EXHIBIT 10.57
TRADEMARK SECURITY AGREEMENT
Seattle, Washington
THIS TRADEMARK SECURITY AGREEMENT ("Trademark Security Agreement") is
made and entered into as of the 16th day of January, 2002 between SPACELABS
MEDICAL, INC., a Delaware corporation ("Spacelabs Delaware"), SPACELABS MEDICAL,
INC., a California corporation, SPACELABS XXXXXXX, INC., a Delaware corporation,
VITA-STAT MEDICAL SERVICES, INC., a Florida corporation, LIFECLINIC MEDICAL DATA
CORPORATION, a Washington corporation, and XXXXXXXXXX.XXX CORPORATION, a
Washington corporation (collectively, "Borrowers"), having a mailing address at
00000 X.X. 00xx Xxxxxx, Xxxxxxx, Xxxxxxxxxx 00000, Attention: Xxxxx X. Xxxxxxx,
SPACELABS PRODUITS MEDICAUX LTEE., a Quebec company ("Guarantor"), and BANK OF
AMERICA, N.A., a national banking association ("Lender"), having a mailing
address at 00 Xxxxx Xxxx, Xxxxx 000, Xxxxxxxx, Xxxxxxxxxx 00000, Attention:
Xxxxxxx X. Xxxxxxxxxx. Borrowers and Guarantor are collectively referred to
herein as "Assignor".
BACKGROUND. Borrowers and Lender have entered into that certain Credit
Agreement dated the same date as this Trademark Security Agreement in connection
with a credit facility in the aggregate principal amount of $20,000,000 (as
amended from time to time, the "Credit Agreement"). Pursuant to the terms of the
Credit Agreement and the other documents executed in connection therewith
(collectively, the "Loan Documents"), the Lender has agreed to make loans and
issue letters of credit on behalf of the Borrowers. Pursuant to that certain
Guaranty dated as of the date hereof as amended, restated, supplemented or
otherwise modified from time to time (the "Guaranty"), the Guarantor has agreed
to guaranty the Obligations of Spacelabs Xxxxxxx, Inc. under the Credit
Agreement and to provide to the Lender security for the performance of its
Guaranty. In order to induce the Lender to execute and deliver the Credit
Agreement and the other Loan Documents, and as security for the performance by
the Guarantor of its obligations under the Guaranty, Assignor has agreed to
execute and deliver this Trademark Security Agreement to Lender for filing with
the U.S. Patent and Trademark Office and with any other relevant recording
systems in the jurisdictions of the United States and Canada, and as further
evidence of and to effectuate Lender's existing security interests in the
trademarks described herein. This Trademark Security Agreement is being executed
contemporaneously with a Security Agreement ("Security Agreement") under which
the Lender is granted a lien on and security interest in all trademarks owned by
the Assignor (defined in Section 1 below), and in items including but not
limited to machinery, equipment formulations, manufacturing procedures, quality
control procedures and product specifications ("Other Assets") sold under the
Trademarks or relating to products sold under the Trademarks, whereby Lender
shall have the right to foreclose on the Trademarks and the Other Assets in the
event of the occurrence and continuance of an Event of Default under the Loan
Documents (as defined in the Credit Agreement).
