Exhibit 99.4
TRADEMARK SECURITY AGREEMENT
This TRADEMARK SECURITY AGREEMENT dated as of March 6, 2003, among XXXXX
INC., a corporation organized under the laws of Delaware (together with its
successors and permitted assigns, "Borrower"), each of the Domestic Subsidiaries
of the Borrower which is a signatory hereto or which shall become a party hereto
from time to time in accordance with the terms hereof (together with their
respective successors and assigns, and together with the Borrower, the
"Debtors") and FLEET NATIONAL BANK, a national banking association organized
under the laws of the United States (the "Lender") (as amended, supplemented or
otherwise modified from time to time, this "Agreement").
W I T N E S S E T H:
Whereas, the Borrower desires to obtain loans and other financial
accommodations from the Lender under that certain Credit Agreement dated the
date hereof by and between the Borrower and Lender (hereinafter referred to,
together with all amendments thereto, as the "Credit Agreement"); and
Whereas, it is a condition to the obligation of the Lender to make Loans
to the Borrower under the Credit Agreement and to issue Letters of Credit under
the Credit Agreement, that the Debtors shall have executed and delivered this
Agreement to the Lender;
NOW, THEREFORE, for Ten Dollars ($10.00) and other valuable consideration,
and in consideration of the premises, each Debtor hereby agrees with Lender as
follows:
1. Capitalized terms used herein (including those used in the Recitals
hereto), unless otherwise defined, shall have the meanings ascribed to them in
the Credit Agreement.
2. To secure the prompt payment and performance of the Obligations, each
Debtor hereby pledges, assigns and grants to Lender, a continuing security
interest in and lien upon all of the following property of such Debtor, whether
now owned or existing or hereafter created or acquired (the "Trademark
Collateral"):
(a) all trademarks, trademark registrations, tradenames and
trademark applications, including, without limitation, the trademarks and
applications listed on Exhibit A attached hereto and made a part hereof
(as the same may be amended from time to time), and (i) all renewals
thereof, (ii) all income, royalties, damages and payments now or hereafter
due or payable with respect thereto, including, without limitation,
damages and payments for past or future infringements thereof, (iii) the
right to xxx for past, present and future infringements thereof, and (iv)
all rights corresponding thereto throughout the world (all of the
foregoing trademarks, trademark registrations,
tradenames and applications, together with the items described in clauses
(i)-(iv) above, are hereinafter collectively referred to as the
"Trademarks"); provided, however, that the term Trademark shall not
include any trademarks or tradenames used solely in jurisdictions other
than the United States;
(b) the goodwill of such Debtor's business connected with and
symbolized by the Trademarks; and
(c) all proceeds of the foregoing.
3. Each Debtor represents and warrants to Lender with respect to the
Trademarks owned by it as listed on Exhibit A attached hereto that:
(a) Each of the Trademarks is subsisting and has not been adjudged
invalid or unenforceable;
(b) Upon filing of this Agreement in the United States Patent and
Trademark Office, and the filing of a UCC-1 financing statement against
such Debtor in its state of incorporation listing "General Intangibles"
(as defined in the Uniform Commercial Code as in effect in the State of
New York (the "UCC")) among the collateral covered by such financing
statement, this Agreement will create a legal and valid perfected lien
upon and security interest in the Trademark Collateral, enforceable
against such Debtor and all third Persons in accordance with its terms;
(c) To such Debtor's knowledge, no claim has been made that the use
of any of the Trademarks does or may violate the rights of any third
Person;
(d) Such Debtor has the corporate or limited liability company
right to enter into this Agreement and perform its terms; and
(e) Such Debtor is the sole and exclusive owner of the entire
right, title and interest in and to all of the Trademark Collateral, free
and clear of any liens, charges and encumbrances (other than Permitted
Liens), including, without limitation, pledges, assignments, licenses,
registered user agreements and covenants by such Debtor not to xxx third
Persons (other than licenses permitted under Section 8.07(b) of the Credit
Agreement).
