Exhibit 2.5
MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
BETWEEN
3COM CORPORATION
AND PALM, INC.
Effective as of February 26, 2000
MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
TABLE OF CONTENTS
PAGE
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ARTICLE 1 DEFINITIONS.................................................................................................1
1.1 AUTHORIZED DEALERS..................................................................................1
1.2 COLLATERAL MATERIALS................................................................................1
1.3 CORPORATE IDENTITY MATERIALS........................................................................1
1.4 DISTRIBUTION DATE...................................................................................2
1.5 LICENSED MARKS......................................................................................2
1.6 MAINTENANCE CONTRACTS...............................................................................2
1.7 MARK................................................................................................2
1.8 MASTER SEPARATION AND DISTRIBUTION AGREEMENT........................................................2
1.9 PALM BUSINESS.......................................................................................2
1.10 PALM BUSINESS MARKS.................................................................................2
1.11 PALM BUSINESS MARKS DATABASE........................................................................2
1.12 PALM BUSINESS PRODUCTS..............................................................................2
1.13 PERSON..............................................................................................2
1.14 QUALITY STANDARDS...................................................................................3
1.15 SELL................................................................................................3
1.16 SEPARATION DATE.....................................................................................3
1.17 SUBSIDIARY..........................................................................................3
1.18 THIRD PARTY.........................................................................................3
1.19 TRADEMARK USAGE GUIDELINES..........................................................................3
ARTICLE 2 OWNERSHIP...................................................................................................3
2.1 OWNERSHIP OF PALM BUSINESS MARKS....................................................................3
2.2 PRIOR GRANTS........................................................................................4
2.3 ASSIGNMENT DISCLAIMER...............................................................................4
ARTICLE 3 LICENSES....................................................................................................4
3.1 LICENSE GRANT.......................................................................................4
3.2 LICENSE RESTRICTIONS................................................................................4
3.3 LICENSEE UNDERTAKINGS...............................................................................5
3.4 NON-TRADEMARK USE...................................................................................5
3.5 RESERVATION OF RIGHTS...............................................................................5
3.6 THIRD PARTY LICENSES................................................................................6
ARTICLE 4 PERMITTED SUBLICENSES.......................................................................................6
4.1 SUBLICENSES.........................................................................................6
4.2 AUTHORIZED DEALERS'USE OF MARKS.....................................................................6
4.3 ENFORCEMENT OF AGREEMENTS...........................................................................6
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TABLE OF CONTENTS
(continued)
ARTICLE 5 TRADEMARK USAGE GUIDELINES..................................................................................7
5.1 TRADEMARK USAGE GUIDELINES..........................................................................7
5.2 TRADEMARK REVIEWS...................................................................................7
ARTICLE 6 TRADEMARK USAGE GUIDELINE ENFORCEMENT.......................................................................7
6.1 INITIAL CURE PERIOD.................................................................................7
6.2 SECOND CURE PERIOD..................................................................................7
6.3 FINAL CURE PERIOD...................................................................................8
ARTICLE 7 QUALITY STANDARDS...........................................................................................8
7.1 GENERAL.............................................................................................8
7.2 QUALITY STANDARDS...................................................................................8
7.3 QUALITY CONTROL REVIEWS.............................................................................8
7.4 PRODUCT DISCONTINUATION.............................................................................8
ARTICLE 8 QUALITY STANDARD ENFORCEMENT................................................................................9
8.1 INITIAL CURE PERIOD.................................................................................9
8.2 SECOND CURE PERIOD..................................................................................9
8.3 FINAL CURE PERIOD...................................................................................9
ARTICLE 9 PROTECTION OF LICENSED MARKS................................................................................9
9.1 OWNERSHIP AND RIGHTS................................................................................9
9.2 PROTECTION OF MARKS.................................................................................9
9.3 SIMILAR MARKS......................................................................................10
9.4 INFRINGEMENT PROCEEDINGS...........................................................................10
ARTICLE 10 TERMINATION...............................................................................................11
10.1 TERM...............................................................................................11
10.2 VOLUNTARY TERMINATION..............................................................................11
10.3 SURVIVAL...........................................................................................11
10.4 OTHER TERMINATION..................................................................................11
ARTICLE 11 DISPUTE RESOLUTION........................................................................................11
11.1 MEDIATION..........................................................................................11
11.2 ARBITRATION........................................................................................11
11.3 COURT ACTION.......................................................................................12
11.4 CONTINUITY OF SERVICE AND PERFORMANCE..............................................................12
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TABLE OF CONTENTS
(continued)
ARTICLE 12 LIMITATION OF LIABILITY...................................................................................12
ARTICLE 13 MISCELLANEOUS PROVISIONS..................................................................................13
13.1 DISCLAIMER.........................................................................................13
13.2 NO IMPLIED LICENSES................................................................................13
13.3 INFRINGEMENT SUITS.................................................................................13
13.4 NO OTHER OBLIGATIONS...............................................................................13
13.5 ENTIRE AGREEMENT...................................................................................13
13.6 GOVERNING LAW......................................................................................14
13.7 DESCRIPTIVE HEADINGS...............................................................................14
13.8 NOTICES............................................................................................14
13.9 NONASSIGNABILITY...................................................................................15
13.10 SEVERABILITY.......................................................................................15
13.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE..............................................15
13.12 AMENDMENT..........................................................................................15
13.13 COUNTERPARTS.......................................................................................15
EXHIBIT A: LICENSED MARKS
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MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
This Master Trademark Ownership and License Agreement (the "Agreement")
is effective as of February 26, 2000 (the "Effective Date"), between 3Com
Corporation, a Delaware corporation ("3Com"), having an office at 5400 Bayfront
Plaza, Santa Clara, California, 95052 and Palm, Inc., a Delaware corporation
("Palm"), having an office at 5470 Great America Parkway, Santa Clara,
California, 95052.
