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EXHIBIT 10.5
LICENSE AGREEMENT
LICENSE AGREEMENT, made as of July 30, 1999, between Let's
Talk Cellular and Wireless, Inc., a Florida corporation having its principal
place of business at 800 Brickell Avenue, Suite 400, Miami, Florida 33131
("LTCW"), and LetsTalk.com, Inc., a Delaware corporation having its principal
place of business at 970 Chestnut Street, San Francisco, California 94109
("LTCC").
WHEREAS, LTCW is the owner of the trademarks, service marks,
trade dress, logos and domain names listed on Annex I hereto (the "LTCW Marks");
WHEREAS, LTCC is in the business of selling communications and
computing products and services, and other consumer and business products and
services (collectively, the "Products") via on-line or ecommerce activity
(including but not limited to the Internet and any and all successors to the
Internet) (the "Sales Channel"); (the definition of Products not to include any
products which taken as a whole are: sexually-oriented; inconsistent with
ethical business standards and practices; or primarily associated with illegal
or criminal activities; or as to which reasonable people would regard as being
immoral or unethical; or as subsequently mutually agreed upon by the parties);
WHEREAS, LTCC desires to hereby obtain a license, in
connection with its sale of the Products through the Sales Channel, to use the
LTCW Marks and content and other related materials developed by or for LTCW now,
and/or such LTCW Marks and content and other related materials related to
computing and/or communications products and/or services developed by or for
LTCW in the future, including, without limitation, web pages, computer code,
advertising materials, visual displays and editorial content (the "LTCW
Content");
WHEREAS, LTCW is entering into this License Agreement for
6,600,000 shares of the Common Stock, $0.0001 par value, of LTCC;
NOW, THEREFORE, for good and valuable consideration, the
receipt of which is hereby acknowledged, the parties agree as follows:
1. Licenses Granted. (a) LTCW, subject to the terms and
conditions of this Agreement, grants to LTCC and LTCC hereby accepts from LTCW a
worldwide, perpetual (subject to Section 5 hereof), fully paid-up,
non-transferable, exclusive (even as against LTCW), royalty free right and
license (the "Licenses") during the Term (as defined below) to: (1) use, modify,
distribute (directly or indirectly), display, perform, reproduce, have
reproduced, and create derivative works of the LTCW Content and (2) use the LTCW
Marks and the goodwill associated therewith (collectively the LTCW Marks and the
LTCW Content shall be referred to as the "LTCW Material") in connection with the
sale of Products through the Sales Channel and to display such material in
connection therewith on any LTCC site on the World Wide Web or any successor or
other online or ecommerce presence (an "LTCC's Site"), as well as any promotion
or advertising with respect to the operation of LTCC's business (it being
understood that Annex I hereto shall (i) be updated, modified and supplemented
from time to time as the parties hereto shall reasonably agree, for use in
connection herewith and (ii) include all Updates). "Updates" shall mean all
trademarks, service marks, trade dress, logos and domain names of
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LTCW created or developed by or for LTCW existing now, or in the future as it
relates to the Products, to the extent LTCW can grant licenses in such
trademarks, service marks, trade dress, logos and domain names (provided that
LTCW shall not license or use any of the foregoing that LTCW cannot license to
LTCC). All Updates shall be added to LTCW Marks. Subject to the provisions of
this Agreement, LTCC may in connection with a partnership, alliance, joint
venture, distribution, advertising or similar arrangement or the like that is
directly related to LTCC's business, grant permission to such other party to use
the "LETSTALK.COM" logo on such other party's website or other promotional
materials as a hyperlink or to otherwise indicate the relationship between LTCC
and the other party. LTCW will deliver, per LTCC's reasonable request, all
embodiments of the LTCW Material to LTCC promptly after execution of this
Agreement. LTCC shall have the right to sublicense its rights under the
agreement subject to the terms and conditions hereof either (1) provided the
sublicensee agrees to be bound to the terms of this Agreement for the benefit of
LTCW (as a third party beneficiary) and provides the executed sublicense
agreement to LTCW to review for compliance with the foregoing or (2) pursuant to
a "short form" written agreement with the sublicensee of a form to be mutually
agreed by the parties as quickly as possible.