4. Each Debtor covenants and agrees with Lender that:
(a) Such Debtor will maintain the quality of the products and/or
services associated with the Trademarks, at a level consistent with the
quality at the time of this Agreement;
(b) Such Debtor will not change the quality of the products and/or
services associated with the Trademarks without Lender's prior written
consent; and
(c) Such Debtor will continue to use for the duration of this
Agreement, proper statutory notice in connection with its use of the
Trademarks, including, without
2
limitation, filing an affidavit of use with the United States Patent and
Trademark Office for each such Trademark as required by applicable law to
maintain the registration thereof without loss of protection therefor.
5. Subject to the provisions of Section 7.07 of the Credit Agreement, each
Debtor hereby authorizes Lender and its employees and agents, the right to visit
such Debtor'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. Each Debtor shall do any and all acts required by
Lender to ensure such Debtor's compliance with paragraph 4(c) of this Agreement.
6. Until the earlier of (i) the sale, other disposition, liquidation or
dissolution of such Debtor or (ii) all of the Obligations have been satisfied in
full and the Credit Agreement has been terminated, each Debtor shall not enter
into any license agreement relating to any of the Trademarks with any Person
except as permitted under Section 8.07(b) of the Credit Agreement, and shall not
become a party to any agreement with any Person that is inconsistent with such
Debtor's duties under this Agreement.
7. If, before the Obligations have been satisfied in full, any Debtor
shall obtain rights to any new trademarks, or become entitled to the benefit of
any trademark application or trademark or any renewal of any Trademark, the
provisions of paragraph 2 hereof shall automatically apply thereto, and such
Debtor shall give to Lender prompt notice thereof in writing.
8. Until the Obligations shall have been satisfied in full and the Credit
Agreement shall have been terminated, each Debtor irrevocably authorizes and
empowers Lender to modify this Agreement by amending Exhibit A attached hereto
to include any future trademarks and trademark applications within the
definition of Trademarks under paragraph 2 or paragraph 7 hereof.
9. At any time after an Event of Default has occurred and is continuing,
Lender shall have, in addition to all other rights and remedies given it by this
Agreement, all rights and remedies under applicable law and all rights and
remedies of a secured party under the UCC. Without limiting the generality of
the foregoing, Lender may immediately, without demand of performance and without
notice (except as described in the next sentence, if required by applicable
law), or demand whatsoever to the Debtors, each of which each Debtor hereby
expressly waives, collect directly any payments due such Debtor in respect of
the Trademark Collateral, or sell at public or private sale or otherwise realize
upon all or from time to time, any of the Trademark Collateral. Each Debtor
hereby agrees that ten (10) days written notice to such Debtor of any public or
private sale or other disposition of any of the Trademark Collateral shall be
reasonable notice; provided, however, that no notice shall be required hereunder
if not otherwise required by applicable law. At any such sale or disposition,
Lender may, to the extent permitted by law, purchase the whole or any part of
the Trademark Collateral sold, free from any right of redemption on the part of
any Debtor, which right such Debtor hereby waives and releases. After deducting
from the proceeds of such sale or other disposition of the Trademark Collateral
all documented costs and expenses incurred by Lender in enforcing its rights
hereunder (including, without limitation, all reasonable attorneys' fees),
Lender shall apply the
3
remainder of such proceeds to the payment of the Obligations in such order and
as provided in Section 10.04 of the Credit Agreement. Any remainder of the
proceeds after payment in full of the Obligations shall be paid over to the
Debtors. If any deficiency shall arise, such Debtor and each Guarantor shall
remain jointly and severally liable to Lender therefor.
10. Each Debtor hereby makes, constitutes and appoints Lender and any
officer or agent of Lender as such Debtor's true and lawful attorney-in-fact,
with full power to do any or all of the following if an Event of Default shall
occur and be continuing: to endorse such Debtor's name on all applications,
documents, papers and instruments necessary for Lender to continue the
registration of or to use the Trademarks, or to grant or issue any exclusive or
nonexclusive license under the Trademarks to any other Person, or to assign,
pledge, convey or otherwise transfer title in or dispose of any Trademark
Collateral to any other Person. Each Debtor hereby ratifies all that such
attorney shall lawfully do or cause to be done by virtue hereof. This power of
attorney, being coupled with an interest, shall be irrevocable until all of the
Obligations shall have been satisfied in full and the Credit Agreement shall
have been terminated.
