Exhibit 10.6
TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT, including all Exhibits hereto (this
"Agreement"), is entered into and effective the 1st day of August 2002 (the
"Effective Date"), by and between NEON Systems, Inc. ("Licensor"), and
Peregrine/Bridge Transfer Corporation ("Licensee").
WHEREAS, Licensor has certain rights in and to the marks listed on Exhibit
A hereto (such marks, singularly and collectively, are referred to as the
"Marks"); and
WHEREAS, Licensee desires to obtain a nonexclusive, paid-up license to use
the Marks solely in connection with the goods and services identified on Exhibit
B hereto (the "Licensed Items") and in its proposed name-change to "Neon
Enterprise Software, Inc.," and Licensor is willing to permit such use by
Licensee subject to the terms of this Agreement.
NOW, THEREFORE, in consideration of the mutual agreements and promises
expressed in this Agreement, and other good and valuable consideration, the
receipt, sufficiency and adequacy of which are hereby acknowledged, the parties
have agreed as follows:
1. License Grant. Subject to the terms and conditions of this Agreement,
Licensor grants Licensee, who hereby accepts, a worldwide, royalty-free,
nonexclusive and nontransferable right and license to use the Marks solely in
connection with the Licensed Items set forth in Exhibit B. Except for such
license, all other rights are hereby reserved to Licensor. Licensee shall not
advertise, promote, sell, provide, lease, transfer, or otherwise distribute any
goods or services bearing the Marks (or in connection with which any of the
Marks is used) except Licensed Items.
2. Use of the Marks. All uses of and references to the Marks by Licensee
shall conform with such instructions therefor as Licensor from time to time may
provide Licensee. Licensee shall place the following notice (or such other
notice as Licensor may reasonably request) in a prominent place on each of the
Licensed Items and, if the Licensed Items include services, on each copy of any
promotional or advertising materials or media which contain, embody, or mention
the Marks:
(TM)/(R) NEON Systems, Inc.
As to those Marks which have been registered in the U.S.A., Licensee shall use
the "(R)" symbol. Otherwise, Licensee shall use the symbol "(TM)".
3. Ownership. (a) Subject to Section 3(b), the Marks, and all rights
relating thereto, shall remain the sole and exclusive property of Licensor. All
uses of the Marks shall inure solely to the benefit of Licensor. Nothing in this
Agreement or otherwise shall give Licensee or others any right, title, or
interest whatsoever in and to the Marks other than the rights expressly granted
- 1 -
hereunder. Licensee agrees that it shall not attack or dispute Licensor's title
or rights in and to the Marks or the validity thereof. Licensee shall not
register any of the Marks in its own name. (b) If Licensor chooses to entirely
discontinue the use of the Marks for any goods or services, Licensor shall
promptly notify Licensee of such decision. Licensee may acquire all of
Licensor's rights and title in the Marks by sending written notice of Licensee's
decision to that effect to Licensor within thirty (30) days from Licensee's
receipt of notice of Licensor's decision of such discontinuation. Upon receipt
of such notice from Licensee, Licensor shall thereafter execute such lawful
instruments as are needed to convey Licensor's rights and title in the Marks to
Licensor. No payment of fees to Licensor by Licensee shall be required for such
transfer. If Licensee fails to provide timely written notice to Licensor to
acquire the Marks, then Licensor's obligations under this Section 3(b) shall be
forever discharged.
4. Use by Others. Licensor, and its other licensees, shall have the right
to use the Marks simultaneously with the use of the Marks by Licensee. Licensor
does not warrant or represent that Licensee will have the sole and exclusive
right to use the Marks. Licensor is not obliged to indemnify or reimburse
Licensee for any expenses by Licensee in connection with Licensee's use of the
Marks.
5. Modifications. Licensee recognizes and agrees that from time to time,
Licensor may change or modify the Marks. Licensee agrees that it shall accept
and promptly use such changes and modifications as if they were a part of this
Agreement at the time of the execution hereof, and to make any and all
expenditures that such charges or modifications may require. Licensee shall not
modify or alter the Marks and shall not use the Marks in connection or
combination with any other trademark or service xxxx without the prior written
approval of Licensor. Licensee may not use the Marks on any new products, goods,
promotional materials, or any other items without first submitting two (2)
actual specimens of same to Licensor and obtaining Licensor's prior written
consent to such proposed usage. Licensee shall not use, form or participate in
the formation or operation of any firm or company which incorporates or
embodies, any of the Marks or Licensor's name, and Licensee shall not allow
others to use the Marks or Licensor's name. Notwithstanding the foregoing,
Licensee may use the Xxxx "NEON" in its corporate name, currently anticipated to
be changed to "Neon Enterprise Software, Inc." provided that Licensee shall
indemnify Licensor against any third party claims arising out of or related to
Licensee's use of the Marks in their corporate name and marketing identity.
