AMENDMENT NO. 1 TO AMENDED AND RESTATED COLLATERAL ASSIGNMENT OF TRADEMARKS (SECURITY AGREEMENT)
Exhibit 10.5
[Execution]
AMENDMENT NO. 1
TO
AMENDED AND RESTATED COLLATERAL ASSIGNMENT
OF TRADEMARKS (SECURITY AGREEMENT)
This AMENDMENT NO. 1 TO AMENDED AND RESTATED COLLATERAL ASSIGNMENT OF TRADEMARKS (SECURITY AGREEMENT) (this “Amendment”), dated October 24, 2014, is made among XXXXXX NEW YORK, INC., a Delaware corporation (“Pledgor”), with an office at 000 Xxxx 00xx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000, in favor of XXXXX FARGO BANK, NATIONAL ASSOCIATION, a national banking association, with an office at 000 Xxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000, in its capacity as agent (in such capacity, “Pledgee”), for the Lenders and Bank Product Providers (as defined in the Loan Agreement).
W I T N E S S E T H:
WHEREAS, Pledgor has entered into the Amended and Restated Collateral Assignment of Trademarks (Security Agreement), dated as of August 22, 2007 (the “Trademark Security Agreement”), in order to further evidence Pledgor’s grant in favor of Pledgee, of a security interest in the Trademarks (as defined therein) and the goodwill and certain other assets with respect to the Trademarks, as further set forth therein;
WHEREAS, Pledgee, Pledgor, Lernco, Inc. (“Lernco”) and Xxxxxx New York Outlet, Inc. (“Xxxxxx Outlet” and together with Pledgor, and Lernco, collectively, “Borrowers”), Guarantors, and the Persons from time to time party thereto as lenders (“Lenders”), have amended and restated or are about to amend and restate the existing financing arrangements of Pledgee, Lenders, Borrowers and Guarantors pursuant to which Lenders (or Pledgee on behalf of Lenders) may make loans and advances and provide other financial accommodations to Borrowers as set forth in the Fourth Amended and Restated Loan and Security Agreement, dated as of the date hereof, by and among Pledgee, Lenders, Borrowers and Guarantors (as the same now exists or may hereafter be amended, modified, supplemented, extended, renewed, restated or replaced, the “Loan Agreement”) and other agreements, documents and instruments referred to therein or at any time executed and/or delivered in connection therewith or related thereto (all of the foregoing, together with the Loan Agreement, as the same now exist or may hereafter be amended, modified, supplemented, extended, renewed, restated or replaced, being collectively referred to herein as the “Financing Agreements”);
WHEREAS, pursuant to the Trademark Security Agreement, Pledgor has, among other things, granted to Pledgee a security interest in all present and Future Trademarks and Trademark applications of Pledgor, together with certain related assets, and has agreed to execute and deliver to Pledgee all agreements and documents as requested by Pledgee to evidence the security interests of Pledgee therein;
WHEREAS, Pledgor has certain additional Trademarks, Trademark applications, internet domain names registered or filed with the United States Patent and Trademark Office and Collateral which are not reflected in the Trademark Security Agreement; and
WHEREAS, Pledgor and Pledgee now wish to amend the Trademark Security Agreement to include such additional Trademarks, Trademark applications and internet domain names and other Collateral.
NOW, THEREFORE, in consideration of the premises and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Grantor hereby agrees as follows:
1. Amendments to Exhibit A. Exhibit A to the Trademark Security Agreement is hereby replaced with Exhibit A attached hereto. Pledgor shall deliver, in form and substance acceptable to Pledgee, an updated Exhibit A on or before November 7, 2014 to include the international and state registered Trademarks of Pledgor. Such Exhibit A shall include all Trademarks of Pledgor and shall automatically be deemed to replace the existing Exhibit A attached hereto and shall become a part of this Amendment upon acceptance by Pledgee. Pledgee is hereby authorized to attach such replacement Exhibit A to this Amendment.
2. Effect of this Amendment. Except as expressly amended pursuant hereto, no other changes or modifications to the Trademark Security Agreement or waivers of or consents under any provisions thereof are intended or implied, and in all other respects the Trademark Security Agreement is hereby specifically ratified, restated and confirmed by all parties hereto as of the effective date hereof. To the extent any term or provision of this Amendment conflicts with any term or provision of the Loan Agreement, the term or provision of the Loan Agreement, shall control.