NOW, THEREFORE, in consideration of the premises, Assignor hereby agrees
with the Lender as follows:
1. To secure the complete and timely satisfaction of all Obligations (as
defined in the Credit Agreement), Assignor hereby grants, assigns and
conveys to the Lender a continuing security interest with respect to the
entire right, title and interest in and to the trademark applications
and trademarks listed in Schedule A hereto (as the same may be amended
pursuant hereto from time to time), including without limitation all
renewals thereof, all proceeds of infringement suits), the right to xxx
for past, present and future infringements and all rights corresponding
thereto throughout the world (all of the foregoing are collectively
called the "Trademarks"), and the good
1
will of the business to which each of the Trademarks relates. During the
continuation of an Event of Default under the Credit Agreement, the
Assignor shall transfer to the Lender the Trademarks pursuant to an
Assignment of Trademarks substantially in the form of Schedule B hereto,
and thereafter the Lender shall be entitled to further transfer such
Trademarks. The Assignor hereby irrevocably authorizes the Lender to
date undated Assignments of Trademarks and otherwise complete such
Assignments, and after doing so, the Lender shall provide a copy of such
completed Assignments to the Assignor. Notwithstanding the foregoing
provisions of this Section 1, the Lender acquires no security interest
or other rights in the United States for any Trademark that is the
subject of an intent-to-use application before the U.S. Patent and
Trademark office until such time as a verified amendment to allege use
or statement of use is filed for such application or the Lender arranges
for an assignment of such Trademarks from the Lender to a purchaser that
would satisfy the requirements of Section 10 of the Xxxxxx Act, 15
U.S.C. Section 1060. At the time that Lender seeks to transfer all other
Trademarks pursuant to Schedule B, it may also complete Schedule C with
respect to any U.S. intent-to-use applications and, provided that
Schedule C satisfies the conditions of the preceding sentence, Assignor
agrees that it will promptly execute and return the same to Lender.
Assignor at its expense shall execute and deliver, or cause to be
executed and delivered, to Lender any and all documents and instruments,
in form and substance reasonably satisfactory to Lender, and take any
and all actions, which Lender may reasonably request from time to time,
to perfect and continue perfected, maintain the priority of or provide
notice of Lender's security interest in the Trademarks and to accomplish
the purposes of this Trademark Security Agreement.
2. In addition to the above mentioned assignment, Guarantor hereby grants
to the Lender, as security for its obligations under the Guaranty, a
first ranking movable hypothec under the Civil Code of Quebec in the
principal amount of Forty Million Canadian Dollars (CDN$40,000,000) with
interest thereon at the rate of twenty percent (20%) per annum affecting
the universality of all present and future rights, title and interest
Guarantor may hold, now or in the future, in the Trademarks. If, for the
purpose of obtaining a judgment in any court, it is necessary to convert
the sum due to the Lender in any currency into Canadian currency,
Guarantor and the Lender agree, to the fullest extent that they may
effectively do so, that the rate of exchange used shall be that at
which, in accordance with normal banking procedure, such Lender could
purchase the original currency with the Canadian currency on the
business day preceding the day on which final judgment is given or if
permitted by applicable law, on the day on which the judgment is paid or
satisfied.
3. Assignor covenants and warrants that:
(a) The Trademarks are subsisting and have not been adjudged invalid
or unenforceable;
(b) To the best of Assignor's knowledge, each of the Trademarks is
valid and enforceable;
(c) No written claim has been made to Assignor that the use of any of
the Trademarks violates or may violate the rights of any third
person;
(d) Assignor is the sole and exclusive owner of the entire and
unencumbered right, title and interest in and to each of the
Trademarks, free and clear of any liens, charges and
encumbrances, including without limitation pledges, assignments,
licenses, registered user agreements and covenants by Assignor
not to xxx third persons unless Assignor has
2
entered into a commercially reasonable arrangement for
co-existence of potentially conflicting marks;
(e) Assignor has marked with an asterisk each U.S. intent-to-use
trademark application listed on Schedule A for which a verified
amendment to allege use or statement of use has not been filed;
(f) Assignor has the unqualified right to enter into this Trademark
Security Agreement and perform its terms;
(g) Assignor has not used, and will not use for the duration of this
Trademark Security Agreement, improper statutory notice in
connection with its use of the Trademarks; and
(h) Assignor has used, and will continue to use for the duration of
this Trademark Security Agreement, commercially reasonable
standards of quality in its manufacture of products sold under
the Trademarks.
4. Assignor hereby grants to the Lender and its employees and agents the
right to visit Assignor's plants and facilities which manufacture,
inspect or store products sold under any of the Trademarks, and to
inspect the products and quality control records relating thereto at
reasonable times during regular business hours. Assignor shall do any
and all acts reasonably required by Lender to ensure Assignor's
compliance with Section 3(h).
