Exhibit 10.6
EXECUTION VERSION
NOTES TRADEMARK SECURITY AGREEMENT
NOTES TRADEMARK SECURITY AGREEMENT, dated as of July 12, 2010 (as amended, restated, supplemented, waived or otherwise modified from time to time, this “Agreement”), made by each of the undersigned (each a “Grantor” and collectively, the “Grantors”) in favor of Wells Fargo Bank, National Association, as trustee and collateral agent (in such capacity, the “Agent”) for the Secured Parties (as defined in the Collateral Agreement defined below).
Reference is made to (a) the Collateral Agreement, dated as of July 12, 2010 (as amended, restated, supplemented, waived or otherwise modified from time to time, the “Collateral Agreement”), by and among Columbia Lake Acquisition Corp., a Delaware corporation (“Merger Sub”; to be merged on the Issue Date with and into CKE Restaurants, Inc., a Delaware corporation (“CKE”), and together with CKE, the “Issuer”), each Note Guarantor listed on Schedule I to the Collateral Agreement and each future Note Guarantor of Issuer that becomes a party thereto (each, a “Note Guarantor”) and the Agent, (b) the Indenture dated as of July 12, 2010 (as amended, restated, supplemented, waived or otherwise modified from time to time, the “Initial Indenture”), by and among Merger Sub, the Guarantors (as defined therein) and the Agent and (c) the Supplemental Indenture dated as of July 12, 2010 (as amended, restated, supplemented, waived or otherwise modified from time to time, the “Supplemental Indenture”) by and among CKE, the Note Guarantors and the Agent. References herein to the “Indenture” shall mean the Initial Indenture prior to the effectiveness of the Supplemental Indenture and the Supplemental Indenture thereafter.
The Indenture requires that the Issuer and the Note Guarantors enter into this Agreement. The Note Guarantors are subsidiaries of the Issuer, will derive substantial benefits from the issuance of the $600,000,000 aggregate principal amount of 11.375% Senior Secured Second Lien Notes due 2018 (the “Notes”) pursuant to the Indenture and are willing to execute and deliver this Agreement pursuant to the requirements of the Indenture.
Accordingly the parties hereto agree as follows:
SECTION 1.Terms.Capitalized terms used in this Agreement and not otherwise defined herein shall have the meanings specified in the Indenture. The rules of construction specified in Section 1.04 of the Indenture also apply to this Agreement.
SECTION 2.Grant of Security Interest.As security for the payment or performance, as the case may be, in full of the Note Obligations, each Grantor, pursuant to the Collateral Agreement, did and hereby does grant to the Agent, its successors and assigns, for the benefit of the Secured Parties (as defined in the Collateral Agreement), a security interest in, all right, title or interest in or to any and all of the following assets and properties now owned or at any time hereafter acquired by such Grantor or in which such Grantor now has or at any time in the future may acquire any right, title or interest (collectively, the “Trademark Collateral”):
| | a. | all trademarks, service marks, corporate names, company names, business names, fictitious business names, trade styles, trade dress, logos, other source or business |
1
| | identifiers, designs and general intangibles of like nature, now existing or hereafter adopted or acquired, all registrations thereof (if any), and all registration and recording applications filed in connection therewith, including registrations and registration applications in the United States Patent and Trademark Office (but excluding “intent to use” applications for trademark or service mark registrations filed pursuant to Section 1(b) of the Lanham Act, 15 U.S.C. § 1051), and all renewals thereof, including those listed onSchedule I attached hereto (the “Trademarks”); |
| | b. | all goodwill associated with or symbolized by the Trademarks; |
| | c. | all claims for, and rights to sue for, past or future infringements of any of the foregoing; and |
| | d. | all income, royalties, damages and payments now or hereafter due and payable with respect to any of the foregoing, including damages and payments for past or future infringement thereof. |
SECTION 3.Collateral Agreement.The security interests granted to the Agent herein are granted in furtherance, and not in limitation of, the security interests granted to the Agent pursuant to the Collateral Agreement. Each Grantor hereby acknowledges and affirms that the rights and remedies of the Agent generally and with respect to the Trademark Collateral are more fully set forth in the Collateral Agreement, the terms and provisions of which are hereby incorporated herein by reference as if fully set forth herein.
SECTION 4.Indenture. In the event of any conflict between the terms of this Agreement and the Indenture, the terms of the Indenture shall govern.
