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EXHIBIT 10.9
SERVICE MARK LICENSE
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SERVICE MARK LICENSE AGREEMENT
This SERVICE MARK LICENSE AGREEMENT ("Agreement") is made and
entered into as of October 3, 2000, by and between BANNER'S CENTRAL ELECTRIC,
INC., a California corporation ("Licensor") and HISPANIC EXPRESS, INC., a
Delaware corporation ("Licensee"), with respect to the following:
RECITALS
WHEREAS, Licensor is the owner of the service mark "Central," which
has been federally registered pursuant to Application Serial No. 74/302,910,
filed August 10, 1992 (the "Mark"); and
WHEREAS, Licensee desires to obtain a license to use the Mark in
connection with the rental and sale of various consumer items, including
consumer electronic goods, household appliances and furniture, the provision of
travel agency services, and activities related thereto (collectively, the
"Licensed Services"), and Licensor is willing to grant to Licensee a license to
use the Mark in connection with the marketing and provision of the Licensed
Services, pursuant to the terms and conditions set forth in this Agreement.
NOW, THEREFORE, based on the foregoing premises, in consideration of
the mutual promises set forth in this Agreement and for other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
parties hereto hereby agree as follows:
1. Grant of License. Subject to the terms and conditions of this Agreement,
Licensor hereby grants to Licensee, and Licensee hereby accepts, a
non-exclusive license in and to the Mark for the purpose of marketing and
providing the Licensed Services throughout the world.
2. Reservation of Rights. All rights not expressly granted to Licensee
under this Agreement are hereby reserved by Licensor. Without limiting the
generality of the foregoing, Licensor shall have the right to use, and to
authorize others to use, the Mark in connection with any goods or services
whatsoever. Licensee shall have no right to grant sub-licenses in or to the Mark
without the prior written consent of Licensor in each instance.
3. Mark Ownership and Retention of Rights. Licensor represents and warrants
that it is the owner of all right, title, and interest in and to the Mark for
use with the Licensed Services. As between Licensor and Licensee, Licensor will
retain all right, title and interest in and to the Mark except for the limited
license rights expressly granted to Licensee under this Agreement, and all use
of the Mark, as permitted under this Agreement, shall inure to the benefit of
Licensor. Licensee shall not, directly or indirectly, during the term of this
Agreement or thereafter, challenge the ownership or validity of the Mark or
assist any third party in doing the same. Licensee shall not file any
applications to register the Mark in any country of the world for any goods or
services. Licensee shall cooperate with Licensor in the filing and prosecution
of applications to register the Mark, to the extent reasonably requested by
Licensor.
4. Quality Control. Licensee shall use its best efforts to market and
promote the Licensed Services according to the highest standards of quality.
Licensor shall have the right to inspect
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Licensee's marketing and provision of the Licensed Services and to determine
whether Licensee's use of the Mark is satisfactory to Licensor. All Licensed
Services (and any packaging therefor) marketed or provided by Licensee using the
Mark shall contain a trademark notice that is acceptable to Licensor in
Licensor's sole and exclusive discretion.
5. Infringement. Licensee shall notify Licensor promptly of any
infringement by any third party of the Mark of which Licensee becomes aware.
Licensor shall have the sole and exclusive right, but not the obligation, to
take such action as Licensor deems appropriate upon such notice. Licensor shall
have the right, but not the obligation, to take and control any legal action
undertaken under this Section. Licensee agrees to cooperate fully in any action
taken by Licensor and shall take no action (legal or otherwise) relating to such
infringement without Licensor's prior written consent in each instance. If
Licensor takes and controls any legal action, settlement proceeds, damages or
other recovery shall be for the sole benefit and account of Licensor and
Licensee shall, upon Licensor's written request, be named, joined and
participate in such legal action as a nominal plaintiff and cooperate with
Licensor in such action as shall be reasonably requested by Licensor.
6. Indemnification.
6.1 Indemnification By Licensor. Licensor shall defend, indemnify
and hold harmless Licensee, its subsidiaries, affiliates, successors, assigns,
predecessors, stockholders, officers, directors, agents, employees, attorneys
and representatives, and all personnel of each of them, past or present (all of
the foregoing parties referred to collectively as the "Licensee Indemnified
Parties"), from and with respect to any loss or damage (including, but not
limited to, reasonable attorneys' fees and costs) incurred or suffered by
Licensor that relates to, arises from or is connected to any claim, suit or
proceeding (collectively, a "Claim") brought by a third party against Licensee:
(i) insofar as such Claim is based on an assertion alleging facts or
circumstances that, if true, would constitute a breach of any representation or
warranty of Licensor set forth in the first sentence of Section 5 above and (ii)
if Licensee gives Licensor prompt written notice of any Claim and provides
Licensor such reasonable cooperation and assistance as Licensor may request from
time to time in the defense thereof.