5. Assignor agrees that, until all of the Obligations shall have been
satisfied in full, it will not enter into any agreement (for example, an
exclusive license agreement) which is inconsistent with Assignor's
obligations under this Trademark Security Agreement, without the
Lender's prior written consent, which consent shall not be unreasonably
withheld. Anything in the Credit Agreement or this Trademark Security
Agreement to the contrary notwithstanding, Assignor may grant
non-exclusive licenses of the Trademarks (subject to the security
interest of Lender therein) in the ordinary course of business
consistent with past practice. Assignor shall ensure that Lender, or any
third party to which Lender may transfer the Trademarks pursuant to the
terms of this Trademark Security Agreement, may be substituted under
such licenses as the licensor following and during the continuation of
an Event of Default.
6. If, before the Obligations shall have been satisfied in full, Assignor
shall obtain rights to any new registered trademarks or applications for
the registrations of any new trademark, the provisions of Section 1
shall automatically apply thereto and Assignor shall give the Lender
prompt written notice thereof.
7. Assignor authorizes the Lender to modify this Trademark Security
Agreement by amending Schedule A to include any future trademarks and
trademark applications covered by Section 1 and Section 6 hereof.
8. In the event Lender elects to realize on the Trademarks following an
Event of Default (as defined in the Credit Agreement), the Lender shall
grant to Assignor the exclusive, nontransferable right and license to
use the Trademarks on and in connection with products sold by Assignor,
for Assignor's own benefit and account and for none other which license
shall be terminable immediately upon written notice to Assignor, as set
forth in Section 9. Assignor agrees not to sell
3
or assign its interest in, or grant any sublicense under, the license
granted to Assignor in this Section 8, without the prior written consent
of the Lender.
9. If any Event of Default shall have occurred and be continuing, the
Lender shall have the right to terminate Assignor's license under the
Trademarks, as set forth in Section 8, upon giving notice to Assignor,
and following such license termination, the Lender shall have, in
addition to all other rights and remedies given it by this Agreement,
those allowed by law and the rights and remedies of a secured party
under the Uniform Commercial Code as enacted in any jurisdiction in
which the Trademarks may be located and, without limiting the generality
of the foregoing, the Lender may immediately, without demand of
performance and without other notice (except as set forth next below) or
demand whatsoever to Assignor, all of which are hereby expressly waived,
and without advertisement, sell at public or private sale or otherwise
realize upon, in King County, Washington, or elsewhere, all or from time
to time any of the Trademarks, or any interest which the Assignor may
have therein, and after deducting from the proceeds of sale or other
disposition of the Trademarks all expenses (including all reasonable
expenses for broker's fees and legal services), shall apply the residue
of such proceeds after payment of the Obligations. Any remainder of the
proceeds after payment in full of the Obligations shall be paid over to
Assignor. Notice of any sale or other disposition of the Trademarks
shall be given to Assignor at least ten (10) days before the time of any
intended public or private sale or other disposition of the Trademarks
is to be made, which Assignor hereby agrees shall be reasonable notice
of such sale or other disposition, and during which time Assignor may
cure such Event of Default, in which event Lender's rights to dispose of
the Trademarks because of such Event of Default shall terminate. At any
such sale or other disposition, Lender may, to the extent permissible
under applicable law, purchase the whole or any part of the Trademarks
sold, free from any right of redemption on the part of Assignor, which
right is hereby waived and released.
10. At such time as Assignor shall completely satisfy all of the
Obligations, this Trademark Security Agreement shall terminate and the
Lender shall execute and deliver to Assignor all deeds, assignments and
other instruments as may be necessary or proper to re-vest in Assignor
full title to the Trademarks, subject to any disposition thereof which
may have been made by Lender pursuant hereto.
11. Any and all fees, costs and expenses, of whatever kind or nature,
including the reasonable attorney's fees and legal expenses incurred by
Lender in connection with the preparation of this Trademark Security
Agreement and all other documents relating hereto and the consummation
of this transaction, the filing or recording of any documents (including
all taxes in connection therewith) in public offices, the payment or
discharge of any taxes, counsel fees, maintenance fees, encumbrances or
otherwise protecting, maintaining or preserving the Trademarks, or in
defending or prosecuting any actions or proceedings arising out of or
related to the Trademarks, shall be borne and paid by Assignor on demand
by the Lender and if not so paid shall be added to the principal amount
of the Obligations and shall bear interest at the rate effective under
the Credit Agreement.