WHEREAS, the Board of Directors of 3Com has determined that it is in
the best interest of 3Com and its stockholders to separate 3Com's existing
businesses into two independent businesses;
WHEREAS, as part of the foregoing, 3Com and Palm's predecessor, Palm
Computing, Inc., a California Corporation, have entered into a Master Separation
and Distribution Agreement (as defined below) which provides, among other
things, for the separation of certain Palm assets and Palm liabilities, the
initial public offering of Palm stock, the distribution of such stock and the
execution and delivery of certain other agreements in order to facilitate and
provide for the foregoing;
WHEREAS, the parties desire that 3Com assign and transfer to Palm the
Palm Business Marks (as defined below); and
WHEREAS, the parties further desire that 3Com license the Licensed
Marks (as defined below) to Palm after the separation of the Palm businesses.
NOW, THEREFORE, in consideration of the mutual promises of the parties,
and of good and valuable consideration, it is agreed by and between the parties
as follows:
ARTICLE 1
DEFINITIONS
For the purpose of this Agreement, the following capitalized terms are
defined in this Article 1 and shall have the meaning specified herein:
1.1 AUTHORIZED DEALERS. "Authorized Dealers" means any distributor,
dealer, OEM customer, VAR customer, VAD customer, systems integrator or other
agent that on or after the Separation Date is authorized to market,
advertise, sell, lease, rent, service or otherwise offer Palm Business
Products. Palm will provide 3Com a list of the then current Authorized
Dealers within a reasonable period after 3Com's request.
1.2 COLLATERAL MATERIALS. "Collateral Materials" means all
packaging, tags, labels, advertising, promotions, display fixtures,
instructions, warranties and other materials of any and all types associated
with the Palm Business Products that are marked with at least one of the
Licensed Marks.
1.3 CORPORATE IDENTITY MATERIALS. "Corporate Identity Materials"
means materials that are not products or product-related and that Palm may
now or hereafter use to
communicate its identity, including, by way of example and without
limitation, business cards, letterhead, stationery, paper stock and other
supplies, and signage on real property and buildings.
1.4 DISTRIBUTION DATE. "Distribution Date" has the meaning set
forth in the Master Separation and Distribution Agreement.
1.5 LICENSED MARKS. "Licensed Marks" means the Marks set forth on
Exhibit A hereto.
1.6 MAINTENANCE CONTRACTS. "Maintenance Contracts" means agreements
pursuant to which Palm, its Subsidiaries or its or their Authorized Dealers
or their designees provide repair and maintenance services (whether
preventive, diagnostic, remedial, warranty or non-warranty) in connection
with Palm Business Products, including without limitation agreements entered
into by 3Com prior to the Separation Date and assigned to Palm pursuant to
the Master Separation and Distribution Agreement or the Ancillary Agreements
(as such term is defined in the Master Separation and Distribution Agreement).
1.7 MARK. "Mark" means any trademark, service mark, trade name,
domain name, and the like, or other word, name, symbol or device, or any
combination thereof, used or intended to be used by a Person to identify and
distinguish the products or services of that Person from the products or
services of others and to indicate the source of such goods or services,
including without limitation all registrations and applications therefor
throughout the world and all common law and other rights therein throughout
the world.
1.8 MASTER SEPARATION AND DISTRIBUTION AGREEMENT. "Master
Separation and Distribution Agreement" means the Master Separation and
Distribution Agreement between the parties.
1.9 PALM BUSINESS. "Palm Business" means the business and
operations of Palm.
1.10 PALM BUSINESS MARKS. "Palm Business Marks" means the mutually
agreed Marks listed in the Palm Business Marks Database.
1.11 PALM BUSINESS MARKS DATABASE. "Palm Business Marks Database"
means the mutually agreed Palm Business Marks Database as of the Separation
Date, as it may be updated by the parties upon mutual agreement to add
additional Marks as of the Separation Date.
1.12 PALM BUSINESS PRODUCTS means any and all products of the Palm
Business commercially released prior to the Separation Date.
1.13 PERSON. "Person" means an individual, a partnership, a
corporation, a limited liability company, an association, a joint stock
company, a trust, a joint venture, an unincorporated organization, and a
governmental entity or any department, agency or political subdivision
thereof.
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1.14 QUALITY STANDARDS. "Quality Standards" means standards of
quality applicable to the Palm Business Products, as in use immediately prior
to the Separation Date, unless otherwise communicated in writing by 3Com from
time to time.
1.15 SELL. To "Sell" a product means to sell, transfer, lease or
otherwise dispose of a product. "Sale" and "Sold" have the corollary meanings
ascribed thereto.
1.16 SEPARATION DATE. "Separation Date" means 12:01 a.m., Pacific
Time, February 26, 2000, or such other date as may be fixed by the Board of
Directors of 3Com.
