EXHIBIT 10.10
AGREEMENT
THIS AGREEMENT (the "Agreement") is made and entered as of December 22,
1997 by and between Tree of Life, Inc. a Delaware corporation ("TOL"), and Bio-
Engineered Foods, Inc., a Delaware corporation ("BEF").
A. As early as 1940, TOL, or its predecessors in interest, adopted and is
using the marks "BALANCED," "BALANCED FOODS," and BALANCED formative marks (the
"TOL Marks") as a trademark and trade name in connection with a variety of
health and natural food products. TOL owns federal trademark registration nos.
1,596,670, 838,489, 848,251, 845,550, 815,554, 791,925 and 651,530 for
"BALANCED" used in connection with various health and natural food products
including those set forth in Exhibit 1 and application no. 75/268,213 for the
xxxx BALANCED THE TOTAL NUTRITIONAL DRINK used for meal replacement and dietary
supplement drinks ("TOL Products").
B. As early as July 12, 1992, BEF adopted and is using the marks
"BALANCE" and "BALANCE, THE COMPLETE NUTRITIONAL FOOD" as a trademark in
connection with food bars. BEF adopted and is using the xxxx "40-30-30 BALANCE"
in connection with food bars and powdered beverages. BEF owns federal trademark
registration no. 1,956,964 for "BALANCE, THE COMPLETE NUTRITIONAL FOOD" and
pending application nos. 75/331,009, 75/321,186 and 75/321,184 for "BALANCE" and
"BALANCE
*Confidential portions omitted and filed separately with the Commission.
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BAR" as used in connection with certain food products, as more specifically set
forth in Exhibit 2.
C. Pursuant to an agreement dated as of December 19, 1996 between TOL and
BEF (the "Trademark Agreement"), the scope of BEF's use of the word "BALANCE"
was restricted to certain uses.
D. TOL and BEF desire to terminate the Trademark Agreement and enter into
a new agreement with respect to the use of the word "BALANCE(D)."
NOW, THEREFORE, in consideration of these recitals and the following mutual
promises, the parties agree that the Trademark Agreement is hereby amended and
restated as follows:
1. TOL AGREEMENTS.
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1.1 TOL will not claim that the following actions taken or to be taken by
BEF constitute infringement of the TOL Marks or otherwise constitute
unfair competition or a violation of any of TOL's rights:
1.1.1 BEF's use of the marks "BALANCE, THE COMPLETE NUTRITIONAL
FOOD", "40-30-30 BALANCE" and "BALANCE 40-
*Confidential portions omitted and filed separately with the Commission.
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30-30" in connection with any type of goods or services except
for TOL's Products.
1.1.2 BEF's use of the word "BALANCE" alone or in conjunction with
other word(s) and/or symbols in connection with: (a) any type
of nutritional bar products, and (b) processed foods and meals
but only if they are not in the same categories or types of
products as those listed on Exhibit 1 attached hereto and any
additional products introduced by TOL under the xxxx BALANCED
or a BALANCED formative xxxx.
1.1.3 BEF's use or seeking registration of marks containing the term
Balance (and which do not begin with Balance and which do not
begin with an article, pronoun, preposition, or other
nonsubstantive term followed by the word Balance), including
40-30-30 Balance, for products falling in classes 5, 30 and
32 of the international classification system for trademarks
except for TOL's Products.
1.1.4 BEF's use of the word "BALANCE" in BEF's company name.
1.1.5 BEF's use of a xxxx containing the word "BALANCE" for liquid
nutritional supplements, dietary supplements, and meal
replacements provided the xxxx: (a) does not begin with the
word "BALANCE" or
*Confidential portions omitted and filed separately with the Commission.
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with an article, pronoun, preposition or other nonsubstantive
term followed by the word "BALANCE", and (2) is not used with a
tag line, secondary xxxx, or slogan that is similar to "THE
TOTAL NUTRITIONAL DRINK" used by TOL for similar products.
The marks described in Section 1.1 above are collectively defined as
the "BEF Marks." TOL will refrain from taking any action or bringing
any proceeding, legal or otherwise, against BEF's (or its successors,
licensees and assigns and their respective affiliates and
subsidiaries) use of the BEF Marks in connection with BEF's Products.
In this regard, TOL will neither oppose any federal or state
application to register nor seek cancellation of any federal or state
trademark registration of the BEF Marks.
1.2 TOL will not use the word "BALANCED" alone or in conjunction with
other word(s) and/or symbol(s) on or in connection with the
manufacturing, producing, distributing, marketing, advertising and
otherwise exploiting of nutritional bar products.
1.3 TOL will not use the word "BALANCE" alone or in conjunction with other
word(s) and/or symbol(s) on or in connection with any goods or
services; provided that such restriction will not apply to the use of
the word "BALANCE" in a non-trademark or non-trade name manner.
*Confidential portions omitted and filed separately with the Commission.
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2. BEF AGREEMENTS.