3. Binding Effect. This Amendment shall be binding upon and inure to the benefit of each of the parties hereto and their respective successors and assigns.
4. Governing Law.
(a) The validity, interpretation and enforcement of this Amendment and the other Financing Agreements and any dispute arising out of the relationship between the parties hereto, whether in contract, tort, equity or otherwise, shall be governed by the internal laws of the State of New York but excluding any principles of conflicts of law or other rule of law that would cause the application of the law of any jurisdiction other than the laws of the State of New York.
(b) Pledgor irrevocably consents and submits to the non-exclusive jurisdiction of the Supreme Court of the State of New York for the County of New York and the United States District Court for the Southern District of New York, whichever Pledgee may elect, and waives any objection based on venue or forum non conveniens with respect to any action instituted therein arising under this Amendment or any of the other Financing Agreements or in any way connected with or related or incidental to the dealings of the parties hereto in respect of this Amendment or any of the other Financing Agreements or the transactions related hereto or thereto, in each case whether now existing or hereafter arising, and whether in contract, tort, equity or otherwise, and agrees that any dispute with respect to any such matters shall be heard only in the courts described above (except that Pledgee shall have the right to bring any action or
proceeding against Pledgor or its property in the courts of any other jurisdiction which Pledgee deems necessary or appropriate in order to realize on the Collateral or to otherwise enforce its rights against Pledgor or its property).
(c) Pledgor hereby waives personal service of any and all process upon it and consents that all such service of process may be made by certified mail (return receipt requested) directed to its address set forth herein 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. mails, or, at Pledgee’s option, by service upon Pledgor in any other manner provided under the rules of any such courts. Within thirty (30) days after such service, Pledgor shall appear in answer to such process, failing which Pledgor shall be deemed in default and judgment may be entered by Agent against Pledgor for the amount of the claim and other relief requested.
(d) PLEDGOR AND PLEDGEE EACH HEREBY WAIVES ANY RIGHT TO TRIAL BY JURY OF ANY CLAIM, DEMAND, ACTION OR CAUSE OF ACTION (i) ARISING UNDER THIS AMENDMENT OR ANY OF THE OTHER FINANCING AGREEMENTS OR (ii) IN ANY WAY CONNECTED WITH OR RELATED OR INCIDENTAL TO THE DEALINGS OF PLEDGOR AND PLEDGEE, ANY OF THE LENDERS OR ANY OF THE BANK PRODUCT PROVIDERS IN RESPECT OF THIS AMENDMENT OR ANY OF THE OTHER FINANCING AGREEMENTS OR THE TRANSACTIONS RELATED HERETO OR THERETO IN EACH CASE WHETHER NOW EXISTING OR HEREAFTER ARISING, AND WHETHER IN CONTRACT, TORT, EQUITY OR OTHERWISE. PLEDGOR AND PLEDGEE EACH HEREBY AGREES AND CONSENTS THAT ANY SUCH CLAIM, DEMAND, ACTION OR CAUSE OF ACTION SHALL BE DECIDED BY COURT TRIAL WITHOUT A JURY AND THAT PLEDGOR OR PLEDGEE MAY FILE AN ORIGINAL COUNTERPART OF A COPY OF THIS AMENDMENT WITH ANY COURT AS WRITTEN EVIDENCE OF THE CONSENT OF PLEDGOR AND PLEDGEE TO THE WAIVER OF THEIR RIGHT TO TRIAL BY JURY.
(e) Pledgee and Lenders and Bank Product Providers shall not have any liability to Pledgor (whether in tort, contract, equity or otherwise) for losses suffered by Pledgor in connection with, arising out of, or in any way related to the transactions or relationships contemplated by this Amendment, or any act, omission or event occurring in connection herewith, unless it is determined by a final and non-appealable judgment or court order binding on Pledgee, any Lender or any Bank Product Provider that the losses were the result of acts or omissions constituting gross negligence or willful misconduct by Pledgee, any such Lender or any such Bank Product Provider. In any such litigation, Pledgee, each Lender and each Bank Product Provider shall be entitled to the benefit of the rebuttable presumption that it acted in good faith and with the exercise of ordinary care in the performance by it of the terms of this Amendment and the other Financing Agreements. Pledgor: (i) certifies that neither Pledgee, any Lender nor any representative, agent or attorney acting for or on behalf of Pledgee or any Lender has represented, expressly or otherwise, that Pledgee and Lenders would not, in the event of litigation, seek to enforce any of the waivers provided for in this Amendment or any of the other Financing Agreements and (ii) acknowledges that in entering into this Amendment and the other Financing Agreements, Pledgee and Lenders are relying upon, among other things, the waivers and certifications set forth in this Section 4 and elsewhere herein and therein.