1.17 SUBSIDIARY. "Subsidiary" of any Person means a corporation or
other organization whether incorporated or unincorporated of which at least a
majority of the securities or interests having by the terms thereof ordinary
voting power to elect at least a majority of the board of directors or others
performing similar functions with respect to such corporation or other
organization is directly or indirectly owned or controlled by such Person or
by any one or more of its Subsidiaries, or by such Person and one or more of
its Subsidiaries; provided, however, that no Person that is not directly or
indirectly wholly-owned by any other Person shall be a Subsidiary of such
other Person unless such other Person controls, or has the right, power or
ability to control, that Person. For purposes of this Agreement, Palm shall
be deemed not to be a subsidiary of 3Com.
1.18 THIRD PARTY. "Third Party" means a Person other than 3Com and
its Subsidiaries and Palm and its Subsidiaries.
1.19 TRADEMARK USAGE GUIDELINES. "Trademark Usage Guidelines" means
the guidelines for proper usage of the Licensed Marks, as in use immediately
prior to the Separation Date, as such guidelines may be revised and updated
in writing by 3Com from time to time.
ARTICLE 2
OWNERSHIP
2.1 OWNERSHIP OF PALM BUSINESS MARKS. The parties agree that Palm
hereby retains ownership of all right, title and interest in and to the Palm
Business Marks. Subject to Sections 2.2 and 2.3 below, to the extent that any
Palm Business Marks are registered in 3Com's name anywhere in the world, or
to the extent that 3Com otherwise has any ownership rights in and to the Palm
Business Marks or any goodwill therein, 3Com hereby grants, conveys and
assigns (and agrees to cause its appropriate Subsidiaries to grant, convey
and assign) to Palm, by execution hereof (or, where appropriate or required,
by execution of separate instruments of assignment), all its (and their)
right, title and interest in and to the Palm Business Marks, including all
goodwill of the Palm Business appurtenant thereto, to be held and enjoyed by
Palm, its successors and assigns. 3Com further grants, conveys and assigns
(and agrees to cause its appropriate Subsidiaries to grant, convey and
assign) to Palm all its (and their) right, title and interest in and to any
and all causes of action and rights of recovery for past infringement of the
Palm Business Marks. 3Com will, without demanding any further consideration
therefor, at the request and expense of Palm (except for the
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value of the time of 3Com employees), do (and to cause its Subsidiaries to
do) all lawful and just acts that may be or become necessary for evidencing,
maintaining, recording and perfecting Palm's rights to such Palm Business
Marks consistent with 3Com's general business practice as of the Separation
Date, including but not limited to execution and acknowledgement of (and
causing its Subsidiaries to execute and acknowledge) assignments and other
instruments in a form reasonably required by Palm or the relevant
governmental or other authorities for each Mark in all jurisdictions in which
3Com owns rights thereto.
2.2 PRIOR GRANTS. Palm acknowledges and agrees that the foregoing
assignment is subject to any and all licenses or other rights that may have
been granted by 3Com or its Subsidiaries with respect to the Palm Business
Marks prior to the Separation Date. 3Com shall respond to reasonable
inquiries from Palm regarding any such prior grants.
2.3 ASSIGNMENT DISCLAIMER. PALM ACKNOWLEDGES AND AGREES THAT THE
FOREGOING ASSIGNMENTS ARE MADE ON AN "AS-IS," QUITCLAIM BASIS AND THAT
NEITHER 3COM NOR ANY SUBSIDIARY OF 3COM HAS MADE OR WILL MAKE ANY WARRANTY
WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, INCLUDING, WITHOUT LIMITATION, ANY
IMPLIED WARRANTIES OF TITLE, ENFORCEABILITY OR NON-INFRINGEMENT.
ARTICLE 3
LICENSES
3.1 LICENSE GRANT. 3Com grants (and agrees to cause its appropriate
Subsidiaries to grant) to Palm a personal, irrevocable, nonexclusive,
worldwide, fully-paid and non-transferable (except as set forth in Section
13.9) license to use the Licensed Marks on the Palm Business Products and in
connection with the Sale and offer for Sale of Palm Business Products (or, in
the case of Palm Business Products in the form of software, in connection
with licensing of Palm Business Products) and to use the Licensed Marks in
the advertisement and promotion of such Palm Business Products.
3.2 LICENSE RESTRICTIONS.
(a) Palm may not make any use whatsoever, in whole or in part,
of the Licensed Marks, or any other Mark owned by 3Com, in connection with
Palm's corporate, doing business as, or fictitious name, or on Corporate
Identity Materials without the prior written consent of 3Com, except as
expressly set forth in this Section 3.2(a) or in Section 3.4 below.
Notwithstanding the foregoing, Palm may use any business cards, letterhead,
stationery, paper stock and other supplies, and the like throughout their useful
life in connection with the conduct of the Palm Business, to the extent that, as
of the Separation Date, they are in use, in inventory or on order.
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(b) Palm may not use any Licensed Mark in direct association
with another Mark such that the two Marks appear to be a single Mark or in any
other composite manner with any Marks of Palm or any Third Party (other than the
Palm Business Marks as permitted herein).
(c) In all respects, Palm's usage of the Licensed Marks
pursuant to the license granted hereunder shall be in a manner consistent with
the high standards, reputation and prestige represented by the Licensed Marks,
and any usage by Palm that is inconsistent with the foregoing shall be deemed to
be outside the scope of the license granted hereunder. As a condition to the
license granted hereunder, Palm shall at all times present, position and promote
the Palm Business Products marked with one or more of the Licensed Marks in a
manner consistent with the high standards and prestige represented by the
Licensed Marks.
