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EXHIBIT 10.3
TRADEMARK AGREEMENT
THIS TRADEMARK AGREEMENT dated as of the 31st day of January,
1997, is by and among Ralcorp Holdings, Inc., a Missouri corporation
("Ralcorp"), New Ralcorp Holdings, Inc., a Missouri corporation wholly owned by
Ralcorp ("New Ralcorp"), and Chex Inc., a Delaware corporation ("Branded
Subsidiary").
W I T N E S S E T H:
WHEREAS, Ralcorp, and General ▇▇▇▇▇, Inc., a Delaware
corporation ("Acquiror"), and General ▇▇▇▇▇ Missouri, Inc., a Missouri
corporation and a wholly owned subsidiary of Acquiror ("Merger Sub"), have
entered into an Agreement and Plan of Merger dated August 13, 1996 (as amended
from time to time, the "Merger Agreement") pursuant to which Merger Sub is
being merged with and into Ralcorp immediately after the consummation of the
transactions contemplated hereby (the "Merger"); and
WHEREAS, in connection with the Merger, the parties hereto
desire to transfer or license certain intellectual property assets to each
other on the terms and conditions set forth in (i) that certain Technology
Agreement by and between Ralcorp, New Ralcorp and Branded Subsidiary dated as
of the date hereof (the "Technology Agreement") and (ii) this Agreement;
NOW, THEREFORE, in consideration of the mutual covenants
herein contained and for other good and valuable consideration, the parties
agree as follows:
1. Definitions
a. The term "Trademarks" shall mean and include trademark(s),
service ▇▇▇▇(s), trade dress, and copyright(s) and all
registrations and applications for registrations relating
thereto; however, the term "trademark" shall mean only a word,
symbol or device registrable as a trademark under the
trademark laws.
b. The term "Designated Products" shall mean cereals, cereal
based snacks and snack mixes, and products which are identical
to or substantially similar in form or in overall appearance
to those products, which have been offered for sale in
connection with any form of the CHEX trademark or the COOKIE
CRISP trademark prior to the date hereof, whether or not any
of such products are (i) similar in flavor to those products
which have been offered for sale in connection with such
trademarks or (ii) used in association with ingredients (e.g.,
raisins) different from the ingredients used in the products
which have been offered for sale in connection with such
trademarks; provided, however, that this term shall not
include the hexagonally
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shaped products currently sold under the CRISPY HEXAGON
designation or those wheat cereals denominated or described as
SHREDDED WHEAT and similar in nature to other shredded wheat
products currently offered by other cereal manufacturers.
c. The term "Private Label Trademark(s)" shall mean those
trademarks and trade names owned by a grocery retailer, a
wholesaler, or broker, which is not a cereal producer or
primarily in the cereal business, which are used by such
persons or entities to identify grocery products sold by such
parties or entities and in which New Ralcorp (as successor by
merger to ▇▇▇▇▇▇▇ Foods, Inc. ("Foods")) and its Affiliates
have no rights, except for the right to produce products
utilizing such Trademarks and trade names for such parties or
entities or their licensees, but which shall not, in any
event, include any Trademark or trade name described in
Section 2(d)(i) or Section 2(d)(ii) hereinbelow.
d. The term "Reorganization Agreement" shall mean the Agreement
by this name dated as of the date hereof by and among Ralcorp,
New Ralcorp, Foods, Branded Subsidiary, and Acquiror.
e. The term "Control Brand" shall mean those Trademarks and trade
names which (i) are utilized by New Ralcorp and/or its
subsidiaries on a line of products, the vast majority of which
are sold utilizing Private Label Trademarks, which are
typically offered by New Ralcorp to re-sellers of grocery
products who normally do not utilize their own Private Label
Trademarks on such grocery products, in lieu of a Private
Label Trademark on such products and (ii) New Ralcorp and/or
its subsidiaries do not themselves advertise to consumers.
f. All other capitalized terms used but not otherwise defined
herein shall have the meanings ascribed thereto in the
Reorganization Agreement.
