AMENDED AND RESTATED TRADE NAME AND SERVICE MARK
LICENSE AGREEMENT
AMENDED AND RESTATED TRADE NAME AND SERVICE MARK LICENSE
AGREEMENT, dated as of June 4, 1996, by and among Federated
Department Stores, Inc. ("Licensor"), GE Capital Consumer Card Co.
("GE Bank") and General Electric Capital Corporation ("GE
Capital"). GE Bank and GE Capital may be referred to herein
individually as a "Licensee" or collectively as "Licensees."
Capitalized terms used, but not otherwise defined herein, have the
meanings set forth in the Amended and Restated Credit Card Program
Agreement dated as of the date hereof (the "Amended and Restated
Program Agreement").
WHEREAS, Monogram Bank, USA ("Monogram"), R.H. Macy &
Co., Inc. ("Macy") Macy's Northeast, Inc. ("Macy's Northeast"),
Macy's South, Inc. ("Macy's South"), Macy's California, Inc.
("Macy's California"), Bullock's, Inc. ("Bullock's"), I. Magnin,
Inc. ("I. Magnin") and Macy Specialty Stores, Inc. ("Macy's
Specialty") entered into a Credit Card Program Agreement dated as
of May 10, 1991 (the "Program Agreement");
WHEREAS, GE Capital, Macy, Macy Credit Corp., Macy
Receivables Funding Corp., Macy's California, Macy's Northeast,
Macy's South, Bullock's, I. Magnin, Macy Receivables Master
Servicing Corp. and Macy's Specialty entered into a Commercial
Accounts Agreement dated as of May 10, 1991 (the "Commercial
Accounts Agreement");
WHEREAS, contemporaneously with the execution of the
Program Agreement and the Commercial Accounts Agreement, Macy,
Monogram and GE Capital entered into a Trade Name and Service Mark
License Agreement dated as of May 10, 1991 (the "License
Agreement");
WHEREAS, contemporaneously herewith, GE Bank (as the
successor to Monogram), Licensor (as the successor to Macy), FDS
National Bank ("FDS Bank"), Macy's East (as the successor to
Macy's Northeast and Macy's South), Macy's West (as the successor
to Macy's California), Bullock's, Broadway Stores, Inc., FACS
Group, Inc. ("FACS") and MSS-Delaware, Inc. ( Macy's East, Macy's
West, Bullock's, Broadway Stores, Inc. and MSS-Delaware, Inc.
referred to hereinafter collectively as the "Store Group
Licensees" ) are entering into the Amended and Restated Program
Agreement amending and restating the Program Agreement in its
entirety;
WHEREAS, contemporaneously herewith, GE Capital,
Licensor and the Store Group Licensees are entering into the
Amended and Restated Commercial Accounts Agreement amending and
restating the Commercial Accounts Agreement in its entirety;
WHEREAS, contemporaneously herewith, GE Capital, FDS,
FACS and FDS Bank are entering into the GE Capital Services
Agreement for purposes of setting forth the terms and conditions
that will govern the provision of the GE Capital Services (as
defined therein) with respect to the FDS Serviced Accounts (as
defined therein); and
WHEREAS, Licensor, GE Bank and GE Capital desire to
amend and restate the Trade Name and Service Mark License
Agreement in its entirety.
NOW, THEREFORE, in consideration of the terms,
conditions and mutual covenants contained herein, and for other
good and valuable consideration, the sufficiency of which is
hereby acknowledged, Licensor and Licensees agree as follows:
1. Grant of License. Licensor hereby grants to
Licensees, and Licensees hereby accept from Licensor, upon the
terms and conditions set forth herein, a non-exclusive, royalty-
free license to use the trade names, corporate names, company
names, business names, fictitious business names, trade styles,
service marks, logos and other source or business identifiers
identified in Schedule A annexed hereto which have been licensed
to and used by the Store Group Licensees (each individually
referred to as a "Mark" and all collectively referred to as the
"Marks") in the United States of America and elsewhere, solely in
connection with the GE/Macy's Account Documentation, GE/Macy's
Commercial Account Documentation and such services or other
actions or activities in connection with the Program, the
Commercial Accounts Program and the GE Capital Services Agreement
(hereinafter collectively referred to as the "Services") as are
permitted by the Amended and Restated Program Agreement, the
Amended and Restated Commercial Accounts Agreement and the GE
Capital Services Agreement (the "License"). Any use of the Marks
by Licensees other than as specified herein and in the Amended and
Restated Program Agreement, the Amended and Restated Commercial
Accounts Agreement and the GE Capital Services Agreement without
Licensor's prior written approval, is prohibited. Each Mark shall
not be used with respect to any Store Group Licensee other than
the Store Group Licensee set forth on Schedule A hereto beside
such Mark.