5. Counterparts, etc. This Amendment or any of the other Financing Agreements may be executed in any number of counterparts, each of which shall be an original, but all of which taken together shall constitute one and the same agreement. Delivery of an executed counterpart of this Amendment or any of the other Financing Agreements by telefacsimile shall have the same force and effect as the delivery of an original executed counterpart of this Amendment or any of such other Financing Agreements. Any party delivering an executed counterpart of any such agreement by telefacsimile shall also deliver an original executed counterpart, but the failure to do so shall not affect the validity, enforceability or binding effect of such agreement.
[Remainder of page intentionally left blank]
IN WITNESS WHEREOF, the parties have entered into this Amendment as of the date first written above.
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PLEDGOR | |
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XXXXXX NEW YORK, INC., | |
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By: |
/s/ Xxxxxxx Xxxx |
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Name: |
Xxxxxxx Xxxx |
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Title: |
Chief Financial Officer |
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PLEDGEE | |
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XXXXX FARGO BANK, NATIONAL | |
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By: |
/s/ Xxxxxxxx Xxxxxxxxxx |
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Name: |
Xxxxxxxx Xxxxxxxxxx |
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Title: |
Director |
[Signature Page to Amendment No. 1 to Amended and Restated
Collateral Assignment of Trademarks (Security Agreement)]
EXHIBIT A
to
AMENDED AND RESTATED COLLATERAL ASSIGNMENT
OF TRADEMARKS (SECURITY AGREEMENT)
List of Trademarks
XXXXXX NEW YORK, INC.
U.S. Federal Marks
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Country |
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Xxxx |
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App/Serial # |
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App. Dt |
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Reg. # |
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Reg. Dt |
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United States |
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CITY BEAUTY |
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77/245507 |
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8/2/2007 |
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3486011 |
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8/12/2008 |
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United States |
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CITY DEALS |
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77/258026 |
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8/17/2007 |
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3796066 |
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6/1/2010 |
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United States |
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CITY LUXE |
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77313628 |
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10/25/2007 |
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3444989 |
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6/10/2008 |
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Xxxxxx Xxxxxx |
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XXXX XXXX |
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00/000000 |
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0/00/0000 |
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Xxxxxx Xxxxxx |
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CITY STYLE |
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77/045359 |
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11/16/2006 |
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3494535 |
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9/2/2008 |
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United States |
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CITYSTRETCH |
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76502113 |
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3/26/2003 |
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2912135 |
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12/21/2004 |
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United States |
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DOWNTOWN DARLING |
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77/193891 |
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5/31/2007 |
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3477674 |
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7/29/2008 |
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United States |
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FABULOUS ON FIFTH |
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77183988 |
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5/17/2007 |
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3499775 |
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9/09/2008 |
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United States |
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LEFT POCKET STITCHING DESIGN |
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78/847060 |
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3/27/2006 |
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3263673 |
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7/10/2007 |
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United States |
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LEFT WAVE STITCHING DESIGN |
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78/849251 |
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3/29/2006 |
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3263679 |
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7/10/2007 |
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United States |
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MISS MANHATTAN |
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77182833 |
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5/16/2007 |
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3499770 |
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9/09/2008 |
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United States |
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REFRESH, INDULGE & PAMPER |
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77255645 |
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8/15/2007 |
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3486029 |
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8/12/2008 |
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United States |
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RIGHT POCKET STITCHING DESIGN |
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78/847085 |
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3/27/2006 |
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3263674 |
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7/10/2007 |
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United States |
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RIGHT WAVE STITCHING DESIGN |
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78/849306 |
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3/29/2006 |
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3263680 |
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7/10/2007 |
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United States |
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SOME GIFTS COUNT MORE THAN OTHERS |
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77/793433 |
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7/30/2009 |
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3805887 |
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6/22/2010 |
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United States |
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SWIRL WITH DOTS |
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77/390324 |
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2/6/2008 |
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3667406 |
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8/11/2009 |
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Country |
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Xxxx |
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App/Serial # |
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App. Dt |
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Reg. # |
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Reg. Dt |
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DESIGN |
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United States |
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UPTOWN ANGEL |
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77182846 |
