EXHIBIT 10.2
RETAIL
TRADEMARK LICENSE AGREEMENT
This is a TRADEMARK LICENSE AGREEMENT ("AGREEMENT") between The
Pillsbury Company, a Delaware corporation having a principal place of
business at Number ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
("TPC") and International Multifoods Corporation, a Delaware corporation
having a principal place of business at ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇,
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ("LICENSEE").
▇.
▇▇▇▇▇ OF LICENSE
1.1 SCOPE OF LICENSE. TPC grants LICENSEE an exclusive (except to the degree
that Schedule 1 specifically states that it is non-exclusive) license to
use the trademarks listed in Schedule 1 (the "MARKS"), as well as related
trade dress ("TRADE DRESS") (the MARKS and TRADE DRESS being collectively
referred to as the "PROPERTY") in connection with the manufacture,
promotion, marketing, sale and distribution of the products within the
acquired product categories listed in Schedule 1 (the "PRODUCTS"), in the
CHANNELS OF DISTRIBUTION listed in Schedule 1 (the "CHANNELS OF
DISTRIBUTION"), and in the LICENSED TERRITORY set forth in Schedule 1 (the
"LICENSED TERRITORY"), under the terms set forth below. Without limiting
the foregoing, LICENSEE shall be free to determine how the MARKS are
placed on BRANDED PRODUCTS and used in advertising. When used in reference
to TPC or its other licensees, "PROPERTY" shall mean the PROPERTY and
similar or related property. When used in reference to TPC or its other
licensees, "BRANDED PRODUCTS" shall mean any products manufactured,
promoted or sold by TPC or its other licensees bearing the PROPERTY. When
used in reference to LICENSEE or its sublicensees, "BRANDED PRODUCTS"
shall mean PRODUCTS of LICENSEE or its sublicensees bearing the PROPERTY.
1.2 RESERVATION. It is understood that TPC reserves the right to use itself or
license to others the right to use the PROPERTY on any products or
services outside of the CHANNELS OF DISTRIBUTION, and on any products or
services other than those specifically defined as PRODUCTS under this
AGREEMENT. No rights are granted to LICENSEE outside of the LICENSED
TERRITORY. LICENSEE shall not use any of the MARKS as part of a company
name, such use of the MARKS being reserved exclusively to TPC.
II.
TERM
2.1 DURATION. Upon execution by both parties, this AGREEMENT shall become
effective as of the EFFECTIVE DATE indicated on Schedule 1, and shall
continue for the term set forth on Schedule 1 (the "TERM").
2.2 RENEWAL. This AGREEMENT shall automatically renew for successive twenty
year terms (each a "RENEWAL TERM") unless LICENSEE gives TPC at least six
months notice prior to the expiration of the TERM or then current RENEWAL
TERM.
III.
USE OF PROPERTY
3.1 VALIDITY/TITLE. LICENSEE agrees it will not ever challenge the validity of
the PROPERTY. TPC and LICENSEE agree that they will not, and will cause
their AFFILIATES not to, ever challenge the validity of this AGREEMENT.
LICENSEE acknowledges TPC's right and title to the PROPERTY, and shall not
contest or assist any other person in contesting such right and title.
3.2 LICENSEE'S USE OF THE PROPERTY. LICENSEE will use the PROPERTY only in the
manner permitted under this AGREEMENT. All uses of the PROPERTY shall
inure to the benefit of TPC. LICENSEE shall not acquire ownership of the
PROPERTY by virtue of any use it makes of the PROPERTY. LICENSEE shall not
attempt to register the PROPERTY alone or as part of its own trademarks,
nor shall LICENSEE assert ownership of the PROPERTY or attempt to register
any marks the same as or confusingly similar to the PROPERTY. LICENSEE
may, at its discretion and to the extent otherwise permitted under
applicable law, register copyrights that include or are derivative works
of the PROPERTY, but no such copyright registration shall cause LICENSEE
to acquire any ownership interest in the PROPERTY.
3.3 TRADEMARK OWNERSHIP NOTICE. LICENSEE agrees to apply the proper notations
on all PRODUCTS, tags, labels, package inserts, containers, packaging,
advertising, promotional and display materials or the like containing the
PROPERTY, as set forth below:
"[Applicable PROPERTY] is a trademark of The Pillsbury Company, used
under license."
LICENSEE shall also ▇▇▇▇ all packages with LICENSEE's or its
sublicensee's, as applicable, name and address so as to identify LICENSEE
or its sublicensee, as applicable, as the supplier of the PRODUCTS. The
obligations of this Section 3.3 shall not apply to any MARKED INVENTORY
(as this term is defined in Section 3 of Schedule 1).
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3.4 LICENSEE'S MODIFICATIONS OF MARKS. LICENSEE shall be free to modify or
alter the PROPERTY so long as such modification or alteration is
consistent with Section 4.1 of this AGREEMENT.
3.5 USE OF TPC'S MODIFICATIONS TO THE MARKS. LICENSEE shall have the right,
but not the obligation, to adopt any changes in the PROPERTY (including
any such changes that are registered marks or protected under copyright
laws) made by TPC.
3.6 PREVENTION OF UNAUTHORIZED USE. LICENSEE agrees that it has no right to
use, and it will not use, the PROPERTY outside of the LICENSED TERRITORY
or outside of the CHANNELS OF DISTRIBUTION, and that any such use of the
PROPERTY would constitute an infringement of TPC's intellectual property
rights.
3.7 NEW MARKS. If LICENSEE desires to use another ▇▇▇▇ on or in connection
with the PRODUCTS, which ▇▇▇▇ does not include any word or design that is
common to or confusingly similar to a word or design that comprises an
element of any ▇▇▇▇, such other ▇▇▇▇ shall be deemed to be an
"UNASSOCIATED ▇▇▇▇." LICENSEE has the right, but not the obligation, to
use UNASSOCIATED MARKS in connection with the PRODUCTS in the LICENSED
TERRITORY, PROVIDED THAT LICENSEE shall bear all costs and expenses
associated with the development, use, registration and maintenance of the
UNASSOCIATED ▇▇▇▇, including, but not limited to, the costs of determining
availability, protection and any costs and expenses associated with any
charges of infringement relating to such UNASSOCIATED ▇▇▇▇. All
UNASSOCIATED MARKS shall, as between the parties hereto, be owned solely
by LICENSEE and all use shall inure to the benefit of LICENSEE.
IV.
GOODWILL AND PROMOTIONAL VALUE
4.1 GOODWILL. LICENSEE recognizes and acknowledges the great value of the
family image and goodwill associated with the PROPERTY and acknowledges
that the PROPERTY, and all rights therein and the goodwill pertaining
thereto, are legally enforceable and belong exclusively to TPC, except as
conferred by this AGREEMENT. LICENSEE shall take no action, or allow its
AFFILIATES to take any action, in connection with its use of the MARKS to
impair or diminish the benefits of the use of the MARKS by TPC, including,
but not limited to, any action that impairs or diminishes such benefits by
damaging the PROPERTY or bringing the PROPERTY into disrepute. The parties
agree that LICENSEE's use of any MARKS in comparative advertising is not
per se a violation of this Section 4.1.
V.
PROPERTY PROTECTION
5.1 COMPLIANCE WITH LAW. In manufacturing, promoting, marketing and selling
BRANDED PRODUCTS, each party agrees to maintain full compliance with the
provisions of
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applicable federal, state and local laws and regulations.
5.2 TPC'S COVENANT REGARDING USE OF THE MARKS.
(a) COVENANT. TPC shall take no action, or allow its AFFILIATES to
take any action, in connection with its use of the MARKS to impair or
diminish the benefits of the use of the MARKS by LICENSEE, including, but
not limited to, any action that impairs or diminishes such benefits by
damaging the PROPERTY or bringing the PROPERTY into disrepute.
(b) NOTICE PROVISION. If TPC breaches its obligations under the
preceding paragraph, LICENSEE may impose the Voluntary Restraint (as
defined herein) specified below by providing to TPC written notice
("Notice") that: (i) expressly refers to this notice provision and states
LICENSEE's intention, within two business days after receipt by TPC of
Notice, to commence an action, in accordance with Section 10.13 of this
AGREEMENT, for breach of TPC's obligations under the preceding paragraph
("Declaratory Judgment Action") and to file an application for a temporary
restraining order or other injunctive interlocutory relief
("Application"); and (ii) expressly identifies what conduct or anticipated
conduct of TPC is or will be claimed by LICENSEE to constitute a breach of
TPC's obligations under the preceding paragraph. The Notice shall be
provided in accordance with the notice provisions of Section 10.8 of this
AGREEMENT except that the Notice shall be given only by hand delivery or
by reputable overnight courier service.
