49
TRADEMARK AGREEMENT
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THIS TRADEMARK AGREEMENT dated as of the _____ day of ___________, 1998 is by
and between RALSTON PURINA COMPANY, a corporation organized under the laws of
the state of Missouri, having its principal office at Checkerboard Square, St.
Louis, Missouri 63164 (hereinafter "RPCo.") and AGRIBRANDS INTERNATIONAL,
INC., a corporation organized under the laws of the state of Missouri having
its principal office at 9811 South Forty Drive, St. Louis, Missouri 63124
(hereinafter "Agribrands").
WITNESSETH:
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WHEREAS, the parties have entered into an Agreement And Plan Of Reorganization
of even date herewith; and
WHEREAS, pursuant to said Agreement And Plan Of Reorganization, the parties
have agreed to transfer certain trademarks and other intellectual-property
assets to Agribrands or one or more of its subsidiaries and to license other
such assets to Agribrands, and/or one or more of such subsidiaries;
NOW, THEREFORE, in consideration of the mutual covenants herein contained and
for other good and valuable consideration, the parties agree as follows:
I. Definitions
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(a.) Affiliates
----------
Hereunder, an "Affiliate" of, or person "Affiliated" with, a specified
person, is a person that directly, or indirectly through one or more
intermediaries, controls, or is controlled by, or is under common control with
the person specified.
(b.) Agri Business
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Hereunder, "Agri Business" shall mean a business or portion of a business
devoted directly and specifically to the care and nutrition of horses
(whether or not agricultural), laboratory or zoo animals (but not including
pet products sold to such institutions) and agricultural animals (whether
terrestrial, aquatic or aviary), including by way of illustration, but not
limitation, commercial livestock; commercial poultry; fish, reptiles or
shellfish raised in commercial aquaculture facilities; rabbits raised for
commercial purposes; animals raised for fur; wild or game birds; and services
for the care and feeding of such animals.
(c.) Closing
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Hereunder, "Closing" shall have the same meaning as Distribution Date in
the Agreement and Plan of Reorganization.
(c-1) Control
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Hereunder, "Control" shall mean the ability in fact to effect or prevent
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the action of a legal person, whether such ability may be exercised by (I) the
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direct or indirect ownership of voting securities; (ii) the direct or indirect
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ownership of an interest in an unincorporated legal person; (iii) contract or
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other arrangement; or (iv) otherwise.
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(c-2) Group
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Hereunder, "Group" shall mean Oldco or Newco.
(d.) Newco
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Hereunder, "Newco" shall mean Agribrands and any and all subsidiaries or
controlled affiliates of Agribrands . "Newco" shall not, however, include
Ralston Purina Company (hereinafter RPCo.) and any of its affiliates whose
shares will be owned, whether directly or indirectly, by RPCo. following
Closing.
(e.) Newco Territory
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Hereunder, "Newco Territory" shall mean all jurisdictions outside The
United States of America, its territories, possessions and facilities of its
armed forces. "Newco Territory" shall, however, include Puerto Rico.
(f.) Oldco
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Hereunder, "Oldco" shall mean RPCo. and any and all of its affiliates
whose shares it will directly or indirectly own following Closing.
(g.) Trademarks
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Hereunder, "Trademark" shall include trademarks, service marks, trade dress,
and copyrights; however, "trademark" shall mean only a word, symbol or device
registrable as a trademark or service mark.
(h.) Trade Names
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Hereunder, "trade name" shall mean corporate name and/or other business
name including, but not limited to, names of corporations, partnerships and
joint ventures.
(i.) Oldco Territory
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Hereunder, "Oldco Territory" shall mean any and all jurisdictions and
geographical areas outside the Newco Territory.
2. Trademarks
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(a.) Assignments
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(i.) At Closing, or at such date or dates thereafter as Newco may elect,
Oldco will assign to Newco, all of Oldco's rights in the Newco Territory in
Trademarks which are exclusively associated with RPCo.'s and its Affiliates'
Agri Business. Registrations and applications to register trademarks to be so
assigned are listed on Schedule 2(a) (I). Oldco will also assign to Newco its
rights in certain other trademarks which are also listed on Schedule 2 (a)
(i).
(ii.) Except for marks listed on Schedule 2(a) (i),
at Closing or at such other date or dates as Oldco may elect, Newco will
assign to Oldco all of Newco's rights in Trademarks which are exclusively
associated with businesses other than Agri Businesses. Registrations and
applications to register trademarks to be so assigned are listed in Schedule
2(a)(ii).
(iii.) Anything in this Trademark Agreement to the contrary
notwithstanding, Oldco will not assign to Newco any Trademark consisting of or
containing the words PURINA, RALSTON, CHOW, CHECKERBOARD, DAMIER or other word
meaning "Checkerboard", the 9-Square or other Checkerboard designs, or any
Trademark consisting of or containing any Trademark now owned by any non-Agri
Business subsidiary or affiliate of RPCo or any Trademarks confusingly similar
to any of the Trademarks enumerated in this Subparagraph 2 (a) (iii). To the
extent any such Trademark is currently owned by Newco, it will be assigned to
Oldco or cancelled on or before Closing.
(iv.) All assignments contemplated by this Trademark Agreement will be on
a quitclaim basis. The assignee will assume all limitations, undertakings and
liabilities related to such assigned Trademarks, including, but not limited
to, limitations in contracts relating to such Trademarks entered into by the
assignor and binding upon its successors and/or assigns.
(v.) With respect to Trademarks to be assigned from RPCo. to Agribrands
hereunder, RPCo. will deliver to Agribrands at Closing, a beneficial,
multi-country assignment of such Trademarks. RPCo. shall promptly execute
and return to Agribrands one or more country-specific assignments of such
Trademarks prepared by Agribrands and delivered to RPCo. for such purpose.
(vi.) With respect to Trademarks to be assigned from an Affiliate of
Agribrands to RPCo. or to an Affiliate of RPCo., or from an Affiliate of RPCo.
to Agribrands or to an Affiliate of Agribrands pursuant to this Trademark
Agreement; the Assignor of any such Trademarks shall promptly execute and
return to the assignee one or more country-specific assignments of such
Trademarks, prepared by the assignee and delivered to the assignor for such
purpose.
(vii.) Trademarks which are obligated to be assigned hereunder, but which
are not assigned at Closing, will be maintained by their putative assignor for
the benefit of the person to whom they are obligated to be assigned as such
person shall direct; however, the putative assignee shall reimburse the
putative assignor for all out-of-pocket expenses incurred for such
maintenance.
(viii.) If for any reason a Trademark otherwise required to be assigned to
Newco in the Agri-Business field cannot be assigned without also assigning
rights used in or associated with Oldco-related businesses, such Trademark
shall not be assigned; however, to the extent feasible, Oldco shall add such
Trademarks to the License Agreement referred to in Subparagraph 2(b)
hereinbelow.
(b.) License Agreement
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(i.) At Closing, the parties will execute the Trademark License Agreement
in Schedule 2(b) (i) attached hereto and incorporated by reference herein.
(ii) The parties agree to enter into or to cause to be entered into such
country-specific licenses or sublicenses, consistent with the Trademark
License Agreement, as may be reasonably required to record Newco's or its
sublicensees status as licensee or sublicensee.
(c.) Cost of Recordation
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Except as provided in Subparagraph 2(a) (vii) hereinabove, Oldco will pay
the first $200,000 of expenses incurred to prepare and record assignments and
licenses contemplated by this Trademark Agreement. All expenses incurred for
such purpose beyond the first $200,000 will be incurred by Newco. Such
expenses shall include, but not be limited to, taxes, attorneys' or agents'
fees, governmental filing fees and costs of notarizing and legalizing
documents.
3. RALSTON and PURINA Trademarks
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(a.) Anything in this Trademark Agreement to the contrary notwithstanding,
and without limitation as to duration or territory, Newco agrees not to use or
register the word RALSTON or word or phrase confusingly similar thereto as or
in a trademark or trade name, in connection with any product, service or
activity.