2. Term. The term of the License granted herein shall
commence as of the date of execution of this Agreement by all
parties hereto, and shall terminate with respect to each Mark
individually, upon the later of (i) the date that Licensees own no
GE/Macy's Accounts, GE/Macy's Receivables, GE/Macy's Commercial
Accounts or GE/Macy's Commercial Receivables in connection with
which such Mark is used by Licensees hereunder, (ii) the date that
Licensees have no obligation to Service any GE/Macy's Accounts or
GE/Macy's Commercial Accounts under the Amended and Restated
Program Agreement or Amended and Restated Commercial Accounts
Agreement and (iii) the date that Licensees have no obligation to
Service any FDS Serviced Accounts and other FDS accounts under the
GE Capital Services Agreement. After termination of the Amended
and Restated Program Agreement, Licensees shall not use the Marks
for any purpose other than in connection with the Servicing and/or
collecting of GE/Macy's Accounts, GE/Macy's Receivables, GE/Macy's
Commercial Accounts, and GE/Macy's Commercial Receivables as to
which such Marks relate.
3. Restrictions and Quality Controls. The License to
use the Marks shall be subject to the following conditions and
restrictions:
(a) All displays of the Marks by Licensees shall
be solely in the form approved by and shall strictly conform to
all standards set by Licensor from time to time for its own
displays of the Marks and those of the Store Group Licensees. At
no time, without Licensor's prior written approval, shall any of
the Marks be used together or appear jointly in connection with
any GE/Macy's Account Documentation or GE/Macy's Commercial
Account Documentation, Service or otherwise. Licensor shall have
the unilateral right, at its sole discretion, to amend Schedule A
hereto by substituting a modified logo if such modified logo is
adopted by Licensor for all or a substantial portion of its own
business or that of any Store Group Licensee. If such
modification is made by Licensor, Licensor shall have the right to
require Licensees to substitute the modified logo form for the
prior logo form. Substitution of the modified logo by Licensees
shall be accomplished in accordance with Licensor's directions
which shall be reasonably calculated to minimize expense or
disruption to the business of Licensor and Licensees, but Licensor
may require that such substitution be completed by Licensees as
soon as 180 days after the date Licensor notifies Licensee that
the substitution is required. Licensor shall reimburse Licensees
for all reasonable costs and expenses incurred by any Licensee
arising solely as a consequence of such substitution of the
modified logo form; provided that Licensees shall reasonably
cooperate with Licensor in an attempt to minimize such costs.
(b) In utilizing the Marks, Licensees shall
include all notices and legends with respect to the Marks as are
or may be required by applicable Laws or which may be reasonably
requested by Licensor.
(c) Licensees shall at no time adopt or use,
without Licensor's prior written consent, any variation of the
Marks or any word or mark similar to or likely to be confused with
the Marks.
(d) Licensees shall comply in all material
respects with all Laws applicable to the use of the Marks by the
Licensees.
(e) Licensees shall not use any other trademarks,
trade names, corporate names, company names, business names,
fictitious names, trade styles, service marks, logos or other
business identifiers in conjunction with the Marks except to the
extent permitted by the Amended and Restated Program Agreement,
the Amended and Restated Commercial Accounts Agreement or the GE
Capital Services Agreement.
(f) Licensees shall utilize the Marks solely in a
manner consistent with the then-current practices of Licensor, and
in accordance with good trademark practice.
(g) Licensees shall not do anything or commit any
act which harms the goodwill or reputation of Licensor associated
with the Marks or prejudice or adversely affect the validity of
the Marks or Licensor's ownership thereof.
(h) Licensees shall, during the term of this
Agreement and after termination hereof, execute all such documents
as Licensor may request from time to time to confirm and enforce
Licensor's rights in the Marks and to ensure that all right, title
and interest in and to the Marks reside in Licensor, provided that
Licensor shall reimburse Licensees for any out-of-pocket costs and
expenses incurred in connection therewith.
4. Samples of Licensees' Products and Services and
Approvals by Licensor. (a) No GE/Macy's Account Documentation or
GE/Macy's Commercial Accounts provided by GE Bank or GE Capital
shall be used, distributed or made available to the public in any
manner by Licensees except upon the prior submission by Licensees
to Licensor of a reasonable number of free samples and Licensor's
prior written approval of Licensees' use of the Marks therein;
provided, that if Licensor has not responded within six Business
Days from receipt its approval shall be deemed to have been given.