11. At such time as all of the Obligations shall have been satisfied
finally and in full and the Credit Agreement shall have been terminated, Lender
shall execute and deliver to the Debtors, without representation, warranty or
recourse and at such Debtor's expense, all releases or other instruments
necessary to terminate Lender's security interest in the Trademark Collateral
subject to any disposition thereof which may have been made by Lender pursuant
to the terms of this Agreement or any of the Facility Documents.
12. The Debtors shall be responsible for and pay any and all documented
fees, costs and expenses, of whatever kind or nature (including, without
limitation, reasonable attorneys' fees and legal expenses) incurred by the
Lender in connection with (i) the preparation of this Agreement and any other
documents relating hereto and the consummation of this transaction (ii) the
filing or recording of any documents (including, without limitation, all taxes
in connection therewith) with the United States Patent and Trademark Office or
in any other public offices concerning the Trademark Collateral, the payment or
discharge of any taxes, reasonable counsel fees, maintenance fees or Liens
concerning the Trademark Collateral or otherwise protecting, maintaining, or
preserving the Trademark Collateral and (iii) the enforcement of the Lender's
rights and remedies hereunder, including defending or prosecuting any actions or
proceedings arising out of or related to the Trademark Collateral (it being the
intent of the Debtors and the Lender that the Debtors shall be responsible for
the payment of all such sums, fees, costs and expenses, including, without
limitation, all renewal fees with respect to the Trademarks).
13. The Debtors shall use all reasonable efforts to detect any infringers
of the Trademarks and shall notify Lender in writing of infringements detected.
The Debtors will (subject to the Debtor's reasonable discretion in the ordinary
course of the Business or, after the occurrence of a Default or an Event of
Default and during the continuance thereof, promptly upon Lender's request),
through counsel reasonably acceptable to Lender, (i) to prosecute diligently any
trademark application for a Trademark pending as of the date of this Agreement
or thereafter until the Obligations shall have been paid in full and the Credit
Agreement terminated, (ii) to make federal application on registrable but
unregistered Trademarks, (iii) to file and prosecute opposition and cancellation
proceedings, and (iv) to file and prosecute lawsuits to enforce the Trademarks.
The Debtors will do any and all acts which are deemed necessary by
4
Lender to preserve and maintain all rights in the Trademarks. Any expenses
incurred in connection with such applications or proceedings shall be borne by
the Debtors. No Debtor shall abandon any right to file a trademark application,
or any trademark application or trademark without the consent of Lender.
14. After the occurrence of an Event of Default and during the continuance
thereof, and notwithstanding anything to the contrary contained in paragraph 13
hereof, Lender shall have the right, but shall in no way be obligated, to bring
suit instead in its own name to enforce to protect the Trademarks or any license
hereunder, in either of which events the Debtors shall at the request of Lender,
do any and all lawful acts (including bringing suit) and execute any and all
proper documents required by Lender to aid such enforcement, or defense, and the
Debtors shall promptly, upon demand, reimburse and indemnify Lender for all
costs and expenses incurred in the exercise of Lender's rights under this
paragraph 14.
15. If any Debtor fails to comply with any of its obligations hereunder,
to the extent permitted by applicable law, Lender may do so in such Debtor's
name and in Lender's name, in Lender's sole discretion and after prior written
notice to such Debtor, but at such Debtor's expense, and such Debtor agrees to
reimburse Lender in full for all expenses, including, without limitation,
reasonable attorneys' fees, incurred by Lender in prosecuting, defending or
maintaining the Trademarks or Lender's interest therein pursuant to this
Agreement.
16. No course of dealing between the Debtors and Lender, nor any failure
to exercise, nor any delay in exercising, on the part of Lender, any right,
power or privilege hereunder or under any of the other Facility 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 Lender's rights and remedies with respect to the Trademark
Collateral, whether established hereby or by any of the other Facility
Documents, or by any other agreements or by applicable law shall be cumulative
and may be exercised singularly or concurrently.
