EXHIBIT 2.5.6
LICENSE AGREEMENT
This License Agreement is entered into and is effective as of the
second day of July 1998, between MFS Communications Company Inc., a Delaware
corporation ("Licensor"), and Able Telcom Holding Corp., a Florida corporation
("Licensee").
WHEREAS, Licensor is the owner of the trademarks listed on Schedule A
hereto (the "Licensed Trademarks");
WHEREAS, Licensor and Licensee have entered into an Agreement and Plan
of Merger, dated as of April 26, 1998, amended by an Amendment thereto, dated as
of July 2, 1998 (the "Merger Agreement"), whereby Licensee is acquiring the NT
Business, as that term is defined in the Merger Agreement;
WHEREAS, Licensee is desirous of using the Licensed Trademarks in
connection with its conduct of the NT Business; and
WHEREAS, Licensor is willing to grant to Licensee a limited license to
use the Licensed Trademarks for such purpose.
NOW, THEREFORE, in consideration of the mutual covenants and
undertakings contained herein, and subject to and on the terms and conditions
herein set forth, the parties agree as follows:
1. Capitalized terms not defined herein shall have the meaning set
forth in the Merger Agreement.
2. Licensor hereby grants Licensee a limited, non-transferrable,
royalty-free, exclusive license during the Term, as defined below, to use the
Licensed Trademarks in the United States in connection with the conduct of the
NT Business.
3. Notwithstanding the provisions of section 2 hereof, during the Term,
Licensor and all of its affiliates and subsidiaries may freely use the Licensed
Trademarks and the MFS name in their businesses, provided that the Licensed
Trademarks may not be used in businesses that compete directly with the NT
Business in the United States.
4. All use of the Licensed Trademarks shall be followed by the language
"A subsidiary of Able Telcom."
5. In addition to the requirements of section 4 hereof, Licensee shall
use the Licensed Trademarks according to the specifications, formulas and
instructions of Licensor, which shall be in substantially the same form and
manner in which Licensor used the Licensed Trademarks as of the Closing Date.
Licensee undertakes to comply with all laws, rules and regulations pertaining to
the use of the Licensed Trademarks, and agrees to apply appropriate statutory
notice of registration where applicable. In the event Licensee desires to use
the Licensed Trademarks in a substantially different form or manner than the
Licensed Trademarks are currently used in connection with the NT Business,
Licensee shall request Licensor's consent to such use, which consent shall not
be unreasonably withheld or delayed.
6. The trademark license and rights granted herein shall commence on
the date first written above and terminate eighteen (18) months thereafter (the
"Term").
7. Licensee shall permit Licensor's representatives, upon reasonable
notice during regular business hours, to inspect all premises whereon materials
bearing the Licensed Trademarks are stored by Licensee, and shall do all such
other things as may be reasonably necessary, to satisfy Licensor that said
materials conform to the terms of this Agreement. Licensee shall, on Licensor's
request, supply Licensor or its authorized representatives with samples of all
materials bearing the Licensed Trademarks.
8. Licensee agrees to submit to Licensor for approval the original and
all subsequent new formats of labels, packages, package inserts incorporating
the Licensed Trademarks not used by Licensor prior to the Closing Date, and
shall not use the same without the prior approval of Licensor, such approval not
to be unreasonably withheld. Further, at the request of Licensor, Licensee shall
submit to Licensor for approval, such approval not to be unreasonably withheld,
specimens of the sales promotional material and other printed matter
incorporating the Licensed Trademarks and shall comply with all requirements of
Licensor relating to the same. Licensor shall review all materials submitted for
approval pursuant to this section within fifteen (15) business days of receipt
of such materials by the individual designated by Licensor as responsible for
granting such approval.
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9. Licensee acknowledges that Licensor is the owner of the Licensed
Trademarks, and that all use of the Licensed Trademarks by Licensee (i) for
purposes of trademark ownership and enforcement shall inure to the benefit of
Licensor; and (ii) shall not create in Licensee's favor any ownership interest
in the Licensed Trademarks.
10. Licensee shall inform Licensor of any infringement or suspected
infringement of the Licensed Trademarks of which it becomes aware during the
term of this Agreement.
11. On termination of this license and the rights granted herein,
Licensee shall take all necessary actions and steps to cease immediately all use
of the Licensed Trademarks, including but not limited to changing its trade name
or d/b/a to a name that does not include the Licensed Trademarks, and shall
thereafter not adopt or use any confusingly similar trademarks, service marks,
or trade names.
12. Licensor agrees to defend, indemnify and hold Licensee, its
officers, directors, affiliates, employees, representatives and agents harmless
from any claims, liabilities and damages, including attorneys fees and
disbursements, resulting from claims that the Licensed Trademarks infringe the
intellectual property rights of a third party.
13. Except for liabilities and damages resulting from claims that the
Licensed Trademarks infringe the intellectual property rights of a third party,
Licensee agrees to defend, indemnify and hold Licensor its officers, directors,
affiliates, employees, representatives and agents harmless from any claims,
liabilities and damages, including attorneys fees and disbursements, resulting
from the use by Licensee of the Licensed Trademarks.
14. In the event of an alleged breach of any of the terms and
conditions hereof, Licensor shall provide to Licensee notice, to the address set
forth in the Merger Agreement, of such alleged breach and a reasonable
opportunity to cure. In the event Licensee does not cure the breach within
fifteen (15) days of notice from Licensor, Licensor may terminate the Agreement
immediately upon notice to Licensee.
15. This Agreement, the Merger Agreement, and other documents referred
to herein which form a part hereof contain the entire understanding of the
parties hereto with respect to the subject matter hereof. This Agreement
supersedes
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all prior agreements and understandings, oral and written, with respect to its
subject matter.
16. Should any provision of this Agreement for any reason be declared
invalid or unenforceable, such declaration shall not affect the validity or
enforceability of any other provision of this Agreement, all of which other
provisions shall remain in full force and effect, and the application of such
invalid or unenforceable provision to persons or circumstances other than those
as to which it is held invalid or unenforceable shall be valid and be enforced
to the fullest extent permitted by law.
17. This Agreement may not be assigned directly or indirectly by
Licensee, except to a subsidiary or an affiliate of Licensee.
18. This Agreement may be amended, modified or supplemented at any time
by written agreement of the parties hereto. Any failure by either party to
comply with any term or provision of this Agreement may be waived by the other
party at any time by an instrument in writing signed by or on behalf of both
parties, but such waiver or other failure to insist upon strict compliance with
such term or provision shall not operate as a waiver of, or estoppel with
respect to, any subsequent or other failure to comply.
19. This Agreement is not intended, and shall not be deemed, to confer
upon or give any person except the parties hereto and their respective
successors and permitted assigns, any remedy, claim, liability, reimbursement,
cause of action or other right under or by reason of this Agreement.
20. This Agreement may be executed in counterparts, each of which shall
be deemed an original, but all of which together shall constitute one and the
same instrument.
21. This Agreement shall be governed by the laws of the State of
Delaware, without regard to the principles of conflicts of law thereof.
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IN WITNESS WHEREOF the parties hereto have caused this Agreement to be
executed as of the day and year first written above.
MFS COMMUNICATIONS ABLE TELCOM HOLDING
COMPANY, INC. CORP.
By: /S/ JOHN SIDGMORE By: FRAZIER L. GAINES
------------------------ ------------------------
Title______________________ Title: PRESIDENT AND CEO
Date_______________________ Date: JULY , 1998
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SCHEDULE A
Licensed Trademarks
1. MFS Transtech
2. MFS Network Technologies
3. MFS Network Technologies & design
4. MFS NT
5. MFS TT
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