6. Quality Control. All uses of the Marks (including without limitation all
promotional, advertising, and packaging materials used in connection with the
Licensed Items) by Licensee shall be in accordance with the standards of quality
therefor as set by Licensor, and as amended by Licensor from time to time.
Without limiting the foregoing, the quality of the Licensed Items, as well as
the quality of all promotional and advertising materials using the Marks, shall
meet or exceed the quality of the corresponding goods, services, and promotional
and advertising materials of Licensor prior to the Effective Date. Licensee
shall cooperate with Licensor in facilitating Licensor's control of the nature
and quality of the Licensed Items, and all promotional, advertising, and
packaging materials therefor, and to permit the reasonable inspection of
Licensee's operations, and to supply Licensor with specimens of use of the Marks
promptly upon Licensor's request therefor. Licensee shall sell only those
Licensed Items which
- 2 -
have been previously authorized by Licensor and which meet or exceed Licensor's
quality standards.
7. Protection of the Marks. Licensee shall cooperate with Licensor in
connection with efforts to protect the Marks, including without limitation
efforts to obtain registrations and/or prevent any infringements. Licensee shall
promptly comply with Licensor's reasonable requests for information, specimens
of usage, and the like, and shall promptly execute such lawful instruments as
Licensor may reasonably request. In the event of any actual or suspected
infringement or piracy of any aspect of the Marks, Licensee shall immediately
report the same to Licensor in writing. Licensor shall have the sole and
exclusive right to institute any claim, demand, or cause of action with respect
to any such suspected or actual infringement or piracy. Licensor shall have no
obligation or duty, however, to institute any such claim, demand, or cause of
action. Licensee shall furnish Licensor full cooperation in connection with any
such claim, demand, or cause of action. Licensee shall furnish Licensor full
cooperation in connection with any such claim, demand or cause of action,
including, if requested by Licensor, joining as a party to any such cause of
action.
8. Independent Contractor Relationship. Licensee certifies that it is an
independent contractor and not the agent or legal representative of Licensor and
that any representation made or agreement executed by Licensee shall be
Licensee`s sole responsibility. Licensee shall conduct its business for the
promotion, purchase, sale and resale of Licensed Items as a principal solely for
its own account and at its own expense and risk. Licensee shall be solely
responsible for all commitments incurred or assumed by it during the term of
this Agreement or thereafter, and Licensor shall not be held responsible in any
manner therefor, irrespective of any suggestion or recommendation with respect
thereto by Licensor or its employees or representatives. Licensee represents
that it will not act or represent itself directly or by implication as an agent
for Licensor and will not attempt to create any obligation, or make any
representation, on behalf of or in the name of Licensor. Licensee further shall
not have authority to and shall not appoint any licensee, associate licensee or
sublicensee of the Marks without the prior written approval of an authorized
officer of Licensor. All financial and other obligations associated with
Licensee's business are and will remain the sole responsibility of Licensee.
Because Licensor and Licensee are independent contractors, nothing contained in
this Agreement shall be construed to (i) give either party the power to direct
or control the activities of the other; (ii) constitute the parties as principal
and agent, partners, joint venturers, or co-owners or otherwise as participants
in a joint undertaking; or (iii) allow Licensee to create or assume any
obligation on behalf of Licensor for any purpose whatsoever. THIS IS NOT A
FRANCHISE (OR BUSINESS OPPORTUNITY) RELATIONSHIP.
9. Protection of Goodwill. Licensee at all times shall use its best efforts
to act and operate in a manner consistent with good business ethics, and in a
manner that will reflect favorably on the Licensed Items and on the goodwill and
reputation of Licensor and the Marks. Licensee's best efforts shall include at a
bare minimum, but are not limited to, the prompt performance of all of its
obligations under this Agreement. Licensee at all times shall refrain from
engaging in any illegal, unethical, unfair or deceptive practices, whether with
respect to the Licensed Items or otherwise. Licensor may immediately terminate
this Agreement if Licensee
- 3 -
does anything which in Licensor's opinion may tarnish or diminish the goodwill
associated with the Marks and/or the goodwill or reputation of Licensor.