(b) LTCW retains and reserves all rights in and to the LTCW
Material not specifically and expressly granted hereunder.
(c) The Licenses apply to editorial text, advertisements,
photographs, diagrams and illustrations of any kind. If the use of any LTCW
Content requires consent from or payment to third parties under agreement
existing prior to any threat or claim by such third parties and prior to
provision of such content to LTCC, LTCW will use diligent efforts to assist LTCC
in obtaining such consent at LTCC's sole cost. Upon either party becoming aware
that any such consent or payment is required to be obtained, such party shall
promptly notify the other party thereof.
(d) Other than specifically and expressly set forth herein,
LTCW makes no representations or warranties to LTCC with respect to the LTCW
Material and LTCC accepts the Licenses with such understanding.
(e) LTCC acknowledges that each of the LTCW Marks is a valid
mark of LTCW and agrees not to challenge, contest or act in a manner
inconsistent with LTCW's ownership of the LTCW Marks. Any rights that LTCC may
now have or hereafter acquire in any of the LTCW Marks shall be promptly
assigned to LTCW. LTCC shall have no rights of ownership in the LTCW Marks and
no right to make any filing for registration of the LTCW Marks on its own behalf
or in its own name without LTCW's prior written consent. LTCC's use of the LTCW
Marks shall inure solely to the benefit of LTCW, and the good will appurtenant
to the LTCW Marks shall belong exclusively to LTCW. LTCC shall assist and
cooperate with LTCW in taking all such actions as LTCW may reasonably request
from time to time in order to secure to LTCW all rights in the LTCW Marks. All
rights in each of the LTCW Marks that are not hereby expressly granted by LTCW
to LTCC are reserved to LTCW.
(f) As to the use of the LTCW Marks in connection with the
offering by LTCC of any product or service currently offered by LTCW, any use of
the LTCW Marks shall reasonably conform in all material respects or exceed the
level of quality and service
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employed by LTCW. As to the use of LTCW Marks in connection with the offering by
LTCC of any product or service not currently offered by LTCW, any use of the
LTCW Marks shall reasonably conform in all material respects or exceed the level
of quality and service employed by major marketers or manufacturers in that
industry. In no event shall LTCC act to materially denigrate or diminish the
value of the LTCW Marks. LTCC and LTCW shall only employ a high level of
business standards and ethics in connection with which they are using the LTCW
Marks; this includes, without limitation, not selling products or services
excluded from the definition of Products by the parenthetical in the second
whereas clause above. However, in no event will higher standards be applied to
LTCC than are actually applied to any other licensee and followed by LTCW.
(g) Recognizing LTCC's interest in the continuing viability
and reputation of the LTCW Marks, LTCW agrees that it will abide by its own
standards and its quality and service shall reasonably conform in all material
respects or exceed the level of quality and service employed by major marketers
and manufacturers in its industries and in any event will not act to materially
denigrate or diminish the value of the LTCW Marks.
(h) At LTCW's request, LTCC shall submit for LTCW's approval a
sample or samples of LTCC's use or proposed use of an LTCW Mark to evaluate
conformance to the appropriate level of quality hereunder.
(i) Insofar as LTCC desires to offer services not within the
definition of Products, LTCC shall have the right to request that additional
service or services be added to the definition of Products and LTWC shall
promptly respond to such request. LTCW shall not unreasonably withhold its
consent to the addition of such service.
(j) LTCC shall not have the right to modify any of the LTCW
Marks, provided, however, that LTCC shall have the right to create and make any
modifications to a logo consisting of the LETSTALK.COM mark, so long as the
".COM" portion of the mark is prominent in the logo, and the logo contains
substantial design elements apart from the word mark itself. Any such modified
marks shall be included as Updates.