12. Assignor shall have the duty, through counsel reasonably acceptable to
the Lender, to prosecute diligently any trademark applications of the
Trademarks pending as of the date of this Trademark Security Agreement
or thereafter, which Assignor reasonably determines are necessary or
desirable for the conduct of business, until the Obligations shall have
been paid in full, to file and prosecute opposition and cancellation
proceedings and to do any and all acts which in Assignor's reasonable
determination are necessary or desirable to preserve and maintain all
rights in the
4
Trademarks. Any expenses incurred in connection with the Trademarks
shall be borne by Assignor. Assignor shall not abandon any material
Trademark without the consent of the Lender, which consent shall not be
unreasonably withheld, but in all instances Assignor shall give the
Lender not less than ten (10) days prior written notice of its intent to
abandon any Trademark.
13. Assignor shall have the right, with the prior written consent of the
Lender, which will not be unreasonably withheld, to bring any opposition
proceedings, cancellation proceedings or lawsuit in its own name to
enforce or protect the Trademarks, in which event the Lender may, if
necessary, be joined as a nominal party to such suit if the Lender shall
have been satisfied that it is not thereby incurring any risk of
liability because of such joinder. Assignor shall promptly, upon demand,
reimburse and indemnify the Lender for all damages, costs and expenses,
including reasonable attorneys' fees and costs, incurred by the Lender
in the fulfillment of the provisions of this Section 13.
14. In the event of the occurrence and during the continuation of an Event
of Default under the Credit Agreement, Assignor hereby authorizes and
empowers Lender to make, constitute and appoint any officer or agent of
Lender as Lender may select, in its exclusive discretion, as Assignor's
true and lawful attorney-in-fact, with the power to endorse Assignor's
name on all applications, documents, papers and instruments necessary
for Lender to use the Trademarks, or to grant or issue any exclusive or
nonexclusive license under the Trademarks to anyone else, subject to any
license to Assignor which has not been terminated by the Lender, or
reasonably necessary for Lender to assign, pledge, convey or otherwise
transfer title in or dispose of the Trademarks to anyone else. Assignor
hereby ratifies all that such attorney shall lawfully do or cause to be
done by virtue hereof. This power of attorney shall be irrevocable for
the life of this Trademark Security Agreement.
15. If Assignor fails to comply with any of its obligations hereunder,
Lender may do so in Assignor's name or in Lender's name, but at
Assignor's expense, and Assignor hereby agrees to reimburse Lender in
full for all reasonable expenses, including reasonable attorney's fees,
incurred by the Lender in protecting, defending and maintaining the
Trademarks.
16. No course of dealing between Assignor and the Lender, nor any failure to
exercise, nor any delay in exercising, on the part of the Lender, any
right, power or privilege hereunder or under the Credit Agreement or the
other Loan Documents shall operate as a waiver thereof; nor shall any
single or partial exercise of any right, power or privilege hereunder or
thereunder preclude any other or further exercise thereof or the
exercise of any other right, power or privilege.
17. All of the Lender's rights and remedies with respect to the Trademarks,
whether established hereby or by the Credit Agreement or the other Loan
Documents, or by any other agreements or by law, shall be cumulative and
may be exercised singularly or concurrently.
18. The provisions of this Trademark Security Agreement are severable, and
if any clause or provision shall be held invalid and unenforceable in
whole or in part in any jurisdiction, then such invalidity or
unenforceability shall affect only such clause or provision, or part
thereof, in such jurisdiction, and shall not in any manner affect such
clause or provision in any other jurisdiction, or any other clause or
provision of this Trademark Security Agreement in any jurisdiction. This
Trademark Security Agreement is to be read, construed and applied
together with the Security Agreement, the Credit Agreement and the other
Loan Documents which, taken together, set forth
5
the complete understanding and agreement of the Lender and Assignor with
respect to the matters referred to herein and therein.
19. This Trademark Security Agreement is subject to modification only by a
writing signed by the parties, except as provided in Section 7.
20. The benefits and burdens of this Trademark Security Agreement shall
inure to the benefit of and be binding upon the respective successors
and permitted assigns of the parties.
