1
EXHIBIT 10.40
LICENSE OF MARKS
WHEREAS, Pathnet, Inc., a Delaware corporation having offices at 1015
31st Street, N.W., Washington, D.C., 20007 ("Licensor"), has adopted, used and
is using certain trademarks, service marks, logos and designs (collectively, the
"Marks"); and
WHEREAS, Pathnet Telecommunications, Inc., a Delaware corporation having
offices at 1015 31st Street, N.W., Washington, D.C., 20007 ("Licensee"), is
desirous of a license to use the Marks;
NOW, THEREFORE, for good and valuable consideration, receipt of which is
hereby acknowledged, the parties hereto agree as follows:
1. License. Licensor does hereby grant to Licensee the
non-exclusive right and license to use the Marks on a royalty-free basis in
connection with Licensee's telecommunications business; provided, however, that
Licensee shall retain the right to use the Marks; and provided, further, that
the aforementioned license shall terminate 180 days after the date hereof, or
sooner if revoked by Licensor by notice to Licensee, which revocation may be
made by Licensor at any time at Licensor's sole discretion.
2. Ownership of Marks. Licensee acknowledges and agrees that (a)
Licensor is the owner of the entire right, title and interest in and to the
Marks and the Marks, or any form or embodiment thereof (as well as the goodwill
now or hereafter attached to the same) are the property of and all use thereof
shall inure to the benefit of Licensor, and (b) Licensee shall have no rights to
the Marks other than those set forth in this License of Marks.
3. Approvals/Quality Control. Licensee shall, upon request of
Licensor, submit representative samples of Licensee's use of the Marks to
Licensor, without charge to Licensor, and Licensor shall have a period of ten
(10) days to notify Licensee of their acceptance or rejection.
4. Representations, Warranties and Covenants of Licensor. Licensor
represents and warrants that it is the owner of the Marks and the registrant
therefor, that Licensor has the full power and authority to license the right to
use the Marks, that Licensor has not entered into any agreements in conflict
with this License of Marks, and that there are no actions, suits or proceedings
pending or, to Licensor's knowledge, threatened against Licensor with respect to
the Marks. Licensor agrees to take all such further actions, and to execute any
and all such further documents and instruments, as may be necessary or desirable
to confirm the license executed hereby.
5. Assignment. Neither party may assign any or all of its rights or
delegate any of its duties under this Agreement without the consent of the other
party, provided, that either party hereto may assign its rights, but not its
obligations, to any Affiliate without the consent of the other party. For the
purposes of this Section 5, "Affiliate" shall mean a subsidiary or other entity
under common ownership or control.
2
IN WITNESS WHEREOF, this LICENSE OF MARKS is made and effective as of
the 10 of November, 1999.
PATHNET, INC.
By /s/ MICHAEL A. LUBIN
----------------------
Name: Michael A. Lubin
Title: V.P. and General Counsel
Dated: November 10, 1999
------------------------
PATHNET TELECOMMUNICATIONS, INC.
By /s/ JAMES CRAIG
----------------------
Name: James Craig
Title: E.V.P.
Dated: November 10, 1999
------------------------
-2-