3.3 LICENSEE UNDERTAKINGS. As a condition to the licenses granted
hereunder, Palm undertakes to 3Com that:
(a) Palm shall not use the Licensed Marks (or any other Mark
of 3Com) in any manner which is deceptive or misleading, which ridicules or is
derogatory to the Licensed Marks, or which compromises or reflects unfavorably
upon the goodwill, good name, reputation or image of 3Com or the Licensed Marks,
or which might jeopardize or limit 3Com's proprietary interest therein.
(b) Palm shall not use the Licensed Marks in connection with
any products or services other than the Palm Business Products.
(c) Palm shall not (i) misrepresent to any Person the scope of
its authority under this Agreement, (ii) incur or authorize any expenses or
liabilities chargeable to 3Com, or (iii) take any actions that would impose upon
3Com any obligation or liability to a Third Party other than obligations under
this Agreement, or other obligations which 3Com expressly approves in writing
for Palm to incur on its behalf.
(d) All press releases and corporate advertising and
promotions that embody the Licensed Marks and messages conveyed thereby shall be
consistent with the high standards and prestige represented by the Licensed
Marks.
3.4 NON-TRADEMARK USE. Each party may make appropriate and truthful
references to the other party and the other party's products and technology.
3.5 RESERVATION OF RIGHTS. Except as otherwise expressly provided
in this Agreement, 3Com shall retain all rights in and to the Licensed Marks,
including without limitation:
(a) All rights of ownership in and to the Licensed Marks;
(b) The right to use (including the right of 3Com's
Subsidiaries to use) the Licensed Marks, either alone or in combination with
other Marks, in connection with the marketing,
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offer or provision of any product or service, including any product or
service which competes with Palm Business products; and
(c) The right to license Third Parties to use the Licensed
Marks.
3.6 THIRD PARTY LICENSES. 3Com agrees that it and its Subsidiaries
will not license or transfer the Licensed Marks to Third Parties (other than
to and among Subsidiaries or Joint Ventures (as defined below) of 3Com) for
use in connection with products or services which compete with Palm Business
Products that are listed on a mutually agreed Palm corporate price list as of
the Distribution Date until two (2) years after the Separation Date. Such
restriction shall be binding on any successors and assigns of the Licensed
Marks. As used in this Section 3.6, "Joint Venture" means a corporation or
other organization whether incorporated or unincorporated of which at least
fifth percent (50%) of the securities or interests having by the terms
thereof ordinary voting power to elect at least a majority of the board of
directors or others performing similar functions with respect to such
corporation or other organization is directly or indirectly owned or
controlled by 3Com.
ARTICLE 4
PERMITTED SUBLICENSES
4.1 SUBLICENSES
(a) SUBLICENSES TO SUBSIDIARIES. Subject to the terms and
conditions of this Agreement, including all applicable Quality Standards and
Trademark Usage Guidelines and other restrictions in this Agreement, Palm may
grant sublicenses to its Subsidiaries to use the Licensed Marks in accordance
with the license grant in Section 3.1 above; provided, that (i) Palm enters into
a written sublicense agreement with each such Subsidiary sublicensee, and (ii)
such agreement does not include the right to grant further sublicenses other
than, in the case of a sublicensed Subsidiary of Palm, to another Subsidiary of
Palm. Palm shall provide copies of such written sublicense agreements to 3Com
upon request. If Palm grants any sublicense rights pursuant to this Section
4.1(a) and any such sublicensed Subsidiary ceases to be a Subsidiary, then the
sublicense granted to such Subsidiary pursuant to this Section 4.1(a) shall
terminate 180 days from the date of such cessation.
4.2 AUTHORIZED DEALERS' USE OF MARKS. Subject to the terms and
conditions of this Agreement, including all applicable Quality Standards and
Trademark Usage Guidelines and other restrictions in this Agreement, Palm
(and those Subsidiaries sublicensed to use the Licensed Marks pursuant to
Section 4.1) may allow Authorized Dealers to, and may allow such Authorized
Dealers to allow other Authorized Dealers to, use the Licensed Marks in the
advertisement and promotion of Palm Business Products Sold by such Authorized
Dealers.
4.3 ENFORCEMENT OF AGREEMENTS. Palm shall take all appropriate
measures at Palm's expense promptly and diligently to enforce the terms of
any sublicense agreement or other
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agreement with any Subsidiary or Authorized Dealer, or of any existing
agreement with any Authorized Dealer, and shall restrain any such Subsidiary
or Authorized Dealer from violating such terms, including without limitation
(i) monitoring the Subsidiaries' and Authorized Dealers' compliance with the
relevant Trademark Usage Guidelines and Quality Standards and causing any
noncomplying Subsidiary or Authorized Dealer promptly to remedy any failure,
(ii) terminating such agreement and/or (iii) commencing legal action, in each
case, using a standard of care consistent with 3Com's practices as of the
Separation Date. In the event that 3Com determines that Palm has failed
promptly and diligently to enforce the terms of any such agreement using such
standard of care, 3Com reserves the right to enforce such terms, and Palm
shall reimburse 3Com for its fully allocated direct costs and expenses
incurred in enforcing such agreement, plus all out-of-pocket costs and
expenses, plus five percent (5%).
ARTICLE 5
TRADEMARK USAGE GUIDELINES
5.1 TRADEMARK USAGE GUIDELINES. Palm and its Subsidiaries and
Authorized Dealers shall use the Licensed Marks only in a manner that is
consistent with the Trademark Usage Guidelines.
