EXHIBIT 10.4
COLLATERAL ASSIGNMENT OF TRADEMARKS, COPYRIGHTS AND LICENSES
THIS COLLATERAL ASSIGNMENT OF TRADEMARKS, COPYRIGHTS AND LICENSES (this
"Assignment") is executed and delivered this 30th day of July, 1996, by The
Italian Oven, Inc., a Pennsylvania corporation ("Italian Oven") to Deaktor/Sysco
Food Services Company, a Pennsylvania corporation ("Deaktor") and Mid-Central
Sysco Food Services, Inc., a Missouri corporation ("Mid-Central") (Deaktor,
together with Mid-Central are collectively "Sysco").
WITNESSETH:
WHEREAS, prior hereto, Sysco has provided certain extensions of credit,
sales on account and other financial accommodations to Italian Oven
(collectively the "Financial Accommodations");
WHEREAS, the Financial Accommodations are past due and owing and
Italian Oven desires Sysco to presently forbear from immediately collecting the
past due Financial Accommodations and to continue selling to Italian Oven;
WHEREAS, pursuant to that certain Security Agreement of even date
herewith by and between Sysco and Italian Oven (the "Security Agreement"),
Italian Oven granted Sysco a security interest and lien in and to all of Italian
Oven's assets, including, without limitation, all trademarks, trademark
registrations, trade names, copyrights, all applications therefor and all other
intellectual or proprietary rights or interests, of any kind, nature or
description whatsoever; and
WHEREAS, Sysco is willing to presently forbear from immediately
collecting the past due Financial Accommodations and sell to Italian Oven, but
solely on the terms and subject to the terms and conditions contained in this
Assignment, the Security Agreement, that certain Demand Note of even date
herewith executed and delivered by Italian Oven to Sysco in a maximum aggregate
principal amount not to exceed One Million Eighty-Eight Thousand and no/100
Dollars ($1,088,000.00)[the "Note"], and the other agreements, documents and
instruments executed and delivered in connection with or pursuant to any of the
foregoing (the "Other Agreements"), including, but not limited to, all Leasehold
Mortgages now or hereafter executed and delivered by Sysco to Italian Oven.
NOW, THEREFORE, in consideration of the Financial Accommodations, the
mutual promises and understandings of Italian Oven and Sysco set forth herein,
and other good and valuable consideration, the receipt and sufficiency of which
is hereby acknowledged, Italian Oven covenants unto and agrees with Sysco as
follows:
1. Incorporation of Loan Documents. The Loan Documents and the terms
and provisions thereof are hereby incorporated herein in their entirety by this
reference thereto as if set forth again in full.
2. Collateral Assignment of Trademarks, Copyrights and Licenses. To
secure the full and timely performance of all of Italian Oven's duties,
covenants, obligations and agreements with Sysco, whether pursuant to this
Assignment, the Security Agreement, the Note, the Other Agreements or otherwise
(the "Covenants") and the full and timely payment of the "Liabilities" (as
defined in the Security Agreement) to Sysco, Italian Oven hereby transfers,
assigns, grants and conveys to Sysco, as and by way of a first priority security
interest and lien, all of Italian Oven's right, title and interest in and to all
of its now owned or existing and hereafter acquired or arising:
(A) (i) trademarks, trademark registrations and applications therefor,
including, without limitation, the trademarks. trademark registrations and
applications listed on Exhibit "A", (ii) renewals thereof, (iii) all
income, royalties, damages and payments now and hereafter due or payable
under and with respect thereto, including, without limitation, damages and
payments for past or future infringements thereof, (iv) the right to sue
for past, present and future infringements thereof, and (v) all rights
corresponding thereto throughout the world (collectively the "Trademarks");
(B) (i) all copyrights and applications for registration, including, without
limitation, the copyrights and applications for registration listed on
Exhibit "B", (ii) renewals thereof, (iii) all income, royalties, damages
and payments now and hereafter due or payable under or with respect
thereto, including, without limitation, damages and payments for past or
future infringements thereof, (iv)the right to sue for past, present and
future infringements thereof, and (v) all rights corresponding thereto
throughout the world (collectively the "Copyrights");
(c) all license agreements, whether Italian Oven is a licensor or licensee
under any such license agreement, including, without limitation, the
licenses listed on Exhibit "C", and the right to prepare for sale, sell and
advertise for sale all of Italian Oven's inventory now or hereafter owned
by Italian Oven (collectively the "Inventory") and now or hereafter covered
by such licenses (collectively the "Licenses"); and
(D) the goodwill of Italian Oven's business connected with and symbolized by
the Trademarks, Copyrights and Licenses.