2. Copyrights and Trademarks. Each party shall promptly notify
the other party if it becomes aware of any infringement of any copyright,
trademark, service mark or trade dress included in the Licenses. LTCC shall
assist LTCW in investigating or prosecuting any action against the infringing
parties. For infringements within the scope of LTCC's exclusive license, LTCC
shall have the first opportunity to bring, prosecute and settle any
infringement, unfair competition and/or similar proceeding relating to the
subject matter in which rights are granted by LTCW under this Agreement and
provided LTCC pays all costs and legal fees, LTCC will recover all damage
awards. If LTCC opts not to bring such action, LTCW may do so at its sole
discretion. If LTCW brings such action, it will be entitled to recover all
damage awards. Each party shall provide the other all assistance to the other in
investigating or prosecuting any such action including but not limited to
signing all documents and participating in the proceeding as a nominal party.
3. Cessation of Maintenance of LTCW Marks. Nothing in this
Agreement shall be construed as requiring the LTCW Marks to continue being
maintained by LTCW, it
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being expressly understood that any of the LTCW Marks may be abandoned,
discontinued, sold or otherwise disposed of by LTCW at any time. Sufficiently
prior to any LTCW actions or inactions in connection with abandonment or
discontinuance of such LTCW Marks, LTCW shall assign all right, title, and
interest (including but not limited to all associated goodwill) in such LTCW
Marks to LTCC. In the event that any LTCW Mark is sold or otherwise transferred
to a third party, LTCW agrees and shall ensure that all of LTCC's rights under
this Agreement shall continue in effect and LTCW shall ensure that such third
party is bound in writing with respect to the foregoing.
4. Exclusivity. (a) LTCW hereby agrees that during the term of
this Agreement, it shall not license the LTCW Marks or assist or promote any
other company that sells or intends to sell wireless products or services by
means of the Internet or any successor inter-network computer system or
otherwise via on-line or ecommerce channels. LTCW may, during the term of this
Agreement, license the LTCW Marks or assist or promote any other company that
sells or intends to sell wireless products or services by means of television or
telephone so long as such other company does not sell or intend to sell wireless
products or services by means of the Internet or any successor inter-network
computer system or otherwise via on-line or ecommerce channels. LTCW shall not
provide services to any other party similar to the services set forth in the
Letter of Intent between LTCW and LTCC dated July 30, 1999. Notwithstanding
anything to the contrary, LTCW may offer for sale in its stores and advertise
(for in-store sale only) the products and services of any provider of Products
that are available for sale at LTCW's stores.
5. Term and Termination. (a) The term of this Agreement shall
commence as of the date hereof and shall continue in perpetuity (the "Term"),
unless otherwise terminated as provided herein. Either party may terminate this
Agreement for cause if the other party has materially breached this Agreement
and has not cured said breach within 30 days of receipt of specific written
notice of the same, provided, however, that if the breaching party is using
reasonable efforts to cure said breach during said 30 day period, it shall
receive another 30 days, if requested, to cure such breach prior to termination.
In the event of a dispute as to whether there has been a material breach or cure
thereof, the Agreement will not be terminated until the dispute is finally
resolved pursuant to the arbitration procedure set forth below and, if
necessary, LTCC has failed to materially cure the breach within 30 days
thereafter. If the breach cannot be cured, cessation of the offending activity
will be deemed to be a cure of such breach without prejudice to the recover of
damages pertaining to such breach; provided, however, that if an arbitrator
determines that such party intentionally breached the Agreement, it may be
terminated by the other party. Such dispute will be settled by arbitration
(which arbitration shall be binding and enforceable in any court of competent
jurisdiction for purposes of this Agreement only) in accordance with the rules
of the American Arbitration Association (AAA). The arbitration will be conducted
by a single arbitrator selected by the AAA in accordance with its rules. Each
party will have five (5) days to present its case (presentation shall be made on
a date selected by the arbitrator reasonably acceptable to the parties which
shall be at least fifteen (15) and no more than thirty (30) days after selection
of the arbitrator). The arbitrator shall have twenty (20) days from completion
of such presentation to render its decision. Such arbitration shall be informal
and need not conform to AAA or other established procedures but reasonable rules
shall be determined by the arbitrator with the intention that the arbitration
shall be completed and the
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decision rendered within sixty (60) days. In any action or proceeding to enforce
rights under this Agreement, the prevailing party will be entitled to recover
costs and attorneys fees.