(c) VOLUNTARY RESTRAINT. Upon receipt of any Notice, TPC shall
immediately cease and desist (the "Voluntary Restraint") the conduct
identified in the Notice (the "Identified Conduct") until denial, by any
court, of any Application related to such Identified Conduct or any other
decision by the court that the Voluntary Restraint should be lifted (the
"Voluntary Restraint Period"). Notwithstanding the foregoing, the
Voluntary Restraint Period shall end in the event that LICENSEE fails,
within two business days after the receipt of the Notice by TPC, to file
the Declaratory Judgment Action and Application in a court of competent
jurisdiction. The fact that TPC has engaged in the Voluntary Restraint
prior to the judicial hearing as provided herein shall not constitute an
admission, nor shall LICENSEE contend, that such fact in any way bears
upon the appropriateness of the grant of a temporary restraining order or
temporary injunction.
(d) CONSENT TO EXPEDITED LITIGATION. In any Declaratory Judgment
Action brought under this Section 5.2, neither TPC nor LICENSEE shall
oppose any application by the other party requesting expedited treatment
of any application for temporary, preliminary or permanent relief.
(e) ADDITIONAL RIGHTS. Nothing contained in this Section 5.2 shall
be construed to limit the rights of either party to obtain judicial review
of their legal rights or obligations under this AGREEMENT.
(f) COSTS AND DAMAGES. The prevailing party in each Declaratory
Judgment Action, upon a final decision of the Declaratory Judgment Action
by the court, shall have
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the right to recover from the other party all out-of-pocket costs,
including reasonable attorneys' fees resulting from such Declaratory
Judgment Action and any direct damages suffered by such prevailing party.
(g) THIRD PARTY ARBITRATION. If LICENSEE believes that TPC is in
breach of the above paragraph (a) of this Section 5.2, LICENSEE shall have
the right, at its sole discretion, to submit such dispute to arbitration
in accordance with the CPR Institute for Dispute Resolution Rules for
Non-Administered Arbitration by three arbitrators, of whom each party
shall appoint one (the third to be chosen in accordance with such rules).
The arbitrators shall be selected from the CPR/INTA Trademark Panel of
Neutrals. Except as provided in this Section 5.2, the arbitration shall be
governed by said rules and the Federal Arbitration Act, 9 U.S.C. Sections
1-16. The place of the arbitration shall be Minneapolis, Minnesota.
(h) Any monetary award rendered by the Arbitrators against TPC shall
be limited to direct and actually incurred damages, and shall exclude
consequential damages and damages for lost profits, resulting from the
breach of this AGREEMENT. Monetary damages may be awarded if the
Arbitrators find that TPC has taken any action in connection with its use
of the MARKS to impair or diminish the benefits of the use of the MARKS by
LICENSEE, including, but not limited to, any action that impairs or
diminishes such benefits by damaging the PROPERTY or bringing the PROPERTY
into disrepute.
(i) The Arbitrators shall receive an amount pursuant to a fee
schedule to be agreed upon by TPC, LICENSEE and the Arbitrators for the
arbitration of any disputes between TPC and LICENSEE with respect to this
AGREEMENT that the Arbitrators resolve. If the Arbitrators decide in favor
of LICENSEE, then TPC shall pay the Arbitrators' fees; if the Arbitrators
decide in favor of TPC, then LICENSEE shall pay the Arbitrators' fees.
(j) The decision of the Arbitrators shall be final and binding on
all parties. Notwithstanding the foregoing, the award shall be subject to
judicial review to determine if it contains material errors of law, is
arbitrary or capricious or on any other ground that would be applicable if
the award were a judgment entered by a federal district court. Judgment
upon any award rendered by the Arbitrators may be entered by any court
having jurisdiction thereof. Any party may challenge any decision of the
Arbitrators, in which case the parties agree to cooperate to expedite
judicial review of such decision; provided, however, that to the extent
the final nonappealable judgment of such judicial review does not overrule
such decision the party challenging the decision shall pay the attorneys'
fees and other out-of-pocket expenses of the other party.
5.3 EXISTING AND PENDING REGISTRATIONS. TPC shall use reasonable efforts to
maintain in full force and effect in the LICENSED TERRITORY currently
existing registrations for the MARKS including, but not limited to,
renewing existing registrations to the extent reasonably permissible under
then applicable law. In addition, TPC shall prosecute: (i) all currently
pending applications for registration in the LICENSED TERRITORY for the
currently existing MARKS, to the extent reasonably permissible under
applicable law, and (ii) new applications for registration in the LICENSED
TERRITORY for the
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MARKS as reasonably requested by LICENSEE. TPC shall use reasonable
efforts to maintain any registrations issued pursuant to any such
applications referred to in (i) and (ii) above. TPC's obligations pursuant
to the preceding two sentences shall continue as long as this AGREEMENT
continues in effect except to the extent the parties may mutually agree to
the contrary or to the extent maintenance of any particular ▇▇▇▇ is
precluded by reason of the lack of use thereof or any other applicable
law. LICENSEE agrees to provide assistance and documentation as is
reasonably required by TPC in connection with the foregoing. All of TPC's
activities under this paragraph in registering and maintaining
registrations for MARKS shall be at TPC's sole expense, except that the
cost of any appeals or contested proceedings (E.G., opposition or
cancellation proceedings) for applications or registrations that primarily
relate to LICENSEE's BRANDED PRODUCTS, or that TPC reasonably does not
wish to maintain and LICENSEE does wish to maintain, shall be borne by
LICENSEE.
5.4 INFRINGEMENT BY THIRD PARTIES. Each party agrees to reasonably assist the
other in protecting the PROPERTY from infringement by third parties,
including, but not limited to, reporting to the other party any
infringement or imitation of the PROPERTY it becomes aware of (PROVIDED,
HOWEVER, that TPC shall only be obligated to report such infringements or
imitations to LICENSEE if they relate to PRODUCTS or if TPC intends to
initiate an action, suit, opposition or other proceeding (collectively, a
"PROCEEDING") with respect to such matter). Except as otherwise provided
in this Section 5.4, or unless the parties agree otherwise in writing, the
prosecution and settlement of any PROCEEDING respecting any infringement,
dilution, tarnishment, unfair competition or passing off by a third party
of, or with respect to, any PROPERTY (collectively, an "INFRINGEMENT"),
including the decision whether to initiate a PROCEEDING, shall be as
follows:
(a) Except as set forth otherwise in the Foodservice Trademark
License Agreement entered into between TPC and LICENSEE on the date hereof
(and even then only during the term thereof), for any INFRINGEMENT that
relates to use of PROPERTY in connection with goods or services other than
PRODUCTS:
(1) TPC shall have the sole right to determine whether to
institute litigation with respect to such INFRINGEMENT, as well as
the sole right to select counsel. TPC may commence or prosecute any
such claims or suits in its own name or it may join LICENSEE as a
party thereto. TPC shall be entitled to keep the entire amount of
any recovery therefrom. If TPC brings any such INFRINGEMENT action,
LICENSEE agrees to cooperate with TPC and lend reasonable assistance
as requested by TPC, subject to being reimbursed for its reasonable
out-of-pocket expenses incurred at TPC's request.
(2) Each party shall promptly (i) notify the other party of
any material developments with respect to such PROCEEDING, (ii)
deliver to the other party a copy of all pleadings, correspondence
and other material documents respecting such PROCEEDING, and (iii)
notify the other party of any offers of settlement related to such
PROCEEDING which it receives or which it proposes to make.
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(3) TPC shall not offer, or accept any offer of, a settlement
that contains any material term or condition other than the receipt
or payment of money by TPC, which settlement would have a materially
negative effect on the PROPERTY, without the prior written consent
of LICENSEE, which consent shall not be unreasonably withheld or
delayed.
(b) For any INFRINGEMENT that relates to use of
PROPERTY in connection with PRODUCTS:
(1) LICENSEE shall have the sole right to determine whether to
institute litigation with respect to such INFRINGEMENT, as well as
the sole right to select counsel ("TRADEMARK COUNSEL"). LICENSEE may
commence or prosecute any such claims or suits in its own name or it
may join TPC as a party thereto. LICENSEE shall be entitled to keep
the entire amount of any recovery therefrom. If LICENSEE brings any
such INFRINGEMENT action, TPC agrees to cooperate with LICENSEE and
lend reasonable assistance as requested by LICENSEE, subject to
being reimbursed for its reasonable out-of-pocket expenses incurred
at LICENSEE's request.
(2) TRADEMARK COUNSEL and each party (unless TRADEMARK COUNSEL
has already done so) shall promptly (i) notify the other party of
any material developments with respect to such PROCEEDING, (ii)
deliver to the other party a copy of all pleadings, correspondence
and other material documents respecting such PROCEEDING, and (iii)
notify the other party of any offers of settlement related to such
PROCEEDING which it receives or which it proposes to make.
(3) Neither party shall offer, or accept any offer of, a
settlement that contains any material term or condition other than
the receipt or payment of money by such party, which settlement
would have a materially negative effect on the PROPERTY, without the
prior written consent of the other party, which consent shall not be
unreasonably withheld or delayed.