SECTION 5.Intercreditor Agreement Governs. REFERENCE IS MADE TO THE INTERCREDITOR AGREEMENT. NOTWITHSTANDING ANY OTHER PROVISION CONTAINED HEREIN, THIS AGREEMENT, THE LIENS CREATED HEREBY AND THE RIGHTS, REMEDIES, DUTIES AND OBLIGATIONS PROVIDED FOR HEREIN ARE SUBJECT IN ALL RESPECTS TO THE PROVISIONS OF THE INTERCREDITOR AGREEMENT. IN THE EVENT OF ANY CONFLICT OR INCONSISTENCY BETWEEN THE PROVISIONS OF THIS AGREEMENT AND THE INTERCREDITOR AGREEMENT, THE PROVISIONS OF THE INTERCREDITOR AGREEMENT SHALL CONTROL.
SECTION 6.Choice of Law.THIS AGREEMENT SHALL BE CONSTRUED IN ACCORDANCE WITH AND GOVERNED BY THE LAWS OF THE STATE OF NEW YORK WITHOUT REGARD TO THE PRINCIPLES OF CONFLICTS OF LAWS.
[Signature Pages Follow]
2
IN WITNESS WHEREOF, the parties hereto have duly executed this Notes Trademark Security Agreement as of the day and year first above written.
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|
| GRANTORS: |
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CKE RESTAURANTS, INC.,for Itself and as Sole Member ofCKE DISTRIBUTION, LLC and AEROWAYS, LLC |
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| CARL KARCHER ENTERPRISES, INC. |
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| HARDEE’S FOOD SYSTEMS, INC. |
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| FLAGSTAR ENTERPRISES, INC. |
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| SPARDEE’S REALTY, INC. |
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| HED, INC. |
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| BURGER CHEF SYSTEMS, INC. |
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| SANTA BARBARA RESTAURANT GROUP, INC. |
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| GB FRANCHISE CORPORATION |
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| CHANNEL ISLANDS ROASTING COMPANY |
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| CARL’S JR. REGION VIII, INC. |
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| CKE REIT II, INC. |
| |
| By: | | /s/ Theodore Abajian |
| | Name: Theodore Abajian |
| | Title: Executive Vice President and Chief Financial Officer |
Signature Page to Notes Copyright Security Agreement
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STATE OF | | ) |
| | ) ss |
COUNTY OF | | ) |
On the day of , 2010, before me personally came ; who, being duly sworn, did depose and say that he/she is the of
each, a corporation incorporated under the laws of , the corporations described in and which executed the foregoing instrument; that he/she executed and delivered said instrument pursuant to authority given by the Board of Directors of such corporation; and that he/she acknowledged said instrument to be the free act and deed of said corporation.
(PLACE STAMP AND SEAL ABOVE)
STATE OF CALIFORNIA
COUNTY OF
On , 2010, before me, , Notary Public, personally appeared who proved to me on the basis of satisfactory evidence to be the person(s) whose name(s) is/are subscribed to the within instrument and acknowledged to me that he/she/they executed the same in his/her/their authorized capacity(ies), and that by his/her/their signature(s) on the instrument the person(s), or the entity upon behalf of which the person(s) acted, executed the instrument.
I certify under PENALTY OF PERJURY under the laws of the State of California that the foregoing paragraph is true and correct.
WITNESS my hand and official seal.
Signature [SEAL]
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| ACCEPTED: |
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WELLS FARGO BANK, NATIONAL ASSOCIATION, as Trustee and Collateral Agent |
| |
| By: | | /s/ Raymond Delli Colli |
| | Name: Raymond Delli Colli |
| | Title: Vice President |
Signature Page to Notes Trademark Security Agreement
Schedule I
Trademarks
See Attached.
Schedule to Notes Trademark Security Agreement
CARL KARCHER ENTERPRISES, INC.
FEDERAL TRADEMARK REGISTRATIONS
| | | | | | |
Mark | | Class | | App. No.
App. Date | | Reg. No.