(b) LTCW may terminate this Agreement (i) upon the acquisition
of LTCC by a Competitor for an amount less than $350,000,000 (for avoidance of
doubt, if LTCC is acquired by any Competitor (as defined below) for an amount in
excess of $350,000,000 or if LTCC is acquired by a third-party other than a
Competitor, this License Agreement shall remain in effect and the Licenses shall
transfer to the acquiring party) (a "Competitor" shall mean any other "brick and
mortar" retailer of cellular and wireless communication devices or services);
(ii)(A) if any voluntary or involuntary proceeding is commenced against LTCC or
any of its material subsidiaries under any reorganization, bankruptcy,
arrangement, adjustment of debt, relief of debtors, dissolution, insolvency,
liquidation or similar law of any jurisdiction (and not dismissed within 120
days), (B) if LTCC or any of its material subsidiaries suffer any appointment of
any custodian or the like for it or any substantial part of its assets (and not
dismissed within 120 days) or (C) if LTCC or any of its material subsidiaries
makes a general assignment for the benefit of creditors; (iii) if LTCC entirely
ceases to use the LTCW Marks for the purpose of selling the Products through the
Sales Channel for a period of greater than 180 days in any 18-month period.
(c) Upon termination or expiration of this Agreement, all
rights granted to LTCC with respect to the LTCW Material shall immediately
revert to LTCW. At such time, LTCC agrees to immediately discontinue all use of
the LTCW Material and to destroy, or obscure or cover over the LTCW Marks on,
all Products or other materials related thereto upon which any of the LTCW Marks
have been affixed, and shall deliver a letter signed by a duly authorized
officer of LTCC certifying compliance with such requirement. The foregoing will
not prevent LTCC from taking appropriate action consistent with the remainder of
this Agreement to sell off pre-existing inventory and orders that have been
placed and otherwise meet its pre-existing commitments to customers and vendors
provided that all use of the LTCW Marks shall cease within 120 days of
termination.
(d) The following provisions will survive any termination or
expiration of this Agreement: Sections 8, 10, and 11.
6. Assignment. Neither LTCW nor LTCC shall assign this Agreement,
in whole or in part, without the prior written consent of the other party, which
consent shall not be unreasonably withheld; provided, however, either party may
assign this Agreement and the rights and obligations granted hereunder, in
connection with any merger, consolidation, reorganization or restructuring, or
the sale of substantially all of the assets or business or equity securities of
such party. This Agreement shall inure to the benefit of and bind any successors
or permitted assigns of each party.
7. Representations and Warranties. (a) LTCC represents and
warrants (i) that it is a corporation in good standing under the laws of
Delaware with full power and authority to enter into and perform the terms and
obligations of this Agreement and (ii) that its entry into this Agreement does
not violate any agreement with any other party.
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(b) LTCW represents and warrants (i) that it is a corporation
in good standing under the laws of Florida with full power and authority to
enter into and perform the terms and obligations of this Agreement and (ii) that
its entry into this Agreement does not violate any agreement with any other
party and (iii) LTCW is the sole owner of all rights, title and interest in the
LTCW Marks and (iv) LTCW has not assigned, transferred, licensed, pledged or
otherwise encumbered any LTCW Marks, (v) LTCW is not aware of any actual or
potential violation, infringement or misappropriation of any third party's
rights (or any claim or potential claim thereof) by the use of the LTCW Marks
and, except as previously disclosed to LTCC in writing, the other LTCW Materials
in the same manner as used by LTCW to date. LTCW shall, at the reasonable
request of LTCC, provide any and all information available to LTCW with respect
to the nature and extent of LTCW's rights in the LTCW Material.