5.5 THIRD PARTY INFRINGEMENT CLAIMS.
(a) If claims are made against TPC or its AFFILIATES or LICENSEE (or
its sublicensees) with respect to use of the PROPERTY in connection with
PRODUCTS ("THIRD-PARTY INFRINGEMENT CLAIMS"), then TPC and LICENSEE agree
to consult with each other on a suitable course of action. In no event
shall either party have the right, without the prior consent of the other
party, to acknowledge the validity of the THIRD-PARTY INFRINGEMENT CLAIM
or to take any other action which materially impairs the ability of the
other party to contest the claim of such third party or the rights of the
other party to use or protect the PROPERTY; PROVIDED, HOWEVER, that either
party may obtain or seek a license from such third party so long as such
license does not acknowledge the validity of the THIRD-PARTY INFRINGEMENT
CLAIM. Each party
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shall have the right to participate fully at its own expense in the
defense of any such THIRD-PARTY INFRINGEMENT CLAIM. TPC shall have the
sole right to handle any claims made against it with respect to use of the
PROPERTY in connection with TPC's BRANDED PRODUCTS; PROVIDED, HOWEVER,
that TPC shall not, without the prior consent of LICENSEE, acknowledge the
validity of any such claim or take any other action if such
acknowledgement or action materially impairs LICENSEE's rights under this
AGREEMENT or LICENSEE's rights to use or protect the PROPERTY; PROVIDED,
HOWEVER, that TPC may obtain or seek a license from such third party so
long as such license does not acknowledge the validity of the claim.
(b) LICENSEE agrees to make, within a reasonable timeframe,
reasonable modifications requested by TPC in LICENSEE's use of the
PROPERTY if TPC reasonably determines such action is necessary to resolve
or settle a claim or suit unless such modifications would have a
materially negative effect on LICENSEE's business.
VI.
INDEMNIFICATION AND INSURANCE
6.1 SURVIVAL. The representations and warranties of the parties hereto in this
AGREEMENT shall survive the execution and delivery hereof and the delivery
of all of the documents executed in connection herewith and shall continue
in full force and effect after the date hereof.
6.2 DEFINED TERMS RELATING TO INDEMNIFICATION PROVISIONS. For all purposes
of this AGREEMENT, except as expressly provided or unless the context
otherwise requires, the following definitions shall apply:
"AFFILIATE" shall mean, with respect to any PERSON, any PERSON
directly or indirectly controlling, controlled by, or under common control
with, such other PERSON at any time during the period for which the
determination of affiliation is being made. For purposes of this
definition, the term "control" (including the correlative meanings of the
terms "controlled by" and "under common control with"), as used with
respect to any PERSON, shall mean the possession, directly or indirectly,
of the power to direct or cause the direction of management policies of
such PERSON, whether through the ownership of voting securities or by
contract or otherwise.
"GOVERNMENTAL ENTITY" shall mean any federal, state, political
subdivision or other governmental agency, court or instrumentality,
foreign or domestic.
"PERSON" shall mean an individual, corporation, partnership, limited
liability company, association, trust or unincorporated organization, a
government or any agency or political subdivision thereof or any other
entity or organization.
6.3 INDEMNIFICATION BY TPC. From and after the EFFECTIVE DATE, subject to the
provisions of this Article VI, TPC shall indemnify LICENSEE, its
AFFILIATES and each of their respective officers, directors, employees,
agents and representatives against
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and hold them harmless from any loss, claim, damage, liability, cost or
expense (including reasonable fees and expenses of lawyers, accountants,
investigators, experts and other professionals) (collectively, a "LOSS")
suffered or incurred by any such indemnified party to the extent arising
out of the manufacture, distribution, use, sale or marketing of TPC's (or
its other licensees') BRANDED PRODUCTS, including any unauthorized use of
any patent, process, idea, method or device, or unfair trade practice,
false advertising, trademark infringement, or the like.
6.4 INDEMNIFICATION BY LICENSEE. From and after the EFFECTIVE DATE, subject to
the provisions of this Article VI, LICENSEE shall indemnify TPC, its
AFFILIATES and each of their respective officers, directors, employees,
agents and representatives against and hold them harmless from any LOSS
suffered or incurred by any such indemnified party to the extent arising
out of the manufacture, distribution, use, sale or marketing of LICENSEE's
(or its other licensees') BRANDED PRODUCTS, including (except as set forth
below) any unauthorized use of any patent, process, idea, method or
device, or unfair trade practice, false advertising, trademark
infringement, or the like, but excluding items for which LICENSEE has a
claim for indemnification under that certain Amended and Restated Asset
Purchase Agreement among TPC, LICENSEE and General ▇▇▇▇▇, Inc., a Delaware
corporation ("GMI"), dated October 24, 2001 (as it may be amended from
time to time, the "ASSET PURCHASE AGREEMENT").
6.5 PROCEDURES RELATING TO INDEMNIFICATION.
(a) In order for an indemnified party to be entitled to any
indemnification provided for under this Article VI in respect of, arising
out of or involving a claim or demand made by any person, firm,
GOVERNMENTAL ENTITY or corporation against the indemnified party (a
"THIRD-PARTY CLAIM"), such indemnified party must notify the indemnifying
party in writing, and in reasonable detail, of the THIRD-PARTY CLAIM as
promptly as reasonably possible after receipt by such indemnified party of
written notice of the THIRD-PARTY CLAIM; PROVIDED, HOWEVER, that failure
to give such notification shall not affect the indemnification provided
hereunder except to the extent the indemnifying party shall have been
actually prejudiced as a result of such failure. Thereafter, the
indemnified party shall deliver to the indemnifying party, within five (5)
business days after the indemnified party's receipt thereof, copies of all
notices and documents (including court papers) received by the indemnified
party relating to the THIRD-PARTY CLAIM; PROVIDED, HOWEVER, that failure
to make such deliveries shall not affect the indemnification provided
hereunder except to the extent the indemnifying party shall have been
actually prejudiced as a result of such failure.
(b) If a THIRD-PARTY CLAIM is made against an indemnified party, the
indemnifying party will be entitled to participate in the defense thereof
and, if it so elects in writing within ten (10) days of receipt of written
notice from the indemnified party and acknowledges its obligation to
indemnify the indemnified party therefor, to assume the defense thereof
with counsel selected by the indemnifying party and reasonably
satisfactory to the indemnified party, PROVIDED that the indemnifying
party conducts the defense actively and diligently thereafter. Should the
indemnifying party so elect to
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assume the defense of a THIRD-PARTY CLAIM, the indemnifying party will not
be liable to the indemnified party for legal expenses subsequently
incurred by the indemnified party in connection with the defense thereof,
absent any conflict of interest between such parties. If the indemnifying
party assumes such defense, the indemnified party shall have the right to
participate in the defense thereof and to employ counsel, at its own
expense, unless a conflict of interest would arise if counsel to the
indemnifying party also represented the indemnified party, separate from
the counsel employed by the indemnifying party, it being understood that
the indemnifying party shall control such defense, except to the extent of
any such conflict of interest between such parties. The indemnifying party
shall be liable for the fees and expenses of counsel employed by the
indemnified party for any period during which the indemnifying party has
not assumed the defense thereof or in the event of any conflict of
interest between the indemnified party and the indemnifying party. All the
parties hereto shall cooperate in the defense or prosecution of any
THIRD-PARTY CLAIM. Such cooperation shall include the retention and (upon
the other party's request) the provision to the other party of records and
information that are reasonably relevant to such THIRD-PARTY CLAIM, and
making employees available on a mutually convenient basis to provide
additional information and explanation of any material provided hereunder,
at the reasonable expense of the indemnifying party. Whether or not the
indemnifying party shall have assumed the defense of a THIRD-PARTY CLAIM,
the indemnified party shall not admit any liability with respect to, or
settle, compromise or discharge, such THIRD-PARTY CLAIM without the
indemnifying party's prior written consent (which consent shall not be
unreasonably withheld). The indemnifying party shall not, without the
prior written consent of the indemnified party, enter into any settlement
of any THIRD-PARTY CLAIM that would result in the imposition of a consent
order, injunction or decree which would materially restrict or otherwise
materially adversely affect the future activity or conduct of the
indemnified party or any AFFILIATE thereof, or without the prior written
consent of the indemnified party (which consent shall not be unreasonably
withheld) that does not include, as an unconditional term thereof, the
release of the indemnified party from all liability in respect of such
THIRD-PARTY CLAIM except the liability satisfied by the indemnifying
party.
6.6 REPRESENTATION BY TPC. Except as set forth in the ASSET PURCHASE
AGREEMENT, the PROPERTY is being licensed on an AS IS basis and TPC makes
no warranties or representations of any kind. ALL OTHER WARRANTIES,
EXPRESS OR IMPLIED, ARE HEREBY DISCLAIMED AND EXCLUDED BY TPC, INCLUDING
ANY WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
NON-INFRINGEMENT AND WARRANTIES ARISING FROM, COURSE OF DEALING OR USAGE
OF TRADE. NO AGENT, EMPLOYEE OR REPRESENTATIVE OF TPC HAS ANY AUTHORITY TO
BIND TPC TO ANY AFFIRMATION, REPRESENTATION OR WARRANTY EXCEPT AS STATED
IN THIS PARAGRAPH.