This Assignment is made for collateral purposes only. Subject to Section 3
below, Italian Oven acknowledges and agrees that upon (1) an "Event of Default"
(as defined in the Security Agreement), or (2) a breach or default by Italian
Oven of any of the terms and provisions contained in this Assignment ("Default
under this Assignment"; Default under this Assignment, together with an Event of
Default is collectively a "Default"), Sysco has the power to use and sell the
Trademarks, Copyrights and Licenses.
3. Grant Of Rights, Licenses And Privileges. Sysco grants to Italian
Oven the following rights, licenses and privileges under the Trademarks,
Copyrights and Licenses:
a. prior to a Default, an exclusive, nonassignable, royalty-free
right and irrevocable license to use the Trademarks, Copyrights
and Licenses, and to make, use and sell the Inventory;
b. upon a Default, a non-exclusive, nonassignable, royalty-free
right and irrevocable license to use the Trademarks, Copyrights
and Licenses, and to make, use and sell the Inventory; and
c. in either case, a nonassignable, royalty-free right to bring suit
at the sole charge, cost and expense of Italian Oven, for
infringement against any and all past and future infringers of
the Trademarks, Copyrights and Licenses in the name of Italian
Oven as complainant; provided, however, that no such suit shall
be brought in the name of Sysco, unless Italian Oven first
receives the written consent of Sysco thereto, which consent
shall not be unreasonably withheld where the law requires
infringement suits to have the Trademark, Copyright or License
owner joined as a necessary party.
4. Restrictions on Future Agreements. Except as set forth in Paragraph
3 hereof, Italian Oven agrees that until the Liabilities shall have been
indefeasibly satisfied in full, Italian Oven will not, without Sysco's prior
written consent, enter into any document, instrument or agreement which is
inconsistent with Italian Oven's obligations under this Assignment. Italian Oven
further agrees that it will not take any action, or permit any action to be
taken by others subject to its control, including licensees, or fail to take any
action, which would affect the validity or enforcement of the rights transferred
to Sysco under this Assignment.
5. New Trademarks, Copyrights and Licenses. Italian Oven represents and
warrants that the Trademarks, Copyrights and Licenses listed on Exhibits "A",
"B" and "C" constitute all of the trademarks, trademark registrations,
copyrights, applications therefor and licenses now owned by Italian Oven. If,
prior to the indefeasible payment of the Liabilities in full, Italian Oven shall
(i) obtain rights to any new trademarks, trademark registrations, trademark
applications, copyrights, application for copyright registration or licenses, or
(ii) become entitled to the benefit of any trademark, trademark registration,
trademark application, copyright, application for copyright registration or
license renewal, the provisions of Paragraph 2 above shall automatically apply
thereto and Italian Oven shall provide Sysco with immediate notice thereof
Italian Oven hereby authorizes Sysco to modify this Assignment by amending
Exhibits "A", '(B"" and "C" to include any future trademarks, trademark
registrations, trademark applications, copyrights, applications for copyright
registration and licenses.
6. Royalties: Terms. Italian Oven hereby agrees that the use by Sysco
of all Trademarks, Copyrights and Licenses as described above shall be without
any liability for royalties or other related charges from Sysco to Italian Oven.
The term of the assignments granted herein shall extend until the earlier of (i)
the expiration of each of the respective Trademarks, Copyrights and Licenses
assigned hereunder, or (ii) the indefeasible payment to Sysco of the Liabilities
in full.
7. Sysco's Right to Inspect. Sysco shall have the right at any time and
from time to time to inspect Italian Oyen's premises and to examine Italian
Oven's books, records and operations, including, without limitation, Italian
Oven's quality control processes. Upon a Default, Italian Oven agrees that Sysco
shall have the right to establish such additional product quality controls as
Sysco, in its sole discretion, may deem necessary to assure maintenance of the
quality of products sold by Italian Oven under the Trademarks, Copyrights or
Licenses. Italian Ovens agrees (i) not to sell or assign its interest in, or
grant any licenses under, the Trademarks, Copyrights or Licenses; (ii) to
maintain the quality of any and all products in connection with which the
Trademarks, Copyrights or Licenses are used, consistent with the quality of said
products as of the date hereof, and (iii) not to adversely change or alter the
quality of said products in any way without Sysco's written consent.