10. Taxes. Licensee shall pay all license fees, sales, use, occupation,
personal property, transportation and excise taxes and any other fees,
assessments or taxes which may be assessed or levied by any national, state or
local government and any departments and subdivisions thereof, on or against any
of the Licensed Items or in connection with this Agreement and/or Licensee's
business. Licensee is free to determine its own resale prices for Licensed
Items.
11. Disclaimers; Limits of Liability. LICENSOR MAKES NO WARRANTIES, EXPRESS
OR IMPLIED, AND EXPRESSLY EXCLUDES AND DISCLAIMS ALL WARRANTIES, EXPRESS OR
IMPLIED, THAT MIGHT OTHERWISE ARISE INCLUDING THE IMPLIED WARRANTIES OF (1)
MERCHANTABILITY; AND (2) FITNESS FOR A PARTICULAR PURPOSE; AND (3) THAT THE
LICENSED ITEMS AND/OR LICENSEE'S USE OF THE MARKS ARE FREE FROM INFRINGEMENT OF
PATENTS, COPYRIGHTS, TRADEMARKS, OR PROPRIETARY RIGHTS OF THIRD PARTIES. NO
REPRESENTATIONS OR WARRANTIES HAVE BEEN MADE TO LICENSEE AS TO ITS EARNINGS,
SUCCESS, REVENUES, PROFITS OR LOSSES PURSUANT TO THIS AGREEMENT AND LICENSOR
HEREBY EXPRESSLY DISCLAIMS ANY REPRESENTATION OR WARRANTY, EXPRESS OR IMPLIED,
AS TO ANY EARNINGS, SUCCESS, REVENUES, PROFIT, LOSS, OR FAILURE OF LICENSEE
HEREUNDER. LICENSOR'S ENTIRE LIABILITY AND LICENSEE'S SOLE AND EXCLUSIVE REMEDY
FOR DAMAGES FROM ANY CAUSE WHATSOEVER, WHETHER SOUNDING IN CONTRACT, TORT, UNDER
STATUTE, OR OTHERWISE (INCLUDING WITHOUT LIMITATION ANY NONPERFORMANCE OR
MISREPRESENTATION) SHALL BE LIMITED TO THE AGGREGATE SUM OF U.S. $10,000. IN NO
EVENT WILL LICENSOR BE LIABLE FOR (i) ANY DAMAGES CAUSED, IN WHOLE OR PART, BY
LICENSEE, OR FOR (ii) ANY LOST REVENUES, LOST PROFITS, LOST SAVINGS OR OTHER
INDIRECT, INCIDENTAL, SPECIAL OR CONSEQUENTIAL DAMAGES INCURRED BY ANY PERSON
EVEN IF LICENSOR HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES OR CLAIMS.
12. Term and Termination. This Agreement shall remain in full force and
effect unless and until terminated as provided for herein. Either party may
terminate this Agreement in the event of a material breach by the other upon
fifteen (15) days prior written notice thereof to the other, with the license to
automatically terminate at the end of such fifteen (15) days.
13. Post-Terminations Rights/Duties. Upon termination of this Agreement,
Licensee shall promptly cease all use of the Marks and shall not thereafter
adopt or use in any manner any name, trademark, service xxxx, logo, device, or
the like which is or may be confusingly similar to the Marks. Licensor shall
have no responsibility to purchase from Licensee any Licensed Items remaining in
Licensee's inventory at the date this Agreement is terminated and shall have no
liability to Licensee for such inventory. Upon the termination hereof, Licensee
shall destroy or sell to Licensor at Licensor's option all materials in
Licensee's possession, custody, or control
- 4 -
which bear the Marks. Neither Licensor nor Licensee shall by reason of the
termination or non-renewal of this Agreement be liable to the other for
compensation, reimbursement or damages on account of the loss of prospective
profits, or anticipated sales or on account of expenditures, investments,
leases, property improvements or commitments. Upon termination of this
Agreement, Licensee shall thereafter refrain from operating or doing business
under any name or in any manner that might tend to give the general public the
impression that the license granted pursuant to this Agreement is still in force
or that Licensee is in any way connected or affiliated with or sponsored by
Licensor. The provisions of Sections 3, 10, 11, 13, 14, 15, and 20 shall survive
the termination or expiration of this Agreement.