6.7 INSURANCE. LICENSEE shall acquire and maintain at its sole cost and
expense throughout the Term and any Renewal Term of this AGREEMENT
comprehensive general liability insurance, including product liability,
advertisers liability, and contractual liability,
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(hereinafter referred to as "LIABILITY INSURANCE"), underwritten by a
financially sound and reputable insurance company qualified to do business
in the LICENSED TERRITORY. This insurance coverage shall provide
protection of not less than $10 million, combined single limit for
personal injury and property damage (on a per occurrence basis) with TPC
named as an additional insured party and shall provide adequate protection
for LICENSEE and TPC against any and all claims, demands, causes of action
or damages, including attorneys' fees, arising out of this AGREEMENT,
including but not limited to any alleged defects in the BRANDED PRODUCTS
of LICENSEE or its other licensees or any use thereof. Such LIABILITY
INSURANCE shall be maintained on an occurrence basis to provide such
protection after expiration or termination of the policy itself and/or of
this AGREEMENT. The parties acknowledge that such insurance need not
include product recall coverage.
6.8 CERTIFICATE OF INSURANCE. LICENSEE shall furnish to the AUDITOR (as
defined below) certificates issued by the insurance company setting forth
the amount of LIABILITY INSURANCE, the policy number, the date of
expiration, and a provision that TPC shall receive thirty (30) days'
written notice prior to termination, reduction or modification of the
coverage. LICENSEE's purchase and maintenance of the LIABILITY INSURANCE
or furnishing of the certificate of insurance shall not relieve LICENSEE
of any of its obligations or liabilities under this AGREEMENT.
VII.
QUALITY CONTROL/RECALL
7.1 AUDITING. In order to assure LICENSEE's compliance with its obligations
under this AGREEMENT and to assure the adequate protection of the great
value of the goodwill associated with the PROPERTY, LICENSEE agrees to
hire an independent third party auditor certified by the American
Institute of Baking (the "AUDITOR") to assess annually LICENSEE's
compliance with its obligations under this Article VII. TPC shall pay the
reasonable and customary fees of the AUDITOR. If the AUDITOR discovers any
noncompliance with such obligations, the AUDITOR shall provide specific
notice of the deficiency to LICENSEE, and LICENSEE shall promptly take the
necessary steps to come into compliance. This paragraph shall not require
either the AUDITOR or LICENSEE to communicate with TPC regarding the
results of any assessment of LICENSEE's compliance with this AGREEMENT.
7.2 QUALITY STANDARDS. LICENSEE covenants that the BRANDED PRODUCTS that it
sells (and that any of its sublicensees sell) shall meet or exceed all
government standards, regulations, guidelines, manufacturing codes, rules,
laws or the like dealing with or applicable to the BRANDED PRODUCTS.
Without limiting the foregoing, LICENSEE agrees that all of its activities
(and the activities of its sublicensees) in relation to BRANDED PRODUCTS
shall comply with the "good manufacturing practices" regulations
established by the federal Food and Drug Administration ("FDA"). LICENSEE
agrees to maintain the HACCP (Hazards And Critical Control Points) program
currently in place at GMI's Toledo plant (which plant is being turned over
to LICENSEE pursuant to other agreements between the parties) or some
other comparable
11
voluntary quality assurance program designed to maintain a quality
assurance standard appropriate to protect the valuable goodwill associated
with the PROPERTY, and which quality assurance program LICENSEE may review
and update from time to time as is appropriate to maintain a quality
assurance standard appropriate to protect the valuable goodwill associated
with the PROPERTY. LICENSEE shall establish, and cause its sublicensees to
establish, a quality assurance plan (including HACCP programs similar to
the one currently in place at GMI's Toledo plant or some other comparable
voluntary quality assurance plan) for all facilities at which BRANDED
PRODUCTS are produced, which quality assurance plan shall be used to
assure the compliance with these quality standards and to assure
consistent quality of the BRANDED PRODUCTS. The plan shall include a
description of the quality controls observed in the BRANDED PRODUCTS'
manufacture, and the procedures followed to audit and verify continued
quality and conformance to specifications for the BRANDED PRODUCTS, as
well as applicable laws and regulations. In addition, with respect to each
sublicensee of LICENSEE (1) LICENSEE shall regularly inspect (either
directly or through qualified third parties) the activities of such
sublicensee with respect to the sublicensee's compliance with the terms of
its sublicense agreement and the quality assurance plan established for
the sublicensee's manufacture of BRANDED PRODUCTS; (2) prior to the
introduction by such sublicensee of any new product covered by the
sublicense with LICENSEE, LICENSEE shall require the sublicensee to submit
to LICENSEE samples or prototypes of that product, along with proposed
packaging and advertising materials for that product, and LICENSEE (either
directly or through qualified third parties) shall inspect the safety of
the proposed product and review whether the product and the packaging and
advertising are of a nature and quality that is consistent with the
goodwill associated with the PROPERTY; and (3) with respect to any
sublicensee authorized to manufacture any non-food items (as to which
HACCP, good manufacturing practices and similar governmental standards may
not be applicable), LICENSEE shall review the sublicensee's quality
assurance plan and LICENSEE shall monitor the sublicensee's activities in
a manner appropriate for the protection of the valuable goodwill
associated with the PROPERTY.
7.3 CONSUMER INQUIRIES. As between LICENSEE and TPC, LICENSEE will, at its
sole cost, handle all product warranty and/or guarantee/satisfaction
issues, response and compliance requirements, as well as all consumer
inquiries or complaints (collectively, the "CONSUMER INQUIRIES") relative
to any of the BRANDED PRODUCTS that it or its sublicensees sell. Such
CONSUMER INQUIRIES shall be handled in a competent, professional manner so
as to maintain the great value of the goodwill associated with the
PROPERTY. The parties agree to cooperate to establish suitable procedures
and systems for forwarding to each other all CONSUMER INQUIRIES that
either party receives relating to the other party's business.
7.4 PRODUCT RECALL. LICENSEE shall make reasonable efforts to give TPC advance
notice of any product recall or withdrawal with respect to its BRANDED
PRODUCTS in order to permit TPC to prepare for dealing with the attendant
public relations and investors relations issues. TPC shall make reasonable
efforts to give LICENSEE advance notice of any product recall or
withdrawal with respect to its BRANDED PRODUCTS in order to
12
permit LICENSEE to prepare for dealing with the attendant public relations
and investors relations issues. As between LICENSEE and TPC, each party
shall bear any and all costs related to any recall or withdrawal of its
(and its other licensees') BRANDED PRODUCTS, whether voluntary or
otherwise. Each party shall implement and maintain, and in all future
license/sublicense agreements for food products shall cause its
licensees/sublicensees to implement and maintain, a comprehensive lot
tracking program with respect to all BRANDED PRODUCTS, starting with raw
materials and carrying through to final retail distribution, to maximize
the effectiveness and minimize the extent of any recall or withdrawal.
7.5 CHILD/PRISON LABOR. LICENSEE and TPC agree not to use CHILD labor in the
manufacturing, packaging or distribution of BRANDED PRODUCTS. The term
"CHILD" refers to a person younger than the local legal minimum age for
employment or the age for compelling compulsory education, but in no case
shall be any child younger than 15 years of age (or 14 years of age where
local law allows). Each party agrees not to use any forced or involuntary
labor, whether prison, bonded, indentured or otherwise. In all future
license/sublicense agreements involving BRANDED PRODUCTS, each party shall
cause its licensees/sublicensees to abide by all of the foregoing
restrictions.
VIII.
ASSIGNMENT
8.1 This AGREEMENT may be assigned, transferred or otherwise delegated
(collectively, an "ASSIGNMENT") by LICENSEE without the prior written
consent of TPC to an AFFILIATE of LICENSEE, to a party who purchases or
acquires, as a going concern, the business of LICENSEE in which any of the
PROPERTY is used (on all or a portion of the PRODUCTS) and/or to any
lenders providing financing to LICENSEE; PROVIDED, HOWEVER, that prior to
an ASSIGNMENT (which for purposes of this proviso only shall not include
any pledge of this AGREEMENT to a lender providing financing to LICENSEE
until such time as the lender exercises it rights under applicable pledge
agreements, security agreements or other collateral documents) any
proposed assignee of this AGREEMENT must agree in writing, delivered to
TPC, that it shall be bound by the terms and provisions of this AGREEMENT.
8.2 This AGREEMENT may be assigned, transferred, sublicensed or otherwise
delegated by TPC without the prior written consent of LICENSEE, PROVIDED,
HOWEVER, that any assignee of this AGREEMENT must agree in writing,
delivered to LICENSEE, that it shall be bound by the terms and provisions
of this AGREEMENT.
8.3 This AGREEMENT and all of the provisions hereof shall be binding upon and
inure to the benefit of, and be enforceable by, the parties hereto and
their respective successors and permitted assigns.
8.4 This AGREEMENT may be sublicensed, in whole or in part, by LICENSEE,
without the prior written consent of TPC, PROVIDED THAT LICENSEE gives
prompt written notice to TPC of any sublicense.