Reg. Date |
| | 42 | | 72/334,588
08/06/69 | | 914,469
06/08/71 |
| | 32 | | 74/044,288
03/29/90 | | 1,631,819
01/15/91 |
| | 42 | | 72/423,039
05/01/72 | | 965,266
07/31/73 |
| | 42 | | 75/406,528
12/17/97 | | 2,220,433
01/26/99 |
| | 29, 30 & 31 | | 73/391,494
09/28/82 | | 1,297,845
09/25/84 |
| | 42 | | 75/433,545
02/12/98 | | 2,423,698
01/23/01 |
| | 42 | | 75/555,439
09/18/98 | | 2,281,660
09/28/99 |
| | 42 | | 75/555,225
09/18/98 | | 2,290,206
11/02/99 |
| | 42 | | 75/556,437
09/23/98 | | 2,288,997
10/26/99 |
| | 16, 20 & 21 | | 73/502,849 | | 1,383,339
02/18/86 |
| | 42 | | 73/173,129 | | 1,112,013
01/23/79 |
| | 42 | | 73/220,022
06/18/79 | | 1,151,330
04/14/81 |
BACON SWISS CRISPY CHICKEN | | 30 | | 77/068,334
12/20/06 | | 3,328,058
10/30/07 |
BREAKFAST AS BIG AS OUR BURGERS | | 43 | | 77/507,193
06/24/08 | | 3,628,566
05/26/09 |
CARL’S CATCH FISH SANDWICH | | 30 | | 77/068,329
12/20/06 | | 3,619,807
05/12/09 |
| | | | | | |
Mark | | Class | | App. No.
App. Date | | Reg. No.
Reg. Date |
| | 43 | | 77/169,214
04/30/07 | | 3,489,655
08/19/08 |
CARL’S JR. | | 42 | | 72/334,587
08/06/69 | | 901,315
10/20/70 |
CARL’S JR. | | 16, 20 & 21 | | 73/504,895
10/22/84 | | 1,400,272
07/08/86 |
CARL’S JR. JR. | | 42 | | 75/135,837
07/18/96 | | 2,141,498
03/03/98 |
| | 43 | | 77/004,737
09/21/06 | | 3,524,587
10/28/08 |
| | 43 | | 77/007,123
09/25/06 | | 3,550,634
12/23/08 |
| | 43 | | 77/007,125
09/25/06 | | 3,807,406
06/22/2010 |
| | 43 | | 77/665,551
02/06/09 | | 3,791,079
05/18/2010 |
| | 43 | | 77/470,877
05/09/08 | | 3,719,412
12/01/09 |
COOL COMBOS FOR KIDS | | 42 | | 75/504,661
06/18/98 | | 2,272,061
08/24/99 |
COOL KIDS COMBOS | | 30 | | 76/329,542
10/23/01 | | 2,773,975
10/14/03 |
DON’T BOTHER ME, I’M EATING | | 42 | | 75/923,187
02/18/00 | | 2,625,830
09/24/02 |
FAMOUS STAR | | 30 | | 77/068,396
12/20/06 | | 3,612,923
04/28/09 |
FRENCH TOAST DIPS | | 42 | | 73/551,361
08/02/85 | | 1,475,407
02/02/88 |
FRENCH TOAST DIPS | | 30 | | 73/602,432
08/02/85 | | 1,424,179
01/06/87 |
HAPPY STAR | | 42 | | 73/105,777
11/08/76 | | 1,084,351
01/31/78 |
IF IT DOESN’T GET ALL OVER THE PLACE IT DOESN’T BELONG IN YOUR FACE | | 42 | | 74/701,374
07/14/95 | | 2,002,665
09/24/96 |
LOW CARB BREAKFAST BOWL | | 30 | | 78/361,639
02/03/04 | | 3,042,947
01/10/06 |
MORE THAN JUST A PIECE OF MEAT | | 43 | | 77/665,571
08/25/09 | | 3,773,116
04/06/10 |
SOME GUYS WOULD STARVE WITHOUT US | | 42 | | 75/923,125
02/18/00 | | 2,613,177
08/27/02 |
STAR DINER | | 42 | | 75/741,941
07/01/99 | | 2,716,876
05/20/03 |
SUNRISE CROISSANT | | 30 | | 77/068,405
12/20/06 | | 3,395,496
03/11/08 |
SUNRISE SANDWICH | | 30 | | 73/359,281
04/12/82 | | 1,247,828
08/09/83 |
| | | | | | |
Mark | | Class | | App. No.
App. Date | | Reg. No.
