TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT ("Agreement"), effective as of
March 1, 1997, is made by and between XXXXXXXXXX LABORATORIES, INC.
("Licensor"), a Texas corporation, having its principal place of
business at 0000 Xxxxxx Xxxx Xxxx, Xxxxxx, Xxxxx 00000, and XXXXX
XXXXXXX, doing business as LIGHT RESOURCES UNLIMITED ("Licensee") with
its principal place of business at 00 Xxxx 00xx Xxxxxx, #000, Xxx Xxxx,
Xxx Xxxx, 00000.
W I T N E S S E T H:
WHEREAS, simultaneously with the execution of this Agreement,
Licensor and Licensee are entering into a Supply Agreement of even date
herewith (the "Supply Agreement") for the sale by Licensor and purchase
by Licensee of bulk AVMP[TM] Powder and/ or Manapol[R] Gold [TM] Powder
(hereinafter referred to under the product name of bulk AVMP[TM] Powder
and/ or Manapol[R] Gold[TM] Powder to be sold in bulk by Licensee ("the
Products");
WHEREAS, Xxxxxxxxxx Laboratories, Inc., a Texas corporation
("Xxxxxxxxxx"), claims the ownership of the trademarks AVMP[TM] Powder and
Manapol[R] Gold[TM] Powder (the "Marks") and has granted to Licensee a
license to use the Marks on a non-exclusive basis;
WHEREAS, Licensee is desirous of obtaining from Licensor, and
Licensor is willing to grant to Licensee, a license, but not an
obligation, to use the product names AVMP[TM] Powder and Manapol[R] Gold
[TM] Powder (the "Marks") in connection with the advertising and sale of the
Products subject to the terms, conditions and restrictions set forth
herein; and
WHEREAS, Licensor and Licensee are mutually desirous of insuring
the consistent quality of all the Products sold in connection with the
Marks;
NOW, THEREFORE, in consideration of premises, the mutual
covenants, promises and agreement set forth herein, and other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties hereby covenant, promise and agree as
follows:
Article 1
LICENSE
1.1 Terms and Conditions. Licensor hereby grants to Licensee
the non-transferable right and license to use the Marks in connection
with the labeling, advertising and sale of the Products sold by
Licensee during the term of this Agreement. During the term of this
Agreement, Licensee shall have the non-exclusive right to use the Marks
in connection with the Products only containing AVMP[TM] Powder and/or
Manapol[R] Gold[TM] Powder that are intended for sale to the ultimate
consumer in the United States and Canada. However, Licensee shall not
be required to use either xxxx if it makes no representations or
references to the source of the bulk powder product it sells.
1.2 License Coterminous With Supply Agreement. The license
granted by this Agreement shall run coterminously with the Supply
Agreement, as well as non-exclusive extensions thereto, and any actions
or events which shall operate to extend or terminate the Supply
Agreement shall automatically extend or terminate this Agreement
simultaneously.
1.3 Sublicenses. Licensee shall not have the right without
written permission from Licensor to grant sublicenses with respect to
the license granted herein; however, Licensee may engage a third party
or parties to make and affix labels for the Products in compliance with
Articles 2,3, and 4 hereof, and/or to distribute and sell the Products
in compliance with the terms and conditions of this Agreement.
Licensee shall be expressly obligated to ensure full compliance with
all terms and conditions of this Agreement.
Article 2
CERTAIN OBLIGATIONS OF LICENSEE
2.1 Representations by Licensee. Licensee shall not represent
in any manner that it owns any right, title or interest in or to the
Marks. Licensee acknowledges that its use of the Marks shall inure to
the benefit of Licensor and shall not create in Licensee's favor any
right, title or interest in or to the Marks.
2.2 Discontinuation of Use of Marks. Upon the expiration or
termination of this Agreement any non-exclusive Supply Agreement,
Licensee will cease and desist from all use of the Xxxx in any manner
and will not adopt or use, without Licensor's prior written consent,
any word or Marks which is confusingly or deceptively similar to the
Marks, except that Licensee may continue to use the Marks under the
terms and conditions of this Agreement in connection with any remaining
supplies of the Products purchased by Licensee from Licensor until such
supplies are exhausted.