14. Indemnity. Licensee shall be solely responsible for and shall defend,
indemnify, and hold Licensor harmless from and against any and all claims or
causes of action whatsoever, and any and all liabilities and every loss, cost,
and expense, including the cost of investigating the claim and reasonable
attorneys' fees incurred by Licensor, brought by Licensee's employees, agents,
subcontractors, sublicensees, and representatives, or any other third party,
caused by, arising out of, or relating to the exercise or practice of the rights
granted hereunder by Licensor to Licensee. This contractual obligation of
indemnification shall extend to and cover the manufacture, use, sale, lease,
rental or other providing or marketing of any Licensed Items and any other goods
or services in connection with which Licensee has used the Marks. This
contractual obligation of defense and indemnification shall extend in favor of
the officers, employees, agents, and representatives of Licensor. This
contractual obligation of defense and indemnification shall include claims,
demands, or causes of action on account of any death or bodily injury to person
or injury to property or economic loss. THIS CONTRACTUAL OBLIGATION OF DEFENSE
AND INDEMNIFICATION SHALL INCLUDE CLAIMS, DEMANDS, OR CAUSES OF ACTION ALLEGING
SOLE OR CONCURRENT NEGLIGENCE OR OTHER FAULT ON THE PART OF LICENSOR. If a court
of competent jurisdiction enters a final judgment that Licensor is partially
negligent with respect to a third party claim, then Licensee's indemnification
obligations shall be reduced on a proportionate basis by Licensor's
proportionate share of negligence so adjudicated.
15. Insurance. Licensee shall obtain and maintain throughout the term of
this Agreement and the applicable statute(s) of limitations, at its own cost and
expense, one or more policies of standard Products Liability Insurance, one or
more policies of standard Advertiser's Liability Insurance, and one or more
policies of standard Comprehensive General Liability insurance. Such policies
shall be obtained from an insurance company authorized to do business in the
State of Texas and shall be in a form acceptable to Licensor. Such policies
shall provide protection against any and all claims, demands, suits, actions,
causes, judgments, and liabilities arising out of any defects in or failure to
perform of any of the Licensed Items. The amount of coverage of each of such
policies shall be a minimum of One Million Dollars ($1,000,000.00) combined
single limit, with no deductible amount, for each single occurrence for bodily
injury, including death, and/or property damage. Licensor shall be named as an
additional insured on such policies. Such policies also shall provide for at
least ten (10) days' written notice to Licensor prior to any modification,
cancellation or termination thereof. Licensee shall furnish Licensor
certificates evidencing such insurance within one (1) week after the execution
of this Agreement. Licensee further agrees to obtain and provide to Licensor
certificates of insurance from each manufacturer of Licensed Items not made by
Licensee evidencing Products Liability
- 5 -
Insurance coverage for such Licensed Items. In no event shall Licensee make,
offer for sale, advertise, promote, ship, and/or distribute any Licensed Items
prior to Licensor's receipt of the certificates of insurance specified in this
Section.
16. Amendment; Waiver; Modification. No amendment, modification or waiver
of any provision of this Agreement and no consent to any departure therefrom,
shall be effective unless in writing and signed by duly authorized
representatives of each party. No notice to or demand on Licensee shall entitle
it to any other or further notice or demand in similar or other circumstances.
No failure or delay on the part of Licensor in exercising any right, power or
remedy hereunder shall operate as a waiver thereof; nor shall any single or
partial exercise of any such right, power or remedy preclude any other or
further exercise thereof or the exercise of any other right, power or remedy
hereunder.
17. Assignment. This Agreement shall be binding upon and inure to the
benefit of the parties hereto and their respective successors and assigns,
except that Licensee shall not grant any sublicenses or assign, delegate or
otherwise transfer its rights or obligations hereunder or any interest herein
(including any assignment or transfer occurring by operation of law) without the
prior written consent of Licensor. Notwithstanding the foregoing, Licensee may
assign this agreement in connection with a corporate name-change,
reorganization, reincorporation, recapitalization or other corporate transaction
that does not effect a change in control of the Licensee, without the consent of
the Licensor. Licensor may freely assign or transfer any or all of its rights,
obligations, or interest herein.
18. Compliance with Laws. Licensee shall, at all times hereunder, comply
with any and all applicable laws, including without limitation all applicable
export and import laws and regulations. Licensee shall not export any Licensed
Items outside the United States without first obtaining or procuring any
necessary governmental license or approval and the prior written approval of an
authorized officer of Licensor as to any such specific area or country.
19. Notices. All notices and other communications provided for hereunder
shall be in the English language, in writing and mailed, telexed, telegraphed or
telecopied to the applicable party at the address or telecopy number of such
party as may be set forth on the first page hereof or at such other address or
telex or telecopy number as shall be designated by any party in a written notice
to the other party complying as to delivery with the terms of this Section. Each
such notice or other communication shall, when mailed or telexed or telegraphed
or telecopied, be deemed received on the third working day after it has been
deposited in the mails or when delivered to the telegraph company or
mechanically confirmed as to receipt by telex or telecopy. When mailed, any
notice shall be sent by first class certified mail, return receipt requested,
enclosed in a postage prepaid wrapper.