5.2 TRADEMARK REVIEWS. At 3Com's request, Palm agrees to furnish or
make available for inspection to 3Com samples of all Palm Business Products
and Collateral Materials of Palm, its Subsidiaries and Authorized Dealers
that are marked with one or more of the Licensed Marks (to the extent that
Palm has the right to obtain such samples). If Palm is notified or determines
that it or any of its Subsidiaries or Authorized Dealers is not complying
with any Trademark Usage Guidelines, it shall notify 3Com and the provisions
of Article 6 and Section 4.3 shall apply to such noncompliance.
ARTICLE 6
TRADEMARK USAGE GUIDELINE ENFORCEMENT
6.1 INITIAL CURE PERIOD. If 3Com becomes aware that Palm or any
Subsidiary or Authorized Dealer is not complying with any Trademark Usage
Guidelines, 3Com shall notify Palm in writing, setting forth in reasonable
detail a written description of the noncompliance and any requested action
for curing such noncompliance. Palm shall then have sixty (60) days with
regard to noncompliance by Authorized Dealers and thirty (30) days with
regard to noncompliance by Palm or any Subsidiary after receipt of such
notice ("Guideline Initial Cure Period") to correct such noncompliance or
submit to 3Com a written plan to correct such noncompliance which written
plan is reasonably acceptable to 3Com.
6.2 SECOND CURE PERIOD. If noncompliance with the Trademark Usage
Guidelines continues beyond the Guideline Initial Cure Period, Palm and 3Com
shall each promptly appoint a representative to negotiate in good faith
actions that may be necessary to correct such
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noncompliance. The parties shall have thirty (30) days following the
expiration of the Guideline Initial Cure Period to agree on corrective
actions, and Palm shall have thirty (30) days from the date of an agreement
of corrective actions to implement such corrective actions and cure or cause
the cure of such noncompliance ("Second Guideline Cure Period").
6.3 FINAL CURE PERIOD. If the noncompliance with the Trademark
Usage Guidelines remains uncured after the expiration of the Second Guideline
Cure Period, then at 3Com's election, Palm, or the noncomplying Subsidiary or
Authorized Dealer, whichever is applicable, promptly shall cease using the
noncomplying Collateral Materials until 3Com determines that Palm, or the
noncomplying Subsidiary or Authorized Dealer, whichever is applicable, has
demonstrated its ability and commitment to comply with the Trademark Usage
Guidelines. Nothing in this Article 6 shall be deemed to limit Palm's
obligations under Section 4.3 above or to preclude 3Com from exercising any
rights or remedies under Section 4.3 above.
ARTICLE 7
QUALITY STANDARDS
7.1 GENERAL. Palm acknowledges that the Palm Business Products
permitted by this Agreement to be marked with one or more of the Licensed
Marks must continue to be of sufficiently high quality as to provide
protection of the Licensed Marks and the goodwill they symbolize, and Palm
further acknowledges that the maintenance of the high quality standards
associated with such products is of the essence of this Agreement.
7.2 QUALITY STANDARDS. Palm and its Authorized Dealers and
Subsidiaries shall use the Licensed Marks only on and in connection with Palm
Business Products that meet or exceed in all respects the Quality Standards.
7.3 QUALITY CONTROL REVIEWS. At 3Com's request, Palm agrees to
furnish or make available to 3Com for inspection sample Palm Business
Products marked with one or more of the Licensed Marks. 3Com may also
independently conduct customer satisfaction surveys to determine if Palm and
its Subsidiaries and Authorized Dealers are meeting the Quality Standards.
Palm shall cooperate with 3Com fully in the distribution of such surveys. In
the event of a challenge by 3Com, 3Com shall, at the request of Palm, provide
Palm with copies of customer surveys used by 3Com to determine if Palm is
meeting the Quality Standards. If Palm is notified or determines that it or
any of its Subsidiaries or Authorized Dealers is not complying with any
Quality Standards, it shall notify 3Com and the provisions of Article 8 and
Section 4.3 shall apply to such noncompliance.
7.4 PRODUCT DISCONTINUATION. If, at any time during or after the
term of this Agreement, Palm discontinues the sale of a Palm Business Product
that has been marked with one or more of the Licensed Marks, Palm shall
substantially comply with the discontinuation procedure used by 3Com for such
or similar products immediately prior to Separation Date.
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ARTICLE 8
QUALITY STANDARD ENFORCEMENT
8.1 INITIAL CURE PERIOD. If 3Com becomes aware that Palm or any
Subsidiary or Authorized Dealer sublicensee is not complying with any Quality
Standards, 3Com shall notify Palm in writing, setting forth in reasonable
detail a written description of the noncompliance and any requested action
for curing such noncompliance. Palm shall then have thirty (30) days after
receipt of such notice ("Initial Cure Period") to correct such noncompliance
or submit to 3Com a written plan to correct such noncompliance which written
plan is reasonably acceptable to 3Com.
8.2 SECOND CURE PERIOD. If noncompliance with the Quality Standards
continues beyond the Initial Cure Period, Palm and 3Com shall each promptly
appoint a representative to negotiate in good faith actions that may be
necessary to correct such noncompliance. The parties shall have thirty (30)
days following the expiration of the Initial Cure Period to agree on
corrective actions, and Palm shall have thirty (30) days from the date of an
agreement of corrective actions to implement such corrective actions and cure
or cause the cure of such noncompliance ("Second Cure Period").