18. The provisions of this 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 Agreement in any jurisdiction.
19. This Agreement, together with the other Facility Documents,
constitutes and expresses the entire understanding of the parties hereto with
respect to the subject matter hereof, and supercedes all prior agreements and
understandings, inducements or conditions, whether expressed or implied, oral or
written. This Agreement is subject to modification only by a writing signed by
the parties, except as provided in paragraph 8 hereof.
20. The benefits and burdens of this Agreement shall inure to the benefit
of and be binding upon the successors and permitted assigns of the Lender and
upon the successors of the
5
Debtors. No Debtor shall assign its rights or delegate its duties hereunder
without the prior written consent of Lender.
21. The obligations of the Debtors hereunder shall be joint and several.
22. Each Debtor hereby waives notice of Lender's acceptance hereof.
23. All notices, requests and demands to or upon the Debtors or Lender
shall be given in accordance with Section 12.06 of the Credit Agreement to the
address set forth therein, or, if not set forth therein, to the address set
forth next to the signature block of such party.
24. EACH OF THE DEBTORS AND THE LENDER HEREBY IRREVOCABLY SUBMITS TO THE
JURISDICTION OF ANY NEW YORK STATE OR UNITED STATES FEDERAL COURT SITTING IN NEW
YORK COUNTY OVER ANY ACTION OR PROCEEDING ARISING OUT OF OR RELATING TO THIS
AGREEMENT OR ANY OTHER FACILITY DOCUMENT TO WHICH IT IS A PARTY, AND EACH OF THE
DEBTORS AND THE LENDER HEREBY IRREVOCABLY AGREES THAT ALL CLAIMS IN RESPECT OF
SUCH ACTION OR PROCEEDING MAY BE HEARD AND DETERMINED IN SUCH NEW YORK STATE OR
FEDERAL COURT. EACH OF THE DEBTORS AND THE LENDER AGREES THAT A FINAL JUDGMENT
IN ANY SUCH ACTION OR PROCEEDING SHALL BE CONCLUSIVE AND MAY BE ENFORCED IN
OTHER JURISDICTIONS BY SUIT ON THE JUDGMENT OR IN ANY OTHER MANNER PROVIDED BY
LAW. EACH OF THE DEBTORS AND THE LENDER FURTHER WAIVES ANY OBJECTION TO VENUE IN
SUCH STATE AND ANY OBJECTION TO AN ACTION OR PROCEEDING IN THE STATE ON THE
BASIS OF FORUM NON-CONVENIENS. THE PARTIES HERETO FURTHER AGREE THAT ANY ACTION
OR PROCEEDING BROUGHT AGAINST THE OTHER SHALL BE BROUGHT ONLY IN A NEW YORK
STATE OR UNITED STATES FEDERAL COURT SITTING IN NEW YORK COUNTY.
EACH OF THE DEBTORS AND THE LENDER WAIVES ANY RIGHT IT MAY HAVE TO TRIAL
BY JURY.
Nothing in this Paragraph 24 shall affect the right of the Lender or any
Debtor to serve legal process in any other manner permitted by law or affect the
right of the Lender or any Debtor to bring any action or proceeding in the
courts of any other jurisdictions.
To the extent that any Debtor or Lender has or hereafter may acquire any
immunity from jurisdiction of any court or from any legal process (whether from
service or notice, attachment prior to judgment, attachment in aid of execution,
execution or otherwise) with respect to itself or any of its assets, including
the Trademark Collateral, such Debtor or Lender hereby irrevocably waives to the
fullest extent permitted by law such immunity in respect of its obligations
under this Agreement and the other Facility Documents to which it is a party.
25. THIS AGREEMENT SHALL BE GOVERNED BY, AND INTERPRETED AND CONSTRUED IN
ACCORDANCE WITH, THE LAW OF THE STATE OF NEW
6
YORK, WITHOUT GIVING EFFECT TO THE CONFLICTS OF LAW PRINCIPLES THEREOF.