20. Choice of Law. This Agreement is deemed made and accepted in Houston,
Xxxxxx County, Texas, United States of America, and shall be governed by and
construed in accordance with the laws of the State of Texas, excluding therefrom
Texas' conflicts or choice of law rules which lead or may lead to the
application of the substantive law of another jurisdiction. Any disputes or
controversies relating to or arising out of this Agreement, or its performance
or breach, shall be resolved by the state or federal courts sitting in Houston,
Xxxxxx County, Texas.
- 6 -
21. Reformation; Severability. If any provision of this Agreement is
declared invalid by any tribunal of competent jurisdiction, then such provision
shall be deemed automatically adjusted to conform to the requirements for
validity as declared at such time, and, as so adjusted, shall be deemed a
provision of this Agreement as though originally included herein. In the event
that the provision invalidated is of such nature that it cannot be so adjusted,
the provision shall be deemed deleted from this Agreement as though the
provision had never been included herein. In either case, the remaining
provisions of this Agreement shall remain in effect.
22. Force Majeure. Licensor shall not be responsible for any delay or
failure in performance hereunder due to fire, flood, or other natural
catastrophe, Act of God, governmental action, war or civil disturbance, strike,
manufacturer's or supplier's nondelivery or any other cause beyond Licensor's
reasonable control, whether similar or dissimilar to any of the foregoing.
23. Multiple Counterparts. This Agreement may be executed in any number of
copies, each of which when so executed and delivered shall be deemed to be an
original and all of which taken together shall constitute but one and the same
instrument. The organization of this Agreement is for convenience of reference
and shall not constitute a part of the Agreement for any other purpose.
24. Sole and Entire Agreement. Each of the parties hereto agrees that there
are no other agreements, understandings, or representations, oral or written,
other than as set forth herein, and that this Agreement supersedes and replaces
any and all prior and contemporaneous agreements, understandings,
representations, statements, or other communications, relating to the subject
matter hereof. The parties hereto further agree that this Agreement constitutes
the sole and entire agreement between the parties relating to the subject matter
hereof.
25. Rules of Construction. As used in this Agreement: (a) the words
"hereof," "herein," and "hereunder" and similar words shall refer to the entire
Agreement and not to any particular provision of this Agreement; and (b) words
defined in the singular shall have a comparable meaning when used in the plural
sense, and vice versa.
- 7 -
IN WITNESS WHEREOF, this Agreement has been executed by the duly authorized
representatives of the parties to be effective the day and year first above
written.
Licensor: Licensee:
NEON SYSTEMS, INC. PEREGRINE/BRIDGE TRANSFER CORPORATION
By:_______________________________ By:___________________________
Name:_____________________________ Name:_________________________
Title:____________________________ Title:________________________
Date:_____________________________ Date:_________________________
- 8 -
EXHIBIT A TO LICENSE AGREEMENT
The Marks consist of the following:
Xxxx U.S. Registration/Application No.
NEON 24X7 MISSION CONTROL S/N 76/183,006
NEON UNLOAD 2,494,023
NEON 24X7 2,494,023
NEON 1,376,394
The following product names to the extent they are trademarks of NEON:
1) NEON 24X7
2) NEON 24X7 (Full function or Fast Path version only)
3) NEON iSurvey
4) Affinities Server
5) NEON iUnload (ff)
6) NEON iLoad (ff)
7) NEON iBuild (ff)
8) NEON iCheck (ff)
9) NEON iCopy (ff)
10) NEON iRecover
11) NEON iChange
12) Partitioned Database Facility ("PDF") V3
13) Partitioned Database Facility ("PDF") V3 Utilities
14) NEON HS Unload
15) NEON HS Load
16) NEON HS Index
17) Speed Unload (to be withdrawn from support on 4-30-03)
18) Speed Load (to be withdrawn from support on 4-30-03)
19) Dynamic Index Utility
20) Random Max - no longer being licensed
21) Speed Key - no longer being licensed
22) NEON iDirect
- 9 -
EXHIBIT B TO LICENSE AGREEMENT
The Licensed Items consist of the following:
Mainframe Software Programs, including PBTC's current or future IMS, CICS and
NEON 24x7 computer software programs, user manuals relating to such programs,
and consulting, training, and maintenance services relating to such programs.
- 10 -
