Exhibit 10.20
LIMITED CRAFTSMAN-Registered Trademark- TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT ("Agreement"), entered into and
effective as of the 3rd day of May, 1999, by and between SEARS, ROEBUCK AND
CO., a New York corporation, having its principal place of business at 3333
Beverly Road, Hoffman Estates, Illinois (hereinafter "SEARS") and JORE
CORPORATION, a Montana corporation, having its principal place of business at
P.O. Box 159, 45000 Highway 93S, Ronan, Montana (hereinafter "VENDOR").
WHEREAS, SEARS is the owner of the trademark CRAFTSMAN-Registered
Trademark-, as shown and described in EXHIBIT A (hereinafter the "MARK"), and
is the owner of various trademark applications and registrations in support
of the Mark; and
WHEREAS, VENDOR desires to use the Mark in connection with the
manufacture of certain products as specifically set forth in SECTION 1.1 of
the Agreement (hereinafter the "LICENSED PRODUCTS"), for retail sale by
Advance Stores Company, Inc. in Advance Auto Parts, Parts America and Western
Auto format retail stores (collectively, "Advance Auto") and only for use in
the United States or its territories (hereinafter the "TERRITORY"); and
WHEREAS, SEARS is willing to grant VENDOR a limited license to use the
Mark in the manufacture of certain Licensed Products for Advance Auto; and
WHEREAS, it is the mutual desire of SEARS and VENDOR to set forth in
this instrument the terms and conditions under which the VENDOR IS permitted
to use the Mark for the term of this Agreement; and
NOW, THEREFORE, in consideration of the premises and the mutual promises
hereinafter set forth, and for other good and valuable consideration set
forth in this Agreement, the receipt and sufficiency of which is hereby
acknowledged, the parties hereto agree as follows:
ARTICLE 1
GRANT OF LICENSE
1.1 LICENSE OF MARK. Subject to the terms and conditions hereinafter
set forth, SEARS grants to VENDOR a limited, royalty-free, non-exclusive
right and license to use the Mark solely in the Territory and solely in
connection with the following specific Licensed Uses: for use in the
manufacture of certain products to be sold only to Advance Auto, which
products shall be limited to those products bearing the Mark which are sold
in Sears full line stores.
1.2 TERM OF LICENSE. The license granted herein shall be effective on
the second day of November, 1998, and shall continue until the second day of
November, 2000, unless sooner terminated in accordance with the provisions
hereof.
1.3 LIMITATION OF LICENSE. The license granted herein shall not be
transferable, in any manner, to any entity without the express written
permission of SEARS. VENDOR shall have no right to grant additional licenses
for use of the Mark or participate in sublicensing of the Mark.
ARTICLE 2
ACKNOWLEDGEMENT OF SEARS'S RIGHTS
2.1 OWNERSHIP AND VALIDITY. VENDOR acknowledges SEARS's exclusive
ownership of the entire right, title and interest in and to the Mark. VENDOR
acknowledges that all use of the Mark shall be for the benefit of SEARS and
its related companies and that such use shall not create in VENDOR or Advance
Auto any right, title or interest in the Mark. VENDOR shall take no action
challenging the validity of SEARS's right to use the Mark throughout the
Territory.
2.2 ACTIONS PROHIBITED. VENDOR acknowledges that any right to use the
Mark is limited to the rights granted therein. During the term of and after
the termination of this Agreement, regardless of how the Agreement is
terminated, VENDOR shall not:
a) produce the Licensed Products for any other entity other than
Advance Auto;
b) attack the validity of this Agreement; or
c) use the Mark in combination with any name, mark, word (in English
or any other language), symbol, letter or design not previously approved by
SEARS ("Approved Mark"), which approval shall not be unreasonably withheld; or
d) adopt or seek to register or take any other action to use or
establish rights in any name, mark, word (in English or any other language),
symbol, letter or design which is confusingly similar to the Mark; or
e) attack or perform any action, direct or indirect, which might
challenge, impair or otherwise adversely affect the validity of the Mark or
SEARS's ownership thereof; or
f) engage in any action which it knows or has reason to know would
threaten, injure or diminish the image or reputation of SEARS or the Mark.
ARTICLE 3
ENFORCEMENT AND PROTECTION OF THE MARK
3.1 REGISTRATION, MAINTENANCE AND ENFORCEMENT. For existing and new
registrations, SEARS may take all reasonable actions to maintain, enforce and
defend the Mark and the registration of the Mark:
a) VENDOR will not apply to register, in any country, a trademark or
service mark similar or identical to the Mark or registrations for any goods
or services at any time during the effective term of this Agreement or
thereafter.