8. Indemnification. (a) LTCC shall indemnify LTCW and its
employees and contractors and hold them harmless from and against any and all
damages, costs (including reasonable attorneys' fees), and losses of any kind
awarded to a third party by a final court judgment arising out of or relating to
such third party claim or lawsuit relating to (i) LTCC's posting, publication or
distribution of the LTCW Material (except with respect to claims that the LTCW
Material, in the form originally delivered to LTCC by LTCW, infringed the
copyright or trademark rights of a third party), or (ii) the breach of this
Agreement, including the representations in Section 7(a) above, by LTCC, or
(iii) infringement of the copyright, trademark or other intellectual property
rights or the defamation or libel of a third party by the LTCW Material in
connection with the sale of LTCC's Products except for claims that the LTCW
Material, in the form originally delivered to LTCC by LTCW, defamed or libeled a
third party or infringed the copyright, trademark or other intellectual property
rights of a third party; provided LTCC is promptly notified of any and all
threats, claims and proceedings related thereto and LTCW furnishes to LTCC, on
LTCC's request, information available to LTCW for such defense and LTCC has sole
control over the defense and all negotiations for a settlement or compromise.
LTCW shall not admit any such claim without prior consent of LTCC.
(b) LTCW shall indemnify LTCC and its employees and
contractors and hold them harmless from and against any and all third party
claims, damages, costs (including reasonable attorneys' fees), liabilities and
losses of any kind arising out of or relating to (i) infringement of the
copyright, trademark or other intellectual property rights, or the defamation or
libel of a third party (except as exempted above) by the LTCW Material in the
form originally delivered to LTCC by LTCW or (ii) the breach of this Agreement,
including the representations and warranties in Section 7 above, by LTCW.
(c) Each party makes no express or implied warranties or
representations to the other party with respect to LTCC's Site or any LTCC
Product (including, without limitation, warranties of fitness, merchantability,
non-infringement, or any implied warranties arising out of course of
performance, dealing or trade usage unless otherwise expressly given, in
writing, by LTCW).
(d) NEITHER LTCC, NOR LTCW AND ITS LICENSORS SHALL IN ANY CASE
BE LIABLE FOR ANY SPECIAL, INCIDENTAL, CONSEQUENTIAL, INDIRECT OR PUNITIVE
DAMAGES EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
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9. Notices. All notices required or permitted to be given under
this Agreement will be writing and shall be deemed given when delivered
personally or sent by air mail or air courier to the parties at the following
addresses:
If to LTCW:
800 Brickell Avenue, Suite 400
Miami, FL 33131
Attention: Lazarus Rothstein, Esq.
with a copy to:
White & Case LLP
First Union Financial Center
200 South Biscayne Boulevard
Miami, FL 33131
Telefax: 305-358-5744
Attention: Jorge Freeland, Esq.
If to LTCC:
970 Chestnut Street
San Francisco, CA 94109
Attention: Delly Tamer
with a copy to:
Gunderson Dettmer et al.
155 Constitution Dr.
Menlo Park, CA 94025
Telefax: 650-321-2800
Attention: Scott Dettmer, Esq.
or such other address as either party may hereinafter communicate in writing to
the other in accordance with the provisions hereof.
10. Confidential Information. (a) Each of LTCW and the LTCC hereby
acknowledges and agrees that it will have access to, or become acquainted with,
the Confidential Information of the other party. For the purposes of this
Agreement, "Confidential Information" shall mean any information of LTCW or
LTCC, respectively, which relates to the matters contemplated by this Agreement,
including but not limited to the LTCW Material and any forecast or product
related information (whether or not incorporated in whole or in part in other
material), and whether or not developed by LTCW or LTCC, as the case may be,
including, but not limited to pre-existing or new information. Confidential
Information does not include any information that (i) is or becomes part of the
public domain through no act or violation of any obligation on the part of LTCW
in the case of LTCC's Confidential Information or LTCC in the case of LTCW's
Confidential Information; (ii) is required to be disclosed by court order or
operation of law or (iii) was acquired by LTCW in the case of LTCC's
Confidential Information or by LTCC in the case of LTCW's Confidential
Information, from a third party who did not acquire it under a confidential
relationship directly or indirectly from the other party hereto.
(b) Each of LTCW and LTCC hereby acknowledges and agrees that
the Confidential Information of the other party constitutes valuable trade
secrets of such party.