Licensees shall annually provide Licensor with a reasonable number
of samples of all such GE/Macy's Credit Card Documentation so that
Licensor may assure itself of Licensees' maintenance of quality
standards.
(b) Licensees shall not use the Marks on any
service of any type other than as provided herein without
Licensor's prior approval, in Licensor's sole discretion.
5. Ownership. (a) Licensees hereby acknowledge
Licensor's ownership of Marks and agree not to take or cause any
actions to be taken which would interfere with Licensor's
ownership, use or registration thereof. Any and all goodwill
arising from use of the Marks under this Agreement shall inure
solely to the benefit of Licensor.
(b) Licensees agree that during the term of this
License and thereafter they will at no time claim any title to the
Marks or any right to use the Marks except as permitted by this
Agreement, the Amended and Restated Program Agreement and the GE
Capital Services Agreement, including, without limitation, by
making any assertion that any failure of Licensor to set standards
for, or police Licensees' use of, the Marks results in an
abandonment of Licensor's rights in the Marks or that Licensees
have any rights hereunder other than as licensees. Licensees
shall not during the term of this License or thereafter, directly
or indirectly question, attack, contest or, in any other manner,
impugn the validity of the Marks or Licensor's rights in and to
the Marks, or the License herein granted, including, without
limitation thereto, in any action in which enforcement of any
provision of this Agreement is sought; nor shall Licensees
willingly become a party adverse to Licensor in any litigation in
which any third-party is contesting the validity of the Marks or
Licensor's rights in and to the Marks.
6. Infringement. Licensees shall promptly bring to
Licensor's attention any infringements, dilutions, limitations or
unauthorized use of the Marks by others (collectively,
"Infringements") of which Licensees become aware. Licensor shall
in its sole discretion, take such steps as it deems reasonable in
the circumstances to abate such Infringements. Licensor shall
have the exclusive right, at its sole cost and expense, to
commence or prosecute any action on account of any such
Infringements, and Licensees agree to assist and cooperate with
Licensor, as Licensor may request, in connection with any such
action. Licensor shall have the sole right to settle such
Infringements and shall be entitled to all resulting damages
and/or other compensation paid by the infringer(s) except to the
extent necessary to reimburse any Licensee for any reasonable
costs and expenses incurred by it in connection with any action,
including, but not limited to, reasonable attorneys' fees.
7. Indemnification. (a) In addition to any
indemnification contained in the Amended and Restated Program
Agreement, the GE Capital Services Agreement and the Amended and
Restated Commercial Accounts Agreement, Licensor, at its sole cost
and expense, shall defend and indemnify and save and hold
Licensees (which for the purposes of this indemnification includes
Licensees, their subsidiaries, divisions, affiliated companies and
the officers, directors, employees and agents of each of them)
harmless from and against any and all liabilities, claims, causes
of action, suits, damages and expenses (including reasonable
attorneys' fees) for which Licensees become liable, or may incur
or be compelled to pay by reason of claims that Licensees' use of
the Marks in accordance with this Agreement violates trademark
rights of a third party.
(b) Licensees, at their sole cost and expense,
shall defend and indemnify and save and hold Licensor (which for
the purposes of this indemnification includes Licensor, its
subsidiaries, divisions, affiliated companies and the officers,
directors, employees and agents of each of them) harmless from and
against any and all liabilities, claims, causes of action, suits,
damages and expenses (including reasonable attorneys' fees) for
which Licensor becomes liable, or may incur or be compelled to pay
by reason of claims relating to use of the Marks by Licensees or
their permitted sublicensees (i) other than as permitted by the
Amended and Restated Program Agreement, the Amended and Restated
Commercial Accounts Agreement, and the GE Capital Services
Agreement and (ii) by Licensor at the request or direction of
either Licensee, except claims subject to indemnification under
Section 7(a) hereof.
8. Effects of Termination. Upon the termination of
this Agreement, (i) all rights of Licensees with respect to the
Marks under the License granted herein shall terminate and
automatically and immediately revert to Licensor and
(ii) Licensees shall immediately discontinue the use of the Marks,
provided, however, that Sections 3(c), 3(h), 5(b) and 7 hereof
shall survive termination of this Agreement.