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2.1 BEF will not claim that TOL's use of the TOL Marks in connection with
the TOL Products constitutes an infringement of the BEF Marks, or
otherwise constitutes unfair competition or a violation of any of
BEF's rights, and will refrain from taking any action or bringing any
proceeding, legal or otherwise, against TOL's (or its successors,
licensees and assigns and their respective affiliates and
subsidiaries) use of the TOL Marks in connection with the TOL
Products. In this regard, BEF will neither oppose any federal or
state application to register nor seek cancellation of any federal or
state trademark or service xxxx registration of the TOL Marks in
connection with TOL Products. It is understood and agreed that TOL
Products will not include nutritional bar products.
2.2 BEF will not use the word "BALANCED" alone or in conjunction with
other word(s) and/or symbol(s) on or in connection with any goods or
services; provided that such restriction will not apply to the use of
the word "BALANCED" in a non-trademark or non-trade name manner.
3. OTHER PROPRIETARY RIGHTS. This Agreement shall not preclude the parties
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from objecting to permitted uses or registration of BALANCE and BALANCED
formative marks and names under this Agreement if such marks contain or are
used with other
*Confidential portions omitted and filed separately with the Commission.
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marks, names, terms, designs that violate the proprietary rights of the
other party (e.g., BEF's use of TREE OF LIFE 40-30-30 BALANCE, TOL's use of
BALANCED BIO-FOODS).
4. [ * ]
5. CASUAL OR INADVERTENT ACTS. No casual or inadvertent act or omission by
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either party under this Agreement shall constitute a breach of this
Agreement unless the party responsible for such act or omission is notified
in writing of such act or omission by the nonresponsible party and the
responsible party fails to commence reasonable efforts to cure such alleged
breach within thirty (30) days of receiving such notice and cures such
alleged breach within sixty (60) days of receiving such notice.
6. MISCELLANEOUS PROVISIONS.
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6.1 SURVIVAL. The representations, warranties and agreements in this
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Agreement will survive any investigation made by any party, and the
execution of this Agreement.
6.2 ADDITIONAL DOCUMENTS AND ACTS. Each party will sign and deliver
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additional documents and instruments, and perform additional acts,
including providing
*Confidential portions omitted and filed separately with the Commission.
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letters of consent for purposes of registering trademarks, that are
commercially reasonable and necessary to perform its obligations in
this Agreement.
6.3 BINDING EFFECT; PARTIES IN INTEREST. This Agreement is binding on and
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benefits only the parties and their respective permitted successors
and assigns. Nothing in this Agreement gives any rights or remedies to
any person other than the parties and their respective permitted
successors and assigns, nor does anything in this Agreement relieve or
discharge any obligation or liability of any third person to any
party. No provision of this Agreement gives any third person any right
of subrogation or action over or against any party to this Agreement.
6.4 COMPLETE AGREEMENT. This Agreement is the complete and exclusive
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statement of agreement of the parties as to matters covered by it. It
replaces and supersedes all prior written or oral agreements or
statements by and among the parties with respect to the matters
covered by it, including the Trademark Agreement. No representation,
statement, condition or warranty not contained in this Agreement is
binding on the parties.
6.5 AMENDMENTS; WAIVERS. Any amendment to this Agreement requires the
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approval of all parties. Any waiver of any right or remedy requires
the consent of the party waiving it. Every amendment or waiver must be
in writing and
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designated as an amendment or waiver, as appropriate. No failure by
any party to insist on the strict performance of any provision of this
Agreement, or to exercise any right or remedy, will be deemed a waiver
of such performance, right or remedy, or of any other provision of
this Agreement.
6.6 PRODUCT PURCHASE GUARANTEE. BEF guarantees TOL the right to purchase
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the following BEF products during the period covered by the rebate fee
of Paragraph 4 above: (a) any of BEF's products available to TOL as
of December 1, 1997 regardless of the channels of trade they may be
sold through in the future; and (b) any new BEF products that are sold
through TOL's customary channels of trade which include natural foods
stores, supermarkets, and mass market outlets.
6.7 INTERPRETATION. If any claim is made by a party relating to any
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conflict, omission or ambiguity in the provisions of this Agreement,
no presumption or burden of or ambiguity in the provisions of this
Agreement, no presumption or burden of proof or persuasion will be
implied because this Agreement was prepared by or at the request of
any party or its counsel and we waive any statute or rule of law to
the contrary.
6.8 ATTORNEYS' FEES AND COSTS. If any legal action, arbitration or other
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proceeding is brought to enforce or interpret this Agreement or
matters
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relating to it, the substantially prevailing party will be entitled to
recover from the other party reasonable attorneys' fees and other
costs incurred in such action, arbitration or proceeding, in addition
to any other relief to which the prevailing party is entitled.