8. Nature and Termination of Sysco's Security Interest. This Assignment
is made for collateral purposes only. Except as otherwise provided in Paragraphs
3, 4, 7, 9 and 14 hereof, nothing contained herein shall be deemed to limit in
any way Italian Oven's right to use the Trademarks, Copyrights or Licenses or to
grant to, Sysco any right to use the Trademarks, Copyrights or Licenses prior to
a Default.
9. Duties of Italian Oven. Italian Oven shall have the duty (i) to
prosecute diligently any trademark application and application for copyright
registration pending as of the date hereof or at any time hereafter until the
Liabilities shall have been indefeasibly paid in full, (ii) to make application
for trademarks and copyrights, as appropriate, and (iii) to preserve and
maintain all rights in trademarks, trademark registrations, trademark
applications, Trademarks, copyrights, applications for copyright registration,
Copyrights and Licenses. Any expenses incurred in connection with such
applications shall be borne by Italian Oven. Italian Oven shall not abandon any
right to file any trademark application, pending trademark application,
trademark, copyright or application for copyright registration without the
consent of Sysco.
10. Sysco's Right to Sue. Upon a Default, Sysco shall have the right,
but shall in no way be obligated, to bring suit in its own name to enforce the
Trademarks, Copyrights and Licenses. If Sysco shall commence any such suit,
Italian Oven shall, at the request of Sysco, do any and all acts and execute any
and all instruments, documents and agreements required by Sysco to enforce such
Trademarks, Copyrights and Licenses, and Italian Oven shall promptly, upon
demand, reimburse and indemnify Sysco for all costs and expenses incurred by
Sysco in the exercise of its rights and remedies under this Paragraph 10.
11. Waivers. Sysco's failure at any time or times hereafter to require
strict performance by Italian Oven of any provision of this Assignment shall not
waive, affect or diminish any right of Sysco thereafter to demand strict
compliance and performance therewith. Any suspension or waiver by Sysco of a
Default shall not suspend, waive or affect any other Default, whether same is
prior or subsequent thereto and whether of the same or a different type. None of
the undertakings, agreements, warranties, covenants aid representations of
Italian Oven contained in this Assignment and no Default by Italian Oven shall
be deemed to have been suspended or waived by Sysco unless such suspension or
waiver is in writing signed by an officer of Sysco and directed to Italian Oven
specifying such suspension or waiver.
12. Severability. If any provision contained herein is to be held
invalid or unenforceable by a court of competent jurisdiction, such provision
shall be severed herefrom and such invalidity or unenforceability shall not
affect any other provision of this Assignment, the balance of which shall remain
in and have its intended full force and effect; provided, however, if such
invalid or unenforceable provision shall be modified so as to be valid and
enforceable as a matter of law, such provision shall be deemed to have been
modified so as to be valid and enforceable to the maximum extent permitted by
law.
13. Modification. This Assignment cannot be altered, amended or
modified in any way, except as specifically provided in Paragraph 5 hereof or by
a writing signed by the parties hereto.
14. Cumulative Remedies: Power of Attorney: Effect on Security
Agreement. All of Sysco's rights and remedies with respect to the Trademarks,
Copyrights and Licenses, whether established hereby, by the Security Agreement,
the Note, the Other Agreements, by any other documents or by law shall be
cumulative and may be exercised singularly or concurrently. Italian Oven hereby
authorizes Sysco to make, constitute and appoint any officer or agent of Sysco
as Sysco may select, in its sole discretion, as Italian Oven's true and lawful
attorney-in-fact, with power, upon a Default and commencement by Sysco of any of
its rights and remedies whatsoever whether pursuant to this Assignment, the
Security Agreement, the Note, the Other Agreements, at law, in equity or
otherwise, to (a) endorse Italian Oven's name on all applications, documents,
papers and instruments necessary or desirable for Sysco in connection with
selling the Trademarks, Copyrights and Licenses, (b) take any other actions with
respect to the Trademarks, Copyrights and Licenses, as Sysco deems in the best
interest of Sysco, (c) assign, pledge, sell, convey or otherwise transfer title
in or dispose of the Trademarks, Copyrights and Licenses to any person or entity
as Sysco may determine in its discretion, and (d) grant or issue any
non-exclusive or exclusive license under the Trademarks, Copyrights and
Licenses, to any person or entity. Italian Oven will indemnify Sysco for any
infringement claims or other similar claims filed or asserted against Sysco from
the use of any of the Trademarks, Copyrights and Licenses by Sysco. Italian Oven
hereby ratifies all that such attorney shall lawfully do or cause to be done by
virtue hereof. This power of attorney shall be irrevocable until the Liabilities
shall have been paid in full and all arrangements between Italian Oven and Sysco
have been terminated. Italian Oven acknowledges and agrees that this Assignment
is not intended to limit or restrict in any way the rights and remedies of Sysco
under the Security Agreement, the Note, the Other Agreements, at law, in equity
or otherwise, but rather is in addition to and intended to facilitate the
exercise of such rights and remedies.