21. WITH THE EXCEPTION OF THE MOVABLE HYPOTHEC GRANTED BY GUARANTOR PURSUANT
TO SECTION 2 HEREOF AND THE HYPOTHECARY RECOURSES ARISING THEREFROM
WHICH SHALL BE GOVERNED BY AND CONSTRUED ACCORDING TO THE LAWS OF THE
PROVINCE OF QUEBEC, THIS TRADEMARK SECURITY AGREEMENT SHALL BE
INTERPRETED AND THE RIGHTS AND LIABILITIES OF THE PARTIES HERETO
DETERMINED IN ACCORDANCE WITH THE INTERNAL LAWS (AS OPPOSED TO THE
CONFLICT OF LAWS PROVISIONS PROVIDED THAT PERFECTION ISSUES WITH RESPECT
TO ARTICLE 9 OF THE UCC MAY GIVE EFFECT TO APPLICABLE CHOICE OR CONFLICT
OF LAW RULES SET FORTH IN ARTICLE 9 OF THE UCC) OF THE STATE OF
WASHINGTON; PROVIDED THAT THE LENDER SHALL RETAIN ALL RIGHTS ARISING
UNDER FEDERAL LAW.
SAVE AND EXCEPT FOR ANY HYPOTHECARY RECOURSE IN THE PROVINCE OF QUEBEC
AGAINST GUARANTOR WHICH SHALL BE UNDER THE JURISDICTION OF THE COURTS OF
THE PROVINCE OF QUEBEC, ANY LEGAL ACTION OR PROCEEDING WITH RESPECT TO
THIS TRADEMARK SECURITY AGREEMENT OR ANY OTHER LOAN DOCUMENT MAY BE
BROUGHT IN THE COURTS OF THE STATE OF WASHINGTON OR OF THE UNITED STATES
OF AMERICA LOCATED IN KING COUNTY, WASHINGTON, AND BY EXECUTION AND
DELIVERY OF THIS TRADEMARK SECURITY AGREEMENT, EACH OF THE ASSIGNORS AND
THE LENDER CONSENTS, FOR ITSELF AND IN RESPECT OF ITS PROPERTY, TO THE
NON-EXCLUSIVE JURISDICTION OF THOSE COURTS. EACH OF THE ASSIGNORS AND
THE LENDER IRREVOCABLY WAIVES ANY OBJECTION, INCLUDING ANY OBJECTION TO
THE LAYING OF VENUE OR BASED ON THE GROUNDS OF FORUM NON CONVENIENS,
WHICH IT MAY NOW OR HEREAFTER HAVE TO THE BRINGING OF ANY ACTION OR
PROCEEDING IN SUCH COURTS IN RESPECT OF THIS TRADEMARK SECURITY
AGREEMENT OR ANY DOCUMENT RELATED HERETO. NOTWITHSTANDING THE FOREGOING:
(1) THE LENDER SHALL HAVE THE RIGHT TO BRING ANY ACTION OR PROCEEDING
AGAINST THE ASSIGNORS OR THEIR PROPERTY IN THE COURTS OF ANY OTHER
JURISDICTION THE LENDER DEEMS NECESSARY OR APPROPRIATE IN ORDER TO
REALIZE ON THE COLLATERAL OR OTHER SECURITY FOR THE OBLIGATIONS AND (2)
EACH OF THE PARTIES HERETO ACKNOWLEDGES THAT ANY APPEALS FROM THE COURTS
DESCRIBED IN THE IMMEDIATELY PRECEDING SENTENCE MAY HAVE TO BE HEARD BY
A COURT LOCATED OUTSIDE THOSE JURISDICTIONS.
THE ASSIGNORS HEREBY WAIVE PERSONAL SERVICE OF ANY AND ALL PROCESS UPON
THEM AND CONSENT THAT ALL SUCH SERVICE OF PROCESS MAY BE MADE BY
REGISTERED MAIL (RETURN RECEIPT REQUESTED) DIRECTED TO THE ASSIGNORS AT
THEIR ADDRESSES SET FORTH IN SECTION 12.8 OF THE CREDIT
6
AGREEMENT AND SERVICE SO MADE SHALL BE DEEMED TO BE COMPLETED FIVE (5)
DAYS AFTER THE SAME SHALL HAVE BEEN SO DEPOSITED IN THE U.S. MAIL
POSTAGE PREPAID. NOTHING CONTAINED HEREIN SHALL AFFECT THE RIGHT OF THE
LENDER TO SERVE LEGAL PROCESS BY ANY OTHER MANNER PERMITTED BY LAW.
22. ASSIGNORS AND THE LENDER EACH IRREVOCABLY WAIVE THEIR RESPECTIVE RIGHTS
TO A TRIAL BY JURY OF ANY CLAIM OR CAUSE OF ACTION BASED UPON OR ARISING
OUT OF OR RELATED TO THIS TRADEMARK SECURITY AGREEMENT, THE OTHER LOAN
DOCUMENTS, OR THE TRANSACTIONS CONTEMPLATED HEREBY OR THEREBY, IN ANY
ACTION, PROCEEDING OR OTHER LITIGATION OF ANY TYPE BROUGHT BY ANY OF THE
PARTIES AGAINST ANY OTHER PARTY OR ANY LENDER-RELATED PERSON OR
PARTICIPANT, WHETHER WITH RESPECT TO CONTRACT CLAIMS, TORT CLAIMS, OR
OTHERWISE. THE ASSIGNORS AND THE LENDER EACH AGREE THAT ANY SUCH CLAIM
OR CAUSE OF ACTION SHALL BE TRIED BY A COURT TRIAL WITHOUT A JURY.
WITHOUT LIMITING THE FOREGOING, THE PARTIES FURTHER AGREE THAT THEIR
RESPECTIVE RIGHT TO A TRIAL BY JURY IS WAIVED BY OPERATION OF THIS
SECTION AS TO ANY ACTION, COUNTERCLAIM OR OTHER PROCEEDING WHICH SEEKS,
IN WHOLE OR IN PART, TO CHALLENGE THE VALIDITY OR ENFORCEABILITY OF THE
CREDIT AGREEMENT, THIS TRADEMARK SECURITY AGREEMENT OR THE OTHER LOAN
DOCUMENTS OR ANY PROVISION HEREOF OR THEREOF. THIS WAIVER SHALL APPLY TO
ANY SUBSEQUENT AMENDMENTS, RENEWALS, SUPPLEMENTS OR MODIFICATIONS TO THE
CREDIT AGREEMENT, THIS TRADEMARK SECURITY AGREEMENT AND THE OTHER LOAN
DOCUMENTS.
[SIGNATURES ON FOLLOWING PAGE]
7
IN WITNESS WHEREOF, each of the parties hereto has caused this Trademark
Security Agreement to be executed and delivered by its duly authorized officer
as of the date first set forth above.
BORROWERS:
SPACELABS MEDICAL, INC., VITA-STAT MEDICAL SERVICES, INC.,
a Delaware corporation a Florida corporation
By: By:
--------------------------------- ---------------------------------
Its: Its:
----------------------------- -----------------------------
SPACELABS MEDICAL, INC., LIFECLINIC MEDICAL DATA
a California corporation CORPORATION, a Washington
By: By:
--------------------------------- ---------------------------------
Its: Its:
----------------------------- -----------------------------
SPACELABS XXXXXXX, INC., XXXXXXXXXX.XXX CORPORATION,
a Delaware corporation a Washington corporation
By: By:
--------------------------------- ---------------------------------
Its: Its:
----------------------------- -----------------------------
GUARANTOR:
SPACELABS PRODUITS MEDICAUX
LTEE., a Quebec company
By:
---------------------------------
Its:
-----------------------------
LENDER:
BANK OF AMERICA, N.A.,
a national banking association
By:
---------------------------------
Its:
-----------------------------
8
SCHEDULE B
TO
TRADEMARK SECURITY AGREEMENT
TRADEMARK ASSIGNMENT
THIS TRADEMARK ASSIGNMENT ("Assignment ") is made and entered into as of
the ___ day of ________, 200__ between SPACELABS MEDICAL, INC., a California
corporation ("Assignor"), having a mailing address at 00000 X.X. 00xx Xxxxxx,
Xxxxxxx, Xxxxxxxxxx 00000, and BANK OF AMERICA, N.A., a national banking
association ("Assignee"), having a mailing address at 00 Xxxxx Xxxx, Xxxxx 000,
Xxxxxxxx, Xxxxxxxxxx 00000.