8.3 FINAL CURE PERIOD. If the noncompliance with the Quality
Standards remains uncured after the expiration of the Second Cure Period,
then at 3Com's election, Palm, or the noncomplying Subsidiary or Authorized
Dealer, whichever is applicable, promptly shall cease offering the
noncomplying Palm Business Products under the Licensed Marks until 3Com
determines that Palm, or the noncomplying Subsidiary or Authorized Dealer,
whichever is applicable, has demonstrated its ability and commitment to
comply with the Quality Standards. Nothing in this Article 8 shall be deemed
to limit Palm's obligations under Section 4.3 above or to preclude 3Com from
exercising any rights or remedies under Section 4.3 above.
ARTICLE 9
PROTECTION OF LICENSED MARKS
9.1 OWNERSHIP AND RIGHTS. To the extent not contrary to applicable
law, Palm agrees not to challenge the ownership or validity of the Licensed
Marks. Palm shall not disparage, dilute or adversely affect the validity of
the Licensed Marks. Palm's use of the Licensed Marks shall inure exclusively
to the benefit of 3Com, and Palm shall not acquire or assert any rights
therein. Palm recognizes the value of the goodwill associated with the
Licensed Marks, and that the Licensed Marks may have acquired secondary
meaning in the minds of the public.
9.2 PROTECTION OF MARKS. Palm shall assist 3Com, at 3Com's request
and expense, in the procurement and maintenance of 3Com's intellectual
property rights in the Licensed Marks. Palm will not grant or attempt to
grant a security interest in the Licensed Marks, or to record any such
security interest in the United States Patent and Trademark Office or
elsewhere, against any trademark application or registration belonging to
3Com. Palm agrees to, and to cause its Subsidiaries to, execute all documents
reasonably requested by 3Com to effect further registration
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of, maintenance and renewal of the Licensed Marks, recordation of the license
relationship between 3Com and Palm, and recordation of Palm as a registered
user. 3Com makes no warranty or representation that trademark registrations
have been or will be applied for, secured or maintained in the Licensed Marks
throughout, or anywhere within, the world. Palm shall cause to appear on all
Palm Business Products, and all Collateral Materials, such legends, markings
and notices as may be required by applicable law or reasonably requested by
3Com.
9.3 SIMILAR MARKS. Palm agrees not to use or register in any
country any Mark that infringes 3Com's rights in the Licensed Marks, or any
element thereof. If any application for registration is, or has been, filed
in any country by Palm which relates to any Mark that infringes 3Com's rights
in the Licensed Marks, Palm shall immediately abandon any such application or
registration or assign it to 3Com. To the extent not contrary to applicable
law, Palm shall not challenge 3Com's ownership of or the validity of the
Licensed Marks or any application for registration thereof throughout the
world. Palm shall not use or register in any country any copyright, domain
name, telephone number or any other intellectual property right, whether
recognized currently or in the future, or other designation which would
affect the ownership or rights of 3Com in and to the Licensed Marks, or
otherwise to take any action which would adversely affect any of such
ownership rights, or assist anyone else in doing so. Palm shall cause its
Subsidiaries and Authorized Dealers to comply with the provisions of this
Section 9.3.
9.4 INFRINGEMENT PROCEEDINGS. In the event that the Palm General
Counsel learns of any infringement or threatened infringement of the Licensed
Marks, or any unfair competition, passing-off or dilution with respect to the
Licensed Marks, Palm shall notify 3Com or its authorized representative
giving particulars thereof, and Palm shall provide necessary information and
assistance to 3Com or its authorized representatives at 3Com's expense in the
event that 3Com decides that proceedings should be commenced. Notwithstanding
the foregoing, Palm is not obligated to monitor or police use of the Licensed
Marks by Third Parties other than as specifically set forth in Section 4.3.
3Com shall have exclusive control of any litigation, opposition, cancellation
or related legal proceedings, relating to the use of the licensed trademarks
by third parties. The decision whether to bring, maintain or settle any such
proceedings shall be at the exclusive option and expense of 3Com, and all
recoveries shall belong exclusively to 3Com. Palm shall not and shall have no
right to initiate any such litigation, opposition, cancellation or related
legal proceedings in its own name, but, at 3Com's request, agrees to be
joined as a party in any action taken by 3Com to enforce its rights in the
Licensed Marks. 3Com shall incur no liability to Palm or any other Person
under any legal theory by reason of 3Com's failure or refusal to prosecute or
by 3Com's refusal to permit Palm to prosecute, any alleged infringement by
Third Parties, nor by reason of any settlement to which 3Com may agree.
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ARTICLE 10
TERMINATION
10.1 TERM. This Agreement shall remain in effect for a period of
two (2) years from the Effective Date unless earlier terminated as provided
below.
10.2 VOLUNTARY TERMINATION. By written notice to 3Com, Palm may
voluntarily terminate all or a specified portion of the licenses and rights
granted to it hereunder by 3Com. Such notice shall specify the effective date
of such termination and shall clearly specify any affected Licensed Marks,
Palm Business Products or services.
10.3 SURVIVAL. Any termination of licenses and rights of Palm
under Section 10.2 shall not affect Palm's licenses and rights with respect
to any Palm Business Products made or sold prior to such termination.
10.4 OTHER TERMINATION. 3Com acknowledges and agrees that its
rights to terminate the licenses granted to Palm hereunder are solely as set
forth in Section 4.3 and Articles 6 and 8.