(b.) Anything in this Trademark Agreement to the contrary notwithstanding,
Newco agrees not to use the word PURINA or any Trademark licensed under the
License Agreement or word or phrase confusingly similar thereto, as or in the
trade name of any publicly traded company without limitation as to duration or
territory.
4. Third-Party Agreements
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To the extent assignable without third-party consent and, if not, to the
extent such consents are obtained; at Closing, license agreements and other
contracts between RPCo. and unaffiliated third parties to the extent related
to the rights in Trademarks to be assigned to Newco hereunder will be assigned
from RPCo. to Newco. Newco agrees to assume RPCo's obligations under such
agreements. RPCo. will not, however, assign or cause to be assigned to any
Newco entity, any license or other contract to which an Oldco Affiliate of
RPCo. is a party or has an interest.
5. Newco Phase-Out of Retained Marks
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Newco agrees to remove all Oldco Trademarks not assigned or licensed to Newco
from Newco's labels, packaging, advertising, signs and other materials within
six (6) months following Closing. Oldco agrees to remove all trademarks
assigned to Newco, and to the extent exclusively licensed to Newco, from
Oldco's labels, packaging, advertising, signs and other materials within the
same six-(6-) month period.
6. Heritage
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Oldco , and Newco subject to the rights of Purina Mills, Inc. and any of its
successors and assigns, as interpreted by Oldco, will each be allowed to
refer to its pre-spin-off heritage in good faith in truthful articles,
histories and the like to the extent such use does not express or imply a
continuing relationship between Oldco and Newco.
7. Protein Products
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For purposes of this Agreement, none of the business of Protein Technologies
International Holdings, Inc. and its subsidiaries as of December 1, 1997
shall be considered an Agri Business.
8. Good Faith
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The parties agree not to do indirectly, through subsidiaries, Affiliates or
otherwise, what they could not do directly under this Trademark Agreement.
9. Scope and Modification
------------------------
This Trademark Agreement, including its schedules, sets forth the entire
agreement between the parties and supersedes all prior agreements and
understandings between the parties relating to the subject matter hereof.
None of the terms of this Trademark Agreement may be waived or modified except
as expressly agreed to, in writing, by both parties.
10. "Country Roads" and French Equivalent Trademarks
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Oldco agrees to file papers to cancel its Canadian registrations consisting of
or containing "Country Roads" or "Tradition Ralston" within fifteen (15)
working days following a request from Newco to do so.
11. Purina Mills Limitation
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Anything in this Agreement or any of its schedules to the contrary not -
withstanding, Newco shall enjoy no rights inconsistent with those licensed
to Purina Mills, Inc. in its agreement with RPCo. dated October 1, 1986.
12. Successors and Assigns
------------------------
This Trademark Agreement shall be binding upon and inure to the benefit of the
parties and each of their respective successors and assigns. Nothing in this
Paragraph 12 shall, however, affect transferability under the Trademark
License Agreement referred to in Subparagraph 2 (b) (i) which shall be
governed by the terms of such agreement.
13. Interpretation
--------------
The section headings contained in this Trademark Agreement are solely for the
purpose of reference, are not part of the agreement of the parties hereto, and
shall not in any way affect the meaning or interpretation of this Trademark
Agreement.
14. Counterparts
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This Trademark Agreement may be executed in two or more counterparts, each of
which may be deemed an original, but all of which together shall constitute
one and the same instrument.
15. Governing Law
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This Agreement is made and entered into, and shall be governed by and
construed and interpreted in accordance with the laws of, the State of
Missouri, United States of America, without regard to its conflicts of laws
principles, as to all matters, including those relating to the validity,
construction, performance, effect and remedies under this Trademark Agreement.
All matters relating to this Agreement shall, subject to the provisions of
Paragraph 17 hereinbelow, be adjudicated exclusively in the courts of the
State of Missouri located in St. Louis, Missouri, or within the United States
District Court for the Eastern District of Missouri; and each party hereby
consents to the exclusive jurisdiction and venue of such courts for all such
matters.
16. Amendment and Modification; Non-Waiver
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This Trademark Agreement may be amended, modified or supplemented, or rights,
powers or options hereunder waived or impaired, only by a written agreement
signed by a corporate officer of RPCo. and Agribrands and attested by their
respective corporate secretaries. Neither party shall be deemed to have
waived or impaired any right, power or option created or reserved by this
Trademark Agreement (including without limitation, each party's right to
demand compliance with every term herein, or to declare any breach a default
and exercise its rights in accordance with the terms hereof) by virtue of:
(I) any custom or practice of the parties at variance with the terms hereof;
(ii) any failure, refusal or neglect to exercise any right hereunder, or to
insist upon compliance with any term; (iii) any waiver, forbearance, delay,
failure or omission to exercise any right or option, whether of the same,
similar or different natures, under this Trademark Agreement or in any other
circumstances; or (iv) the acceptance by either party of any payment or other
consideration from the other following any breach of this Trademark Agreement.
The rights and remedies set forth in this Trademark Agreement are in addition
to any other rights or remedies which may be granted by law.
17. Negotiation
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If any question shall arise in regard to (a) the interpretation of any
provision of this Trademark Agreement or (b) the rights or obligations of
either Group hereunder or thereunder, each Group shall designate a senior
executive within its organization who shall, within thirty (30) days after
such question arises, meet with the designated executive of the other Group to
negotiate and attempt to resolve such question in good faith. Such senior
executives may, if they so desire, consult outside advisors for assistance in
arriving at such a resolution. In the event that a resolution is not achieved
within sixty (60) days following such initial meeting, then the parties may
seek other legal means of resolving such question, including but not limited
to binding or non-binding arbitration.
18. Additional Documents
---------------------
The parties agree to execute or cause to be executed such additional documents
as may be reasonably required to give effect to their undertakings in this
Trademark Agreement.
IN WITNESS WHEREOF, the parties hereto have executed this Trademark Agreement
as of the date first above written.
RALSTON PURINA COMPANY AGRIBRANDS INTERNATIONAL, INC.
By: By: ______
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Name: Name: ______
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Title: Title: ______
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Date:______________________ Date:___________________________
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TRADEMARK LICENSE AGREEMENT
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This TRADEMARK LICENSE AGREEMENT is effective as of this _____ day of
____________, 1998, by and between RALSTON PURINA COMPANY, a Missouri
corporation having an office at Checkerboard Square, St. Louis, Missouri
63164, U.S.A. (hereinafter referred to as "LICENSOR"), and, AGRIBRANDS
INTERNATIONAL, INC., a Missouri corporation having an office at 9811 South
Forty Drive, St. Louis, Missouri 63124, U.S.A. (hereinafter referred to as
"LICENSEE").
WHEREAS, LICENSOR is record owner of many registrations and applications
to register various trademarks consisting of or containing the words "PURINA,"
"CHOW," "Checkerboard," Checkerboard designs, and variations on such marks,
including, but not limited to, the registrations shown on Schedule A, some or
all of which are used in connection with Licensed Products; and
WHEREAS, LICENSEE desires to use the trademarks listed in Schedule A in
connection with the manufacture, distribution, sale and advertising of
Licensed Products as hereinafter defined in the corresponding countries and
jurisdictions as listed in said Schedule A; and
WHEREAS, LICENSEE also desires to use the trademarks shown on Schedule A
in connection with Licensed Products in new jurisdictions into which LICENSEE
may expand its business beyond the Territory as hereinafter defined; and
WHEREAS, LICENSOR is willing to grant LICENSEE a license to use the
aforementioned trademarks on Licensed Products under the terms and conditions
of this Trademark License Agreement;
NOW, THEREFORE, in consideration of the mutual promises hereafter set
forth and other good and valuable consideration, the receipt and sufficiency
of which are hereby acknowledged, the parties agree as follows:
1. DEFINITIONS: The following terms shall have the following meanings:
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(a) "Affiliates" shall mean a person that directly, or indirectly through
one or more intermediaries, controls or is controlled by, or is under common
control with the person specified.