3.2 ACTIONS AGAINST ALLEGED INFRINGERS. VENDOR shall inform SEARS
promptly of each and every past, present or threatened future infringement of
SEARS rights in the Mark which come to VENDOR's attention. Legal proceedings
against alleged third party infringers shall be initiated at SEARS sole
discretion and, if requested by SEARS, VENDOR shall join such claim or suit.
SEARS shall assume primary responsibility for and control the handling of any
such action or the settlement thereof and recover all damages awarded subject
to any amounts to which VENDOR is entitled to indemnification pursuant to the
Agreements unless those damages are directly attributable to actual economic
loss incurred or suffered by SEARS, in which case, such damages shall be
recovered by SEARS after repayment of SEARS enforcement costs. VENDOR shall
not take
any legal action nor engage in the settlement of any legal matter with
respect to the Mark without the express written consent of SEARS.
ARTICLE 4
QUALITY CONTROL OF PRODUCTS
4.1 SEARS'S RIGHT TO MONITOR AND CONTROL. SEARS shall have the right
to monitor and control the quality of any Licensed Products in connection
with which the Mark is used.
4.2 COMPLIANCE BY VENDOR. VENDOR agrees to the standards,
specifications and instructions set forth by SEARS with respect to the
quality of any products in connection with which the Mark is used. VENDOR
shall comply with all quality control review and approval procedures set by
SEARS, and shall participate and cooperate fully in any and all quality
control programs as directed by SEARS.
4.3 SEARS'S RIGHT TO INSPECT. SEARS or its representative shall have
the right to inspect VENDOR's places of business at reasonable times, with
reasonable notice, to assure compliance with SEARS's quality standards, and
VENDOR shall cooperate fully in such inspections.
4.4 CESSATION OR MODIFICATION OF USE. As instructed by SEARS, VENDOR
shall cease or modify any use of the Mark that SEARS deems not to be in
compliance with the applicable standards or instructions.
ARTICLE 5
NOTICE OF NON-COMPLIANCE
5.1 NOTICE IN WRITING. If SEARS discovers that the products in
connection with which the Mark is used are not of a quality acceptable to
SEARS, or if VENDOR is using the Mark in any manner other than as permitted
herein or if VENDOR fails to use the legends as provided herein, SEARS shall
be entitled to notify the VENDOR in writing, requiring same to be rectified
or remedied within thirty (30) days.
5.2 THIRTY DAYS TO CURE. If, after thirty (30) days, VENDOR has not
raised the quality of the specified goods to a level acceptable to SEARS, or
corrected the noted misuse of the Mark or commenced acceptable use of
legends, SEARS may terminate this Agreement effective upon mailing of written
notice of termination by courier or First Class Mail.
ARTICLE 6
TERMINATION
6.1 TERMINATION. This license will continue for the period specified
in 1.2, except that SEARS may terminate this Agreement effective upon
providing written notice of its intent to terminate if VENDOR is materially
in default in the performance of any of its obligations hereunder and such
default has remained uncured for a period of thirty (30) days after notice of
such default of this Agreement.
ARTICLE 7
RIGHTS UPON TERMINATION
7.1 Upon termination of this Agreement, SEARS shall be entitled to
procure immediate cancellation of any recordal of this license, or
registration of the VENDOR as user of the Mark and VENDOR shall render all
necessary assistance in the process of such cancellation. In no event can
VENDOR claim any indemnity for the termination, revocation or suspension of
this Agreement if such termination, revocation or suspension is due to
SEARS's exercise of its rights under this Agreement.
ARTICLE 8
CESSATION OF USE
8.1 TERMINATION FOR NON-COMPLIANCE. In the event this Agreement is
terminated for VENDOR's failure to comply with all the terms herein, VENDOR
shall immediately cease all use of the Mark and return or destroy all
undistributed written materials bearing the Mark. VENDOR agrees that it will
not thereafter use the Mark or any other mark or trade name confusingly
similar to the Mark.
8.2 TERMINATION FOR REASONS OTHER THAN NON-COMPLIANCE. If this
Agreement is terminated for reasons other than non-compliance, VENDOR shall
cease use of the Mark as soon as practicable in accordance with a phase-out
schedule mutually agreed upon by the parties. In the absence of such mutual
agreement, VENDOR shall cease using the Mark within (3) months after
termination. VENDOR agrees that it will not thereafter use the Mark or any
other mark or trade name confusingly similar to the Mark.
ARTICLE 9
UNFORESEEN CIRCUMSTANCES
9.1 Except with respect to circumstances specifically described in
other articles of this Agreement, neither party to this Agreement shall be
liable for delay or failure to perform under this Agreement which results
from any occurrence or event which could not have been reasonably avoided,
including, but not limited to, accident; action of the elements; Act of God;
civil commotion; enemy action; epidemic; explosion; fire; flood;
insurrection; strike; lock-out or other labor trouble or shortage; war; act,
or demand or requirement of the law of the government within the Territory or
any other competent governmental authority, if the party in default makes
reasonable efforts to remove or overcome the effects of such occurrence or
event.