2. Trademark Assignments and Licenses
a. New Ralcorp on behalf of itself and its subsidiaries, other
than Branded Subsidiary, hereby assigns and agrees to cause
any applicable subsidiaries to assign, effective as of the
Distribution Date, to the Branded Subsidiary all of New
Ralcorp's and its subsidiaries' rights, title and interest,
together with all of the goodwill associated therewith, in (i)
the Trademarks and recipe names listed on Schedule 2(a)
attached hereto and registrations and applications for
registrations related to the trademarks listed in Schedule
2(a), and (ii) any other Trademarks, other than the ▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇ FOODS, and red, stylized R trademarks (collectively,
the "▇▇▇▇▇▇▇ Trademarks") and the SUN FLAKES and SPIDERMAN
Trademarks, previously used or currently owned by New Ralcorp
or licensed to New Ralcorp (as successor by merger to Foods)
or its subsidiaries which are or have been almost always
associated with the Branded Business or intended almost always
for use therein (collectively, the Trademarks described in
this Section 2(a) constitute the "Branded
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Trademarks"). New Ralcorp hereby grants (without assuming any
liability, as to Puerto Rico, that may arise as a result of or
in connection with such grant, including, without limitation,
with respect to the Distributorship Agreement), effective as
of the Distribution Date, to Branded Subsidiary a
non-exclusive royalty free right to use the ▇▇▇▇▇▇▇ Trademarks
in the United States, its territories and possessions and the
Commonwealth of Puerto Rico and military installations on any
product packaging, promotional or advertising materials for a
period of one (1) year following the Distribution Date;
provided however, that such term may be extended (for a period
of no more than one (1) additional year) for the purpose of
permitting the Branded Subsidiary to use, sell or otherwise
dispose of product packaging and advertising or promotional
materials that remain on hand on the one year anniversary of
the Distribution Date. The Branded Subsidiary, on behalf of
itself and its Affiliates and subsidiaries, hereby agrees that
it will (i) make reasonable efforts to conclude the use of
such product packaging and promotional and advertising
materials by the one year anniversary of the Distribution Date
and (ii) not place any orders for such product packaging and
advertising or promotional materials at any time after the one
year anniversary of the Distribution Date. Nothing herein
shall prevent the Branded Subsidiary from ordering such
product packaging and promotional and advertising materials
within the initial one (1) year period following the
Distribution Date.
b. Ralcorp hereby assigns to New Ralcorp all of Ralcorp's rights,
title and interest, together with all the goodwill associated
therewith, in and to (i) the trademarks listed on Schedule
2(b) attached hereto and registrations and applications for
registrations related thereto and (ii) any other Trademarks
owned by Ralcorp, other than the Branded Trademarks
(collectively, the Trademarks described in this Section 2(b)
constitute the "Other Trademarks").
c. Each of Ralcorp and the Branded Subsidiary hereby acknowledge
and agree that New Ralcorp, or its Affiliates and
subsidiaries, will retain, and that neither Ralcorp, nor the
Branded Subsidiary will have any rights in the Other
Trademarks, except, as otherwise provided in Section 2(a),
with respect to use of the ▇▇▇▇▇▇▇ Trademarks.