13
8.5 Any attempted assignment or delegation in contravention hereof shall be
null and void.
IX.
BREACH, CURE AND REMEDIES
9.1 BREACH AND CURE. If a party materially violates any of the terms or
conditions of this AGREEMENT, the other party may send written notice
to the breaching party, particularly specifying the breach. The
breaching party shall have thirty (30) days to cure the specified
breach. If the breaching party does not cure the breach within such
period of time, then the non-breaching party may pursue such remedies
as may be available to it under applicable law, including but not
limited to both equitable and damages remedies, but excluding
termination of this AGREEMENT. In the event that one party claims that
the other party is materially violating any of the terms or conditions
of this Agreement and such other party disputes such claim, the party
claiming that the other party is in breach may seek to resolve such
dispute either (A) pursuant to the third party arbitration provisions
set forth in Sections 5.2(g) through 5.2(j), in which event such
provisions shall apply to such dispute or (B) in a court of competent
jurisdiction pursuant to Section 10.13. In formulating appropriate
remedies commensurate with the nature and extent of any such uncured
breach, the arbitrator or the court shall take into account, in
addition to all other pertinent factors, each party's inability to
terminate this AGREEMENT for breach. The parties also agree that,
subject to its equitable powers to decide otherwise, the arbitrator or
the court shall award to the prevailing party in any litigation under
this section the prevailing party's costs and reasonable attorneys'
fees in pursuing the matter. Either party's failure to send a notice of
breach or to pursue legal remedies available to it shall not constitute
or be construed as a waiver or acquiescence, and each party expressly
reserves the right to subsequently pursue such remedies for the same or
any other breach, either of the same or different character. The
provisions in this Section 9.l are in addition to the provisions in
Section 5.2.
9.2 LIMITATION OF LIABILITY. NOTWITHSTANDING ANY OTHER PROVISION OF THIS
AGREEMENT, EXCEPT FOR THE REJECTION OF THIS AGREEMENT IN BANKRUPTCY (OR
SIMILAR INSOLVENCY PROCEEDING), NEITHER PARTY SHALL BE LIABLE TO THE OTHER
PARTY FOR LOST PROFIT, LOST REVENUE OR ANY OTHER FORM OF INDIRECT,
INCIDENTAL, SPECIAL, CONSEQUENTIAL OR PUNITIVE DAMAGES, EVEN IF THAT PARTY
HAS BEEN INFORMED OF THE POSSIBILITY OF SUCH DAMAGES.
X.
MISCELLANEOUS
10.1 CONFIDENTIALITY. Without the prior written approval of the non-disclosing
party, neither party shall disclose, use or otherwise communicate to any
third party any information regarding either the terms and provisions of
this AGREEMENT or any other confidential materials, trade secrets and/or
proprietary information delivered pursuant to the terms and provisions of
this AGREEMENT except: (i) to the extent necessary to comply with a
14
specific applicable law, regulatory oversight (such as the Federal Trade
Commission or its agents or the Securities and Exchange Commission) or the
valid order of a court of competent jurisdiction, PROVIDED THAT the party
making the disclosure or communication shall notify the other party in
writing and shall seek confidential and proprietary treatment of the
information; (ii) as part of normal reporting or review procedure to
either party's board of directors, parent company, auditors and attorneys,
PROVIDED, HOWEVER, that such persons or entities agree to be bound by the
provisions of this Paragraph; (iii) to enforce its rights legally under
this AGREEMENT in a court of competent jurisdiction, PROVIDED THAT the
party making the disclosure or communication shall notify the other party
in writing and shall seek confidential and proprietary treatment of the
information; (iv) with respect solely to disclosing this AGREEMENT to a
potential sublicensee in connection with any sublicenses or proposed
sublicenses, PROVIDED, HOWEVER, that such persons or entities agree to be
bound by the provisions of this Paragraph; (v) with respect solely to
disclosing this AGREEMENT to potential purchasers in connection with the
sale of all or part of the applicable business of a party, PROVIDED,
HOWEVER, that such persons or entities agree to be bound by the provisions
of this Paragraph; (vi) with respect solely to disclosing this AGREEMENT
with the United States Patent and Trademark Office (or any similar
office), provided that the party making the disclosure or communication
shall notify the other party in writing and shall seek confidential and
proprietary treatment of the information; or (vii) such information is or
becomes part of the public domain through disclosure other than by the
disclosing party. For purposes of this Section 10.1, "confidential
materials, trade secrets and/or proprietary information" shall mean all
information that is not publicly known.
10.2 RELATIONSHIP OF THE PARTIES. Nothing in this AGREEMENT shall be construed
to create or constitute a partnership, joint venture, or any other agency
or employment relationship between the parties hereto. Neither party is
authorized to enter into any agreement on behalf of, assume any obligation
for, or otherwise bind the other party financially or otherwise; nor is
either party responsible for the obligations of the other party, including
but not limited to obligations to the other's own employees, their
wage/salaries, benefits, vacation pay, and the like.
10.3 FORCE MAJEURE. In the event that either party hereto shall be prevented
from the performance of any act required hereunder by reason of strikes,
lock-outs, labor troubles, inability to procure materials, failure of
power, restrictive governmental laws or regulations, riots, insurrection,
war, acts of God, force of nature, or other reasons of a like nature not
the fault of, or under the control of, the party delayed in performing
work or doing acts required under the terms of this AGREEMENT, then
performance of such act shall be excused for the periods of the delay and
the period for the performance of any such act shall be extended for a
period equivalent to the period of such delay, PROVIDED THAT the party
delayed in performing promptly gives written notice to the other party of
its ability to perform.
10.4 NO THIRD PARTY BENEFICIARIES. Except for PERSONS entitled to
indemnification under Article VI hereof, this AGREEMENT is for the sole
benefit of the parties hereto, and
15
nothing herein express or implied shall give or be construed to give to
any PERSON or entity, other than the parties hereto, any legal or
equitable rights hereunder.
10.5 AMENDMENTS. No amendment to this AGREEMENT shall be effective unless in
writing and signed by each party hereto.
10.6 WAIVER OF COMPLIANCE. Except as otherwise provided in this AGREEMENT, any
failure of any of the parties to comply with any obligation, covenant,
agreement or condition herein may be waived by the party entitled to the
benefits thereof only by a written instrument signed by the party,
granting such waiver, but such waiver or failure to insist upon strict
compliance with such obligation, covenant, agreement or condition shall
not operate as a waiver of, or estoppel with respect to, any subsequent or
other failure. Any consent given by any party pursuant to this AGREEMENT
shall be valid only if contained in a written consent signed by such
party. The parties acknowledge that certain Contracts (as defined in the
Asset Purchase Agreement) may include existing licenses of intellectual
property. To the extent such Contracts are assigned to LICENSEE, LICENSEE
shall enforce such Contracts in accordance with their terms and, to the
extent such Contracts permit, in accordance with the terms of this
Agreement. So long as LICENSEE is in compliance with the foregoing, TPC
acknowledges that TPC's claims against LICENSEE for damages or
indemnification arising from the acts or omissions of the sublicensees
under such Contracts shall be limited to the rights of recovery of
LICENSEE under such Contracts or applicable law.
10.7 COMMUNICATIONS BETWEEN PARTIES. All communications between the parties
relating to any disputes under this AGREEMENT shall be through and to
in-house and/or outside counsel only and such counsel shall only disclose
such communications to the parties to the extent permissible under
applicable antitrust laws.
10.8 NOTICES. All notices or other communications required or permitted to be
given hereunder shall be in writing and shall be delivered by hand or sent
by telecopy, or sent, postage prepaid, by registered, certified or express
mail or reputable overnight courier service and shall be deemed given when
delivered by hand or telecopied, three days after mailing (one (1)
business day in the case of guaranteed overnight express mail or
guaranteed overnight courier service), as follows (or at such other
address or to such other fax for a party as shall be specified by like
notice):
If to TPC:
General Counsel
General ▇▇▇▇▇, Inc.
Number ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Fax: ▇▇▇-▇▇▇-▇▇▇▇
16
If to LICENSEE:
General Counsel
International Multifoods Corporation
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
Fax: ▇▇▇-▇▇▇-▇▇▇▇
10.9 INTERPRETATION. The headings contained in this AGREEMENT, in any Schedule
hereto and in the table of contents to this AGREEMENT, are for reference
purposes only and shall not affect in any way the meaning or
interpretation of this AGREEMENT. The terms defined in the singular shall
have a comparable meaning when used in the plural, and vice versa. This
AGREEMENT shall be construed without regard to any presumption or rule
requiring construction or interpretation against the party drafting or
causing any instrument to be drafted. When a reference is made in this
AGREEMENT to sections or schedules, such reference shall be to a section
of or schedule to this AGREEMENT unless otherwise indicated. Whenever the
words "include," "includes" or "including" are used in this AGREEMENT,
they shall be deemed to be followed by the words "without limitation". The
phrases "the date of this AGREEMENT," "the date hereof" and terms of
similar import, unless the context otherwise requires, shall be deemed to
refer to the date set forth in the first paragraph of Schedule 1 to this
AGREEMENT. The words "hereof," "hereby," "herein," "hereunder" and similar
terms in this AGREEMENT shall refer to this AGREEMENT as a whole and not
to any particular Section or Article in which such words appear. All
references to dollar amounts shall be deemed to be references to U.S.