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5/16/2007 |
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3493505 |
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8/26/2008 |
U.S. State Marks
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Country |
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Xxxx |
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Reg. No. |
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Reg. Date |
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United States - Arizona |
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NEW YORK & COMPANY |
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548613 |
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08-Jun-2012 |
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United States - Alabama |
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NEW YORK & COMPANY |
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112146 |
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27-Jul-2010 |
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United States - Nebraska |
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NEW YORK & COMPANY |
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10058514 |
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07-May-2004 |
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United States - Ohio |
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NEW YORK & COMPANY |
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1259326 |
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09-Oct-2001 |
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United States - North Dakota |
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NEW YORK & COMPANY |
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16014200 |
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30-Aug-2000 |
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United States - Wyoming |
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NEW YORK & COMPANY |
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2000-000407518 |
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18-Aug-2000 |
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United States - Louisiana |
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NEW YORK & COMPANY |
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567693 |
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16-Aug-2000 |
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United States - Alabama |
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NEW YORK & COMPANY OUTLET |
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112147 |
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27-Jul-2010 |
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United States - Wisconsin |
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NEW YORK AND COMPANY |
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07-Jul-2010 |
Foreign Marks
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Country |
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Xxxx |
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Serial # |
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App. Dt |
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Reg. # |
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Reg. Dt |
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China (People’s Republic Of) |
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CITY CREPE |
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844333 |
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1/21/2005 |
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844333 |
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4/7/2005 |
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China (People’s Republic Of) |
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CITY SPA |
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844334 |
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1/21/2005 |
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844334 |
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4/7/2005 |
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China (People’s Republic Of) |
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CITY STRETCH |
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844335 |
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1/21/2005 |
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844335 |
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4/7/2005 |
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France |
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CITY CREPE |
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844333 |
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1/21/2005 |
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844333 |
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4/7/2005 |
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France |
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CITY SPA |
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844334 |
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1/21/2005 |
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844334 |
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4/7/2005 |
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Germany |
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CITY CREPE |
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844333 |
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1/21/2005 |
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844333 |
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4/7/2005 |
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Germany |
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CITY SPA |
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844334 |
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1/21/2005 |
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844334 |
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0/0/0000 |
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Xxxxxxx |
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XXXX XXXXXXX |
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844335 |
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1/21/2005 |
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844335 |
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4/7/2005 |
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Guatemala |
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CITY CREPE |
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487-05 |
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1/25/2005 |
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138693 |
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10/28/2005 |
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Guatemala |
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CITY SPA |
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486-05 |
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1/25/2005 |
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138696 |
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10/28/2005 |
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Guatemala |
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CITY STRETCH |
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0320-04 |
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1/20/2004 |
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134501 |
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2/23/2005 |
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Hong Kong |
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CITY STRETCH |
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300135044 |
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12/30/2003 |
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300135044 |
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6/2/2004 |
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Indonesia |
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CITY CREPE |
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D00-2005-04523-04561 |
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2/17/2005 |
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IDM000199862 |
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3/31/2009 |
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Indonesia |
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CITY SPA |
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D00-2005-0452-04560 |
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2/17/2005 |
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IDM000229840 |
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Indonesia |
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CITY STRETCH |
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D00-2004-00270-00271 |
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1/7/2004 |
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IDM000154282 |
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2/18/2008 |
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Italy |