ARTICLE 11
DISPUTE RESOLUTION
11.1 MEDIATION. If a dispute, controversy or claim ("Dispute")
arises between the parties relating to the interpretation or performance of
this Agreement or the Ancillary Agreements, or the grounds for the
termination hereof, appropriate senior executives (e. g. director or V.P.
level) of each party who shall have the authority to resolve the matter shall
meet to attempt in good faith to negotiate a resolution of the Dispute prior
to pursuing other available remedies. The initial meeting between the
appropriate senior executives shall be referred to herein as the "Dispute
Resolution Commencement Date." Discussions and correspondence relating to
trying to resolve such Dispute shall be treated as confidential information
developed for the purpose of settlement and shall be exempt from discovery or
production and shall not be admissible. If the senior executives are unable
to resolve the Dispute within thirty (30) days from the Dispute Resolution
Commencement Date, and either party wishes to pursue its rights relating to
such Dispute, then the Dispute will be mediated by a mutually acceptable
mediator appointed pursuant to the mediation rules of JAMS/Endispute within
thirty (30) days after written notice by one party to the other demanding
non-binding mediation. Neither party may unreasonably withhold consent to the
selection of a mediator or the location of the mediation. Both parties will
share the costs of the mediation equally, except that each party shall bear
its own costs and expenses, including attorney's fees, witness fees, travel
expenses, and preparation costs. The parties may also agree to replace
mediation with some other form of non-binding or binding ADR.
11.2 ARBITRATION. Any Dispute which the parties cannot resolve
through mediation within ninety (90) days of the Dispute Resolution
Commencement Date, unless otherwise mutually
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agreed, shall be submitted to final and binding arbitration under the then
current Commercial Arbitration Rules of the American Arbitration Association
("AAA"), by three (3) arbitrators in Santa Clara County, California. Such
arbitrators shall be selected by the mutual agreement of the parties or,
failing such agreement, shall be selected according to the aforesaid AAA
rules. The arbitrators will be instructed to prepare and deliver a written,
reasoned opinion stating their decision within thirty (30) days of the
completion of the arbitration. The prevailing party in such arbitration shall
be entitled to expenses, including costs and reasonable attorneys' and other
professional fees, incurred in connection with the arbitration (but excluding
any costs and fees associated with prior negotiation or mediation). The
decision of the arbitrator shall be final and non-appealable and may be
enforced in any court of competent jurisdiction. The use of any ADR
procedures will not be construed under the doctrine of laches, waiver or
estoppel to adversely affect the rights of either party.
11.3 COURT ACTION. Any Dispute regarding the following is not
required to be negotiated, mediated or arbitrated prior to seeking relief
from a court of competent jurisdiction: breach of any obligation of
confidentiality; infringement, misappropriation, or misuse of any
intellectual property right; any other claim where interim relief from the
court is sought to prevent serious and irreparable injury to one of the
parties or to others. However, the parties to the Dispute shall make a good
faith effort to negotiate and mediate such Dispute, according to the above
procedures, while such court action is pending.
11.4 CONTINUITY OF SERVICE AND PERFORMANCE. Unless otherwise agreed
in writing, the parties will continue to provide service and honor all other
commitments under this Agreement and each Ancillary Agreement during the
course of dispute resolution pursuant to the provisions of this Article 11
with respect to all matters not subject to such dispute, controversy or claim.
ARTICLE 12
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE
OTHER PARTY OR ITS SUBSIDIARIES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT,
INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS OR ANY OTHER DAMAGES, HOWEVER
CAUSED AND ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY
OUT OF THIS AGREEMENT, WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES; PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS
SHALL NOT LIMIT EACH PARTY'S OBLIGATIONS EXPRESSLY ASSUMED IN EXHIBIT J OF THE
MASTER SEPARATION AND DISTRIBUTION AGREEMENT; PROVIDED FURTHER THAT THE
EXCLUSION OF PUNITIVE DAMAGES SHALL APPLY IN ANY EVENT.
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ARTICLE 13
MISCELLANEOUS PROVISIONS
13.1 DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL
LICENSED MARKS AND ANY OTHER INFORMATION OR MATERIALS LICENSED OR PROVIDED
HEREUNDER ARE LICENSED OR PROVIDED ON AN "AS IS" BASIS AND THAT NEITHER PARTY
NOR ANY OF ITS SUBSIDIARIES MAKE ANY REPRESENTATIONS OR EXTENDS ANY
WARRANTIES WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT THERETO
INCLUDING WITHOUT LIMITATION ANY IMPLIED WARRANTIES OF TITLE, ENFORCEABILITY
OR NON-INFRINGEMENT. Without limiting the generality of the foregoing,
neither 3Com nor any of its Subsidiaries makes any warranty or representation
as to the validity of any Mark licensed by it to Palm or any warranty or
representation that any use of any Mark with respect to any product or
service will be free from infringement of any rights of any Third Party.
13.2 NO IMPLIED LICENSES. Nothing contained in this Agreement shall
be construed as conferring any rights by implication, estoppel or otherwise,
under any intellectual property right, other than the rights expressly
granted in this Agreement with respect to the Licensed Marks. Neither party
is required hereunder to furnish or disclose to the other any information
(including copies of registrations of the Marks), except as specifically
provided herein.
13.3 INFRINGEMENT SUITS. Except as set forth in Section 4.3, (i)
neither party shall have any obligation hereunder to institute any action or
suit against Third Parties for infringement of any of the Licensed Marks or
to defend any action or suit brought by a Third Party which challenges or
concerns the validity of any of the Licensed Marks and (ii) Palm shall not
have any right to institute any action or suit against Third Parties for
infringement of any of the Licensed Marks.