2.3 Standards. All bulk products on which the Marks are used
by Licensee shall be of consistent quality and shall meet or exceed all
standards set by Licensor, in Licensor's sole discretion, from time to
time. Licensee shall have thirty (30) days from the receipt of written
notice of any change in the standards to comply with any new
requirements.
2.4 FDA Compliance of Products. All bulk products on which the
Marks are used by Licensee shall be packaged, labeled, advertised,
marketed and sold in compliance with (i) the Federal Food, Drug and
Cosmetic Act and the rules and regulations promulgated thereunder, as
amended from time to time, and (ii) all other applicable laws, rules
and regulations.
2.5 Inspection. Licensor reserves the right to inspect
Licensee's products bearing the Marks and Licensee's packaging
facilities at all reasonable times to insure Licensee's compliance with
this Agreement.
2.6 Use of Trademark. Licensee shall not use the Marks except
as specifically set forth herein. Without limiting the generality of
the preceding sentence, Licensee shall not use the Marks in connection
with the sale or advertising of any products other than the Products.
2.7 Trademark Registration. At Licensor's request and expense
and, except as otherwise provided herein at Licensor's sole discretion
and option, Licensee shall take whatever action is reasonably necessary
to assist Xxxxxxxxxx or its assigns in registering the Marks with the
U.S. Patent and Trademark Office ("USPTO") and/or in perfecting,
protecting or enforcing Xxxxxxxxxx'x and Licensor's rights in and to
the Marks. Licensee understands that Xxxxxxxxxx or its assigns may
rely solely on Licensee's use of the Marks to obtain or maintain
registration with the USPTO.
Article 3
SALE
3.1 Combination With Other Products. Licensee shall not
combine the Products with any product or substance in any manner which
would violate any laws, regulations of any state, federal or other
governmental body. Licensee shall not combine the Products with any
other substance in a product that is to be advertised or sold for use
or consumption by humans or animals if the approval of the U.S. Food
and Drug Administration (the "FDA") or the U.S. Department of
Agriculture ("USDA") for such use or consumption is required and has
not been obtained.
3.2 Compliance by Third Parties. Licensee shall take all steps
reasonably necessary to ensure that its distributors and any other
parties to whom it sells any of the Products for resale do not relabel,
repackage, advertise, sell or attempt to sell the Products or any of
the Products in a manner that would violate this Agreement if done by
Licensee.
Article 4
LABELS AND ADVERTISING
4.1 FDA Compliance of Labels and Advertising. All labels and
advertising relating to the Products offered in connection with the
Marks must strictly comply with all applicable rules and regulations of
the FDA and all other applicable laws, rules and regulations, including
but not limited to FDA requirements relating to product ingredients.
Information regarding the ingredients of the Products shall be
furnished to Licensee by Licensor from time to time.
4.2 Mandatory Requirements. Licensee shall cause all labels,
packaging, advertising and promotional materials used by it in
advertising, marketing and selling the Products by or on behalf of
Licensee include the following legend:
AVMP[TM] Powder is a trademark of Xxxxxxxxxx Laboratories, Inc.
Manapol[R] Gold[TM] Powder is a trademark of Xxxxxxxxxx
Laboratories, Inc.
4.3 Claims by Licensee. Licensee hereby agrees not to make, or
permit any of its employees, agents or distributors to make, any claims
of any properties or results relating to the Products, unless such
claims have received written approval from the FDA.
4.4 FDA or USDA Approval of Claims. If Licensee desires to
seek FDA or USDA approval as to any specific claims with respect to the
Products, Licensee hereby agrees to (i) notify Licensor of the claims
and the application prior to filing and (ii) to keep Licensor informed
as to the progress of the application, including but not limited to
sending Licensor copies of all communications or notices to or from the
FDA or USDA, as applicable.
4.5 Right to Approve Labels, etc. If Licensor so requests,
Licensee shall not use any label, advertisement or marketing material
that contains the Marks unless such label, advertisement or marketing
material has first been submitted to and approved by Licensor.
