EXHIBIT 10.6
TRADEMARK AGREEMENT
TRADEMARK AGREEMENT ("Agreement") dated as of July 6, 1998 by and
between Silicon Graphics, Inc., a Delaware corporation ("SGI"), and MIPS
Technologies Inc., a Delaware corporation (together with its successors and
permitted assigns, "MIPS").
RECITALS
WHEREAS, the Board of Directors of SGI has determined that it is in the
best interests of SGI and its shareholders to separate the Company Business from
SGI's other operations;
WHEREAS, as part of the foregoing, SGI and MIPS have entered into a
Separation Agreement, dated on even date herewith (the "Separation Agreement"),
which provides, among other things, for the Separation of the Company Business
from SGI's other operations, the Initial Public Offering, and the execution and
delivery of certain ancillary agreements to facilitate and provide for the
foregoing; and
WHEREAS, the parties desire to enter into this ancillary agreement pursuant
to which SGI will assign certain trademark and trademark-related rights to MIPS,
and MIPS will license back certain rights to SGI.
NOW, THEREFORE, in consideration of the foregoing premises and the mutual
agreements, provisions and covenants contained in this Agreement, the parties
hereby agree as follows:
ARTICLE I
DEFINITIONS
As used herein, the following terms shall have the following meanings:
1.1. "Affiliates" means shall mean any corporation or other entity that is
directly or indirectly controlling, controlled by or under common control with a
party. For the purpose of this definition, "control" shall mean the direct or
indirect ownership of more than fifty percent (50%) of the capital stock of the
subject entity entitled to vote in the election of directors (or, in the case of
an entity that is not a corporation, interests entitled to vote in the election
of the corresponding managing authority). For the purposes of this Agreement,
the term "Affiliate" shall not include MIPS where the term Affiliates is used in
connection with a period of time after the Closing Date.
1.2 "Closing Date" means the date of the closing of MIPS's initial public
offering.
1.3 "Licensed Product" means a product that is designed by or for the SGI
Group that is substantially compatible with the MIPS ISA or is capable of
operating in conjunction with a MIPS
processor.
1.4 "MIPS ISA" shall mean the instruction set architectures for MIPS
Processor Components first developed by, for or with substantial participation
by MIPS including without limitation the MIPS I, MIPS II, MIPS III, MIPS IV,
MIPS V and successor instruction set architectures.
1.5 "MIPS Marks" means all Trademarks listed on Exhibit A.
1.6 "SGI Group" means SGI and its Affiliates.
1.7 "Trademark Rights" means trademarks, service marks, trade dress,
logos, trade names and corporate names, whether or not registered, including all
common law rights, and registrations and applications for registration thereof,
including but not limited to, all marks registered with the United States Patent
and Trademark Office, the Trademark Offices of the States and Territories of the
United States of America, and the Trademark Offices of other nations throughout
the world, and all rights provided by multinational treaties or conventions.
1.8 The following terms shall have the meanings set forth for the
corresponding defined terms in the Separation Agreement: Initial Public
Offering, Company Business, and Separation.
ARTICLE 2
ASSIGNMENT OF THE MIPS MARKS
2.1. Assignment to MIPS. SGI hereby assigns and conveys to MIPS, and MIPS
hereby accepts and receives, all of SGI's right, title and interest in and to
the MIPS Marks and related goodwill throughout the world. These rights shall
include, but shall not be limited to, all rights to use, copy, modify and
exploit the MIPS Marks; the right to exclude others from using the MIPS Marks;
the right to license, assign, convey, and pledge the MIPS Marks to others; the
right to ▇▇▇ others and to collect damages for past, present and future
infringements of the MIPS Marks; the right to create derivatives of the MIPS
Marks and to retain full ownership of such derivatives; the right to file and
prosecute applications to protect the Trademark Rights in the MIPS Marks,
together with all priority rights, under any existing or future international
convention, union, agreement, act or treaty.
2.2. Further Acts. SGI agrees to, upon MIPS's reasonable request and at
MIPS's expense, to execute and deliver to MIPS or its legal representative all
papers, instruments or affidavits required to apply for, obtain, maintain, issue
and enforce the Trademark Rights in the MIPS Marks. SGI hereby requests that
the United States Patent and Trademark Office and the corresponding offices in
all state, local and foreign jurisdictions issue to MIPS all registrations for
the Trademark Rights in the MIPS Marks.