(a-1) "Agricultural" shall mean for a purpose primarily connected to (i)
the raising of livestock or poultry for the production of meat, milk, eggs,
fur or skin; or as beasts of burden; (ii) the cultivation of soil; or (iii)
the harvesting of crops.
(b) "Control" shall mean the ability in fact to effect or prevent the
action of a legal person, whether such ability may be exercised by (i) the
direct or indirect ownership of voting securities; (ii) the direct or indirect
ownership of an interest in an unincorporated legal person; (iii) contract or
other arrangement; or (iv) otherwise.
(c) "Effective Date" shall mean the date in line 2 of this Trademark
License Agreement.
(d) "Licensed Marks" shall mean those trademarks or service marks shown in
Schedule A together with such trademarks as may be added from time to time as
provided for in this Trademark License Agreement or as agreed to in writing
between LICENSOR and LICENSEE and to which the terms and conditions of this
Trademark License Agreement shall thereafter apply. Any one of the Licensed
Marks shall be referred to in this Trademark License Agreement as a "Licensed
Mark."
(e) "Licensed Products" shall, except as limited elsewhere in this
Agreement, mean all products formulated to provide nourishment to or care of
horses (whether or not agricultural), laboratory or zoo animals (but not
including Pet Products sold to such institutions) and agricultural animals
(whether terrestrial, aquatic or aviary), including by way of illustration,
but not limitation, commercial livestock; commercial poultry; fish, reptiles
or shellfish raised in commercial aquaculture facilities; rabbits raised for
commercial purposes; animals raised for fur; wild or game birds; and services
for the care and feeding of such animals. Except as limited elsewhere in this
Trademark License Agreement, Licensed Products also include accessories,
health products and services for the care and feeding of horses, zoo animals,
laboratory animals and agricultural animals and by way of illustration, but
not limitation, the following equipment, products and services for use for
agricultural purposes:
(i) products and services for breeding, feeding, health care, shelter,
control and transportation of agricultural animals;
(ii) products and services for extraction, collection, processing,
packaging, storage of agricultural animal products and agricultural animal
wastes;
(iii) products and services for genetic research and development,
hybridization and seed production, soil analysis, planting, propagation,
cultivating, harvesting, treatment and storage of agricultural products;
(iv) agricultural genetic and chromosomal material and other products of
biotechnology, biology and other sciences, plant tissue cultures, pure line
seeds, planting seeds;
(v) agricultural pharmaceuticals, antibiotics, wormers, fertilizers,
pesticides, herbicides, insecticides, rodenticides, fungicides;
(vi) agricultural feeders, waterers, agricultural animal semen, embryos,
live agricultural animals, larvae, non-pet veterinary instruments, cleaners,
cultivation equipment, aquaculture, hydroponic and greenhouse equipment,
irrigators, heaters, harvesters, fruit pickers, driers, trailers, silos,
marking devices, bedding, tanks, paints, pens, fencing, groomers, cages,
saddles, tack, milk handling equipment, transporters, manure collecting and
processing equipment;
(vii) products and services related to the provision of methods, systems
and techniques for the development, production, application and utilization of
the products described above, such as farm and agricultural management
services, farm and agricultural computer programs and software, farm and
agricultural financial services, soil analysis, non-pet related veterinary
services; sale, leasing and brokerage services for agricultural land and
equipment; distributing, wholesaling and retailing Licensed Products;
(viii) publications directly related to agriculture or agricultural
animals;
(ix) agricultural animal end-use products (e.g., hams, cheese, eggs) other
than products for pets.;
(x) Licensed Products are not limited to products in existence at the
date hereof but will include products not yet invented or commercialized
which fall within the above definition; however, except for products and
services for horses, a product or service shall not be considered a
Licensed Product if it is not primarily related to agriculture or for
agricultural animals, laboratory or zoo animals. Licensed Products shall
not include any "Pet Products" or any other products or services not
included in this definition of Licensed Products. Licensed Products shall
also exclude feed rations for the purpose of fattening dogs for human
consumption. Any one of the Licensed Products shall be referred to in
this Trademark License Agreement as a "Licensed Product."
(f) "Other Products" shall mean products other than Licensed
Products upon which LICENSEE may use the Licensed Marks pursuant to this
Trademark License Agreement. Any one of the Other Products shall be referred
to in this Trademark License Agreement as an "Other Product."
(g) "Person" shall mean a juristic person as well as a natural person.
The term "juristic person" includes a firm, corporation, union, association,
joint venture, partnership or other organization capable of being sued.
(h) "Pet Products" shall mean products for and services related to the
nourishment or care of pets other than horses, including by way of
illustration, but not limitation, dogs, cats and other small pet animals such
as birds, reptiles, guinea pigs, white mice, and ornamental fish. Pet
Products include, but are not limited to, pet and pet-related food,
nutritional products, accessories, care and/or health products and services
for the care and feeding of pets. Pet accessories, pet-care and/or pet health
products include, but are not limited to, pet and pet-related litter,
rawhides, bedding, vitamins/minerals, flea and tick-control products, shampoos
and grooming accessories, bird food (but not wild-bird or game-bird food),
leashes, collars, toys and other accessories (e.g. aquarium accessories). Pet
Products also include pet and pet-related products for purchase or use by
breeders, small-animal veterinarians, police, military or guard-dog forces and
zoos. Pet Products also include any food for dogs or cats other than food
formulated specifically for laboratory dogs or laboratory cats. Any one of
the Pet Products shall be referred to in this Trademark License Agreement as a
"Pet Product."
(i) "Principal Competitor" shall mean a person which has, or has an
affiliate which has, ten percent (10%) or more of dollar sales volume or
dollar market share as measured by A. C. Nielsen, Euromonitor, or other
generally recognized data research company (or, in the event such data is not
available, then as reasonably determined by LICENSOR) in any country in any of
the following product categories: dog food, cat food, pet litter, pet
snacks, or any other product manufactured or sold by LICENSOR or one or more
of LICENSOR's Affiliates. Notwithstanding the foregoing, "Principal
Competitors" also shall include, but not be limited to, Nestle, Mars, Heinz,
Iams, Colgate-Palmolive and/or Hill's Pet Nutrition, Doanes, Nutro, Dalgety,
Cargill, Royal Canin, Greens, and any of their Affiliates.
(j) Except as limited by Subparagraph 2 (a) hereinbelow, the "Territory"
with respect to a given mark or marks shall be the jurisdiction indicated with
respect to such mark or marks on Schedule A. The Territory may be expanded to
include additional jurisdictions pursuant to Subparagraph 2(h) hereinbelow.
In no event shall the "Territory" include the United States of America, its
territories, possessions (other than Puerto Rico) and facilities of its armed
forces. Despite the foregoing, the "Territory" shall include Puerto Rico as a
jurisdiction which may be added to this Agreement pursuant to Paragraph 2(h)
hereinbelow.
(k) "Third-Party Licenses" shall mean licenses with persons which are not
LICENSOR's or LICENSEE's Affiliates.
(l) "Trade Name" shall mean corporate name and/or other business name
including, but not limited to, names of partnerships and joint ventures.
(m) "Licensed Trade Name" is a Trade Name consisting of or containing one
or more Licensed Marks.
(n) "Trademark" shall include trademarks, service marks, trade dress and
copyrights; however, "trademark" shall mean only a word, symbol or device
registrable as a trademark or service mark.