6.2 Indemnification By Licensee. Licensee shall indemnify and hold
harmless Licensor, its subsidiaries, affiliates, successors, assigns,
predecessors, stockholders, officers, directors, licensors, agents, employees,
attorneys and representatives, and all personnel of each of them, past or
present (all of the foregoing parties referred to collectively as the "Licensor
Indemnified Parties"), from and with respect to any loss or damage (including,
but not limited to, reasonable attorneys' fees and costs) incurred or suffered
by Licensor that relates to, arises from or is connected to any Claim brought by
a third party against any of the Licensor Indemnified Parties: (i) insofar as
such Claim is based on an assertion alleging facts or circumstances that, if
true, would constitute a breach of any representation, warranty, covenant or
other provision of this Agreement by Licensee and (ii) if Licensor gives
Licensee prompt written notice of any such Claim and provides Licensee such
reasonable cooperation and assistance as Licensee may request from time to time
in the defense thereof.
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6.3 Sole and Exclusive Remedy for Infringement. If the Mark is
determined by a court of competent jurisdiction pursuant to a final adjudication
to infringe the rights of a third party, Licensee's sole and exclusive remedy
shall be to terminate this Agreement.
7. Limitations of Liability; No Consequential Damages.
NOTWITHSTANDING ANYTHING TO THE CONTRARY CONTAINED HEREIN, NEITHER
PARTY SHALL, UNDER ANY CIRCUMSTANCES, BE LIABLE TO THE OTHER PARTY FOR
CONSEQUENTIAL, PUNITIVE, INCIDENTAL, OR SPECIAL DAMAGES, INCLUDING BUT NOT
LIMITED TO LOST PROFITS, EVEN IF SUCH PARTY HAS BEEN APPRISED OF THE LIKELIHOOD
THEREOF. Without limitation of the foregoing, neither party to this Agreement
shall be liable to the other by reason of termination of this Agreement and for
damages on account of any loss of prospective profits on anticipated sales or on
account of expenditures, investments, leases or other commitments relating to
the business or goodwill of either party.
8. Term. This Agreement shall become effective on the date first set forth
above and shall continue for a period of one (1) year thereafter. This
Agreement shall automatically be renewed for additional one (1) year terms
unless either party gives notice to the other party of its intention not to
renew the Agreement, which notice must be given not less than ninety (90) days
before the end of the initial or renewal term, as applicable. The initial one
(1) year term and any additional renewed terms are collectively referred to in
this Agreement as the "Term." Notwithstanding the foregoing, neither party shall
be under any obligation to renew or extend this Agreement or to enter into any
new agreement with the other party following the expiration of the Term.
9. Termination.
9.1 Termination by Licensor. Licensor shall have the right to
terminate this Agreement as follows:
(a) At any time upon six (6) month's notice with or without any
cause or reason;
(b) At any time if Licensee is in default of any provision of this
Agreement and such default remains uncured for a period of thirty (30) days
after Licensee is given written notice of such default by Licensor; or
(c) Immediately without notice if there is a change of control of
Licensee. For purposes of this Section the phrase "change in control" shall be
afforded its broadest interpretation, and shall include, without limitation, (i)
the change in ownership of a majority of the outstanding securities of Licensee
that give such securities' owner voting control of Licensee, (ii) the
acquisition of Licensee by or merger of Licensee with a third party and (iii)
the sale of all or substantially all of the assets of Licensee.
9.2 Termination by Licensee. Licensee shall have the right to
terminate this Agreement if Licensor is in default of a material provision of
this Agreement and such default remains uncured for a period of thirty (30) days
after Licensor is given written notice of such default by Licensee.
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9.3 Effect of Termination. Upon the expiration or earlier
termination of this Agreement, Licensee shall cease all display, advertising and
use of the Mark and shall not thereafter display, advertise or use any name,
mark or logo that is similar to or confusing with the Mark. Neither party shall
be under any obligation of any kind whatsoever to the other party by reason of
any failure or refusal to renew or extend the operation of this Agreement or to
enter into any new agreement with the other party following the expiration of
the Term.
10. Notices. All notices, requests, demands and other communications
provided for by this Agreement shall be in writing and shall be deemed to have
been given at the time when mailed in any general or branch office of the United
States Postal Service, enclosed in a registered or certified postpaid envelope,
or sent by Federal Express or other similar overnight courier service, addressed
to the appropriate party at 5480 East Ferguson Drive, Commerce, California,
90022, attention: Secretary, or to such changed address as such party may have
given by notice hereunder.