26. This Agreement may be executed in any number of counterparts, all of
which taken together shall constitute one and the same instrument, and any party
hereto may execute this Agreement by signing any such counterpart.
27. Notwithstanding anything to the contrary contained in this Agreement,
a Debtor may abandon and shall not be required to make filings or take any other
actions to maintain or preserve or enforce or protect, and shall not be liable
for any costs of suits brought by Lender with respect to, any Trademark which in
the reasonable business judgment of such Debtor is no longer useful or of any
material value to the conduct of the Business.
28. To the extent permitted by applicable Law, each Debtor hereby
authorizes the Lender to execute and file at any time or times one or more
financing statements naming such Debtor as debtor pursuant to the UCC with
respect to any or all of the Trademark Collateral with or without the signature
of any Debtor.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
7
IN WITNESS WHEREOF, the parties hereto have duly executed this Trademark
Security Agreement as of the date first written above.
XXXXX INC.
By: /s/ Xxxxxxx X. Xxxxxxxxx
-------------------------------------
Name: Xxxxxxx X. Xxxxxxxxx
Title: Chief Executive Officer and President
FINANCIAL RESEARCH, INC.
KCMS, INC.
XXXXX ASSOCIATES, INC.
KROLL CRISIS MANAGEMENT GROUP, INC.
KROLL ELECTRONIC RECOVERY, INC.
KROLL HOLDINGS, INC.
KROLL ZOLFO XXXXXX HOLDINGS, INC.
LABORATORY SPECIALISTS OF AMERICA, INC.
L.A.M.B. ACQUISITION, INC.
U.S. HOLDING, INC.
By: /s/ Xxxxxxx X. Xxxxxxxxx
--------------------------------------
Name: Xxxxxxx X. Xxxxxxxxx
Title: President
KROLL XXXXX XXXXXX LLC
By: XXXXX INC., member
By: /s/ Xxxxxxx X. Xxxxxxxxx
----------------------------------
Name: Xxxxxxx X. Xxxxxxxxx
Title: Chief Executive Officer and President
XXXXX ONTRACK INC.
ONTRACK DATA RECOVERY, INC.
By: /s/ Xxxxxxx X. Xxxxxxxxx
----------------------------------
Name: Xxxxxxx X. Xxxxxxxxx
Title: Chief Executive Officer
[FIRST SIGNATURE PAGE TO TRADEMARK SECURITY AGREEMENT]
8
CORPLEX INC.
By: /s/ Xxxxxxx Xxxxxxxxx
---------------------------------
Name: Xxxxxxx Xxxxxxxxx
Title: President
CRUCIBLE, INC.
By: /s/ J. Xxxxx XxXxxx
----------------------------------
Name: J. Xxxxx XxXxxx
Title: President
INPHOTO SURVEILLANCE, INC.
By: /s/ A. Xxxxxxx Xxxxx
-----------------------------------
Name: A. Xxxxxxx Xxxxx
Title: Vice President
KROLL BACKGROUND AMERICA, INC.
By: /s/ Xxxxxxx Xxxxxxxxx
-----------------------------------
Name: Xxxxxxx Xxxxxxxxx
Title: President
KROLL LABORATORY SPECIALISTS, INC.
By: /s/ Xxxxxxx Xxxxxxxx
-----------------------------------
Name: Xxxxxxx Xxxxxxxx
Title: President
[SECOND SIGNATURE PAGE TO TRADEMARK SECURITY AGREEMENT]
9
KROLL XXXXXXXXX XXXX, INC.
By: /s/ Xxxxxxx Xxxxx
----------------------------------
Name: Xxxxxxx Xxxxx
Title: Vice President
KROLL SCHIFF & ASSOCIATES, INC.
By: /s/ Xxxx Xxxxxx
----------------------------------
Name: Xxxx Xxxxxx
Title: President
LENDER:
FLEET NATIONAL BANK
By: /s/ Xxxxxxx X. Xxxxx
----------------------------------
Name: Xxxxxxx X. Xxxxx
Title: Senior Vice President
[THIRD SIGNATURE PAGE TO TRADEMARK SECURITY AGREEMENT
10