WHEREAS, Assignor has adopted and owns certain trademarks which are
registered in the U.S. Patent and Trademark Office or which are the subject of
pending use-based applications in the U.S. Patent and Trademark Office
(hereinafter the "Marks") and,
WHEREAS, the Assignee is desirous of acquiring the Marks and
registration therefor.
NOW THEREFORE, in consideration of and in exchange for good and valuable
consideration, the receipt of which is hereby acknowledged, Assignor does hereby
sell, assign and transfer unto Assignee, and its successors and assigns, all of
its right, title and interest in an to the Marks, and the registrations and
applications therefore, together with that part of the good will of the business
connected with the use of and symbolized by the Marks, and including Assignor's
entire right, title and interest in and to any and all causes of action and
rights of recovery for past infringement of the Marks. Assignor hereby covenants
that is has full right to convey the entire interest herein assigned, and that
it has not executed, and will not execute, any agreements inconsistent herewith.
Assignor hereby irrevocably authorizes Assignee to date this undated Assignment
and otherwise complete this Assignment at the time of transfer.
IN WITNESS WHEREOF, the parties have executed this Assignment as of the
dates identified above.
ASSIGNOR:
SPACELABS MEDICAL, INC.,
a California corporation
By:
---------------------------------------
Its:
--------------------------------------
ASSIGNEE:
BANK OF AMERICA, N.A.,
a national banking association
By:
---------------------------------------
Its:
--------------------------------------
Schedule B - Page 1
SCHEDULE C
TO
TRADEMARK SECURITY AGREEMENT
TRADEMARK ASSIGNMENT
THIS TRADEMARK ASSIGNMENT ("Assignment") is made and entered into as of
the ___ day of _________, 200__ between SPACELABS MEDICAL, INC., a California
corporation ("Assignor"), having a mailing address at 00000 X.X. 00xx Xxxxxx,
Xxxxxxx, Xxxxxxxxxx 00000, and BANK OF AMERICA, N.A., a national banking
association ("Assignee"), having a mailing address at 00 Xxxxx Xxxx, Xxxxx 000,
Xxxxxxxx, Xxxxxxxxxx 00000.
WHEREAS, Assignor has adopted and owns certain trademarks which are the
subject of pending intent-to-use applications in the U.S. Patent and Trademark
Office (hereinafter the "Marks") and,
WHEREAS, the Assignee is desirous of acquiring the Marks and
registration therefor.
NOW THEREFORE, in consideration of and in exchange for good and valuable
consideration, the receipt of which is hereby acknowledged, Assignor does hereby
sell, assign and transfer unto Assignee, and its successors and assigns, all of
its right, title and interest in an to the Marks, and the applications therefor,
together with that part of the good will of the business connected with the use
of and symbolized by the Marks, and including Assignor's entire right, title and
interest in and to any and all causes of action and rights of recovery for past
infringement of the Marks. Assignor hereby covenants that is has full right to
convey the entire interest herein assigned, and that it has not executed, and
will not execute, any agreements inconsistent herewith. As indicated below, each
Xxxx is the subject of a verified allegation of use under Section 1(c) or 1(d)
of the Xxxxxx Act that has been filed with the U.S. Patent and Trademark Office,
or it is being assigned as part of a transfer of the entire business or portion
thereof to which the marks pertain as required by Section 10 of the Xxxxxx Act.
IN WITNESS WHEREOF, the parties have executed this Assignment as of the
dates identified above.
ASSIGNOR:
SPACELABS MEDICAL, INC.,
a California corporation
By:
---------------------------------------
Its:
--------------------------------------
ASSIGNEE:
BANK OF AMERICA, N.A.,
a national banking association
By:
---------------------------------------
Its:
--------------------------------------
Schedule C - Page 1
10
Schedule A - Page 1