9. Relationship. Licensees shall act independently
under this Agreement and shall not be deemed expressly or by
implication to be an agent, joint-venturer, partner, employee or
servant of Licensor for any purpose whatsoever and Licensees have
no authority (and shall not hold themselves out as having any
authority) hereunder to bind Licensor or the Store Group Licensees
in any manner. Licensees' employees shall not be deemed
Licensor's employees for any purpose. Licensor shall be
responsible for all duties, tariffs, taxes, reports, fees and
other similar charges or requirements imposed with respect to the
use of the Marks under this Agreement other than (i) Licensees'
income taxes and (ii) state franchise taxes to which Licensees may
be subject.
10. Assignment. This License is personal to Licensees
and Licensees may not sublicense or assign their rights or
delegate any of their duties or obligations hereunder except in
connection with an assignment or transfer by GE Bank to an
Affiliate of GE Bank of any or all of its rights or obligations
pursuant to the terms of the Amended and Restated Program
Agreement or by GE Capital pursuant to the terms of the Amended
and Restated Commercial Accounts Agreement or the GE Capital
Services Agreement. Any sublicense or assignment in violation
hereof or by operation of law shall be null and void. No
assignment or sublicense shall be made unless and until such
assignee or sublicensee has agreed in writing to be bound by this
Agreement, in this form, or otherwise by an instrument reasonably
acceptable to Licensor. Any assignments or transfers by Licensor
shall not relieve Licensor from its obligations hereunder and the
assignee or transferee of this Agreement shall assume, by
instrument reasonably acceptable to Licensees, the assignor's
obligations under this Agreement theretofore and thereinafter
arising. Any assignment or transfer by any Licensee or its
assignees pursuant to this Section 10 shall relieve such Licensee
or such assignee of its obligations hereunder and such party shall
no longer be a party to this Agreement; provided, that (i) the
Amended and Restated GE Capital Guaranty dated as of the date
hereof made by GE Capital in favor of the Guaranteed Parties
specified therein is confirmed by GE Capital at the time of such
assignment and (ii) the assignee assumes by instrument reasonably
satisfactory to Licensor, all of assignor's obligations under this
Agreement theretofore and thereinafter arising. This Agreement
shall be binding upon and shall inure to the benefit of the
parties hereto and their respective legal representatives and
permitted successors and assigns. Notwithstanding the foregoing,
Licensees shall each be permitted to allow their non-Affiliated
designees to utilize the Marks to perform the services that such
designees may perform pursuant to the terms of the Amended and
Restated Program Agreement, the Amended and Restated Commercial
Accounts Agreement and the GE Capital Services Agreement, provided
that any such sublicensees or designees shall acknowledge
Licensor's rights with respect to the Marks and shall agree that
Licensor may, at its option, enforce its rights with respect to
the Marks directly against such sublicensee or designee.
Licensees shall be responsible for any use of the Marks by their
sublicensees or designees to the same extent as Licensees are
responsible for their own use of the Marks.
11. Material Furnished by Licensor. In addition to the
requirements of Section 3 hereof, Licensees shall use their best
efforts to use all art work, photographs, drawings, samples,
graphics requirements and other such materials relating to the
Marks, the GE/Macy's Credit Card Documentation, the GE/Macy's
Commercial Accounts Documentation and the Services and Licensor
shall cooperate with Licensees in furnishing such materials which
may be reasonably requested by Licensees.
12. Notices. All notices and statements to be given by
the parties to this Agreement shall be given or made as applicable
in the same number as notices are required or permitted to be
given pursuant to the Amended and Restated Program Agreement.
13. Governing Law. The construction, validity,
performance and enforcement of this Agreement, shall be governed
by the Laws of the State of New York, without giving effect to
principles of conflicts of law thereof.
14. Further Assurances. The parties agree to promptly
execute and deliver all further instruments, agreements or other
documents to further the purposes of this Agreement.
15. Modification, Amendment, Supplement or Waiver. No
modification, amendment, supplement to or waiver of this Agreement
or any of its provisions shall be binding upon the parties hereto
unless made in writing and duly signed by the party or parties
against whom any waiver, change, amendment, modification or
discharge may be sought. A failure or delay of any party to this
Agreement to enforce at any time the provisions of this Agreement
or to require at any time performance of the provisions hereof,
shall in no way be construed to be a waiver of such provisions of
this Agreement. A waiver by any party of the terms and conditions
of this Agreement in any one instance shall not be deemed a waiver
of such terms or conditions in the future, or of any subsequent
breach thereof.