Licensor shall not unreasonably withhold its approval of any such
label, advertisement or marketing material.
Article 5
NEGATION OF WARRANTIES, DISCLAIMER AND INDEMNITY
5.1 Negation of Warranties, etc. Nothing in this Agreement
shall be construed or interpreted as:
(a) a warranty or representation by Licensor that any product
made, used, sold or otherwise disposed of under the license granted in
this Agreement is or will be free of infringement or the like of the
rights of third parties; or
(b) an obligation by Licensor to bring or prosecute actions or
suits against third parties for infringement or the like of the Marks
or of any registration that may subsequently be granted for such Marks;
or
(c) granting by implication, estoppel or otherwise any licenses
or rights other than those expressly granted hereunder.
5.2 Disclaimer. LICENSOR MAKES NO REPRESENTATIONS, EXTENDS NO
WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT
LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS AND FITNESS FOR A
PARTICULAR PURPOSE, AND ASSUMES NO RESPONSIBILITIES WHATSOEVER WITH
RESPECT TO THE USE, SALE OR OTHER DISPOSITION BY LICENSEE OR ITS
CUSTOMERS, VENDEES OR OTHER TRANSFEREES, WITH RESPECT TO THE MARKS OR
ANY OF THE PRODUCTS MADE OR SOLD BY LICENSEE.
5.3 Liability of Licensee for Products. Licensee shall assume
all financial and other obligations for the Products made and sold by
it under this Agreement and Licensor shall not incur any liability or
responsibility to Licensee or to third parties arising out of or
connected in any manner with Licensee's products made or sold pursuant
to this Agreement. In no event shall Licensor be liable for lost
profits, special damages, consequential damages or contingent
liabilities arising out of or connected in any manner with this
Agreement or the Products made or sold by Licensee under this
Agreement.
5.4 Indemnity of Licensor. Licensee agrees to defend,
indemnify and hold Licensor, its officers, directors, employees and
agents, harmless against all claims, liabilities, demands, damages,
expenses or losses arising out of or connected with (a) the use by
Licensee of the Marks or (b) any use, sale or other disposition of
Licensee's Products by Licensee or by any other party.
5.5 Negation of Trademark Warranty. Licensee acknowledges that
Licensor makes no warranty, express or implied, with respect to its
ownership of any rights relating to the Marks.
Article 6
TERM AND TERMINATION
6.1 Term. Unless terminated earlier as provided for herein,
this Agreement shall remain in full force and effect for a five (5)-
year period ending at May 4, 2002. This Agreement may be extended or
renewed as provided in Section 1.2, or otherwise by the written
agreement of the parties.
6.2 Breach of Agreement. Except as provided otherwise in
Section 6.3, if either party breaches any material provision of this
Agreement and fails to cure the breach within thirty (30) days after
receipt of written notice from the nonbreaching party specifying the
breach, then the nonbreaching party may terminate this Agreement upon
written notice to the breaching party, which right of termination shall
be in addition to, and not in lieu of, all other rights and remedies
the nonbreaching party may have against the breaching party under this
Agreement, at law or in equity. Failure by Licensor to give notice of
termination with respect to any such failure shall not be deemed a
waiver of its right at a later date to give such notice if such failure
continues or again occurs, or if another failure occurs. A breach by
either party of a material provision of the Supply Agreement shall be
deemed a breach by such party of a material provision of this
Agreement.
6.3 Immediate Termination. Licensor may immediately terminate
this Agreement, upon written notice to Licensee, upon the occurrence of
any one or more of the following events: (i) Licensee breaches any
provision of Articles 2, 3, or 4; (ii) Licensee fails to purchase
and/or to pay for the quantities of the Products that it is obligated
to purchase and pay for under the Supply Agreement in accordance with
the terms thereof; (iii) Licensee voluntarily seeks protection under
any federal or state bankruptcy or insolvency laws; (iv) a petition for
bankruptcy or the appointment of a receiver is filed against Licensee
and is not dismissed within thirty (30) days thereafter; (v) Licensee
makes any assignment for the benefit of its creditors; or (vi) Licensee
ceases doing business.