2. GRANT OF RIGHTS
-----------------
Except to the extent previously licensed to Purina Mills, Inc and except
as provided elsewhere in this Trademark License Agreement:
(a) LICENSOR hereby grants to LICENSEE the exclusive license to use in the
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Territory the Licensed Marks on or in connection with the Licensed Products
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subject to the terms and conditions of this Agreement. Except as provided for
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in Subparagraph 2(h), hereinbelow, the license granted hereunder shall be
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limited to products manufactured or services rendered by LICENSEE or an
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Affiliate of LICENSEE on the Effective Date and shall be further limited to
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the jurisdictions in which such products were then sold or services then
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rendered. LICENSOR shall not use nor permit any of LICENSOR's Affiliates to
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use in the Territory any Licensed Mark or any mark confusingly similar thereto
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on or in connection with any Licensed Product nor shall, except as
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specifically provided for in agreements listed in Schedule B, LICENSOR license
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any other Person to do so anywhere in the world. Such prohibition shall
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extend to the use of the term "Purina" and other Licensed Marks as all or part
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of the Trade Name of any business engaged in the manufacture, distribution or
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sale of Licensed Products. LICENSEE agrees, however, without limitation as to
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products, territory or duration, not to object to the inclusion of "Purina" in
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LICENSOR's Trade Name in any good-faith reference to any business operated as
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an Affiliate whose name does not include "Purina." Such undertaking also
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extends to Affiliates LICENSOR may hereafter establish or acquire. LICENSOR
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and LICENSEE shall each have the non-exclusive right to use the Licensed Marks
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for publications such as educational, training, advertising and promotional
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material, stock certificates and annual reports relating to the respective
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businesses they are permitted to conduct under Licensed Marks. Except as
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provided in Subparagraph 2 (b) hereinbelow, if LICENSOR or Affiliate of
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LICENSOR manufactures or sells any Licensed Product in the Territory, it shall
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conduct its business with respect to such Licensed Product under a Trade Name
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which does not include the term "Purina" or any other Licensed Mark or any
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other Trade Name or designation confusingly similar to "Purina" or other
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Licensed Mark. LICENSOR shall, however, have the right to refer to its
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ownership of such business in its annual reports and in other contexts in
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which it is appropriate to impart information about such ownership. The
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exclusivity of the license granted by this Trademark License Agreement shall
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not, however, preclude LICENSOR's use (either by itself or through Affiliates
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or other licensees) of any of the Licensed Marks in the Territory or elsewhere
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with respect to products and/or services other than the Licensed Products.
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Notwithstanding any other provision of this Trademark License Agreement,
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LICENSEE shall be permitted to use in the Territory a Licensed Trade Name in
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connection with the production, distribution and sale of those dog- and
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cat-food products described in Section 5.01 of the Reorganization Agreement
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between the parties, dated as of April 1, 1998, in the Agricultural Channel as
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described therein, which description shall apply during the entire term of
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this Trademark License Agreement; provided however, that such dog- and
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cat-food products (i) shall not display, accompany or otherwise be connected
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with any of the Licensed Marks; (ii) shall be sold only under and in
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connection with trademarks wholly owned by LICENSEE; and (iii) shall be sold
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only in jurisdictions where LICENSEE or LICENSEE's affiliates or sublicensees
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are required by law to include the product manufacturer's full and true
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corporate name on the package, and alternatives thereto (including, but not
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limited to, the use of names of an Affiliate, a fictitious name or an
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abbreviation) are not permitted. LICENSEE shall not be required to form a
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separate subsidiary in order to comply with the provisions of this paragraph
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if to do so would be unlawful or unduly burdensome. The use of Licensed Trade
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Names as permitted by this Subparagraph 2 (a) shall not go beyond their
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appearance on the side panel of packaging, and shall be set forth in the
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smallest typeface legally permissible. The limitations contained in this
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Subparagraph 2 (a) shall not be construed to prevent LICENSEE from selling the
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dog- and cat-food products described in Section 5.01 of the Reorganization
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Agreement through the Agricultural Channel as defined therein, which Channel
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may involve the display of Licensed Marks on (for example) buildings,
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vehicles, stationery and billing documents; provided however, that LICENSEE
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shall at all times endeavor in good faith to prevent any association of
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Licensee's products with those of LICENSOR, or any of LICENSOR's Affiliates,
- ------------------------------------------------------------------------------
distributors, customers or other licensees.
- -----------------------------------------------
(b) Where legally feasible, and subject to the terms and conditions of
this Trademark License Agreement, LICENSEE shall have the right to use
"Purina" in its Affiliates' Trade Names in the Territory provided such Trade
Names include wording reflecting the agricultural- or aquacultural-related
nature of the business of the entity concerned, namely "Agribrands Purina" or
such other wording as LICENSOR and LICENSEE shall agree upon, and provided the
use of such wording is not likely to cause confusion with a product, service
or business of LICENSOR, or any third party because such name is similar
(apart from the common inclusion of the word "Purina") to a name or mark owned
or used by LICENSOR or any third party at the time of the adoption of the name
by LICENSEE or its Affiliates.
(c) Except as specifically provided elsewhere in this Trademark License
Agreement, LICENSEE shall not use "Purina" or any other Licensed Mark, or term
confusingly similar thereto, as a trademark for, or Trade Name associated
with, any product or service other than a Licensed Product. If LICENSEE
manufactures or sells any other product or renders any other service, it shall
conduct its business with respect to such product or service not licensed to
it hereunder under a Trade Name which does not include the word "Purina" or
any other Licensed Mark, abbreviation thereof or term otherwise confusingly
similar thereto. LICENSEE shall, however, have the right to refer to its
ownership of such business in its annual reports and other contexts in which
it is appropriate to impart information about such ownership provided such
reference is not likely to cause confusion with a product, service or business
of LICENSOR, Purina Mills, Inc. or any of its/their Affiliates, or its/their
successors or assigns.
(d) LICENSEE shall not use the term "Checkerboard Square" or any term
including that term or any term confusingly similar thereto, as its business
address or otherwise. LICENSEE shall not use the term "Ralston" or any term
confusingly similar thereto in any manner. LICENSEE shall not hold itself
out as corporately related or otherwise related to LICENSOR except as a
licensee of the Licensed Marks. LICENSOR and LICENSEE may truthfully and in
good faith describe themselves as part of the same business which has sold the
Licensed Products for many years or, in the case of LICENSEE, as the successor
to LICENSOR's business in the Licensed Products, and refer to the history of
that business and its products as its own provided it does so in a manner
which, by LICENSOR's interpretation, is not likely to cause confusion with a
product, service or business of , or otherwise conflict with the rights of,
LICENSOR, Purina Mills, Inc. or other licensee of LICENSOR or any of its/their
Affiliates, or its/their successors or assigns.
(e) In order to avoid conflicts with third parties, LICENSEE shall not
have the right to coin new marks which are, in whole or in part, derived from,
incorporate or are similar to any of the Licensed Marks or names or elements
of those marks or names without LICENSOR's prior written consent, which may be
granted or withheld at LICENSOR's sole discretion. LICENSEE shall have the
right as provided in Subparagraph 2(h) hereinbelow to extend the use of
Licensed Marks to new Licensed Products provided such extension does not
conflict with the rights of LICENSOR or any third party.
(f) LICENSOR shall promptly, to the extent it is able, (i) assign all
licenses, if any, for marks of others used on Licensed Products in the
Territory to LICENSEE; or, if such assignment is not legally feasible, but a
sublicense is, (ii) grant sublicenses to LICENSEE for such marks of others as
LICENSOR is unable to assign. Anything in this Agreement to the contrary
notwithstanding, LICENSOR makes no representation concerning LICENSEE's
continued right to use marks owned by third parties. LICENSEE acknowledges
that the continued use of such marks as are sublicensed shall be governed by
such agreements as LICENSOR may have or hereafter obtain from the owners of
such marks. Continued use of marks covered by such sublicenses shall be
governed by their terms. All such sublicenses (if any) as are material to the
LICENSEE's business and cannot be assigned are listed on Schedule C hereto.