Reg. Date |
SUPER STAR | | 42 | | 73125,696
05/09/77 | | 1,099,039
08/08/78 |
THE BACON CHEESE SIX DOLLAR BURGER | | 30 | | 77/068,351
12/20/06 | | 3,573,079
02/10/09 |
THE DOUBLE SIX DOLLAR BURGER | | 30 | | 77/068,342
12/20/06 | | 3,573,078
02/10/09 |
THE FOOD IS THE FRANCHISE | | 35 | | 77/276,306
09/11/07 | | 3,522,036
10/21/08 |
THE GUACAMOLE BACON SIX DOLLAR BURGER | | 30 | | 77/068,375
12/20/06 | | 3,573,081
02/10/09 |
THE LOW CARB SIX DOLLAR BURGER | | 30 | | 77/068,364
12/20/06 | | 3,573,080
02/10/09 |
THE ORIGINAL SIX DOLLAR BURGER | | 30 | | 77/068,385
12/20/06 | | 3,573,082
02/10/09 |
THE PRIME RIB SIX DOLLAR BURGER | | 30 | | 77/537,266
08/01/08 | | 3,697,646
10/20/09 |
THE SIX DOLLAR BURGER | | 30 | | 76/319,349
09/28/01 | | 2,980,088
07/26/05 |
THE SIX DOLLAR BURGER | | 30 | | 77/221,824
07/03/07 | | 3,369,114
01/15/08 |
THE WESTERN BACON SIX DOLLAR BURGER | | 30 | | 78/260,526
06/10/03 | | 2,912,799
12/21/04 |
WESTERN BACON CHEESEBURGER | | 42 | | 73/457,446
12/15/83 | | 1,456,922
09/08/87 |
WESTERN BACON CHEESEBURGER | | 30 | | 73/636,886
12/22/86 | | 1,481,762
03/22/88 |
CARL KARCHER ENTERPRISES, INC.
PENDING FEDERAL TRADEMARK APPLICATIONS
| | | | |
Mark | | Class | | App. No.
App. Date |
BURGER SLAYER | | 43 | | 77/571,463
09/16/08 |
| | 43 | | 77/470,916
05/09/08 |
DOUBLE WESTERN BACON CHEESEBURGER | | 30 | | 77/837,693
09/29/09 |
FIRING ON ALL CYLINDERS | | 43 | | 77/566,683
09/10/08 |
GREAT BURGERS DEMAND GREAT FLAVORS | | 43 | | 77/474,270
05/14/08 |
LITTLE CARL | | 30, 43 | | 85/018,661
4/20/2010 |
MONSTER BREAKFAST SANDWICH | | 43 | | 77/476,701
05/16/08 |
| | 30 | | 77/836,598
09/02/09 |
THE BIG CARL | | 30 | | 77/772,629
07/01/09 |
THE GUY GAMES | | 43 | | 77/591,635
10/13/08 |
THE JALAPENO SIX DOLLAR BURGER | | 30 | | 77/837,710
09/29/09 |
THE PORTOBELLO MUSHROOM SIX DOLLAR BURGER | | 30 | | 77/837,704
09/29/09 |
THE WHEEL OF AWESOME | | 9, 41 | | 85/007756
04/06/10 |
CHANNEL ISLANDS ROASTING COMPANY
FEDERAL TRADEMARK REGISTRATIONS
| | | | |
Mark | | App. No.
App. Date | | Reg. No.
Reg. Date |
CHANNEL ISLANDS ROASTING COMPANY | | 78/394,317
03/31/04 | | 3,026,862
12/13/05 |
| | 78/395,785
04/02/04 | | 3,026,879
12/13/05 |
HARDEE’S FOOD SYSTEMS, INC.