15. Binding Effect: Benefits. This Assignment shall be binding upon
Italian Oven and its respective successors and assigns, and shall inure to the
benefit of Sysco, its nominees, successors and assigns.
16. Notice. Any and all notices, exercises, demands, requests,
consents, designations, waivers and other communications required or desired
hereunder shall be in writing and shall be deemed effective upon personal
delivery, upon receipted delivery by Federal Express or another overnight
carrier, or three (3) days after mailing if mailed by registered or certified
mail, return receipt requested, postage prepaid, to Italian Oven or Sysco at the
following address or such other address as Italian Oven or Sysco may specify in
like manner; provided, however, that notices of a change of address shall be
effective only upon receipt thereof.
If to Sysco, then to:
Deaktor/Sysco Food and Mid-Central Sysco Food
Services Company Services, Inc.
One Whytney Drive 1915 Kansas City Road
Harmony, Pennsylvania Olathe, Kansas
Attention: President Attention: President
with a copy to: Fagel & Haber
140 South Dearborn Street,
Ste. 1400
Chicago, Illinois 60603
Attention: Gina M. Gentille, Esq.
If to Italian Oven, then to: The Italian Oven, Inc.
Eleven Lloyd Avenue
Latrobe, Pennsylvania 15650
Attention: President
With a copy to: Doepken, Keevican & Weiss
600 Grant Street
37th Floor USX Tower
Pittsburgh, Pennsylvania 15219
Attention: Jeffrey W. Letwin, Esq.
17. Governing Law. This Assignment shall be deemed to have been
executed and delivered in Latrobe, Pennsylvania, and shall be governed by and
construed in accordance with the internal laws (as opposed to conflicts of law
provisions) of the State of Pennsylvania.
IN WITNESS WHEREOF, Italian Oven's duly authorized officers have
executed this Assignment as of the date first set forth above.
DEAKTOR/SYSCO FOOD SERVICES THE ITALIAN OVEN, INC., a Pennsylvania
COMPANY, a Pennsylvania corporation corporation
By:_________________________________ By:________________________________
Its:_________________________________ Its:_______________________________
MID-CENTRAL SYSCO FOOD
SERVICES, INC., a Missouri corporation ATTEST:
By:__________________________________ By:_________________________________
Its:__________________________________ Its:________________________________
STATE OF PENNSYLVANIA )
) S.S.
COUNTY OF ALLEGHENY )
The foregoing Collateral Assignment of Trademarks, Copyrights and
Licenses was executed and acknowledged before me this 30th day of July, 1996, by
Garvin Warden and Jeffrey W. Letwin personally known to me to be the Interim CEO
and Secretary of The Italian Oven, Inc., a Pennsylvania corporation, on behalf
of such corporation. Notary Public
----------------------------------
Notary Public
My Commission expires:
----------------------------------
ACCEPTANCE
The undersigned, Deaktor/Sysco Food Services Company and Mid-Central
Sysco Food Services, Inc., accepts the foregoing Collateral Assignment of
Trademarks, Copyrights and Licenses.
DEAKTOR/SYSCO FOOD SERVICES
COMPANY
By:_________________________________
Its:________________________________
MID-CENTRAL SYSCO FOOD
SERVICES, INC.
By:_________________________________
Its:________________________________
SCHEDULE A
TO
COLLATERAL ASSIGNMENT OF TRADEMARKS, COPYRIGHTS AND LICENSES
Dated July _, 1996
Trademarks and Trademark Registration
Trademark:
Docket No.:
Filing Date:
Serial No.:
Issue Date:
Reg. No.:
Trademark:
Docket No.:
Filing Date:
Serial No.:
Issue Date:
Reg. No.:
Trademark:
Docket No.:
Filing Date:
Serial No.:
Issue Date:
Reg. No.:
As of 01/23/96 TRADEMARK TICKLER Page 1
- -------------- ----------------- ------
Publication Reg Registration
Mark Filing Date Serial Number Statement of Use Date Date No. See 8 & 15
- ---- ----------- ------------- ---------------- ----------- --------- --------- ----------
Extension or Affidavit
------------ ---------
Amendment Date (5-6 years)
-------------- -----------
Applicant: THE ITALIAN OVEN, INC.