11. General Provisions.
11.1 Specific Performance. If Licensee should default in any of
Licensee's obligations under this Agreement, Licensee acknowledges that Licensor
may be irreparably damaged and that it would be extremely difficult and
impractical to measure such damage. Accordingly, Licensee acknowledges that
Licensor, in addition to any other available rights or remedies, shall be
entitled to specific performance, injunctive relief and any other equitable
remedy, and Licensee waives the defense that a remedy at law or damages is
adequate.
11.2 Independent Parties. Nothing contained herein shall be deemed
to create or construed as creating a joint venture or partnership between
Licensor and Licensee. Neither party is, by virtue of this Agreement or
otherwise, authorized as an agent or legal representative of the other party.
Except as may be expressly for in this Agreement, neither party is granted any
right or authority under this Agreement to assume or to create any obligation or
responsibility, express or implied, on behalf of or in the name of the other
party or to bind such other party in any manner
11.3 Entire Agreement. This Agreement constitutes the entire
understanding and agreement between the parties hereto and supersedes any and
all prior or contemporaneous representations, understandings and agreements
between Licensor and Licensee with respect to the subject matter hereof.
11.4 Amendments. This Agreement shall not be modified, amended,
supplemented or in any way altered except by an instrument in writing signed by
Licensee and Licensor.
11.5 Waiver. No waiver of any provision of this Agreement shall be
effective unless in writing and signed by the party against whom the waiver is
sought to be enforced. No failure or delay by either party in exercising any
right, power, or remedy under this Agreement shall operate as a waiver of such
right, power, or remedy. No waiver of any provision, condition or default of
this Agreement shall be construed as a waiver of any other provision, condition
or default.
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11.6 Severability of Provisions. In the event that any provision of
this Agreement is found invalid or unenforceable pursuant to judicial decree or
decision, the remainder of this Agreement shall remain valid and enforceable
according to its terms.
11.7 Assignment. Licensee shall not assign or transfer this
Agreement or any of its rights, duties or obligations hereunder without the
prior written consent of Licensor, which consent may be granted or withheld by
Licensor in its sole and exclusive discretion. Any attempted assignment without
such consent shall be null and void. Licensor shall be free to assign or
transfer this Agreement or any interest herein in Licensor's sole and exclusive
discretion.
11.8 Binding Nature of Agreement. This Agreement shall be binding
upon and inure to the benefit of each of the parties hereto and their respective
legal successors and permitted assigns and, with respect to Licensee, to
Licensee's subsidiaries, whether existing on the date first set forth above or
thereafter.
11.9 Governing Law, Forum and Jurisdiction. The validity,
construction, interpretation and legal effect of this Agreement shall be
governed by the laws and judicial decisions of the State of California
applicable to contracts entered into and performed entirely within the State of
California and the Federal laws of the United States. Licensor and Licensee
expressly agree that any action at law or in equity arising out of or relating
to this Agreement shall be filed and maintained only in the courts of the State
of California for the County of Los Angeles, or the United States District Court
for the Central District of California. The parties hereby consent and submit to
the personal jurisdiction of such courts for the purposes of litigating any such
action.
11.10 Attorneys' Fees. In the event any litigation or other
proceeding is brought by either party arising out of or relating to this
Agreement, the prevailing party in such litigation or other proceeding shall be
entitled to recover from the other party all costs, attorneys' fees and other
expenses incurred by such prevailing party in such litigation or other
proceeding.
11.11 No Third Party Rights. Except as may be expressly provided
for, this Agreement is not for the benefit of any third party and shall not be
considered to grant any right or remedy to any third party whether or not
referred to in this Agreement.
11.12 Headings. The section headings of this Agreement are intended
as a convenience only and shall not affect the interpretation of its provisions.
11.13 Counterparts. This Agreement may be executed in counterparts,
each of which shall be deemed an original and all of which together shall
constitute one and the same instrument.
11.14 Survival. The rights and obligations set forth in Sections 2,
3, 5, 6, 7, 10 and 11 shall survive the expiration or any earlier termination of
this Agreement for any reason whatsoever.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the date first set forth above.
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LICENSOR: LICENSEE:
BANNER'S CENTRAL ELECTRIC, INC. HISPANIC EXPRESS, INC.
By: /s/ Gary M. Cypres By: /s/ Gary M. Cypres
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Gary M. Cypres, Chief Executive Gary M. Cypres,
Officer and President Chief Executive Officer, Chief
Financial Officer and Secretary