13.4 NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY
RESPONSIBILITIES OR OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES
AND OBLIGATIONS EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN
AGREEMENT BETWEEN THE PARTIES. Without limiting the generality of the
foregoing, neither party, nor any of its Subsidiaries, is obligated to (i)
file any application for registration of any Mark, or to secure any rights in
any Marks, (ii) to maintain any Mark registration, or (iii) provide any
assistance, except for the obligations expressly assumed in this Agreement.
13.5 ENTIRE AGREEMENT. This Agreement, the Master Separation and
Distribution Agreement and the other Ancillary Agreements (as defined in the
Master Separation and Distribution Agreement) and the Exhibits and Schedules
referenced or attached hereto and thereto constitute the entire agreement
between the parties with respect to the subject matter hereof and thereof and
shall supersede all prior written and oral and all contemporaneous oral
agreements and understandings with respect to the subject matter hereof and
thereof. To the extent there is a conflict
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between this Agreement and the General Assignment and Assumption Agreement
between the parties, the terms of this Agreement shall govern.
13.6 GOVERNING LAW. This Agreement shall be construed in accordance
with and all Disputes hereunder shall be governed by the laws of the State of
California, excluding its conflict of law rules and the United Nations
Convention on Contracts for the International Sale of Goods. The Superior
Court of Santa Clara County and/or the United States District Court for the
Northern District of California shall have jurisdiction and venue over all
Disputes between the parties that are permitted to be brought in a court of
law pursuant to Article 11 above.
13.7 DESCRIPTIVE HEADINGS. The headings contained in this
Agreement, in any Exhibit or Schedule hereto and in the table of contents to
this Agreement are for reference purposes only and shall not affect in any
way the meaning or interpretation of this Agreement. Any capitalized term
used in any Exhibit or Schedule but not otherwise defined therein, shall have
the meaning assigned to such term in this Agreement. When a reference is made
in this Agreement to an Article or a Section, Exhibit or Schedule, such
reference shall be to an Article or Section of, or an Exhibit or Schedule to,
this Agreement unless otherwise indicated.
13.8 NOTICES. Notices, offers, requests or other communications
required or permitted to be given by either party pursuant to the terms of
this Agreement shall be given in writing to the respective parties to the
following addresses:
if to 3Com :
3Com Corporation
5400 Bayfront Plaza
Santa Clara, California 95052
Attention: General Counsel
Fax: (408) 326-6434
if to Palm:
Palm, Inc.
5470 Great America Parkway
Santa Clara, California 95052
Attention: General Counsel
or to such other address as the party to whom notice is given may have
previously furnished to the other in writing as provided herein. Any notice
involving non-performance, termination, or renewal shall be sent by hand
delivery, recognized overnight courier or, within the United States, may also be
sent via certified mail, return receipt requested. All other notices may also be
sent by fax, confirmed by first class mail. All notices shall be deemed to have
been given and received on the earlier of actual delivery or three (3) days from
the date of postmark.
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13.9 NONASSIGNABILITY. Neither party may, directly or indirectly,
in whole or in part, whether by operation of law or otherwise, assign or
transfer this Agreement, without the other party's prior written consent, and
any attempted assignment, transfer or delegation without such prior written
consent shall be voidable at the sole option of such other party.
Notwithstanding the foregoing, each party (or its permitted successive
assignees or transferees hereunder) may assign or transfer this Agreement as
a whole without consent to a Person that succeeds to all or substantially all
of the business or assets of such party as long as such Person agrees to
accept all the terms and conditions set forth herein. Without limiting the
foregoing, this Agreement will be binding upon and inure to the benefit of
the parties and their permitted successors and assigns.
13.10 SEVERABILITY. If any term or other provision of this Agreement
is determined by a court, administrative agency or arbitrator to be invalid,
illegal or incapable of being enforced by any rule of law or public policy,
all other conditions and provisions of this Agreement shall nevertheless
remain in full force and effect so long as the economic or legal substance of
the transactions contemplated hereby is not affected in any manner materially
adverse to either party. Upon such determination that any term or other
provision is invalid, illegal or incapable of being enforced, the parties
hereto shall negotiate in good faith to modify this Agreement so as to effect
the original intent of the parties as closely as possible in an acceptable
manner to the end that the transactions contemplated hereby are fulfilled to
the fullest extent possible.
13.11 FAILURE OR INDULGENCE NOT WAIVER; REMEDIES CUMULATIVE. No
failure or delay on the part of either party hereto in the exercise of any
right hereunder shall impair such right or be construed to be a waiver of, or
acquiescence in, any breach of any representation, warranty or agreement
herein, nor shall any single or partial exercise of any such right preclude
other or further exercise thereof or of any other right. All rights and
remedies existing under this Agreement are cumulative to, and not exclusive
of, any rights or remedies otherwise available.
13.12 AMENDMENT. No change or amendment will be made to this
Agreement except by an instrument in writing signed on behalf of each of the
parties to such agreement.
13.13 COUNTERPARTS. This Agreement, including the Ancillary
Agreements and the Exhibits and Schedules hereto and thereto and the other
documents referred to herein or therein, may be executed in counterparts,
each of which shall be deemed to be an original but all of which shall
constitute one and the same agreement.
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WHEREFORE, the parties have signed this Trademark Ownership and License
Agreement effective as of the date first set forth above.
3COM CORPORATION PALM, INC.
By: By:
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Name: Name:
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Title: Title:
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EXHIBIT A
TO MASTER TRADEMARK OWNERSHIP AND LICENSE AGREEMENT
LICENSED MARKS
3Com
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