(g) Except as otherwise specifically provided for in this Agreement,
LICENSEE hereby agrees, for itself and its Affiliates and sublicensees, to
limit its and their use of the Licensed Marks and Trade Names to the Licensed
Products and to the Territory. LICENSOR and LICENSEE agree, upon receipt of
notice from the other party, reasonably to cooperate to resolve conflicts
resulting from sales of Licensed Products violating third-party rights or
jeopardizing trademark rights of the other party, or contractual obligations
of the other party to third parties. LICENSOR and LICENSEE agree to enter
into and to record such registered-user agreements, or country-specific
licenses or sublicenses, at the expense of the requesting party, as LICENSOR
or LICENSEE may reasonably request, to comply with local law.
(h) If LICENSEE wishes to expand its business to include use of Licensed
Marks on Licensed Products beyond those Licensed Products in use by LICENSEE
or its Affiliates on the Effective Date and/or if LICENSEE expands its
business outside the Territory, LICENSOR agrees, where legally feasible , at
LICENSEE's expense, and pursuant to LICENSEE's request therefor, to add to the
license granted LICENSEE under this Trademark License Agreement such Licensed
Marks as LICENSOR may then own for Licensed Products in such jurisdictions;
and to establish, at LICENSEE's request and expense, where necessary and where
legally feasible , new rights in Licensed Marks for such expanded Licensed
Products and/or in such jurisdictions thereby expanding the definition of
"Territory." LICENSEE acknowledges that LICENSOR is under no obligation to
maintain existing registrations for LICENSEE's future use under this
Subparagraph 2(h) prior to such request. Any Licensed Marks for Licensed
Products in such jurisdiction added to the Territory pursuant to this
subparagraph shall be subject to the maintenance and renewal provisions of
Paragraph 8 of this Trademark License Agreement. In no event shall this
Subparagraph 2(h) obligate LICENSOR to expand the Territory to include the
United States of America or any of its territories or possessions (other than
Puerto Rico) or facilities of its armed forces.
(i) Notwithstanding anything to the contrary in this Trademark License
Agreement, the license granted shall not extend to products or services beyond
those comprehended by the trademark rights Licensor has secured or may in the
future secure in those jurisdictions in which LICENSEE uses or seeks to use a
Licensed Mark. LICENSEE acknowledges that in certain jurisdictions LICENSOR
may not own rights it owns in other jurisdictions; and that in certain
jurisdictions LICENSOR may have non-exclusive rights in certain marks (e.g.
CHOW) for which LICENSOR possesses exclusive rights in other jurisdictions.
LICENSEE further acknowledges that in certain jurisdictions its rights to use
the Licensed Marks and Licensed Trade Names are limited by existing
Third-Party Licenses and undertakings to third parties in existence as of the
Effective Date. Such licenses and undertakings known to LICENSOR as of the
Effective Date are reflected on Schedule B attached hereto. LICENSEE therefore
undertakes not to use marks and names otherwise licensed hereunder to the
extent such use would be inconsistent with third-party rights under licenses
or undertakings reflected on Schedule B or which may come to light in the
future but were in existence as of the Effective Date.
(j) LICENSOR and LICENSEE shall both have the right to display Licensed
Marks consistent with the terms of this Trademark License Agreement in
connection with their participation in conferences and symposia anywhere in
the Territory. Participation in conferences and symposia in the United States,
but not in Puerto Rico, shall require reasonable notice that Licensed Products
bearing the Licensed Trademarks are not available from Licensee, its
affiliates, dealers, franchises or licensees in the United States. The display
of Licensed Marks at such events is subject to the rights, as interpreted by
LICENSOR, of Purina Mills, Inc., its successors and assigns.
(k) Except to the extent LICENSEE may be separately licensed by LICENSOR
in writing to use one or more of the Licensed Marks or Licensed Trade Names
outside the Territory, LICENSEE hereby agrees, for itself and for its
Affiliates and other sublicensees, to limit its use of the Licensed Marks and
Licensed Trade Names to the Territory; not to export from the Territory
products on or in connection with which Licensed Marks are used and not to
sell, deliver or otherwise convey such products to anyone LICENSEE
believes or has reason to believe will take the same outside the
Territory.
(l) To the extent LICENSEE makes an incidental use of a Licensed Mark in
the United States, in any of its territories or possessions (other than Puerto
Rico) or at any facility of its armed forces, by, for example, but not by way
of limitation, featuring a Licensed Product displaying a Licensed Mark in
LICENSEE's annual report, and such use results in a complaint from Purina
Mills, Inc., any of its successors, assigns or other person or persons
claiming rights pursuant to the License Agreement dated October 1, 1986 among
Ralston Purina Company, Purina Mills, Inc. and BP Nutrition Limited, LICENSOR
shall be the sole judge of whether, as between LICENSOR and LICENSEE, such use
may violate LICENSOR's obligation to Purina Mills, Inc., BP Nutrition Limited
and/or any of its/their successors and assigns or other person or persons
claiming rights pursuant to such License Agreement. In the exercise of its
judgment, LICENSOR may require LICENSEE to discontinue any such use unless and
until LICENSOR satisfies itself that such use does not place LICENSOR in
violation of any of its obligations to Purina Mills, Inc., BP Nutrition
Limited, its and/or their successors and assigns.
3. PRODUCT QUALITY
----------------
(a) LICENSEE may use the Licensed Marks and Licensed Trade Names only in
connection with Licensed Products and Other Products which are of a good and
merchantable quality (the "Product Standards"); and which are in compliance
with applicable laws and governmental regulations relating to the nature and
quality of the products (the "Legal Standards"). The Product Standards and
the Legal Standards shall be collectively referred to as the "Quality
Standards." The quality and product specifications of the Licensed Products
and Other Products heretofore manufactured and sold by LICENSOR or its
Affiliate(s) in a given jurisdiction under the Licensed Marks are hereby
adopted as acceptable Product Standards for the Licensed Products and Other
Products to be sold by LICENSEE under the Licensed Marks in such jurisdiction;
however, LICENSEE may change product formulations, specifications, or methods
of making Licensed Products and Other Products and create new such products,
provided such changes and creations are subject to the Quality Standards
required by this Paragraph 3 and LICENSEE's other undertakings in this
Trademark License Agreement. LICENSOR will not object under this Paragraph 3
to LICENSEE's use of the Licensed Marks in association with Licensed Products
and Other Products equal to or exceeding the Quality Standards. If a
Licensed Product or Other Product contains ingredients or is made by methods
which are not generally accepted as appropriate for the product by independent
experts, but which are accepted as appropriate for the product by at least
three independent experts, then any doubts as to the quality of the product
arising from such disagreement among experts shall be resolved in favor of
LICENSEE and shall not cause the product to be deemed of less than good and
merchantable quality. If a Licensed Product contains ingredients, or is made
by methods, which are new or proprietary, so that independent experts have
insufficient data for evaluating them, such Licensed Product shall be deemed
to have met the Product Standards until LICENSOR can reasonably establish the
contrary by substantial objective evidence; provided that LICENSEE submits to
LICENSOR a written statement by an expert reasonably acceptable to LICENSOR
to the effect that the product is of good and merchantable quality and in
compliance with all applicable laws and governmental regulations.
(b) Upon request of LICENSOR, at least two (2) samples of each new article
of Licensed Products or Other Products shall be furnished free of charge to
LICENSOR from LICENSEE for the purpose of LICENSOR's examination and approval
hereunder sufficiently in advance of any sale or distribution thereof.
LICENSEE shall give LICENSOR notice in advance of introduction of new article
of Licensed Products sufficiently in advance of sale or distribution to afford
LICENSOR an opportunity to request samples. The reformulation of an existing
Licensed Product or Other Product shall be deemed not to be a "new article" or
"variation" for purposes of this subparagraph. Thereafter, any reduction in
the quality or change in the style of any of the Licensed Products or Other
Products shall be submitted in like fashion for approval by LICENSOR in
advance. From time to time reasonable quantities of samples of Licensed
Products and Other Products shall be submitted at LICENSOR's request without
charge to LICENSOR for its examination and approval as to the maintenance of
the approved standards of quality and style. Any variation of a Licensed
Product or Other Product will be submitted to LICENSOR for LICENSOR's
approval. The absence of any objection by LICENSOR to submitted samples
within fifteen (15) days following submission thereof shall be deemed to be
acceptance; and any objections thereto shall be subject to the provisions at
Section 4 of this Trademark License Agreement.
(c) Anything in this Trademark License Agreement to the contrary
notwithstanding, if the laws of a particular jurisdiction require a product to
be of a higher quality than that imposed by this Paragraph 3 in order to
preserve the viability of the Licensed Marks and Licensed Trade Names, then
such higher requirement shall apply hereunder in such jurisdiction.
4. QUALITY CONTROL
----------------
(a) Upon at least five (5) business days' advance written notice and
during normal business hours, LICENSOR shall have the right to inspect the
places of manufacture of Licensed Products or Other Products bearing a
Licensed Mark or Licensed Trade Name,
and the places where services are rendered under a Licensed Mark, to
determine whether the Quality Standards of Paragraph 3 of this Trademark
License Agreement are being met. At such inspections, LICENSOR's
representative shall have the right to observe the production of Licensed
Products and Other Products and the delivery of the services concerned.
LICENSOR shall not have the right to inspect a particular place of manufacture
or observe particular services more than twice per year unless a problem has
occurred at such place which reasonably requires additional visits, or to
remove more samples or more volume of a product in any given sample than is
reasonably necessary to conduct quality analyses. Such inspection visits
shall be made by appointment at a time mutually convenient for the parties.
LICENSOR shall not have the right to request samples in a manner which will
interfere with production of a Licensed Product or Other Product , such as by
requiring a production line or machine to be shut down. LICENSEE shall
reimburse LICENSOR for its incremental costs reasonably incurred by LICENSOR
in connection with the inspections carried out pursuant to this Paragraph
4(a).
(b) If LICENSOR is dissatisfied with the quality of a Licensed Product or
Other Product, LICENSOR shall not serve a notice of breach of this Trademark
License Agreement on LICENSEE until LICENSOR has sought to reconcile its view
of the quality of the Licensed Product or Other Product at issue with that of
LICENSEE by providing to LICENSEE written evidence which supports its view
that the quality of the product is deficient. If LICENSEE and LICENSOR are
unable to reconcile their views within forty-five (45) days following
LICENSOR's notification of its dissatisfaction to LICENSEE stating reasons
therefor, LICENSOR shall seek or shall have sought the opinion of an
independent expert on the product or service concerned. LICENSOR shall
provide that expert with a sample of the product or service that LICENSOR
finds unsatisfactory. LICENSOR shall cause the expert to discuss the points
of dissatisfaction fully with LICENSEE and to review any further samples of
the product or service which LICENSEE may provide from a regular production
run. LICENSOR shall serve a notice of breach only if the expert, in a written
report made after discussions with LICENSEE, concludes that the product or
service concerned has violated the requirement to maintain the quality in
Paragraph 3 of this Agreement. LICENSOR shall include a copy of that written
report with the notice of breach.
5. DISCLAIMER OF WARRANTIES BY LICENSOR
----------------------------------------
LICENSOR disclaims any warranty of validity, right to use or right exclusively
to use or register the Licensed Marks or any of them.
6. INDEMNITY BY LICENSEE
-----------------------
(a) From and after the Effective Date, LICENSEE agrees to defend,
indemnify and hold LICENSOR, its officers, agents, employees, successors
or assigns harmless against any and all claims, demands, and causes of
action including, but not limited to, those relating to product liability,
patent infringement and environmental law, and associated judgments, costs
and expenses in excess of ten thousand dollars $10,000.00 per event,
including attorney's fees, arising out of (i) LICENSEE's manufacture,
distribution, shipment, disposal, advertising, promotion or sale of
Licensed Products or (ii) any act or omission by LICENSEE, its agents or
employees, provided that LICENSEE receives prompt notice of such claim,
demand or cause of action and is permitted to deal with it in LICENSEE's
sole discretion.
(b) At all times during which LICENSEE or an Affiliate or sublicensee
of LICENSEE uses any of the Licensed Marks, LICENSEE will maintain
liability insurance, protecting both LICENSOR and LICENSEE and which
provides for at least thirty- (30-)days advance written notice of
termination, revocation or diminution of coverage, in an amount not less
than ten million dollars ($10,000,000). Such coverage shall also include
broad-form contractual coverage applicable to all indemnities given by
LICENSEE under this Trademark License Agreement. LICENSEE shall deliver to
LICENSOR evidence of such insurance within thirty (30) days following the
execution of this Trademark License Agreement. LICENSOR shall notify
LICENSEE of any claim for which it may seek indemnification from LICENSEE
promptly upon its General Counsel's becoming aware of such claim, but in
any event in sufficient time so that LICENSOR's or LICENSEE's rights are
not prejudiced by any delay in notification, and LICENSEE shall have the
right to control the defense of such claim. LICENSEE may elect to defend
against any claim without thereby waiving any objection as to LICENSEE's
obligation to defend LICENSOR therefrom. LICENSOR shall have the right to
participate in the defense of such claim through counsel of its own
selection at its own expense. If LICENSEE does not defend against a
claim for which it is obligated to indemnify LICENSOR, LICENSOR may defend
against all such claim at LICENSEE's expense, provided LICENSEE shall have
the right at all times, in its sole discretion and at LICENSEE's expense,
to retain or resume control of the conduct of the defense.
6.1 SETTLEMENTS
-----------
(a) Neither party shall settle any claim affecting the other party's right
to use any of the Licensed Marks or Licensed Trade Names in the Territory
without such other party's prior written consent, which consent shall not
be unreasonably withheld or delayed
(b) The undertakings of Paragraphs 6 and 6.1 shall survive expiration
or termination of this Agreement.
7. LICENSOR'S RIGHTS
------------------
(a) LICENSEE hereby acknowledges that LICENSOR is and will forever remain
the sole and rightful owner of the Licensed Marks and the Licensed Mark in any
Licensed Trade Names to the extent such Licensed Trade Name incorporates a
Licensed Mark; and that use of the Licensed Marks and Licensed Trade Names by
LICENSEE or any Affiliate or other sublicensee pursuant to this Trademark
License Agreement shall inure to the benefit of LICENSOR. LICENSEE agrees
that during the continuance and after a termination of this Trademark License
Agreement, LICENSEE will not claim any right in or to any of the Licensed
Marks and Licensed Trade Names other than the license to use the same as
specifically provided herein, nor will LICENSEE dispute or assist others to
dispute the ownership or validity of any of the Licensed Marks and Licensed
Trade Names. LICENSOR reserves the right to use, and license other parties to
use, the marks and names included in Schedule A to this Trademark License
Agreement anywhere in the world for all products and services other than
Licensed Products.
(b) LICENSEE agrees to make reasonable efforts to use the Licensed Marks
properly as trademarks or service marks, by, for example: (i) using , " ,"
"SM," "MD" or "MR" or other appropriate trademark registration symbols,
employing notices indicating LICENSOR's ownership of the Licensed Marks and
(ii) using Licensed Marks as adjectives followed by generic terms. The
parties recognize, however, that use of trademark registration symbols and
generic terms every time a mark is used on a particular item may be awkward
and is not necessary in order to make acceptable trademark or service-mark
usage. This Section 7(b) shall not be deemed to require LICENSEE to alter the
manner in which marks have been used immediately prior to the Effective Date.
Advertising, packaging and labeling shall be made available to LICENSOR at
LICENSOR'S request from time to time for the purposes of satisfying LICENSOR
of LICENSEE's compliance with this Trademark License Agreement.