FEDERAL TRADEMARK REGISTRATIONS
| | | | |
Trademark | | Reg. No. | | Registration Date |
BIG COUNTRY | | 1957006 | | 2/20/1996 |
BIG TWIN | | 2650355 | | 11/12/2002 |
BISCUIT HOLES | | 3739930 | | 1/19/2010 |
BURGER CHEF | | 1776896 | | 6/15/1993 |
BURGER CHEF and Design | | 1832980 | | 4/26/1994 |
COME ON HOME | | 2562539 | | 4/16/2002 |
FRISCO BREAKFAST SANDWICH | | 3049236 | | 1/24/2006 |
HAND SCOOPED ICE CREAM SHAKES & MALTS and Design | | 3040986 | | 1/10/2006 |
HARDEE’S | | 1825221 | | 3/8/1994 |
HARDEE’S | | 1729627 | | 11/3/1992 |
HARDEE’S | | 0741048 | | 11/20/1962 |
HARDEE’S and Design | | 1774336 | | 6/1/1993 |
HARDEE’S and Design | | 1817990 | | 1/25/1994 |
HARDEE’S FRISCO | | 1872913 | | 1/10/1995 |
HOME OF THE THICKBURGER | | 3276896 | | 8/7/2007 |
HOT MELTS | | 1998838 | | 9/3/1996 |
MONSTER BURGER | | 1716175 | | 9/15/1992 |
MONSTER THICKBURGER | | 3672671 | | 8/25/2009 |
PRIME RIB THICKBURGER | | 3583173 | | 3/3/2009 |
RISE AND SHINE | | 1932512 | | 11/7/1995 |
SLAMMERS | | 2830916 | | 4/6/2004 |
TAILGATE PACK | | 1815228 | | 1/4/1994 |
THE FRISCO and Design | | 0758506 | | 10/15/1963 |
THICKBURGER | | 3026394 | | 12/13/2005 |
THICKBURGERS | | 3362346 | | 1/1/2008 |
WHERE AMERICA GOES FOR BREAKFAST | | 2037209 | | 2/11/1997 |
GLUTEN-FREE IT | | 3784437 | | 5/4/2010 |
HASH ROUNDS | | 3789824 | | 5/18/2010 |
LOW CARB IT | | 3784436 | | 5/4/2010 |
THE BIG HARDEE | | 3784022 | | 5/4/2010 |
TRIM IT | | 3784438 | | 5/4/2010 |
VEG IT | | 3784435 | | 5/4/2010 |
JOINTLY REGISTERED: HARDEE’S FOOD SYSTEMS, INC. AND CARL
KARCHER ENTERPRISES, INC
FEDERAL TRADEMARK REGISTRATIONS
| | | | |
Trademark | | Reg. No. | | Registration Date |
HARDEE’S CHARBROILED BURGERS and Design | | 2417015 | | 1/2/2001 |
HARDEE’S CHARBROILED BURGERS and Design | | 2292781 | | 11/16/1999 |
HARDEE’S CHARBROILED THICKBURGERS and Design | | 3295053 | | 9/18/2007 |
THE FOOD IS THE FRANCHISE | | 3522036 | | 10/21/2008 |
HARDEE’S FOOD SYSTEMS, INC.
PENDING FEDERAL TRADEMARK APPLICATIONS
| | | | |
Trademark | | Ser. No. | | App. Date |
MADE FROM SCRATCH BISCUITS and Design | | 85/013693 | | 04/14/2010 |
THERE’S NOTHING FRESH ABOUT PRE-COOKED CHICKEN | | 85054231 | | 03-JUN-2010 |
BECAUSE THERE’S NOTHING FRESH ABOUT PRE-COOKED CHICKEN | | 85054235 | | 03-JUN-2010 |
MONSTER BISCUIT | | 85047496 | | 25-MAY-2010 |
CKE RESTAURANTS, INC. FEDERAL TRADEMARK REGISTRATIONS
| | | | | | |
STAR BUFFET | | 42 | | 75/236,939
02/05/97 | | 2,265,351
07/27/99 |
CKE RESTAURANTS | | 43 | | 78/487,859
09/22/04 | | 3,070,410
03/21/06 |
SANTA BARBARA RESTAURANT GROUP
FEDERAL TRADEMARK REGISTRATIONS
| | | | | | |
Mark | | Class(es) | | Application No.
Filing Date | | Registration No.
Registration Date |
| | 42 | | 74/165,474
5/10/91 | | 1,689,454
05/26/92 |
| | 43 | | 78/154,779
08/15/02 | | 2,924,101
02/10/05 |
| | 43 | | 78/154,781
08/15/02 | | 2,846,557
05/25/04 |
BIG ED BURRITO | | 30 | | 74/108,931
10/22/90 | | 1,707,040
08/11/92 |
GREEN BURRITO | | 43 | | 78/480,525
09/08/04 | | 3,015,454
11/15/05 |
THE AUTHENTIC ALTERNATIVE | | 43 | | 77/101,561
02/07/07 | | 3,412,372
04/15/08 |
THE GREEN BURRITO | | 29,
30 | | 77/068,306
12/20/06 | | 3,526,233
11/04/08 |
RED BURRITO | | 43 | | 78/645,336
06/07/05 | | 3,263,524
07/10/07 |