6.4 Survival of Provisions. In the event of termination,
cancellation or expiration of this Agreement for any reason, Sections
2.2, 5.1,5.2, 5.3, 5.4, 5.5 and 7.1 hereof shall survive such
termination, cancellation or expiration and remain in full force and
effect.
Article 7
MISCELLANEOUS
7.1 Equitable Relief. A breach or default by Licensee of any
of the provisions of Articles 2, 3 and 4 hereof shall cause Licensor to
suffer irreparable harm and, in such event, Licensor shall be entitled,
as a matter of right, to a restraining order and other injunctive
relief from any court of competent jurisdiction, restraining any
further violation thereof by Licensee, its officers, agents, servants,
employees and those persons in active concert or participation with
them. The right to a restraining order or other injunctive relief
shall be supplemental to any other right or remedy Licensor may have,
including, without limitation, the recovery of damages for the breach
or default of any of the terms of this Agreement.
7.2 Amendment. This Agreement may be changed, modified, or
amended only by an instrument in writing duly executed by each of the
parties hereto.
7.3 Entire Agreement. This Agreement constitutes the full and
complete agreement of the parties hereto and supersedes any and all
prior understandings, whether written or oral, with respect to the
subject matter hereof.
7.4 No Waiver. The failure of either party to insist upon
strict performance of any obligation hereunder by the other party,
irrespective of the length of time for which such failure continues,
shall not be a waiver of its right to demand strict compliance in the
future. No consent or waiver, express or implied, by either party to
or of any breach or default in the performance of any obligation
hereunder by the other party shall constitute a consent or waiver to or
of any other breach or default in the performance of the same or any
other obligation hereunder.
7.5 Notices. All notices required or permitted to be made or
given pursuant to this Agreement shall be in writing and shall be
considered as properly given or made when personally delivered or when
duly deposited in the mails, first class mail, postage prepaid, or when
transmitted by prepaid telegram, and addressed to the applicable
address first above written or to such other address as the addressee
shall have theretofore specified in a written notice to the notifying
party.
7.6 Assignment. This Agreement or any of the rights or
obligations created herein may be assigned, in whole or in part, by
Licensor. However, this Agreement is personal to Licensee, and
Licensee may not assign this Agreement or any of its rights, duties or
obligations under this Agreement to any third party without Licensor's
prior written consent, and any attempted assignment by Licensee not in
accordance with this Section 8.6 shall be void.
7.7 Relationship of Parties. Nothing contained herein shall be
construed to create or constitute any employment, agency, partnership
or joint venture arrangement by and between the parties, and neither of
them has the power or authority, express or implied, to obligate or
bind the other in any manner whatsoever.
7.8 Remedies Cumulative. Unless otherwise expressly provided
herein, the rights and remedies hereunder are in addition to, and not
in limitation of, any other rights and remedies, at law or in equity,
and the exercise or one right or remedy will not be deemed a waiver of
any other right or remedy.
7.9 Successors and Assigns. The provisions of this Agreement
shall be binding upon and inure to the benefit of the parties and their
respective successors and assigns, provided, however, that the
foregoing shall not be deemed to expand or otherwise affect the
limitations on assignment and delegation set forth in Section 8.6
hereof, and except as otherwise expressly provided in this Agreement,
no other person or business entity is intended to or shall have any
right or interest under this Agreement.
7.10 Governing Law. This Agreement shall be governed by and
interpreted, construed and enforced in accordance with the laws of the
State of Texas, excluding, however, any conflicts of law rules that
would require the application of the laws of any other state or
country.
7.11 Headings. The headings used in this Agreement are for
convenience of reference only and shall not be used to interpret this
Agreement.
7.12 Counterparts. This Agreement may be executed in multiple
counterparts, each of which shall be deemed an original and all of
which will constitute but one and the same instrument.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives as of the date first
above written.
XXXXXXXXXX LABORATORIES, INC.
By:
Name:
Title:
XXXXX XXXXXXX, dba
LIGHT RESOURCES UNLIMITED
By:
