Exhibit 10.27
AMENDED AND RESTATED AGREEMENT
This AGREEMENT is entered into as of the 16th day of April, 1999, by and
among Telecorp Communications, Inc., a Delaware corporation, with a principal
place of business at 1010 North Glebe Road, 8th Floor, Arlington, Virginia 22201
("TELECORP"), Triton PCS, Inc., a Delaware corporation, with a principal place
of business at 375 Technology Drive, Malvern, Pennsylvania 19355 ("TRITON"),
Tritel Communications, Inc., a Delaware corporation, with a principal place of
business at 1080 River Oaks Drive, Suite B-100, Jackson, Mississippi 39208
("TRITEL") and Affiliate License Co., L.L.C., a Delaware limited liability
company, with a place of business at 1010 N. Glebe Road, 8th Floor, Arlington,
Virginia 22201 ("Holding Company").
WHEREAS, TRITON, TRITEL and TELECORP have individually been licensed by
AT&T Corp., through individual Network Membership License Agreements ("AT&T
License"), to use certain AT&T service marks ("The Licensed AT&T Marks") in
connection with telecommunications services;
WHEREAS, the parties desire to use the marks SUNCOM, SUNCOM WIRELESS and
other SUNCOM- and SUN-formative marks (collectively, "the SUNCOM Marks") in
connection with telecommunications services and in connection with The Licensed
AT&T Marks, all in such a way that each party's licensed territory will not
overlap with another party's licensed territory;
WHEREAS, TRITON and TELECORP entered an Agreement with each other on
December 21, 1998 ("the December 21, 1998 Agreement"), in which they stated
their intent to expand that Agreement to include TRITEL, assuming that TRITEL
satisfied certain conditions enunciated therein;
WHEREAS, TRITEL having satisfied such conditions, the parties wish to
restate and amend the December 21, 1998 Agreement between TRITON and TELECORP as
set forth herein;
WHEREAS, TRITON filed U.S. Trademark Application Ser. No. 75/531,537, on
August 13, 1998, for the mark SUNCOMM, for wireless telecommunications services;
U.S. Trademark Application Ser. No. 75/548,866, on September 4, 1998, for the
mark SUNCOM for wireless telecommunications services; U.S. Trademark Application
Ser. No. 75/563,055, on October 2, 1998, for the mark SUNCOM WIRELESS and
Design, for wireless telecommunications services; U.S. Trademark Application
Ser. No. 75/550,276, on September 9, 1998, for the mark SUN WIRELESS, for
wireless telecommunication services; U.S. Trademark Application Ser. No.
75/568,694, on December 11, 1998, for the mark EVERYTHING UNDER THE SUN, for
wireless telecommunication services; U.S. Trademark- Application Ser. No.
75/590,913, on December 2, 1998, for the mark SUNCOM PLUS, for wireless
telecommunication services; U.S. Trademark Application Ser. No. 75/591,452, on
December 2, 1998, for the mark SUNSURE, for wireless telecommunication services;
U.S. Trademark Application Ser. No. 75/591,455, on December 2, 1998, for the
mark SUNCOM CONNECT, for wireless telecommunication services; U.S. Trademark
Application Ser. No. 75/591,456, on December 2, 1998, for the mark SUNCALL ONE,
for wireless telecommunication services; U.S. Trademark Application Ser. No.
75/591,457, on December 2, 1998, for the mark SUNCOM PRE-PAY, for wireless
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telecommunication services; U.S. Trademark Application Ser. No. 75/591,488, on
December 2, 1998, for the mark SUNBOND, for wireless telecommunication services;
U.S. Trademark Application Ser. No. 75/595,868, on December 8, 1998, for the
mark SUNCOM TECHFUND, for wireless telecommunication services; U.S. Trademark
Application Ser. No. 75/626,826, on January 28, 1999, for the mark SUNCOM FLAT
RATE, for wireless telecommunication services; and an application filed on March
3, 1999 (serial number not yet assigned), for the mark SUNCOM and Design, for
wireless telecommunication services (collectively "TRITON's Applications");
WHEREAS, on April 16, 1999, TRITON became the owner-by-assignment of all
right, title and interest in and to the SUNCOM-formative marks and names, as
well as the goodwill pertaining thereto, as previously owned by SunCom
Telecommunications, Inc. (collectively, "the SunCom Telecommunications Marks,"
which are a wholly-encompassed subset of the SUNCOM Marks defined above);
WHEREAS, TRITON, TELECORP and TRITEL have formed a new entity, the Holding
Company, to be owned solely by TRITON, TELECORP and TRITEL, to own, register,
and maintain the SUNCOM Marks and to license the SUNCOM Marks to TRITON,
TELECORP and TRITEL on the terms stated herein;
WHEREAS, TRITON has agreed to transfer all right, title and interest in and
to the SunCom Telecommunications Marks and, upon initiation of bona fide use in
commerce, the marks covered by TRITON's Applications and TRITON's Applications
themselves, as well as the goodwill pertaining to all of the foregoing, to the
Holding Company;
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WHEREAS, the parties desire to use and allow each other to use the SUNCOM
Marks for telecommunications services on the terms stated herein and on terms
consistent with each party's AT&T License, and
NOW, THEREFORE, in consideration of the mutual promises and undertakings
contained herein, and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged by the parties, the parties agree
as follows:
1. TRITON, TELECORP and TRITEL shall maintain the Holding Company to own
and register the SUNCOM Marks for telecommunications and related services. The
Holding Company shall be comprised of TRITON, TELECORP and TRITEL, who shall
each appoint a representative to serve on the Board of Directors of the Holding
Company. The removal of Directors and the filling of Director vacancies shall be
done in accordance with the Holding Company's Operating Agreement. Meetings of
the Board of Directors shall be held at locations and as frequently as
established in the Holding Company's Operating Agreement. All actions of the
Holding Company shall require the unanimous consent of the Board of Directors.