d. New Ralcorp, on behalf of itself and its Affiliates hereby
acknowledges and agrees that neither it nor any of them will
retain nor will they have any rights to the Branded
Trademarks. For the respective periods set out below, New
Ralcorp, on behalf of itself and its present and future
Affiliates, further agrees, and shall cause such Affiliates to
agree, that New Ralcorp and such Affiliates shall not directly
or indirectly use (including, without limitation, any use in
connection with any Private Label Trademark or Control Brand
products, any contract packing arrangement or otherwise in
connection with producing product for third parties),
register, seek to register, license or otherwise grant rights
in any of the following Trademarks or statements, as the case
may be, in any state, country or territory anywhere in the
world:
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(i) the Branded Trademarks and any Trademarks or
trade names confusingly similar to any of such
Branded Trademarks, including, with respect to
cereals and snack mixes, without any limitation of
the generality of the foregoing, any one syllable
Trademark or trade name concluding with an "EX" type
sound; provided, however, that nothing in this
Agreement shall prevent New Ralcorp or its Affiliates
from using (A) the Branded Trademarks in connection
with any legally permissible comparative advertising
or (B) the word "mix" in or in connection with any
Trademark or trade name otherwise permitted to be
used hereunder for any cereal, snack mix or snack mix
recipe;
(ii) with respect to the Designated Products, (A)
PURINA, CHECKERBOARD, any checkerboard or checkered
logo or symbol, and any Trademarks or trade names
confusingly similar to any of the foregoing
trademarks or (B) any statement which indicates (x)
that any CHEX-type ready to eat cereal Designated
Products were produced at any time prior to the
Distribution Date or (y) that any other Designated
Products were produced at any time prior to the date
which is 18 months after the Distribution Date, in
either case (x) or (y), by ▇▇▇▇▇▇▇ Purina Company
("RP Co.") or Foods or New Ralcorp or their
Affiliates; and
(iii) with respect to the Designated Products, any
trademarks or trade names, other than Private Label
Trademarks.
The obligations set forth in Section 2(d)(i) shall continue
and remain in effect as long as the Branded Subsidiary and its
Affiliates, successors in interest, assigns and licensees
shall not have abandoned all use of the applicable Branded
Trademark and all Trademarks confusingly similar thereto and
all registrations for such applicable Branded Trademark and
all Trademarks confusingly similar thereto shall not have
expired. The obligations set forth in Section 2(d)(ii) shall
continue and remain in effect as long as the Branded
Subsidiary and its Affiliates, successors in interest, assigns
and licensees shall not have permanently discontinued (which
shall be deemed to have occurred if any such Designated
Product shall not have been offered for sale for a period of
two (2) consecutive years or more unless such discontinuance
is a result of a force majeure event) offering all products
which are identical to or substantially similar to the
applicable Designated Product. The obligations set forth in
Section 2(d)(iii) shall continue and remain in effect for a
period of three (3) years from the Distribution Date;
provided, however, that (A) commencing two (2) years after the
Distribution Date, New Ralcorp shall have the right to use the
▇▇▇▇▇▇▇ Trademarks as a Control Brand (provided that all
requirements of Section 2(d)(i) and Section 2(d)(ii) are met),
and any other Control Brands which otherwise comply with the
requirements of this Section 2(d), in connection with any
Designated Product, and (B) commencing three (3) years after
the Distribution Date, New Ralcorp shall have the right to use
the ▇▇▇▇▇▇▇ Trademarks in connection with the Designated
Products (without limiting its rights
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to use the ▇▇▇▇▇▇▇ Trademarks on any other products) only as a
house brand in the same manner as it does for its other cereal
products and only on the conditions that the ▇▇▇▇▇▇▇
Trademarks are less prominently displayed than the primary
trademark or product name in all uses on the principal display
panels of the products and in advertising thereof, and the
other requirements of Section 2(d)(i) and Section 2(d)(ii) are
otherwise satisfied and the ▇▇▇▇▇▇▇ Trademarks shall not be
used as part of the product name. Notwithstanding the
foregoing, the restrictions contained in Section 2(d)(iii)
hereinabove shall not in and of themselves restrict in any
manner whatsoever, the use of any pre-existing Trademarks or
Trademarks confusingly similar thereto, in the business of any
third party which may acquire New Ralcorp or its Affiliates
through a merger, consolidation or other acquisition
transaction. All of the foregoing provisions of this
paragraph (d) are subject to the terms of the Technology
Agreement which shall control in the event of any conflict,
difference or ambiguity existing between this Agreement and
the Technology Agreement.