Dollars.
10.10 COUNTERPARTS. This AGREEMENT and any amendments hereto may be executed by
facsimile and in one or more counterparts, all of which shall be
considered one and the same agreement, and shall become effective when one
or more such counterparts have been signed by each of the parties and
delivered to the other party.
10.11 SEVERABILITY. If any provision of this AGREEMENT or the application of any
such provision to any PERSON or circumstance shall be held invalid,
illegal or unenforceable in any respect by a court of competent
jurisdiction, such invalidity, illegality or unenforceability shall not
affect any other provision hereof.
10.12 GOVERNING LAW. This AGREEMENT shall be governed by and construed in
accordance with the laws of the State of Minnesota applicable to
agreements made and to be performed entirely within such State, without
regard to the choice of law principles of such State.
10.13 ACTIONS AND PROCEEDINGS. TPC and LICENSEE hereby irrevocably consent to
the exclusive jurisdiction and venue of the Courts of the State of
Minnesota and the United States District Court for the District of
Minnesota, in connection with any action or proceeding arising out of or
relating to this AGREEMENT or the transactions
17
contemplated hereby. THE PARTIES WAIVE THEIR RESPECTIVE RIGHTS TO TRIAL
BY JURY.
10.14 SCHEDULES. All Schedules annexed hereto or referred to herein are hereby
incorporated in and made a part of this AGREEMENT as if set forth in full
herein.
10.15 SPECIFIC PERFORMANCE. LICENSEE and TPC hereby acknowledge, recognize and
agree that irreparable injury may result to the non-breaching party and
its business if the other party breaches any provision of this AGREEMENT
such that money damages alone would not be sufficient remedy for any such
breach. Each party hereto therefore agrees that if it should engage, or
cause or permit any other PERSON to engage, in any act in violation of any
provision hereof, the other party or parties shall be entitled, in
addition to such other remedies, damages and relief as may be available
under this AGREEMENT or applicable law, to an injunction prohibiting the
breaching party from engaging in any such act or specifically enforcing
this AGREEMENT, as the case may be.
10.16 ENTIRE AGREEMENT. Except to the extent otherwise contemplated herein, this
AGREEMENT, together with the ASSET PURCHASE AGREEMENT (and any Collateral
Agreements, as that term is defined in the ASSET PURCHASE AGREEMENT),
contains the entire agreement and understanding between the parties hereto
with respect to the subject matter hereof and, except to the extent
specifically set forth herein, supersedes all prior agreements and
understandings relating to such subject matter.
10.17 GUARANTY. GMI has made a Guaranty, dated as of the date hereof, with
respect to TPC's obligations hereunder, for the benefit of LICENSEE.
10.18. SURVIVAL. This AGREEMENT and the obligations and rights contained
herein shall survive a bankruptcy insolvency, or reorganization
pursuant to applicable bankruptcy laws or any change of control of TPC
or GMI.
18
IN WITNESS WHEREOF, the parties hereto have caused this AGREEMENT to be
duly executed in the manner appropriate to each.
INTERNATIONAL MULTIFOODS
THE PILLSBURY COMPANY CORPORATION
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, ▇▇. By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇
------------------------------ ------------------------------
Title: Vice President Title: Chairman of the Board,
President & CEO
Date: November 13, 2001 Date: November 13, 2001
19
RETAIL
TRADEMARK LICENSE AGREEMENT
SCHEDULE 1
1. EFFECTIVE DATE (Section 2.1): November 13, 2001.
2. TERM (Section 2.1): twenty (20) years royalty-free; renewable on a
royalty-free basis in accordance with Section 2.2 (except as set forth
below for the SHORT-TERM TRADEMARKS (as defined below)).
3. MARKS (Section 1.1):
- PILLSBURY (including the Barrelhead logo reproduced below and the
PILLSBURY marks and logos identified on Schedule 2).
[PILLSBURY LOGO]
- The word DOUGHBOY, the Doughboy character, the Doughboy marks identified
on Schedule 2, and the Doughboy "giggle" (the "DOUGHBOY MARKS").
- Any marks or trade dress (other than those marks set forth above)
appearing on any Inventory or Other Business Inventory (in each case,
including product packaging) (as these terms are defined in the ASSET
PURCHASE AGREEMENT) (the "MARKED INVENTORY") which are not transferred to
LICENSEE pursuant to the ASSET PURCHASE AGREEMENT (the "SHORT-TERM
TRADEMARKS"); PROVIDED, HOWEVER, that with respect to the SHORT-TERM
TRADEMARKS, (a) the license is non-exclusive, and (b) the scope of the
license is limited to selling such MARKED INVENTORY for a period of not
more than twenty-four (24) months without altering or modifying such
MARKED INVENTORY, or removing such SHORT-TERM TRADEMARKS, and LICENSEE
shall not use such SHORT-TERM TRADEMARKS in any other manner without the
prior written consent of TPC.
- The marks ▇▇▇▇▇▇▇, CREAMY SUPREME, FUNFETTI, FUNFISH FUNFETTI, CONFETTI
FUNFETTI, FUNFETTI CAKE MIX, MOIST SUPREME, TUNNEL OF FUDGE, FUN
CELEBRATIONS MADE EASY and TUNNEL OF LEMON, including any stylized or logo
versions thereof (applicable only to portions of the LICENSED TERRITORY
outside of the United States because in the United States these marks have
been assigned to LICENSEE).
- LICENSEE shall also have the non-exclusive right to use the ▇▇▇▇ BAKE-OFF
in connection with its participation in TPC's consumer promotional
"Bake-Off event"; such
20
participation shall provide LICENSEE products with access (equal to the
level of access historically provided to the PRODUCTS) to the Bake-Off
event so long as TPC continues such Bake-Off event and LICENSEE pays for
an allocable share of the cost to TPC to provide LICENSEE with such access
to the extent that LICENSEE elects to participate in the event. LICENSEE's
trade programs for the Bake-Off event and any other potentially
competitively sensitive information shall not be disclosed to TPC but
instead shall be sent directly to the retailer for incorporation into the
Bake-Off event. All of the parties respective rights and obligations with
regard to the provisions of this paragraph are set forth in greater detail
in the attached Schedule 3.
4. ACQUIRED PRODUCT CATEGORIES (Section 1.1):
PILLSBURY/BARRELHEAD MARKS DOUGHBOY MARKS
-------------------------- --------------
A. The general kind and type of food products and A. The general kind and type of food products
baking accessories customarily sold in and baking accessories customarily sold in
shelf-stable baking categories of retail shelf-stable baking categories of retail
supermarkets as of the date of this Agreement supermarkets as of the date of this Agreement
(including innovations that result in such (including innovations that result in such
kind or type of products or accessories), kind or type of products or accessories),
regardless of where such products may in the regardless of where such products may in the
future be displayed, including without future be displayed, including without
limitation: limitation:
- Cake mixes - Cake mixes
- Ready-to-spread frosting - Ready-to-spread frosting
- Dry mix frosting - Dry mix frosting
- Brownie mixes - Brownie mixes
- Dessert bar mixes - Dessert bar mixes
- Muffin mixes - Muffin mixes
- Cookie mixes - Cookie mixes
- Quick bread mixes - Quick bread mixes
- Scone mixes - Scone mixes
- Popover mixes - Popover mixes
- Cornbread mixes - Cornbread mixes
- Yeast bread mixes - Yeast bread mixes
- Cake donut mixes - Cake donut mixes
- Biscuit mixes - Biscuit mixes
- Flour - Flour
- Gravy mixes* - Gravy mixes
- Hot roll mixes - Hot roll mixes
- Gingerbread mixes - Gingerbread mixes
- White bread machine mixes - White bread machine mixes
- Wheat bread machine mixes - Wheat bread machine mixes
- Other shelf-stable baking mixes - Other shelf-stable baking mixes
- Cake decorations - Cake decorations
21
PILLSBURY/BARRELHEAD MARKS DOUGHBOY MARKS
-------------------------- --------------
- Food coloring - Food coloring
- Gelatin (flavored and unflavored) - Gelatin (flavored and unflavored)
- Pudding mixes - Pudding mixes
- Cheesecake mixes - Cheesecake mixes
- Shelf-stable pie crusts - Shelf-stable pie crusts
- Pie crust mixes - Pie crust mixes
- Sugar* (granulated, ▇▇▇▇▇, powdered) - Sugar (granulated, ▇▇▇▇▇, powdered)
- Sugar substitutes - Sugar substitutes
- ▇▇▇▇▇▇ cracker crumbs - Baking soda
- Baking soda - Baking powder
- Baking powder - Corn starch
- Corn starch - Molasses
- Molasses - Corn syrup
- Corn syrup - Cocoa
- Cocoa - ▇▇▇▇▇▇ cracker crumbs
- Nuts - Nuts
- Almond paste/marzipan - Almond paste/marzipan
- Salt - Salt
- Salt substitutes - Salt substitutes
- Pepper - Pepper
- Spices, herbs, seeds and flavorings (vanilla - Spices, herbs, seeds and flavorings (vanilla
extract, etc.) extract, etc.)
- Specialty grains (millet, cracked wheat, wheat - Specialty grains (millet, cracked wheat, wheat
bran, etc.) bran, etc.)
- Corn meal - Corn meal
- Grits - Grits
- Baking chips - Baking chips
- Baking chocolate - Baking chocolate
- Almond bark - Almond bark
- Yeast - Yeast
- Candied fruit - Candied fruit
- Dried fruit (prunes, raisins, etc.) - Dried fruit (prunes, raisins, etc.)
- Canned pie filling - Canned pie filling
- Coconut (shredded or flaked) - Coconut (shredded or flaked)
- Marshmallows - Marshmallows
- Powdered milk - Powdered milk
- Condensed/evaporated milk - Condensed/evaporated milk
- Shortening and cooking sprays - Shortening and cooking sprays
- Oils (olive, peanut, canola, etc.) - Oils (olive, peanut, canola, etc.)
- Other shelf-stable ingredients used by consumers - Other shelf-stable ingredients used by consumers
for home baking of desserts & breads for home baking of desserts & breads
- Disposable muffin/cupcake cup liners** - Disposable muffin/cupcake cup liners**
- Disposable bakeware (turkey roasting - Disposable bakeware (turkey roasting pans, etc.)
22
PILLSBURY/BARRELHEAD MARKS DOUGHBOY MARKS
-------------------------- --------------
pans, etc.)
- Cakepans, cookie sheets, muffin tins, and - Cakepans, cookie sheets, muffin tins, and utensils
utensils used for home baking** used for home baking**
- Parchment paper for baking - Parchment paper for baking
B. Other: Acquired Product Categories Exclusion:
---------- --------------------------------------
- Shelf-stable potatoes It being understood and agreed that products
- Farmhouse-Registered Trademark- brand that contain dough and baked goods that are ready-to-eat
shelf-stable rice and pasta side dish kits are excluded.
- Pancake and waffle mixes
- Pancake and waffle syrup
Acquired Product Categories Exclusion:
--------------------------------------
It being understood and agreed that products
that contain dough and baked goods that are
ready-to-eat are excluded.
* Items are currently exclusively licensed to a third party; for such items,
TPC shall not renew or extend any license relating to such goods unless TPC
is contractually obligated to do so, and TPC shall give notice to terminate
if required, and rights to such items shall automatically be granted to
LICENSEE pursuant to the terms hereof upon expiration or termination of such
third party license. All existing royalty streams for these items will be
assigned to LICENSEE.
** Items are currently non-exclusively licensed to a third party; for such
items, TPC will not renew or extend any license relating to such goods unless
TPC is contractually obligated to do so, and TPC shall give notice to
terminate if required, and LICENSEE will receive an immediate non-exclusive
license to such items which will automatically convert to an exclusive
license pursuant to the terms hereof upon expiration or termination of such
third party licenses. All existing royalty streams for these items will be
assigned to LICENSEE.
5. CHANNELS OF DISTRIBUTION (Section 1.1):
- Exclusive rights for sale to customers reselling (directly or
indirectly) to consumers through all types of retail stores (including
mass merchandisers and club stores), and including internet sales. For
purposes hereof, "internet sales" means sales which take place, in
whole or in part, through a consumer's use of an existing or future
electronic communications network (E.G., the internet, online services,
personal digital assistants, telephone shopping, cellular phones) which
does not require the consumer to be physically present in a
brick-and-mortar retail location.
- All foodservice channels excluded.
6. LICENSED TERRITORY (Section 1.1): The United States of America,
including its territories, possessions, commonwealths (including Puerto
Rico), trusteeships, and retail
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outlets in non-domestic United States government installations and
facilities, PROVIDED THAT to the extent that LICENSEE sells (directly
or indirectly) to U.S.-based retailers (including mass merchandisers
and club store customers) who as of the EFFECTIVE DATE or thereafter
have stores in Mexico or Canada, LICENSEE may grant to such retailers
the non-exclusive right to ship BRANDED PRODUCTS to such stores and to
sell such BRANDED PRODUCTS in such stores located in Mexico and Canada.
To the extent that LICENSEE grants such rights to such retailers,
LICENSEE also shall have the non-exclusive right to ship BRANDED
PRODUCTS directly or indirectly to such stores. If recordation of a
trademark license agreement, registered user agreement, or similar
agreement in the United States, Mexico or Canada is required or deemed
advisable for the protection of the PROPERTY in the United States,
Mexico or Canada, the parties agree to execute an appropriate short
form agreement for such purposes.
For the sole purpose of manufacturing and packaging PRODUCTS for
sales within the LICENSED TERRITORY set forth above in this Section 6
(together with "creating" promotional and marketing materials related
thereto), the LICENSED TERRITORY shall also include Canada.
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RETAIL
TRADEMARK LICENSE AGREEMENT
SCHEDULE 2
LIST OF REGISTRATIONS FOR MARKS COVERING GOODS
INCLUDED IN THE DEFINITION OF PRODUCTS
TRADEMARK STATUS JURIS. REG/APP REG/APP GOODS
NO. Date
PILLSBURY Registered US 698,691 31-May-60 Wheat flour; refrigerated doughs for the
making of biscuits, rolls, cookies and the
like; prepared mixtures for the making of
cakes, cookies, brownies, gingerbread, pie
crust, rolls, frosting, pancakes, waffles
and the like
PILLSBURY Registered CA 49,964 18-Nov-54 Cake mixes, hot roll mixes, pancake mixes,
pie crust mixes and gingerbread mixes
PILLSBURY Application CA 893,740 19-Oct-98 Flour
PILLSBURY Registered MX 325,402 27-May-87 All kinds of food products and the
ingredients therefor, including flour,
prepared mixtures for making cakes,
frosting, cookies, crackers, bread, pie
crust, pancakes; refrigerated doughs for
making rolls
PILLSBURY (stylized) Registered US 45,179 8-Aug-05 Flour made from wheat
PILLSBURY (design) Registered US 1,308,199 4-Dec-84 Dried beans, dried peas, processed
lentils, rice and pearl barley, and
unpopped popcorn
PILLSBURY (design) Registered US 1,045,679 10-Aug-76 Packaged mixes for potatoes; fortified and
flavored instant food beverage;
refrigerated dough products, namely fresh
dough, biscuits, sweet rolls, cornbread,
cookies and turnover pies; packaged mixes
for preparing cake, frosting, pancakes,
waffles, pie crust, coffee cake,
gingerbread, cupcakes, brownies,
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breads, rolls and gravy
PILLSBURY (design) Registered US 1,333,501 30-Apr-85 Flour and flour-based mixes made from
cereal grains or blends thereof
PILLSBURY (design) Registered CA 211,577 16-Jan-76 Cake and dessert mixes; frozen and/or
refrigerated dough products; cake
decorating kit including instruction
booklet, decorating tools, and icing
colours; dietetic foods, namely
nutritionally balanced food sticks and
diet meal bars; fruit preserves, packaged
mixes for potatoes, fortified and flavored
instant food beverage, processed
(breakfast cereal), frosting, pancakes,
waffles, pie crust, coffee cake,
gingerbread, cupcakes, brownies, breads,
rolls, gravy powders for preparing soft
drinks; synthetic sweeteners
PILLSBURY (design) Registered MX 390,551 19-Feb-91 Goods and ingredients of food including
flour; prepared mixtures for making cakes,
frosting, cookies, crackers, bread, pie
crust and pancakes; refrigerated dough for
making rolls, biscuits, cookies, etc.
PILLSBURY and Dotted Swiss Registered US 1,663,023 29-Oct-91 Complete line of dessert mixes, namely
(design) cake mix, quick bread mix, brownie mix,
hot rolls mix, pie crust mix and canned
frosting
PILLSBURY'S Registered US 382,934 19-Nov-40 Flour made from wheat
PILLSBURY'S Registered US 441,193 2-Nov-48 Wheat flours, namely enriched phosphated
flour and enriched self-rising flour
PILLSBURY(`S) (stylized) Registered US 563,259 26-Aug-52 Wheat flour, ▇▇▇▇▇▇, rye flour; prepared
mixtures of flour with other ingredients
for the making of cakes and other leavened
and unleavened baked goods
PILLSBURY'S (and design) Registered US 45,182 8-Aug-05 Flour made from wheat
PILLSBURY'S BEST (and design) Registered US 45,180 8-Aug-05 Flour made from wheat
26
PILLSBURY BEST (wheat design) Registered US 1,818,089 25-Jan-94 Flour
PILLSBURY'S BEST (stylized) Registered US 552,213 18-Dec-51 Wheat flour
PILLSBURY'S BEST XXXX (and Registered US 382,933 19-Nov-40 Flour made from wheat
design)
PILLSBURY'S BEST XXXX Registered US 551,940 11-Dec-51 Wheat flour
(stylized)
PILLSBURY'S BEST XXXX FLOUR Registered US 385,055 11-Feb-41 Flour made from wheat, self-rising flour
▇▇▇▇▇▇▇▇▇'▇ ▇▇▇ DEL NORTE Registered US 216,568 17-Aug-26 Flour made from wheat
(and design)
DOUGHBOY Published US 78/018,403 26-Jul-00 Baking mix for cake
DOUGHBOY (design - pos.1) Registered US 1,669,633 24-Dec-91 Dry mixes, namely cake mix, brownie mix,
gingerbread mix, pie crust mix, hot roll
mix, quick bread mix and canned frosting
DOUGHBOY (design - pos.1) Registered US 1,830,866 12-Apr-94 Ready-to-eat bakery goods
DOUGHBOY (design - pos.2) Registered US 1,671,946 14-Jan-92 Dry mixes, namely cake mix, brownie mix,
gingerbread mix, pie crust mix, hot roll
mix, quick bread mix and canned frosting
DOUGHBOY (design - pos.4) Registered US 1,671,945 14-Jan-92 Dry mixes, namely cake mix, brownie mix,
gingerbread mix, pie crust mix, hot roll
mix, quick bread mix and canned frosting
DOUGHBOY (design - pos.5) Registered US 1,671,944 14-Jan-92 Dry mixes, namely cake mix, brownie mix,
gingerbread mix, pie crust mix, hot roll
mix, quick bread mix and canned frosting
DOUGHBOY (design - pos.7) Registered US 1,073,723 20-Sep-77 Wheat flour; mixes for preparing sweet
bread, pie crust, cakes, frosting,
gingerbread and coffee cake
DOUGHBOY (design - pos.14) Registered US 2,404,844 14-Nov-00 Dry baking mixes and refrigerated dough
DOUGHBOY (design - pos.1) Registered MX 426,995 2-Dec-92 Coffee, tea, cocoa, sugar, rice, tapioca,
sago, coffee, substitutes, flour and meals
and cereal preparations,
27
bread, pastry and confections, edible ices,
honey, molasses syrup, yeasts and baking
powders, salt, mustard, vinegar, sauces
(except salad dressings), etc.
DOUGHBOY (design - pos.2) Registered MX 426,912 1-Dec-92 Coffee, tea, cocoa, sugar, rice, tapioca,
sago, coffee, substitutes, flour and meals
and cereal preparations, bread, pastry and
confections, edible ices, honey, molasses
syrup, yeasts and baking powders, salt,
mustard, vinegar, sauces (except salad
dressings), etc.
DOUGHBOY (design - pos.4) Registered MX 426,911 1-Dec-92 Coffee, tea, cocoa, sugar, rice, tapioca,
sago, coffee, substitutes, flour and meals
and cereal preparations, bread, pastry and
confections, edible ices, honey, molasses
syrup, yeasts and baking powders, salt,
mustard, vinegar, sauces (except salad
dressings), etc.
DOUGHBOY (design - pos.5) Registered MX 426,910 1-Dec-92 Coffee, tea, cocoa, sugar, rice, tapioca,
sago, coffee, substitutes, flour and meals
and cereal preparations, bread, pastry and
confections, edible ices, honey, molasses
syrup, yeasts and baking powders, salt,
mustard, vinegar, sauces (except salad
dressings), etc.
DOUGHBOY (design - pos.9) Registered MX 356,036 29-Nov-88 Refrigerated dough products, namely dough
for making brownies, cookies and fruit
turnovers, and in general all kinds of
foods products and the ingredients therefor
DOUGHBOY POINTS Published US 75/887,236 4-Jan-00 Pastries, namely, frozen pastries, frozen
breakfast pastries, pastry filled with
eggs and meat and/or cheese, puff pastry
with fruit and other flavor fillings,
pastry products with fruit fillings;
waffles, namely, frozen waffles; mixes for
making bakery
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goods, namely, flour-based mixes for making
bakery goods, cake mixes, brownie mixes,
gingerbread mixes, hot roll and quick bread
mixes; pies, namely, pie crusts; frostings,
namely prepared frostings; bakery goods and
frozen confections; dough, namely refrigerated
and frozen dough; bread, buns and rolls
DOUGHBOY DIPPERS Application US 78/012,693 14-Jun-00 Food products
* Key for "Juris." column:
US - United States
CA - Canada
MX - Mexico
For the avoidance of doubt, the parties acknowledge that some of the above
registrations also cover some goods that are NOT included in the definition of
PRODUCTS, and nothing in this schedule shall be interpreted to modify or broaden
the definition of PRODUCTS or the scope of the license granted in this
AGREEMENT.
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RETAIL
TRADEMARK LICENSE AGREEMENT
SCHEDULE 3
BAKE-OFF PROMOTION TERMS
1. BAKE-OFF PROMOTION
LICENSEE may participate in any promotional event executed by TPC using
the term BAKE-OFF and the Pillsbury trademark involving a recipe contest
using a given set of TPC products (the "Promotion"), subject to the terms
and conditions set forth in this Schedule 3 and consistent with the terms
and conditions of this AGREEMENT. For purposes of this Schedule 3,
references to LICENSEE shall be deemed to include LICENSEE's AFFILIATES.
2. PARTICIPATION IN THE PROMOTION
TPC shall provide written notice to LICENSEE of its intention to execute
each Promotion, together with a detailed description of all material
aspects of such Promotion and statement of the cost to LICENSEE for each
LICENSEE PRODUCT incorporated into such Promotion. Cost shall be allocated
(the "ALLOCATED COST") based upon the relative number of TPC and LICENSEE
PRODUCTS incorporated into such Promotion to the extent that LICENSEE
elects to participate and TPC shall provide a good-faith estimate (the
"COSTS ESTIMATE") of the timing and amount of such costs. LICENSEE shall
have thirty (30) days to provide TPC, in writing, notice of its decision
to participate in such Promotion, together with a listing of the LICENSEE
PRODUCTS to be included in the Promotion and a check payable to TPC in the
amount required by the TPC notice. In connection with the foregoing
sentence, LICENSEE shall only be required to pay TPC in the amounts and at
the times consistent with the COSTS ESTIMATE. TPC and LICENSEE shall act
promptly and in good faith to "true-up" such amounts, so that, to the
extent LICENSEE pays TPC more than the ALLOCATED COST, TPC will pay
LICENSEE the amount of any such excess and to the extent LICENSEE pays TPC
less than the ALLOCATED COST, LICENSEE will pay TPC the amount of any such
deficit. The number of LICENSEE PRODUCTS listed shall not exceed a number
which is generally consistent with the average number of such LICENSEE
PRODUCTS included in Promotions in the last five (5) years when such
products were part of the TPC portfolio of PRODUCTS. TPC shall be
responsible for development and distribution of all consumer materials in
connection with the Promotion, which materials shall (a) incorporate the
LICENSEE PRODUCTS identified in the LICENSEE notice of participation and
shall do so in a manner consistent with such LICENSEE PRODUCTS'
incorporation into such materials when they were part of the TPC portfolio
of PRODUCTS and (b) be subject to the prior consent of LICENSEE (which
consent is not to be unreasonably withheld or delayed) to the extent such
materials relate to the LICENSEE PRODUCTS. The consumer materials shall
comply in all respects with the terms and conditions of this AGREEMENT.
All consumer entries relating to the LICENSEE PRODUCTS shall be forwarded
to LICENSEE for handling and response consistent with the Promotion rules
provided to the consumer.
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3. TRADE MATERIALS
Each party will develop, at its own expense, its trade materials used in
connection with each Promotion. LICENSEE shall send its trade materials
directly to retailers, as appropriate, without prior review by TPC, but
such trade materials shall comply in all respects with the terms and
conditions of this AGREEMENT.
4. COVENANTS AND USE OF TRADEMARKS
For purposes of LICENSEE's participation in each Promotion, the BAKE-OFF
trademark (including all logos or stylized versions) shall be included in
the PROPERTY licensed to LICENSEE under this AGREEMENT. For purposes of
being included in each Promotion, LICENSEE grants to TPC a royalty-free,
non-exclusive license to use and display such marks of LICENSEE as
LICENSEE may designate, such use to be limited solely to the Promotion
contemplated hereby and any advertising or other promotional activities
relating thereto and shall comply in all respects with the terms and
conditions of this AGREEMENT. The parties acknowledge that every use of
the other party's trademarks shall inure to the benefit of the other party
and that the provisions of this paragraph do not convey to a party any
right, title or ownership interest in the other party's trademarks.
5. REPRESENTATIONS AND WARRANTIES
Each party represents and warrants that its products, services and
performance in connection with each Promotion shall comply with all
applicable federal, state, and local laws and regulations.
6. All activities of the parties in connection with each Promotion shall be
governed by the terms and conditions of this AGREEMENT, including the
handling of consumer inquiries and complaints and the parties' respective
obligations of indemnification.
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