2. The Holding Company shall grant and hereby grants to TRITON, TELECORP
and TRITEL, and to no other entity, a royalty-bearing, transferrable license to
use the SUNCOM Marks, including without limitation the SunCom Telecommunications
Marks transferred pursuant to paragraph 3 by TRITON, on the terms and conditions
stated herein, under the quality control standards established under the AT&T
License and under such further and reasonable quality control standards approved
by the Board of Directors of the Holding Company ("Alliance Quality Standards"),
for a term to be established by the Holding Company, and in contemplation of
only those royalties necessary to establish, support, and maintain the Holding
Company, to
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maintain trademarks owned by the Holding Company, to defend against all
challenges involving the Holding Company's trademarks, and to reimburse expenses
of the parties for market research, creative, legal and other expenses
associated with the SUNCOM Marks owned by the Holding Company. Said license
shall be supplemented from time to time with additional terms and conditions
that the parties deem appropriate. The terms and conditions of each party's
license shall be substantially identical to the terms and conditions of each
other party's licenses and no party shall be granted a license on terms and
conditions materially less favorable than any other party or non-party entity.
Notwithstanding any of the foregoing, the parties agree that the Board of
Directors of the Holding Company shall be empowered to grant royalty-bearing
licenses to additional non-party entities on terms and conditions agreeable to
the Board of Directors. Within 10 days following the execution of this
Agreement, TRITEL and TELECORP shall each pay to the Holding Company $325,000.00
as royalty payments for the use of the SunCom Telecommunications Marks. Within
five (5) business days following receipt of those payments, the Holding Company
shall pay said $650,000 to TRITON.
3. In consideration of $650,000.00, and the right to use the marks as
provided in paragraph 2, above, TRITON hereby assigns all right, title and
interest in and to the SunCom Telecommunications Marks, including all of the
goodwill pertaining thereto, to the Holding Company. TRITON also acknowledges
that it grants to TELECORP effective as of the date of the December 21, 1998
Agreement, and grants to TRITEL as of January 7, 1999, and grants to the Holding
Company as of the date hereof, separate perpetual, royalty-free licenses to use
the marks covered by TRITON's Applications, under such reasonable quality
control standards as are established under each of TELECORP's and TRITEL's AT&T
License, respectively.
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4. TRITON represents and warrants that Amendments to Allege Use have been
filed at the U.S. Patent and Trademark Office in connection with the pending
TRITON's Applications for the following marks: SUNCOM, EVERYTHNG UNDER THE SUN,
and SUNSURE. TRITON hereby assigns to the Holding Company all right, title and
interest in and to the marks covered by those three applications, and in and to
the mark SUNCOM and Design as identified in the application for registration
filed by TRITON on March 3, 1999, together with all of the goodwill and the
applications for registration related thereto. Within 10 days following the
execution of this Agreement, TRITON agrees to expressly abandon U.S. Trademark
Application Ser. No. 75/531,537, for the mark SUNCOMM, as filed by TRITON on
August 13, 1998. TRITON further agrees that, with regard to the remainder of
TRITON's Applications not addressed above in this paragraph 4 ("Remaining
Marks"), TRITON shall, within 30 days following first use in commerce of any of
the Remaining Marks by any of the parties, file with the U.S. Patent and
Trademark Office Amendments to Allege Use in connection with each of TRITON's
Applications in which an applied-for Remaining Mark has been used in commerce,
and, 10 days thereafter, assign to the Holding Company all right, title and
interest in and to each of the Remaining Marks, together with all of the
goodwill and the applications for registration related thereto. Upon the
expiration of one year from the execution of this Agreement, TRITON agrees to
expressly abandon those of TRITON's Applications for which no party has
commenced use in commerce of an applied-for Remaining Mark.
