Exhibit 10.34
TRADEMARK LICENSE AGREEMENT
THIS AGREEMENT, effective as of the 27th day of December,
1999 (the "Effective Date"), is by and between NORTON COMPANY, a corporation
organized and existing under the laws of the Commonwealth of Massachusetts, and
having its principle place of business in Worcester, MA 01606 (hereinafter
referred to as "Licensor") and JORE CORPORATION, a corporation organized and
existing under the laws of Montana, located at 45000 Highway 93 S., Ronan, MT
59864 (hereinafter referred to as "Licensee").
WHEREAS, Licensor is the owner of the Trademarks SPEED-LOK, U.S. reg.
no. 920010, SPEEDLOK, U.S. reg. no. 769352, and SPEED-LOK, Canadian
reg. no. 184913; and Licensee owns a pending application for the
trademark SPEED-LOK, serial no. 75-274214 in the USA (the
"Trademarks");
WHEREAS, Licensee is desirous of obtaining an exclusive license to use
the Trademarks in the United States of America and Canada (the
"Territory") in connection with the sale of power drill bits, bit
drivers and related accessory products (the "Products").
WHEREAS, Licensor and Licensee have entered into a Supply Agreement
(the "Supply Agreement") dated as of December 20, 1999.
NOW THEREFORE, the parties hereto do hereby agree as follows:
1. Concurrently with the execution of this Agreement, Licensee
shall execute and deliver to Licensor an assignment in the
form attached hereto as EXHIBIT A to assign all its right,
title and interest in and to the application for the trademark
SPEED-LOK to Licensor.
2. Licensor hereby grants to Licensee a non-assignable,
non-transferable, and exclusive right to use the Trademarks in
connection with the manufacture, promotion, advertisement and
sale of the Products in the Territory. Licensee shall not use
the Trademarks on or in connection with any goods other than
the Products.
3. Licensee agrees to pay Licensor an annual license fee of 3% of
net sales of Products. The fee shall be paid on an annual
basis within forty-five (45) days after the end of each
calendar year. No royalty payments shall be due during the
term of the Supply Agreement.
4. Licensor specifically reserves the right to inspect Products
sold by Licensee under the Trademarks to ensure their quality,
and, toward this end, Licensee agrees to send samples of
Products to Licensor for
inspection, analysis and testing at such times and in such
reasonable quantities as Licensor may request.
5. Licensor reserves the right to use and to license others to
use said Trademarks in any country, including within the
Territory, except for power drill bits, bit drivers and their
accessories, as to which this license is exclusive.
6. The term of this Agreement shall run concurrently with the
Supply Agreement. In the event the Supply Agreement is
terminated or expires, the term of this Agreement shall be
extended automatically for a period of one (1) year from the
date of any such termination or expiration. Thereafter, this
Agreement shall be renewed automatically for successive
one-year periods, unless (a) Licensee gives notice to Licensor
of its intention not to renew this Agreement at least sixty
(60) days prior to the expiration of the then current term, or
(b) until this Agreement is terminated as set forth herein.
7. Licensor has the right to terminate this Agreement upon thirty
(30) days written notice to Licensee in the event: (i)
Licensee is in breach of any provision hereof and Licensee has
failed to cure such breach within twenty (20) days after
receiving written notice of such breach from Licensor; or (ii)
the annual license fees for any year following the termination
of the Supply Agreement is less than Five Hundred Thousand
U.S. Dollars ($500,000).
8. Upon termination, the Licensee agrees to immediately
discontinue all use of the Trademarks and any term confusingly
similar thereto; however Licensee shall have a period of six
(6) months from the date of such termination to use up its
supplies of Products, literature, packaging and other
materials to which the Trademarks have been applied on the
date of termination. Any such terminal use of the Trademarks
shall otherwise be in accordance with the provisions of this
Agreement.
10. This Agreement shall not be assignable by Licensee except with
the consent in writing of Licensor, except to a successor to
the relevant business of Licensee.
11. Licensee agrees that the ownership of the Trademarks, and the
goodwill relating thereto, shall always remain vested in
Licensor, both during the period of this Agreement and
thereafter, and Licensee further agrees neither to challenge,
contest or call in question the validity or ownership of the
Trademarks or their registrations, or the right of Licensor to
use said Trademarks in the Territory, or elsewhere, both
during the period of this Agreement and thereafter.
12. Licensor represents that Licensee's use of the Trademarks for
the Products does not infringe other rights in the Territory
as of the date of the agreement.
13. Licensee shall give Licensor notice of any known or presumed
infringements of the Trademarks, and Licensee shall render
Licensor full cooperation for the protection of the
Trademarks. Licensor will make reasonable efforts to enforce
the Trademarks against an infringer and any monetary sums
recovered by Licensor by way of settlement or judgment shall,
after deducting all costs and expenses (including reasonable
attorneys' fees) incurred by Licensor, be paid over to
Licensee to the extent, and solely to the extent, any such
recovery was based on or derived from any economic loss
sustained by Licensee as a result of any such infringement.
14. It is agreed that this Agreement shall be interpreted
according to the laws of the Commonwealth of Massachusetts.
15. No right, title or interest in the Trademarks, except the
nonexclusive right to use the Trademarks in the Territory on
the goods covered by said registrations, is transferred by
this Agreement to the Licensee.
IN WITNESS WHEREOF, this Agreement has been entered into as of the day
and year first above written.
NORTON COMPANY JORE CORPORATION
Licensor Licensee
By:_________________________ By:___________________________
Title:_______________________ Title:_________________________
EXHIBIT A
ASSIGNMENT
WHEREAS, Jore Corporation, 45000 Highway 93 S., Ronan, MT 59864, a
Montana corporation, used and is using the trademark SPEED-LOK and is the owner
of the U.S. trademark application serial no. 75-274214 therefor, and
WHEREAS, Norton Company, a corporation of Massachusetts with offices
at 1 New Bond Street, Worcester, MA 01606, is desirous of acquiring the
trademark and application therefor, together with the goodwill associated
therewith, along with the right to recover damages and profits for past
infringements thereof;
NOW THEREFORE, for good and valuable consideration receipt of which is
hereby acknowledged, Jore Corporation hereby assigns to Norton Company all
right, title and interest in the trademark and application therefor, together
with the goodwill symbolized by the mark, along with the right to recover for
damages and profits for past infringements thereof.
Jore Corporation
By: ________________________
Typed Name:
Title:
Date: