EXHIBIT 10.6
TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT (the "Agreement"), is made this 1st
day of July, 1999 ("Effective Date"), between Continental Can Company, Inc., a
Delaware corporation ("Licensor") and Consolidated Container Holdings LLC, a
Delaware limited liability company, and Consolidated Container Company LLC, a
Delaware limited liability (collectively, "Licensee").
WITNESSETH:
WHEREAS, Licensor and Licensee are parties, together with certain
subsidiaries of Licensor, Vestar Packaging LLC, and Reid Plastics Holdings,
Inc., and its subsidiaries, to the Contribution and Merger Agreement dated as of
April 29, 1999 (the "Contribution Agreement"); and
WHEREAS, Licensor owns the Trademarks (as defined below) and has the
right to use the Trademarks in connection with the conduct of Licensor's
business; and
WHEREAS, Licensor is willing to grant to Licensee the right to use
the Trademarks upon the terms and conditions hereinafter set forth; and
WHEREAS, pursuant to the Contribution Agreement, Licensor and
Licensee have agreed to enter into this Agreement; and
NOW THEREFORE, in consideration of the premises, the promises
hereinafter set forth, and other good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, Licensor and Licensee hereby
agree as follows:
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1. Definitions.
(a) "Business" shall mean the Plastics Operations, as such term is
defined in the Limited Liability Company Agreement of Consolidated Container
Holdings LLC.
(b) "Territory" shall mean the United States.
(c) "Trademarks" shall mean the names and marks listed on Schedule A
(attached hereto).
Any capitalized terms not defined in this Agreement shall have the
respective meanings given them in the Contribution Agreement.
2. License Grant.
(a) Licensor hereby grants to Licensee a non-exclusive right and
license to use the Trademarks in the Territory in connection with the Business.
(b) This license shall be royalty free until such time as the Suiza
Parties' aggregate membership interest is less than 10% of all such membership
interests in Licensee, at which time Licensee shall pay Licensor an annual
royalty of $100,000.00 for the continued right and license to use the
Trademarks. Such payment shall be due and payable within 30 days following the
date on which the Suiza Parties' aggregate membership interest becomes less than
10%.
(c) The Trademarks are and shall remain the property of Licensor,
subject to the license granted under this Agreement.
(d) Licensee shall have the right to assign or sublicense its rights
under this Agreement by obtaining Licensor's prior written consent, which
consent shall not be unreasonably withheld, provided, however, that Licensor's
consent shall not be required with
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respect to any assignment or sublicense to an entity under the control of the
Licensee or to a wholly-owned subsidiary of the Licensee.
(e) This Agreement shall become effective on the Effective Date.
This Agreement shall remain effective until the parties shall agree otherwise
("Term").
(f) All rights not herein granted to Licensee are reserved to
Licensor.
3. Quality Control.
(a) Licensee agrees to use the Trademarks in good faith and in a
dignified manner, in a manner consistent with Licensor's high standards of, and
reputation for, quality, in a manner consistent with Licensee's own current
standards for quality and in accordance with good trademark practice wherever
the Trademarks are used. Licensee further agrees that all of its products and
services shall maintain such quality standards so as to maintain the reputation
and goodwill of the Trademarks. Licensee agrees to provide, upon the reasonable
request of Licensor, but in no event more often than every six (6) months,
representative samples of products and services sold by Licensee and
advertising, marketing, promotional, sales and packaging materials is used in
connection therewith, so that Licensor can verify that adequate quality
standards are being maintained.
4. Enforcement.
(a) Each party shall promptly notify the other of any infringement
of the Trademarks of which it becomes aware.
(b) With respect to the Business in the Territory, and in the
absence of any agreement to the contrary, Licensor, in its discretion, shall
take reasonable actions to address any infringement of the Trademarks. Licensor
shall bear all expenses connected with the foregoing.
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Upon Licensor's reasonable request and at Licensor's expense, Licensee shall
join any action for infringement filed to protect the Trademarks.
(c) Absent any further agreement between the parties, any recovery
as a result of such action shall belong solely to the Licensor.
5. Representations, Warranties and Covenants.
(a) Licensor represents and warrants that it is has the right to
grant the rights and licenses granted hereunder with respect to the Trademarks.
(b) Licensee agrees to cooperate with any effort by Licensor to
register and/or maintain the Trademarks.
6. Indemnification.
(a) By Licensee. Licensee agrees to defend, indemnify and hold
harmless Licensor and its officers, directors, employees and agents ("Licensor
Parties") against all liabilities, losses, damages, claims, costs, interests,
judgments, fines, amounts paid in settlement and expenses (including reasonable
attorneys' fees and litigation expenses) ("Losses") incurred by any Licensor
Party arising from or relating to any Action by a third party relating to any
use of the Trademarks by Licensee that is not authorized by this Agreement.