5. Subject to the provisions of paragraphs 12 and 13 below, each party
agrees that it shall use the SUNCOM Marks solely in connection with the marks
licensed for use pursuant to each party's AT&T License. Each party further
agrees that it shall avoid use of the SUNCOM Marks in a way that is prohibited
pursuant to the AT&T License or is otherwise reasonably
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objectionable to AT&T under the AT&T License, and each party further agrees that
it shall use the SUNCOM Marks under the quality control standards established in
the AT&T License and under such further reasonable quality control standards
that may be established by the Board of Directors of the Holding Company.
6. Except as otherwise expressly provided by this Agreement or by the
license contemplated and granted hereunder, each party agrees that it will not
use any trademark, service mark, trade name, insignia, logo or other designation
that is confusingly similar to, or a colorable imitation of, any of the SUNCOM
Marks. The provisions of this paragraph shall survive termination of this
Agreement, as well as termination of a party's license hereunder.
7. Each party agrees that it shall use reasonable efforts to avoid use of
the SUNCOM Marks in a manner that may be deemed immoral, deceptive, or
scandalous, or otherwise such that the use of the SUNCOM Marks or a composite
mark of which SUNCOM is a part, would be unregistrable under 15 U.S. C. (S)
1052. The parties further agree that, as required by the Holding Company, they
will use reasonable efforts to use appropriate symbols (i.e., TM, SM, or , as
appropriate) in connection with the SUNCOM Marks.
8. Each party agrees that the goodwill developed through its use of the
SUNCOM Marks under this Agreement and under the license contemplated hereunder
shall inure to the Licensor, Holding Company.
9. Each party agrees that it will cooperate with reasonable requests from
the Holding Company for actions reasonably necessary to secure and maintain
Holding Company's rights in and to the SUNCOM Marks and Holding Company's
registration and attempts to register same. Each party further agrees that it
will not attack, and will not cause an attack to be taken, against
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Holding Company's exclusive right, title and interest in and to the SUNCOM
Marks, nor will any party challenge or cause a challenge to be taken against the
validity of the SUNCOM Marks or any resulting registrations thereof. The
provisions of this paragraph shall survive termination of this Agreement, as
well as termination of a party's license contemplated hereunder.
10. Each party agrees that it shall comply with all applicable laws and
regulations of governmental bodies or agencies in its performance under this
Agreement and in its performance under the license contemplated and granted
hereunder.
11. Each party agrees that the territory in which it can use the SUNCOM
Marks ("Territory") is limited to the territory granted to each party by AT&T
under the AT&T License. The parties further agree that each party may expand its
Territory ("Expanded Territory") to geographic areas in which (1) that party has
secured all necessary governmental and other licenses to operate and offer the
telecommunications services rendered under the SUNCOM Marks, (2) that party is
permitted to use the marks licensed by AT&T under that party's AT&T License; and
(3) no other party has already begun to use any of the SUNCOM Marks, pursuant to
the terms of this Agreement, in the Expanded Territory, unless such other party
consents to the proposed use in the Expanded Territory.
12. Except to the extent that all parties agree in writing otherwise,
whenever a party's ("Terminated Party") AT&T License is terminated because of
that party's breach of a material term of its AT&T License, or if a party shall
otherwise violate a material term of this Agreement, the parties agree that the
Terminated Party's right to use the SUNCOM Marks shall also immediately
terminate, and the Terminated Party shall immediately cease and desist use of
the SUNCOM Marks. If TRITON, TELECORP and TRITEL become Terminated Parties, the
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parties shall endeavor, through the Holding Company, to establish new terms and
conditions for use of the SUNCOM Marks such that the SUNCOM Marks shall not be
deemed abandoned.
13. Notwithstanding the provisions of paragraphs 11 and 12, the parties
agree that a Terminated Party shall be permitted to continue to use the SUNCOM
Marks so long as (1) such continued use does not affect or limit any other
party's ability to use or to continue to use the SUNCOM Marks, and (2) the
Terminated Party uses its best efforts to establish a new AT&T License. If,
after a reasonable time, which reasonableness shall be judged by the non-
Terminated Parties, the Terminated Party is unable to re-secure an AT&T License,
the Terminated Party shall be permitted to use the SUNCOM Marks anywhere except
within the non-Terminated Parties' licensed Territory and only so long as the
Terminated Party continues to meet the Alliance Quality Standards, with the
understanding that the Alliance Quality Standards may not change after the
effective date of termination of the AT&T License unless the changed limitations
also apply to non-Terminated Parties and are in no way unique to or tied in any
other way to the terms of an AT&T License, and with the additional understanding
that upon a party becoming terminated and being unable to resecure an AT&T
License as contemplated in this paragraph 13, the non-Terminated Parties'
Territories shall, for purposes of this Agreement, no longer be restricted by
the geographic scope of their respective AT&T Licenses as otherwise provided in
paragraph 11. Notwithstanding the foregoing, the Terminated Party shall cease
use of the SUNCOM Marks in the event that a non-Terminated Party is enjoined in
a final judgment from using the SUNCOM Marks because of the Terminated Party's
continued use of the SUNCOM Marks.