9.2 If any other circumstances whatsoever should occur, which are
beyond SEARS's control under which the rights granted under this Agreement
could in any way endanger SEARS's control over its rights in the Mark or the
Name, then SEARS shall be entitled to forthwith suspend for the duration of
such circumstances, by notice in writing, VENDOR's right, in whole or in
part, to use the Mark to the extent necessary to protect SEARS's rights.
ARTICLE 10
INDEMNIFICATION
10.1 VENDOR shall indemnify and hold SEARS harmless from and against
all claims, demands, suits, actions, proceedings and litigation arising out
of any alleged liability of SEARS for the acts of VENDOR in the course of its
business, including, but not limited to, all claims arising out of, or on
account of, alleged improper
use or infringement of the Mark or Name used by VENDOR, but not for any
assertion of liability based solely on VENDOR's use of the Mark in accordance
with the terms of this Agreement.
ARTICLE 11
GENERAL PROVISIONS
11.1 COSTS INCIDENT TO AGREEMENT. Except as otherwise set forth
herein, each party shall pay its own legal, accounting and other expenses
incident to this Agreement and the consummation of the transactions
contemplated thereby.
11.2 ASSIGNABILITY. Neither this Agreement nor any right or obligation
hereunder is assignable, in whole or in part, by VENDOR to any entity without
the prior written consent of SEARS.
11.3 SURVIVABILITY. Upon termination of the rights granted to VENDOR
hereunder, all obligations and responsibilities of VENDOR as set forth in
this Agreement shall continue.
11.4 NOTICES. All notices and statements to be given shall be sent by
facsimile, overnight mail or courier, and all payments to be made pursuant to
this Agreement shall be mailed by courier or First Class Mail,
if to Sears to:
Name/Position: Michael W. Clark
Vice President & General Merchandise Manager
Hardware & Paint
Address: 3333 Beverly Road D3-168B
Hoffman Estates, Illinois 60179
Phone: (847)286-3420
Fax: (847)286-4435
and if to VENDOR to:
Name/Position: Matt Jore, President
Address: Jore Corporation
45000 Highway 93S
Ronan, Montana 59864
Phone: (406)676-4900
Fax: (406)676-8400
11.5 GOVERNING LAW. This Agreement shall be governed and construed
under the laws of the State of Illinois, United States of America. The
courts of the United States shall have jurisdiction over any dispute or
controversy arising out of this Agreement and both parties hereby submit to
the jurisdiction of such courts.
ARTICLE 12
CONSTRUCTION OF AGREEMENT
12.1 HEADINGS. The paragraph headings of this Agreement are for
convenience only and shall not be deemed to affect in any way the meaning of
the provisions to which they refer.
12.2 SAVINGS CLAUSE. If any one or more of the provisions contained in
this Agreement or any document executed in connection herewith shall be
invalid, illegal, or unenforceable in any respect under any applicable law,
the validity, legality and enforceability of the remaining provisions
contained herein shall not in any way be affected or impaired; provided that,
in such case, the parties oblige themselves to use their best efforts to
achieve the purpose of the invalid provisions by a new legally valid
stipulation.
12.3 WAIVER. No failure or delay on the part of any party in the
exercise of any power, right, or privilege hereunder shall operate as a
waiver thereof, nor shall any single or partial exercise of any such power,
right or privilege preclude other or further exercise thereof or of any other
right, power or privilege.
12.4 NON-EXCLUSIVE NATURE OF EXPRESSED REMEDIES. All of the parties
rights and remedies existing under this Agreement are cumulative to, and not
exclusive of, any rights or remedies otherwise available.
12.5 ENTIRE AGREEMENT. This Agreement sets forth the entire agreement
and understanding between the parties as to the subject matter hereof and
merges all prior discussions and negotiations between them. No modification
or amendment of this Agreement shall be valid or binding unless made in
writing and signed on behalf of the parties by their duly authorized officers
or representatives.
12.6 EXECUTION. This Agreement may be executed simultaneously with any
number of counterparts, each of which shall be deemed an original, but all of
which together shall constitute one and the same instrument.
IN WITNESS WHEREOF, SEARS and VENDOR have caused this Agreement to be
duly executed on their behalf in the manner legally binding upon them.
SEARS, ROEBUCK AND CO
SIGNATURE:
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BY:
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TITLE:
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VENDOR
SIGNATURE: /s/ Matt Jore
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BY: Matt Jore
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TITLE: President
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EXHIBIT A
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