8. REGISTRATION
------------
LICENSOR will, where legally feasible and where requested by LICENSEE, use
reasonable efforts to renew and maintain existing registrations of the
Licensed Marks and to obtain new registrations for the Licensed Marks. To that
end, LICENSOR will periodically notify LICENSEE of Licensed Marks for which
renewals, proofs of use and the like are required. If LICENSOR decides to
renew a particular registration for its own benefit, it will renew such
registration at its own cost. If LICENSOR decides it does not wish to renew
such registration of a Licensed Mark, it will so notify LICENSEE and afford
LICENSEE the opportunity to request that LICENSOR renew such registration at
LICENSEE's sole cost. LICENSEE shall then provide LICENSOR with a prompt
written request to renew or maintain such marks as it wishes to renew or
maintain along with evidence of use, specimens or other materials LICENSOR may
reasonably request to facilitate such renewal or maintenance. LICENSOR shall
not be required to renew or otherwise maintain any registration for which
LICENSOR does not receive a timely request to renew or to maintain or for
which LICENSOR does not timely receive adequate proofs of use and other
evidence which may be required under local law for renewal and/or maintenance
or such registration. In addition, LICENSEE shall pay LICENSOR an annual
trademark-administration fee of Seventy-five thousand U.S. dollars
($75,000.00) to cover LICENSOR's in-house costs of administering this
Trademark License Agreement. If LICENSEE avails itself of the benefits of
Subparagraph 2(h) hereinabove, the annual trademark-administration fee shall
be increased by five thousand dollars ($5,000) for each jurisdiction added to
the Territory. Such fees shall be increased by three percent (3%) annually.
If the consumer price index compiled by the U.S. government increases by an
amount equal to ten percent (10%) or more in a given year, then the amount of
increase in that year shall be substituted for the three percent (3%) figure
noted hereinabove.
9. TERM AND TERMINATION
----------------------
(a) This Trademark License Agreement shall commence on the Effective Date
and shall where legally feasible remain in effect perpetually; however,
LICENSOR shall have no further obligations to LICENSEE under this Trademark
License Agreement with respect to any Licensed Mark or Licensed Trade Name in
a given jurisdiction which has been or will be abandoned as determined by the
law of the applicable jurisdiction or to the extent a registration covering
the same is cancelled for any reason not caused by LICENSOR or is cancelled or
rendered cancellable for non-use by LICENSEE for Licensed Products in such
country or for which LICENSEE has not timely requested, provided supporting
evidence for and paid for renewal or maintenance. Abandonment or
cancellability for non-use shall be determined by applying the law of such
jurisdiction. If granting a perpetual license in a given jurisdiction is not
legally feasible (e.g. where a jurisdiction deems such license an
assignment), the term of license in such jurisdiction shall be the maximum
allowed under the law of such jurisdiction. The Parties will cooperate and
use all reasonable efforts and take all reasonable steps in any jurisdiction
to facilitate LICENSEE's continued use of the Licensed Marks and Licensed
Trade Names on Licensed Products in the Territory beyond what would otherwise
be the maximum term permitted in such jurisdiction.
(b) Omitted
(c) Omitted
(d) This Trademark License Agreement shall terminate for a breach thereof
effective one hundred and eighty (180) days following notice in writing from
LICENSOR to LICENSEE unless, (I) within ninety (90) days following such
notice LICENSEE has initiated and is taking reasonable measures to remedy
such breach to the reasonable satisfaction of LICENSOR and (2) such breach has
been remedied to the reasonable satisfaction of LICENSOR within one hundred
and eighty (180) days following such notice. This Trademark License Agreement
shall also be terminable upon the same notice in the event all or part of this
Trademark License Agreement is transferred in any manner other than as
provided in Paragraph 16 hereinbelow.
10. INFRINGEMENTS
-------------
(a) Upon becoming aware in the Territory of:
(i) any infringement or suspected infringement of a Licensed Mark, or of a
Licensed Trade Name which includes the word "Purina," or other Licensed Mark,
any application for the registration of a mark which LICENSEE or LICENSOR
believes should be opposed, or any registration for a mark which LICENSEE or
LICENSOR believes should be cancelled, or
(ii) any matter or circumstance which in the opinion of LICENSEE or
LICENSOR would likely adversely affect the interest of the other party, the
party believing the item in question to require action hereunder shall
forthwith notify the other thereof, and LICENSOR may, with respect to such
uses of marks on products or services other than Licensed Products then in use
by LICENSEE or its Affiliate or other sublicensee in the jurisdiction in
which such circumstance exists, assert such claim, file such action for
infringement, file such opposition or cancellation proceeding, enter into a
settlement or take such other steps for the protection of the Licensed Marks
or decline to take any action as LICENSOR considers advisable in the exercise
of its sole discretion. LICENSEE shall supply such assistance and information
as LICENSOR may reasonably require in support of such action as LICENSOR
elects to take. With respect to infringements involving a third-party use of
a mark on any Licensed Product then in use by LICENSEE in the jurisdiction in
which the infringement, matter or circumstance arises; LICENSOR and LICENSEE
shall consult with each other in a good-faith attempt to reach an agreed-upon
course of action. If LICENSOR and LICENSEE are unable to do so within ten
(10) working days following the commencement of such discussions, either party
shall be free to proceed to assert its rights at its own expense.
(b) The reasonable costs (including but not limited to fees and
disbursements paid to counsel of LICENSOR's choice) of claims, actions and
other proceedings brought by LICENSOR at LICENSEE's request shall be paid to
LICENSOR by LICENSEE . LICENSOR shall have the right, in consultation with
LICENSEE, reasonably to control the course of such litigation; however, any
settlement of such litigation shall, to the extent it may adversely impact the
rights of LICENSEE, be subject to LICENSEE's approval, which approval may not
be unreasonably withheld.
11. ROYALTY
-------
No royalty shall be payable by LICENSEE to LICENSOR in respect of any rights
granted under the terms of this Trademark License Agreement.
12. SUBLICENSING
------------
LICENSEE shall have the exclusive right where legally feasible to grant
sublicenses to Persons other than a Principal Competitor for use of the
Licensed Marks for the Licensed Products in the Territory, provided that the
sublicense shall be subject to all terms and conditions of this Trademark
License Agreement and LICENSEE shall be responsible for acts pursuant to or in
breach of this Trademark License Agreement by any sublicensee, and further
provided that LICENSEE gives LICENSOR at least thirty- (30-) days advance
written notice indicating the identity of any prospective sublicensee and the
Licensed Marks and Licensed Products to be sublicensed, accompanied by a
certification that the use of such marks with respect to such Licensed
Products will comply with all the terms and conditions of this Trademark
License Agreement. In the event any sublicense shall be determined to
impose franchising-compliance, or other obligations or costs on LICENSOR,
LICENSEE shall pay such costs and, to the extent feasible , discharge such
obligations. If LICENSOR is nevertheless required to discharge such
obligations, LICENSEE shall reimburse LICENSOR's total costs resulting from
the reasonable discharge of any such obligation and/or growing out of any such
activity.
13. CONTRACT MANUFACTURING
-----------------------
LICENSEE shall have the right where legally feasible to use third-party
manufacturers to produce Licensed Products and Other Products bearing the
Licensed Marks and Licensed Trade Names in the Territory meeting the Quality
Standards of Paragraph 3 hereinabove solely for purchase by LICENSEE, its
sublicensed Affiliates or other sublicensees for distribution to or through
its or their customers under the terms and conditions of this Trademark
License Agreement.
14. PROMOTIONAL PRODUCTS
---------------------
Subject to the items listed on Schedule B, neither party shall object to the
other party's, its Affiliates', sublicensees', dealers', franchisees' or
other customers' sale or distribution in the Territory on a non-exclusive
basis of promotional products, such as caps, T-shirts, hats and agriculturally
oriented apparel (e.g. jackets, shirts, pants, boots, belts), pens, balloons,
mugs, keychains, calendars, pocket knives and the like bearing LICENSEE's, its
sublicensed Affiliate's or sublicensee's Licensed Trade Name and/or one or
more Licensed Marks or Licensed Trade Names for the purpose of developing
goodwill and promoting the products for which such party or its Affiliates and
sublicensees are allowed to use the Licensed Marks pursuant to this Trademark
Agreement provided such items do not infringe or otherwise violate third-party
rights. Neither party shall grant a license or sublicense that would undermine
the other's rights under this Paragraph 14. The fact that the sale of products
pursuant to this Paragraph 14 may be at a profit shall not remove such
products from the scope of product contemplated by this Paragraph 14.