6.9 NOTICES. All notices (including other communications required or
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permitted) under this Agreement must be in writing and must be
delivered (a) in person, (b) by registered, express, certified mail,
postage prepaid, return receipt requested, (c) by a generally
recognized courier or messenger service that provides written
acknowledgment of receipt by the addressee, or (d) by facsimile or
other generally accepted means of electronic transmission with a
verification of delivery. Notices are deemed delivered when actually
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delivered to the address for notices. Notices shall be addressed as
follows:
If to TOL:
0000 Xxxx Xxxxxxxxx
X.X. Xxx 000
Xx. Xxxxxxxxx, XX 00000-0000
Attn: Vice President Marketing
If to BEF:
0000 Xxxx Xxxxxx
Xxxxxxxxxxx, XX 00000
Attn: Xxxxx X. Xxxxx, CEO
Any party may furnish, from time to time, other addresses for notices
to it.
*Confidential portions omitted and filed separately with the Commission.
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6.10 SPECIFIC PERFORMANCE. It might be impossible to measure in money the
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damage to a party if another party breaches this Agreement. If any
such failure occurs, the party damaged might not have an adequate
remedy at law or in damages. Therefore, each party consents to the
issuance of an injunction and the enforcement of other equitable
remedies against it to compel performance of this Agreement.
6.11 COUNTERPARTS. This Agreement is being executed in several
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counterparts. Each of them is an original and all of them constitute
one agreement.
6.12 HEADINGS; EXHIBITS. The headings in this Agreement are only for
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convenience and ease of reference and are not be considered in
construction or interpretation. All exhibits, schedules and appendices
attached to this Agreement are incorporated herein.
6.13 ENFORCEABILITY. If any provision of this Agreement is held invalid or
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unenforceable, the remainder of this Agreement shall nevertheless
remain in full force and effect.
IN WITNESS WHEREOF, the authorized representatives of the parties
hereto have duly executed this Agreement as of the first date above.
*Confidential portions omitted and filed separately with the Commission.
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TREE OF LIFE, INC. BIO-ENGINEERED FOODS, INC.
By: By:
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Name: Name: Xxxxx X. Xxxxx
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Title: Title: CEO
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*Confidential portions omitted and filed separately with the Commission.
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EXHIBIT 1
TREE OF LIFE, INC
FEDERAL TRADEMARK REGISTRATIONS
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INT'L REG.
XXXX REG. NO. CLASS DESCRIPTION OF GOODS DATE
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BALANCED 1,596,670 29 Applesauce, dried beans, dried milk, 5/15/90
dried edible seeds, garbanzos,
mayonnaise, whey, processed nuts
(namely, pecans, almonds, brazil nuts,
dry roasted peanuts, filberts and
walnut halves).
Candy made primarily of honey; almond
meal, millet meal, xxxxxx bran,
sunflower meal, pumpkin meal and
carob chips.
30
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BALANCED 838,489 29 Shelled and unshelled nuts, more 11/7/67
(Stylized) specifically, pistachio and cashew
nuts.
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BALANCED 848,251 29 Noodles, spaghetti and macaroni. 4/30/68
(Stylized)
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BALANCED 845,550 30 Sugar. 3/5/68
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BALANCED 815,554 29 Foods, namely, pumpkin seeds, 9/20/66
(Stylized) sunflower kernels and dried fruit.
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BALANCED 791,925 29 Sugar containing and sugarless 6/29/65
30 spreads, namely, jellies, jams, apple
and peanut butter; condiments, namely,
mustard, catsup, chili sauce and
spaghetti sauce, salt and spices,
unshelled nuts, rice products, namely,
wild rice, cooked rice and xxxxx xxxx;
honey for use as a food sweetener and
as a food, torula yeast for use as a
food; and soup and soup broth elements,
namely, dehydrated soup, soup powders,
liquid condensed soup and bouillon
cubes.
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BALANCED 651,530 30 Canned foods, namely, fruits and 9/10/57
vegetables and juices thereof, beef,
fish, chicken and condensed soup,
edible oil of vegetable origin for
cooking purposes and brewers' yeast.
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TREE OF LIFE, INC
FEDERAL TRADEMARK APPLICATIONS
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INT'L DESCRIPTION APP.
XXXX APP. NO. CLASS OF GOODS DATE
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BALANCED THE 75/268,213 5 Nutritional supplements, 4/2/97
TOTAL namely, meal replacement
NUTRITIONAL DRINK and dietary supplement
drinks
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*Confidential portions omitted and filed separately with the Commission.
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EXHIBIT 2
BIO-ENGINEERED FOODS, INC.
FEDERAL TRADEMARK REGISTRATIONS
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XXXX REG. NO. INT'L DESCRIPTION OF GOODS REG.
CLASS DATE
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BALANCE, THE 1,956,964 5 Food and nutritional supplements. 2/20/96
COMPLETE
NUTRITIONAL
FOOD
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BIO-ENGINEERED FOODS, INC
FEDERAL TRADEMARK APPLICATIONS
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XXXX APP. NO. INT'L DESCRIPTION OF GOODS APP.
CLASS DATE
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BALANCE 75/331009 5 Food and nutritional supplements. 7/25/97
(Stylized)
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BALANCE 75/321186 5 Food and nutritional supplements. 7/8/97
BAR
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BALANCE 75/321184 5 Food and nutritional supplements. 7/8/97
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