14. The parties agree that they will cooperate with each other and with
the Holding Company in challenging any infringements of the SUNCOM Marks and in
defending against
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charges of trademark infringement. Such cooperation shall include providing
prompt notice to all other parties and to the Holding Company of all uses of any
of the SUNCOM Marks which may create a likelihood of confusion with the use of
any of the SUNCOM Marks by the parties or the Holding Company or which are
otherwise inconsistent with the terms of, or the parties' intentions under, this
Agreement. The parties shall fund efforts to challenge infringements and to
defend against charges of infringement, on a pro rata basis, through the Holding
Company, and upon such other terms agreed to by the Board of Directors.
15. The parties agree that, upon approval by all parties to this Agreement
and consistent with the parties' obligations under each party's AT&T License,
the Holding Company can permit a party to expand its Territory or otherwise
deviate from the terms and conditions stated herein. Said approval from the
Holding Company shall be in writing, and a copy of said written approval shall
be provided to every other party.
16. To the extent that there are disagreements among the parties about the
interpretation or effect of this Agreement, the decision of the Board of
Directors of the Holding Company shall control the resolution of such disputes.
This Agreement shall be interpreted according to the laws of Delaware.
17. Each party agrees that it shall not sublicense any rights granted
hereunder. The parties also agree, however, that the license contemplated
hereunder shall inure to the benefit of the parties' successors-in-interest,
unless prohibited under the AT&T License.
18. The parties agree that they shall share in the costs, on terms and
conditions to be established by the Holding Company, related to advertising and
other promotional efforts that are undertaken for the benefit of, and with the
knowledge and consent of, multiple parties.
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19. The parties agree that the Board of Directors of the Holding Company
shall be empowered to establish guidelines and resolve difficulties in relation
to operational issues, including but not limited to, internet addresses,
telephone contact numbers, misdirected inquiries and customer care calls and
other issues related to ensuring that the public is able to efficiently contact
a party intended to be contacted.
20. The parties agree that whenever notice is required or permitted to be
provided under this Agreement, said notice shall be deemed effective when
delivered, via overnight courier, to the following Persons:
TeleCorp: TeleCorp Communications, Inc.
General Counsel
1010 North Glebe Road
8th Floor
Arlington, Virginia 22201
With a copy to:
Robert W. Zelaick, Esq.
McDermott, Will & Emery
600 13th Street, N.W.
Washington, DC 20005
Triton: Triton PCS. Inc.
375 Technology Drive
Malvern, PA 19355
With a copy to:
Jay R. Goldstein, Esq.
Kleinbard, Bell & Brecker, L.L.P.
1900 Market Street, Suite 700
Philadelphia, PA 19103
Tritel: James H. Neeld, IV, Esq.
Tritel Communications, Inc.
1080 River Oaks Drive, Suite B-100
Jackson, MS 39208
With a copy to:
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Shannon T. Vale, Esq.
Arnold, White & Durkee
600 Congress Ave.
Suite 1900
Austin, TX 78701
Notice to the Holding Company shall be effective when notice is delivered to
each of the parties, as provided above.
21. The parties agree that they shall cooperate with each other to produce
a joint press release, reasonably acceptable to all parties, to announce the
launch of products and services offered or to be offered under any of the SUNCOM
Marks.
IN WITNESS WHEREOF, the parties hereto hereby execute this Agreement by their
authorized representatives as of the date first set forth above.
TELECORP COMMUNICATIONS, INC.
By: /s/ Thomas H. Sullivan
-------------------------------
Name: Thomas H. Sullivan
------------------------------
Title: President
---------------------------
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TRITON PCS, INC.
By: /s/ signature illegible
--------------------------------
Name:______________________________
Title: Sr. VP & CFO
-----------------------------
TRITEL COMMUNICATIONS, INC.
By: /s/ E.B. Martin
--------------------------------
Name: E.B. Martin
------------------------------
Title: EVP
-----------------------------
AFFILIATE LICENSE CO., L.L.C.
By: /s/ Thomas H. Sullivan
--------------------------------
Name: Thomas H. Sullivan
------------------------------
Title:_____________________________
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