ARTICLE 3
LICENSE OF THE MIPS MARKS
3.1 Grant of License. MIPS hereby grants to the SGI Group, and the SGI
Group hereby accepts and receives, a paid-up, royalty-free, non-exclusive,
worldwide right and license, including with right to sublicense, to use the MIPS
Marks on or in connection with the sale, license, lease or rental of Licensed
Products.
3.2 Ownership of the Marks. The SGI Group acknowledges that MIPS owns
each of the MIPS Marks and all of the worldwide rights in and to the MIPS Marks.
The SGI Group further acknowledges that any and all goodwill arising from the
SGI Group's use of the MIPS Marks shall inure solely to the benefit of MIPS, and
the SGI Group shall not assert any claim to such goodwill. The SGI Group agrees
that nothing in this Agreement shall give the SGI Group any right, title or
interest in the MIPS Marks other than the right to use the MIPS Marks in
accordance with this Agreement and the SGI Group agrees that it will not attack
the title of MIPS to the MIPS Marks or attack the validity of this Agreement.
The SGI Group agrees that it shall not file nor cause the filing of any
applications to register any ▇▇▇▇ identical or similar to the MIPS Marks
throughout the world, and upon MIPS's request, the SGI Group shall immediately
transfer all of its right, title and interest in such applications or
registrations to MIPS.
3.3 Quality Control. The SGI Group shall use the MIPS Marks consistent
with the form shown in Exhibit A, or as otherwise reasonably requested by MIPS.
The SGI Group shall use the MIPS Marks in a manner that is consistent with, and
does not detract from, the goodwill associated with the MIPS Marks. The SGI
Group agrees to cooperate with MIPS in maintaining MIPS's control of the nature
and quality of the goods with which the MIPS Marks are used.
ARTICLE 4
TERM AND TERMINATION
4.1 Term. Unless earlier terminated pursuant to Section 4.2, this
Agreement shall terminate when the SGI Group ceases to use the Trademark Rights
license hereunder.
4.2 Termination. MIPS shall have the right to terminate this Agreement
effective immediately upon SGI's receipt of written notice from MIPS in the
event of any affirmative act of insolvency by SGI, or upon the appointment of
any receiver or trustee to take possession of the properties of SGI or upon the
winding-up, sale, consolidation, merger or any sequestration by governmental
authority of SGI, or upon any material breach of any of the duties and
obligations of SGI under this Agreement.
4.3 Effects of and Procedure on Termination. Upon expiration or
termination of this Agreement, the SGI Group agrees to discontinue all use of
the MIPS Marks provided that the SGI Group and its sublicenses may sell, rent,
lease or license any Licensed Product stock on hand. The parties acknowledge
and agree that all rights in the MIPS Marks and the goodwill connected therewith
shall remain the property of MIPS upon expiration or termination of this
Agreement.
ARTICLE 5
MISCELLANEOUS
5.1 Incorporation of the Separation Agreement. In addition to the
definitions in Section 1.8, the following terms of the Separation Agreement are
incorporated by reference as if fully set forth herein:
Section 2.4 No Representations or Warranties; Consents
Article IV Indemnification
Article VII Dispute Resolution
Section 8.2 Expenses
Section 8.3 Notices
Section 8.4 Amendment and Waiver
Section 8.5 Counterparts
Section 8.6 Governing Law; Jurisdiction; Forum
Section 8.7 Entire Agreement
Section 8.8 Parties in Interest
Section 8.9 Tax Sharing Agreement
Section 8.10 Further Assurances and Consents
Section 8.11 Exhibits and Schedules
Section 8.12 Legal Enforceability
Section 8.13 Titles and Headings
5.2 Relationship of the Parties. This Agreement does not constitute and
shall not be construed as constituting a partnership or joint venture or grant
of a franchise between MIPS and SGI.
IN WITNESS WHEREOF, the parties hereto have duly executed and delivered
this Agreement on the day and year first written above.
SILICON GRAPHICS, INC.
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
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Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Title: Senior Vice President-
Corporate Operations
MIPS TECHNOLOGIES INC.
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
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Name: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Title: Chief Executive Officer
and President