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Except as contemplated herein, each of LTCW and LTCC shall keep all Confidential
Information of the other party in confidence and shall not, at any time during
or after the term of this Agreement, without the prior written consent of such
other party disclose or otherwise make available, directly or indirectly, any
item of Confidential Information of such party to anyone. Each of LTCW and LTCC
shall use the Confidential Information of the other party only in connection
with the Agreement and for no other purpose.
11. General. (a) Neither this Agreement nor any provision hereof
may be amended or waived except in a writing signed by the party to be charged
with such amendment or waiver.
(b) The failure by either party to insist upon strict
performance of any of the terms of this Agreement, or a delay by either party in
exercising any of its rights or remedies hereunder, will not constitute a waiver
of such terms and conditions or of such rights or remedies, and no waiver of any
right hereunder will be deemed a waiver of any other right.
(c) This Agreement will be governed by and construed in
accordance with the laws of the State of New York without giving effect to its
rules regarding choice or conflicts of law. Any controversy or claim arising out
of or relating to this Agreement or the breach hereof or the subject matter of
this Agreement, except for an action for injunctive relief, shall be settled by
arbitration held in New York City in the state of New York in accordance with
the Rules of the American Arbitration Association, and judgment upon the award
rendered by the arbitrators may be entered in any court having jurisdiction
thereof. Any action for injunctive relief hereunder shall be submitted to the
exclusive jurisdiction of the State and Federal courts in the State of New York.
The parties agree that the service of any legal process issued by the above
arbitrators or from said courts and delivered personally to a party hereto or
sent by air courier, return receipt requested, addressed to the parties at the
addresses herein above set forth shall be good and sufficient service to confer
personal jurisdiction upon the parties in such arbitration or court.
(d) This Agreement sets forth the entire understanding of the
parties with respect to the subject matter hereof and supersedes any and all
prior discussions, communications and agreements between them upon such subject
between the parties. This Agreement is binding upon and will inure to the
benefit of the parties and their respective successors and permitted assigns.
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IN WITNESS WHEREOF, the parties have executed this Agreement
as of the day and year first above written.
LETSTALK.COM, INC.
By: /s/ Delly Tamer
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Delly Tamer,
President and Chief Executive Officer
LET'S TALK CELLULAR & WIRELESS, INC.
By:
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Name:
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Title:
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SIGNATURE PAGE TO LETSTALK.COM, INC.
LICENSE AGREEMENT
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IN WITNESS WHEREOF, the parties have executed this Agreement
as of the day and year first above written.
LETSTALK.COM, INC.
By:
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Delly Tamer,
President and Chief Executive Officer
LET'S TALK CELLULAR & WIRELESS, INC.
By: /s/ David H. Eisenberg
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Name: David H. Eisenberg
-----------------------------------------
Title: CEO
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SIGNATURE PAGE TO LETSTALK.COM, INC.
LICENSE AGREEMENT
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LTCW MARKS
Mark Application Date Registration Date Serial Number
---- ---------------- ----------------- -------------
Let's Talk Cellular - for January 11, 1994 1,816,762
communications services
Let's Talk Cellular (special February 15, 1994 1,821,719
logo) - for communications
services
Let's Talk Cellular - for October 31, 1995 1,931,056
communications apparatus
Let's Talk Wireless - for August 1994 Pending Service Mark
communications services and Trademark
and apparatus
Let's Talk - miscellaneous December 1995 Pending Service Mark
design (rainbow) - for and Trademark -
communications services Serial No. 012,369
and apparatus
Let's Talk - logo (as December 1995 Pending Service Mark
displayed on the Company's and Trademark -
business cards) - for Serial No. 012,370
communications services
and apparatus
Let's Talk Cellular & August 11, 1997 Pending Service and
Wireless - for Trademark
communications services
and apparatus
Peach - miscellaneous November 24, 1995 Pending Service Mark -
design for service Serial No. 75-023,838
provider for cellular
services, phones and
accessories
Wireless ToGo - for retail May 16, 1996 August 12, 1997 2,087,304
store services featuring
cellular telephones and
accessories
Cellular Unlimited January 13, 1997 Pending Trademark -
Serial No. 75-224,516