provide all reasonable cooperation to Licensee for
the prosecution of the case. In the event the Licensee is awarded a monetary
judgment for the successful prosecution of the infringement, the award shall be
for the sole account of the Licensee, subject to a credit to the Licensor for
its obligation to bear the expense of the action. Licensee shall not enter into
any settlement agreements with any infringers that permits the continuing use of
the infringing xxxx unless Licensor has been advised of all the terms of the
settlement and has agreed in writing to Licensor's acceptance of such terms.
9. Assignability.
a. This Agreement shall be assignable by Licensee upon written
approval of Licensor, which approval shall not be unreasonably withheld. It is,
however, understood and agreed that it shall not be unreasonable for Licensor to
withhold its approval of such an assignment to a direct competitor of Licensor.
b. Licensor shall have the unrestricted right to assign this
Agreement.
10. Termination. Licensor may terminate this Agreement as follows:
a. Upon sixty (60) days written notice to Licensee for any
breach by Licensee of any of its obligations hereunder. Licensee shall have
sixty (60) days from receipt of the notice to remedy or make a good faith and
expeditious effort toward remedy of such breach.
b. If Licensee becomes insolvent, ceases sale of the Goods
bearing the Trademark (that are then covered by this Agreement) for a period of
one year and/or files for bankruptcy under the provisions of Chapter 7 of the
Bankruptcy Code, Licensor may immediately terminate this Agreement.
11. Notices. All notices, requests or other communications hereunder
shall be in writing, addressed to Xxxxxxxx'x or Americana, at the following
addresses:
(i) If to Xxxxxxxx'x:
Xx. Xxxxxx Mules, Chairman
Xxxxxxxx'x Foods, Inc.
X.X. Xxx 0000
000 Xxxxxxxxxx Xxxxxx
Xxxxxxxxxx, XX 00000
Telephone: (000) 000-0000
with copy to:
Xxxxxxx X. Xxxxxxx, Esquire
McGuire, Woods, Battle and Xxxxxx, L.L.P.
Xxxxx Xxxxx Xxxxxx - Xxxxx 0000
000 Xxxx Xxxx Xxxxxx
Xxxxxxx, XX 00000-0000
Telephone: (000) 000-0000
Telecopier: (000) 000-0000
(ii) If to Smithfield:
Xx. Xxxxx X. Xxxxxx, III, President
The Smithfield Ham & Products Company, Incorporated
P. O. Xxx 000
Xxxxxxxxxx, XX 00000
Telephone: (000) 000-0000
Telecopier: (000) 000-0000
with copy to:
Xxxxxxx X. Xxxxxxx, III, Esquire
Edmunds & Xxxxxxxx, P.C.
000 Xxxx Xxxxxx (24504)
P. O. Box 958 (24505)
Lynchburg, VA
Telephone: (000) 000-0000
Telecopier: (000) 000-0000
The address of either party may be changed by giving notice in writing at any
time to the other party. Any notice to be given under this Agreement shall be
deemed duly given if (i) delivered personally, (ii) sent by telecopy and
acknowledged by recipient, (iii) delivered by overnight express, or (iv) sent by
United States registered or certified mail, postage prepaid. Any notice that is
delivered personally, or sent by telecopy or overnight express in the manner
provided herein shall be deemed to have been duly given to the party to whom it
is directed upon actual receipt (and, in the case of telecopy acknowledgment) by
such party. Any notice that is addressed and mailed in the manner provided
herein shall be conclusively presumed to have been given to the party to which
it is addressed at the close of business, local time of the recipient, on the
third day after it is so placed in the mail.
12. Captions. The captions used in connection with the paragraphs and
subparagraphs of this Agreement are inserted only for the purpose of reference.
Such captioning shall not be deemed to govern, limit, modify, or in any manner
affect the scope, meaning or intent of the provisions of this Agreement or any
part thereof; nor shall such captions otherwise be given any legal effect.
13. Governing Law. This Agreement shall be construed in accordance with
the law of the State of Virginia and the United States of America.
14. Entire Understanding. This Agreement constitutes the entire
understanding of the parties with respect to the subject matter hereof. No
alterations, changes or amendments hereto shall be effective unless made in
writing signed by both parties.
15. Indemnification.
a. By Licensee. Licensee shall be liable for and hereby agrees
promptly, competently, completely and at not cost to Licensor, to defend,
release, discharge, fully indemnify and hold Licensor and each of its directors,
officers, employees and agents harmless from and against any and all claims,
demands, damage, liability, actions, causes of action, loss, cost and expenses
of any nature whatsoever (including with limitation, investigation costs and
expenses and accountant's fees and expenses and attorneys' fees and expenses
incident thereto) by reason of any actual or alleged injury, including death of
any person whomsoever, or any actual or alleged financial loss to any person or
other entity,. whomsoever or whatsoever, or any actual or alleged loss, damage
or destruction of property of every class and description owned by or in the
possession of any person or other entity, whomsoever or whatsoever, in any
manner and however arising out of or attributed to Licensee's production,
manufacture, marketing, or sale of the Goods pursuant to this Agreement.
b. By Licensor. Licensor shall be liable for and hereby agrees
promptly, competently, completely and at no cost to Licensee, to defend,
release, discharge, fully indemnify and hold Licensee and each of its directors,
officers, employees and agents harmless from and against any and all claims,
demands, damage, liability, actions, causes of action, loss, cost and expenses
of any nature whatsoever (including with limitation, investigation costs and
expenses and accountant's fees and expenses and attorney's fees and expenses
incident thereto) arising by reason of Licensor's breach of any of its
representations, warranties, or covenants contained in this Agreement.
IN WITNESS WHEREOF, the parties hereto have cause
this Agreement to be executed by their duly authorized officers the day and year
first above written.
XXXXXXXX'X FOODS, INC.
By: Xxxxxx X. Xxxxxxxxx, Xx.
(Signature)
Senior Vice President
SMITHFIELD HAM AND PRODUCTS
COMPANY, INCORPORATED
By: Xxxxx X. Xxxxxx, III
(Signature)
President