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CITY CREPE |
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844333 |
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1/21/2005 |
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844333 |
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4/7/2005 |
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Italy |
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CITY SPA |
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844334 |
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1/21/2005 |
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844334 |
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4/7/2005 |
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Italy |
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CITY STRETCH |
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844335 |
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1/21/2005 |
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844335 |
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4/7/2005 |
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Japan |
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CITY CREPE |
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844333 |
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1/21/2005 |
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844333 |
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4/7/2005 |
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Japan |
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CITY SPA |
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844334 |
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1/21/2005 |
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844334 |
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4/7/2005 |
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Country |
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Xxxx |
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Serial # |
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App. Dt |
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Reg. # |
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Reg. Dt |
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Japan |
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CITY STRETCH |
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844335 |
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1/21/2005 |
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844335 |
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0/0/0000 |
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Xxxxx |
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XXXX XXXXXXX |
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N/012906 |
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1/12/2004 |
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N/012906 |
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5/11/2004 |
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Mexico |
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CITY SPA |
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699020 |
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1/27/2005 |
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875034 |
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3/31/2005 |
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Mexico |
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CITY STRETCH |
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1183543 |
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6/3/2011 |
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1283147 |
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4/30/2012 |
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Nicaragua |
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CITY CREPE |
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2005/00625 |
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2/28/2005 |
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83715 |
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10/18/2005 |
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Nicaragua |
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CITY SPA |
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2005/00627 |
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2/28/2005 |
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83655 |
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00/00/0000 |
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Xxxxxxxxx |
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XXXX XXXXXXX |
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2005/00626 |
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2/28/2005 |
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83716 |
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10/18/2005 |
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Xxxxxx Xxxx |
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XXXX XXXXXXX |
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000000-00-0 |
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0/00/0000 |
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Xxxxx Xxxxx |
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XXXX CREPE |
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844333 |
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1/21/2005 |
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844333 |
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0/0/0000 |
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Xxxxx Xxxxx |
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XXXX XXX |
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000000 |
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1/21/2005 |
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844334 |
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0/0/0000 |
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Xxxxx Xxxxx |
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XXXX XXXXXXX |
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844335 |
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1/21/2005 |
|
844335 |
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4/7/2005 |
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Spain |
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CITY CREPE |
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844333 |
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1/21/2005 |
|
844333 |
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4/7/2005 |
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Spain |
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CITY SPA |
|
844334 |
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1/21/2005 |
|
844334 |
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4/7/2005 |
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Spain |
|
CITY STRETCH |
|
844335 |
|
1/21/2005 |
|
844335 |
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0/0/0000 |
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Xxx Xxxxx |
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XXXX XXXXXXX |
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123754 |
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2/8/2005 |
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Taiwan |
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CITY CREPE |
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94004484 |
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1/28/2005 |
|
1175833 |
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10/1/2005 |
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Taiwan |
|
CITY SPA |
|
94004485 |
|
1/28/2005 |
|
1175834 |
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00/0/0000 |
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Xxxxxx |
|
XXXX XXXXXXX |
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94004482 |
|
1/28/2005 |
|
1175832 |
|
10/1/2005 |
|
United Kingdom |
|
CITY CREPE |
|
844333 |
|
1/21/2005 |
|
844333 |
|
4/7/2005 |
|
United Kingdom |
|
CITY SPA |
|
844334 |
|
1/21/2005 |
|
844334 |
|
0/0/0000 |
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Xxxxxx Xxxxxxx |
|
XXXX XXXXXXX |
|
844335 |
|
1/21/2005 |
|
844335 |
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4/7/2005 |
|
Country |
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Xxxx |
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Serial # |
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App. Dt |
|
Reg. # |
|
Reg. Dt |
|
Vietnam |
|
CITY CREPE |
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0-0000-00000 |
|
1/31/2005 |
|
75950 |
|
10/10/2006 |
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Vietnam |
|
CITY SPA |
|
0-0000-00000 |
|
1/31/2005 |
|
75951 |
|
10/10/2006 |
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Vietnam |
|
CITY STRETCH |
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0-0000-00000 |
|
1/5/2004 |
|
62940 |
|
5/23/2005 |
|
WIPO |
|
CITY CREPE |
|
844333 |
|
1/21/2005 |
|
844333 |
|
4/7/2005 |
|
WIPO |
|
CITY SPA |
|
844334 |
|
1/21/2005 |
|
844334 |
|
4/7/2005 |
|
WIPO |
|
CITY STRETCH |
|
844335 |
|
1/21/2005 |
|
844335 |
|
4/7/2005 |