16. Irreparable Injury. Licensees hereby acknowledge
and agree that any unauthorized use of the Marks in violation of
the terms of this Agreement would cause Licensor immediate and
irreparable injury and that (in addition to all other remedies
available to Licensor) Licensor shall be entitled to injunctive
and/or equitable relief to prevent a breach of such obligations
and to secure enforcement thereof and compliance therewith.
17. Joint and Several Obligations. All obligations of
Licensees hereunder shall be joint and several obligations of
Licensees.
18. Entirety of Agreement. This Agreement in
conjunction with the Transaction Documents constitute the entire
agreement between the parties hereto with respect to the subject
matter hereof and supersede all prior agreements, promises,
representations, understandings and negotiations whether written
or oral, between the parties with respect thereto.
19. Separability. Any term or provision of this
Agreement which is invalid or unenforceable shall be ineffective
to the extent of such invalidity or unenforceability without
rendering invalid or unenforceable the remaining terms and
provisions of this Agreement.
20. Headings. The headings in this Agreement are for
reference purposes only and shall not affect the meaning or
interpretation of this Agreement.
21. Consent of Store Group Licensees.
Contemporaneously herewith, the Store Group Licensees are
executing the Consent of Store Group Licensees annexed hereto as
Schedule B.
IN WITNESS WHEREOF, the parties hereto intending to be
legally bound, have entered into this Agreement as of the day and
year first above written.
FEDERATED DEPARTMENT STORES, INC.
By: /s/Ronald W. Tysoe
Name: Ronald W. Tysoe
Title: Vice Chairman and Chief Financial
Officer
GE CAPITAL CONSUMER CARD CO.
By: /s/ Kevin Knight
Name: Kevin Knight
Title: Executive Vice President
GENERAL ELECTRIC CAPITAL CORPORATION
By: /s/ Richard A. Hayes
Name: Richard A. Hayes
Title: Senior Vice President Retailer
Financial Services
SCHEDULE A
LIST OF MARKS
STORE GROUP LICENSEE MARKS
(1) MACY'S EAST, INC. Reg'd Macy's (and design)
Unreg'd Macy's Gold+
Unreg'd Flexible (Flex)+
Unreg'd Santa Society +
Unreg'd Time Option Plan (TOP)+
Unreg'd Club Plan+
Unreg'd Homemaker+
Reg'd Bamberger's*
Unreg'd Credit Now +
Unreg'd In-Person+
(2) MACY'S WEST, INC. Reg'd Macy's (and design)
Unreg'd All Purpose Account+
Unreg'd Time Option Plan (TOP)+
Unreg'd Club Plan+
Unreg'd 30-Day Regular Account+
Unreg'd Macy's Business Account+
(3) BULLOCK'S, INC. Reg'd Bullock's (and design)
Unreg'd Prestige Bullock's Account (PBA)+
Unreg'd Termway+
Unreg'd Club Plan+
Unreg'd Regular Thirty Day (RTD)+
Unreg'd Silver Club Plan+
Reg'd Bullocks Wilshire*
Unreg'd Take-A-Minute
Unreg'd Take-One
Unreg'd Take Charge!
(4) MSS-DELAWARE, INC. Reg'd Charter Club
___________________
+ Each Mark denoted with a cross is to be used only in connection with the
type of account with which it is used by the respective Store Group Licensees
as of the date hereof and not with any other type of account.
* Each Mark denoted with an asterisk is to be used only in connection with
the servicing of existing customer accounts having credit cards issued under
such Mark solely to the extent used by the respective Store Group Licensees as
of the date hereof. Marks denoted with an asterisk are not to be used to open
any new account or service any other account whatsoever, or to replace any
existing credit card or account.
SCHEDULE B
CONSENT OF STORE GROUP LICENSEES
Effective as of June 4, 1996, the undersigned each
acknowledge that their respective use of the Marks listed on
Schedule A hereto is exclusively by virtue of the trademark and
service mark license agreement entered into by each of them with
Federated Department Stores, Inc. ("Licensor") and each hereby
consents to the terms and conditions of the License for use of
such Marks with is granted to GE Capital Consumer Card Co. and
General Electric Capital Corporation by virtue of the Amended and
Restated Trade Name and Service Mark License Agreement to which
this Schedule B is attached.
Macy's East, Inc.
Macy's West, Inc.
Broadway Stores, Inc.
Bullock's, Inc.
MSS-Delaware, Inc.
By: /s/ Robert C. Seppelt
Name: Robert C. Seppelt
Title: Vice President