(b) By Licensor. Licensor agrees to defend, indemnify, and hold
harmless Licensee and its officers, directors, employees and agents ("Licensee
Parties") against all Losses (including attorneys' fees) incurred by any
Licensee party arising from or relating to any Action by a third party relating
to Licensee's authorized use of the Trademarks pursuant to this Agreement.
(c) Indemnification Procedures. The indemnification procedures set
forth in Article 12 of the Contribution Agreement are incorporated by reference
hereby.
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7. General Provisions.
(a) Entire Agreement. This Agreement constitutes the entire
agreement and understanding of the parties with respect to the Trademarks and
supersedes and terminates all other prior commitments, arrangements, or
understandings, both oral and written between the parties with respect to the
Trademarks.
(b) Modification. This Agreement may not be modified or amended
except by an instrument in writing executed by each of the parties.
(c) Binding Effect. This Agreement shall be binding upon and inure
to the benefit of the parties and their respective successors and assigns.
(d) Compliance with Laws. In the performance of this Agreement, both
Parties shall comply in all material respects with all applicable laws, rules
and regulations.
(e) Governing Law. This Agreement shall be construed in accordance
with the rights of the parties, and it shall be governed by the laws of the
State of Delaware applicable to contracts entered into and to be performed in
the State of Delaware.
(f) Notices. All notices, consents, waivers, and other
communications under this Agreement must be in writing and will be deemed to
have been duly given when (a) delivered by hand (with written confirmation of
receipt), (b) sent by telecopier (with written confirmation of receipt), or (c)
when received by the addressee, if sent by a nationally recognized overnight
delivery service, in each case to the appropriate addresses and telecopier
numbers set forth below (or to such other addresses and telecopier numbers as a
party may designate by notice to the other parties):
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Licensee:
Consolidated Container Holdings LLC
Consolidated Container Company LLC
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with a copy to:
Vestar Packaging LLC Simpson Thacher & Bartlett
1225 Seventeenth Street, Suite 1660 425 Lexington Avenue
Denver, Colorado 80202 New York, New York 10017
Attention: John R. Woodard Attention: Peter J. Gordon
Telecopy: (303)292-6639 Telecopy: (212) 455-2502
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Licensor:
Continental Can Company, Inc. with a copy to:
c/o Suiza Foods Corporation
2515 McKinney Avenue, Suite 1200 Hughes & Luce, L.L.P.
Dallas, Texas 75201 1717 Main Street, Suite 2800
Attention: President and General Counsel Dallas, Texas 75201
Telecopy: (214) 303-3400 Telecopy: (214) 939-5849
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(g) Related Company. Licensee shall be considered a "related
company" to Licensor under the U.S. Lanham Act such that any and all goodwill
arising from Licensee's use of the Trademarks shall inure solely to the benefit
of the Licensor.
(h) Maintenance. Licensor agrees that it will maintain any
registrations it has or later obtains with respect to the Trademarks and pay any
and all costs, expense and fees related thereto.
(i) Waiver. None of the provisions of this Agreement shall be deemed
to have been waived by any act or acquiescence on the part of either party,
their agents or employees, and the provisions of this Agreement may be waived
only by instruments in writing signed by an authorized officer of the respective
party. No waiver of any provision of this
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Agreement shall constitute a waiver of any other provision or of the same
provision on another occasion.
(j) Counterparts. This Agreement may be executed simultaneously in
two or more counterparts, each of which shall be deemed an original and all of
which together shall constitute but one and the same instrument.
(k) Authority. Each individual signing this Agreement on behalf of a
corporate party hereto personally warrants that he is properly authorized in
writing as an agent or officer of that corporate party to do so.
(l) No Relationship. This Agreement does not create, and shall not
be construed as creating, any relationship of agency, partnership, or employment
between the parties hereto. Licensor and Licensee enter into this Agreement as,
and shall remain, independent parties. Neither party shall have the right or
authority to assume, create, or enlarge any obligation or commitment on behalf
of the other and shall not represent itself as having the authority to bind the
other in any manner.
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IN WITNESS WHEREOF, the parties have executed this Agreement on the
day and year first set forth above.
CONTINENTAL CAN COMPANY, INC.
By: /s/ William Estes
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Name: William Estes
Title: President
CONSOLIDATED CONTAINER HOLDINGS LLC
By: /s/ Michelle P. Goolsby
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Name: Michelle P. Goolsby
Title: Vice President and Secretary
CONSOLIDATED CONTAINER COMPANY LLC
By: Consolidated Container Holdings LLC, a Delaware
limited liability company, its sole manager
By: /s/ Michelle P. Goolsby
------------------------------------
Name: Michelle P. Goolsby
Title: Vice President and Secretary
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EXHIBIT A
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MARK REG. NO. DATE CLASS/GOODS
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CCC CONTINENTAL CAN 1,863,491 11/22/94 7 - Packaging machines
COMPANY and Design and slicing machines
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CCC and Design 674,373 2/24/59 16 - Paperboard and
corrugated paperboard boxes
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CCC and Design 673,697 2/10/59 21 - Plastic containers,
such as bottles and the like
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