REGISTERED MARKS
Italian Survival Kit(R) 10/15/91 74/212,204 04/21/92 07/14/92 1,700,724 07/14/97 - 07/14/98
Pasta Match-Ups(R) 04/03/92 74/262,534 09/01/92 11/24/92 1,734,798 11/24/97 - 11/24/98
Pasta Wood Find 04/03/92 74/262,537 09/01/92 11/24/92 1,734,799 11/24/97 - 11/24/98
Game(R)
The Italian Oven 04/03/92 74/262,536 09/01/92 11/24/92 1,735,030 11/24/97 - 11/24/98
Funny Money(R)
Use Your Noodle(R) 04/03/92 74/262,538 09/08/92 12/01/92 1,736,536 12/01/97 - 12/01/98
Italian Chocoholic 04/03/92 74/262,535 09/22/92 12/15/92 1,740,058 12/15/97 - 12/15/98
Survival Kit(R)
*Will not be registered due to prior registration of the Swiss Colony's
"Chocoholic Survival Kit" which was registered approx. 12 years ago.
Breads from the Oven(R) 12/16/92 74/340,433 05/18/92 08/10/93 1,786,942 08/10/98 - 08/10/99
Hot Out of the Oven(R) 12/14/92 74/339,528 06/08/93 08/13/93 1,790,360 08/31/98 - 08/31/99
More Real Italian Food 05/14/93 74/391512 11/16/93 02/22/94 1,823,425 02/22/99 - 02/22/00
Les Lira.(R)
Give the Piemakers 07/26/93 74/416652 03/08/94 05/31/94 1,838,270 05/31/99 - 05/31/00
a hand(R)
Take a Little Italian 05/13/93 74/389646 12/07/93 06/14/94 1,839,719 06/14/99 - 06/14/00
Home(R)
Exhibit "A" (Page 1of 2)
Publication Reg Registration
Mark Filing Date Serial Number Statement of Use Date Date No. See 8 & 15
- ---- ----------- ------------- ---------------- ----------- --------- --------- ----------
Extension or Affidavit
------------ ---------
Amendment Date (5-6 years)
-------------- -----------
The Family Meal You're 05/13/93 74/389961 10/07/93 12/07/93 06/14/94 1,839,720 06/14/99 - 06/14/00
Looking For Is
In The Oven(R)
Oven-Fax(R) 08/11/93 74/423165 04/26/94 07/19/94 1,845,579 07/19/99 -07/19/2000
Italian Oven Pig 06/17/93 74/402516 01/25/94 090/20/94 1,854,969 09/20/99- 09/20/2000
Design(R)
Guinea Pig Graphic(R) 06/17/93 74/402517 01/25/94 09/20/94 1,854,970 09/20/99- 09/20/2000
Home Is Where The 05/13/93 74/389962 09/21/93 11/23/93 08/09/94 1,848,786 08/09/99- 08/09/2000
Hearth Is(R)
Pizza Man (Graphic)(R) 06/17/93 74/402542 02/22/94 01/03/95 1,871,683 01/08/00- 01/03/2001
Italian Take Away
Pronto!(R) 05/14/93 74/391526 01/20/95S 02/28/95 1,881,657 02/28/00- 02/28/2001
Vegezone(R) 05/26/94 74/529988 01/24/95 04/18/95 1,890,066 04/18/00 - 4/18/01
Vegetalian(R) 08/31/94 74/567972 07/11/95 10/03/95 1,923,930 10/03/00 - 10/03/01
Nibble Noodles(R) 12/19/94 74/612923 09/12/95 12/05/95 1,939,849 12/05/00 - 12/05/01
It Cannoli Be Love(R) 05/24/95 74/681269 02/06/96 04/30/96 1,971,395 04/30/01 - 04/30/02
PENDING APPLICATIONS
Vegeboli(TM) 12/19/94 74/614321 09/26/95 (12/19/95)
Extension of time to file opposition (expires 12/26/95)
Exhibit "A" (Page 2 of 2)
SCHEDULE B
TO
COLLATERAL ASSIGNMENT OF TRADEMARKS, COPYRIGHTS AND LICENSES
Dated July ____, 1996
Copyrights and Copyright Applications
Copyright Date Title
1. The Italian Oven Menu
2. All operations manuals
SCHEDULE C
TO
COLLATERAL ASSIGNMENT OF TRADEMARKS, COPYRIGHTS AND LICENSES
Dated July _, 1996
License Agreements
Doc ID: 21283
License Agreement dated October 1. 1993 by and between Salvatore Esposito
("Licensor") and The Italian oven, Inc. ("Licensee")