15. OMITTED
-------
16. TRANSFERABILITY
---------------
LICENSOR shall have the right to transfer some or all its rights and
obligations under this Trademark License Agreement, either by affirmative act
or by operation of law, by share ownership or otherwise, without the consent
of LICENSEE. Neither LICENSEE nor any of its Affiliates or sublicensees shall
have the right to transfer all or part of its or their rights or obligations
under this Trademark License Agreement, either by affirmative act or by
operation of law, by share ownership, or otherwise, except with the consent
of LICENSOR, which consent will not be unreasonably withheld. LICENSOR may
withold its consent in situations where to do so would be reasonable. Such
situations include, but are not limited to, LICENSOR's withholding consent to
LICENSEE's, any of its sublicensed Affiliates' and/or any other sublicensee's
transfer of rights and obligations under this Trademark License Agreement to
a transferee who acquires rights to use less than all of the Licensed Marks or
to a transferee of such rights for a territory covering less than a continent
(e.g. Africa, Europe, Asia) or a transfer of any rights hereunder to a
Principal Competitor of LICENSOR anywhere in the world. A transfer of the
Trademark License shall be deemed to have occurred if (a.) LICENSEE transfers
(by any means including, but not limited to, operation of law), all or part of
its interest in the Trademark License and/or if (b.) a third party should
acquire (by any means including, but not limited to, operation of law) a
voting, profits or equity interest of ten percent (10%) or more in LICENSEE.
17. NOTICES
-------
All notices hereunder given by the parties hereto shall be in writing and
shall be hand delivered or sent by U.S. Registered or Certified U.S. Mail,
postage prepaid, return-receipt requested, or delivered by a courier company,
prepaid, to the addresses indicated below. The addresses of the parties until
further written notice to the contrary are:
LICENSOR RALSTON PURINA COMPANY
Checkerboard Square
St. Louis, Missouri 63164
Attn: Trademark Counsel
LICENSEE ABRIBRANDS INTERNATIONAL, INC.
9811 South Forty Drive
St. Louis, Missouri 63124
Attn: General Counsel
18. RELATIONSHIP OF THE PARTIES
------------------------------
This Trademark License Agreement does not make either party the agent of the
other, create a partnership or joint venture between the parties or any
relationship other than that of LICENSOR and LICENSEE, nor shall this
Trademark License Agreement give either party the power to obligate or bind
the other in any manner whatsoever. The manufacture, distribution, sale,
offering for sale, pricing, trade promotion and marketing of the Licensed
Products shall be accomplished by LICENSEE at LICENSEE's sole cost and expense
or that of its Affiliates or other sublicensees.
19. CAPTIONS
--------
The captions used in connection with the paragraphs and subparagraphs of this
Trademark License Agreement are inserted only for the purpose of reference.
Such captions shall not be deemed to govern, limit, modify, or in any other
manner affect the scope, meaning or intent of the provision of this Trademark
License Agreement or any part thereof; nor shall such captions otherwise be
given any legal effect.
20. GOVERNING LAW, JURISDICTION AND VENUE
-----------------------------------------
This Trademark License Agreement is made and entered into, and shall be
governed by and construed and interpreted in accordance with the laws of, the
State of Missouri, United States of America, without regard to its conflicts
of laws principles, as to all matters, including those relating to the
validity, construction, performance, effect and remedies under this Trademark
License Agreement. All matters relating to this Trademark License Agreement
shall, subject to the provisions of Paragraph 22 of this Trademark License
Agreement, be adjudicated exclusively in the courts of the State of Missouri
located in St. Louis, Missouri, or within the United States District Court for
the Eastern District of Missouri; and each party hereby consents to the
exclusive jurisdiction and venue of such courts for all such matters.
21. SEVERABILITY
------------
If any of the provisions of this Trademark License Agreement are held by a
court or governmental authority of competent jurisdiction to be unenforceable
as written, then any such provision shall be deemed automatically amended so
that it is enforceable to the maximum extent permissible under the laws and
public policy of the applicable jurisdiction or authority. The provisions of
this Trademark License Agreement are severable and each provision shall be
interpreted and enforced as if all completely invalid or unenforceable
provisions were not contained in this Trademark License Agreement and
partially valid or enforceable provisions shall be enforceable to the extent
they are valid or enforceable.
22. DISPUTE RESOLUTION
-------------------
If any question shall arise in regard to (a) the interpretation of any
provision of this Trademark License Agreement or (b) the rights or obligations
of either party hereunder or thereunder, each party shall designate a senior
executive within its organization who shall, within thirty (30) days after
such question arises, meet with the designated executive of the other party to
negotiate and attempt to resolve such question in good faith. Such senior
executives may, if they so desire, consult outside advisors for assistance in
arriving at such a resolution. In the event that a resolution is not achieved
within sixty (60) days following such initial meeting, then the parties may
agree to seek other legal means of resolving such question, including but not
limited to binding or non-binding arbitration. If the parties cannot so
agree, they shall be free to avail themselves of the remedies provided in
Paragraph 20 hereinabove.
23. MISCELLANEOUS
-------------
(a) This Trademark License Agreement may be amended, modified or
supplemented, or rights, powers or options hereunder waived or impaired, only
by a written agreement signed by a corporate officer of LICENSOR and LICENSEE
and attested by their respective corporate secretaries. Neither party shall
be deemed to have waived or impaired any right, power or option created or
reserved by this Trademark License Agreement (including without limitation,
each party's right to demand compliance with every term herein, or to declare
any breach a default and exercise its rights in accordance with the terms
hereof) by virtue of: (i) any custom or practice of the parties at variance
with the terms hereof; (ii) any failure, refusal or neglect to exercise any
right hereunder, or to insist upon compliance with any term; (iii) any waiver,
forbearance, delay, failure or omission to exercise any right or option,
whether of the same, similar or different natures, under this Trademark
License Agreement or in any other circumstances; or (iv) the acceptance by
either party of any payment or other consideration from the other following
any breach of this Trademark License Agreement. The rights and remedies set
forth in this Trademark License Agreement are in addition to any other rights
or remedies which may be granted by law.
(b) Neither LICENSOR nor LICENSEE nor any of its/their Affiliates, or, in
the case of LICENSEE, its Affiliates, sublicensees and contract manufacturers,
shall use a mark or name which is confusingly similar to any mark or name it
is precluded from using pursuant to this Trademark License Agreement.
(c) Anything in this Trademark License Agreement to the contrary
notwithstanding, LICENSEE's Affiliates shall have a license hereunder to use
the word "Ralston" in their Trade Names on stationary, business cards and
other physical materials to the extent now used, under the terms and
conditions of this License, for the sole purpose of exhausting existing
inventories of such materials, over a period not to extend beyond
six (6) months following the Effective Date.
(d) All payments required to be made pursuant to this Trademark License
Agreement shall be due and payable in United States currency thirty (30) days
following the event giving rise to the obligation to make such payment.
(e) The parties agree not to do indirectly through, for example, their
Affiliates, anything they are not allowed to do directly under this Trademark
License Agreement.
RALSTON PURINA COMPANY AGRIBRANDS INTERNATIONAL, INC.
By: By:
Name: Name:
Title: Title:
Date:_______________________ Date:______________________
(Aglicns.doc)
53
SCHEDULE A
Mark Registration No.
CHOW
PURINA
Checkerboard
SCHEDULE B
Third-party Licenses and Undertakings to Third Parties
(AgriTMA.doc)