e. All assignments made pursuant to this Trademark Agreement by
Ralcorp are on a quitclaim basis. All grants and assignments
made by New Ralcorp are made on the same basis as set forth in
the Merger Agreement and the Reorganization Agreement with
respect to Intellectual Property. The Branded Subsidiary
hereby acknowledges that it has assumed limitations,
undertakings and liabilities related to the Branded Trademarks
pursuant to, and in accordance with, the terms of the
Reorganization Agreement, including, without limitation, such
limitations, undertakings and liabilities arising out of that
certain Trademark Agreement dated as of March 31, 1994 (which
has not been amended since such date other than the amendment
dated March 28, 1995) by and between Ralcorp and ▇▇▇▇▇▇▇
Purina Company (the "Prior Trademark Agreement") which
agreement is attached hereto as Exhibit A. New Ralcorp hereby
acknowledges that it has assumed limitations, undertakings and
liabilities related to the Other Trademarks pursuant to, and
in accordance with, the terms of the Reorganization Agreement,
including, without limitation, the limitations, undertakings
and liabilities arising out of the Prior Trademark Agreement.
f. U.S. and Canadian assignments in recordable form, as
applicable, relating to the Branded Trademarks shall be
delivered effective as of the Distribution Date to the Branded
Subsidiary at Closing. To the extent registrations and/or
applications relating to the Branded Trademarks exist in more
than one country, a single multi-country assignment shall be
delivered effective as of the Distribution Date to the Branded
Subsidiary at Closing. At the Branded Subsidiary's request
and expense, separate country-specific assignments will be
delivered to the Branded Subsidiary or its designee at a
reasonable time following each such request. All taxes,
transfer fees and other costs required to record title to the
Branded Trademarks shall be borne by the Branded Subsidiary.
g. U.S. and Canadian assignments in recordable form, as
applicable, relating to the Other Trademarks shall be
delivered effective as of the Distribution Date to New
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Ralcorp at Closing. To the extent registrations and/or
applications relating to the Other Trademarks exist in more
than one country, a single multi-country assignment shall be
delivered effective as of the Distribution Date to New Ralcorp
at Closing. At New Ralcorp's request and expense, separate
country-specific assignments will be delivered to New Ralcorp
at a reasonable time following each such request. All taxes,
transfer fees and other costs required to record title to the
Other Trademarks shall be borne by New Ralcorp.
h. If for any reason a Trademark required to be assigned to the
Branded Subsidiary hereunder cannot be assigned without also
assigning rights used in or associated with businesses not
related to the Branded Business, the parties will work
together in good faith to accomplish the goal that such
Trademark will reside in the Branded Subsidiary, or its
designee, for Branded Business purposes and, if for any
reason, a Trademark required to be assigned to New Ralcorp
hereunder cannot be assigned without also assigning rights
used in or associated with the Branded Business, the parties
will work together in good faith to accomplish the goal that
such Trademark will reside in the Branded Subsidiary for
purposes of the Branded Business and in New Ralcorp or its
designee for other purposes.
3. License Agreements and Contracts.
a. To the extent assignable without third-party consent, and, if
not, to the extent such consents have been obtained
heretofore, the license agreements and contracts listed on
Schedule 3(a) attached hereto (which Schedule 3(a) shall
include all license agreements and contracts related to the
Branded Trademarks, including those that may have been entered
into from and after August 13, 1996, in accordance with the
terms of the Merger Agreement) and related to the rights in
the Branded Trademarks between New Ralcorp and unaffiliated
third parties are hereby assigned, effective as of the
Distribution Date, to the Branded Subsidiary. Branded
Subsidiary hereby acknowledges that, effective as of the
Distribution Date, it has assumed the obligations under the
license agreements and other contracts listed on Schedule 3(a)
pursuant to and in accordance with the terms of the
Reorganization Agreement. To the extent they are
non-assignable, New Ralcorp shall use reasonable efforts to
place the Branded Subsidiary in the same position as the
Branded Subsidiary would have been had the rights under such
agreements been assigned.
b. To the extent assignable without third-party consent, and, if
not, to the extent such consents have been obtained
heretofore, the license agreements and contracts related to
the rights in the Other Trademarks between Ralcorp and
unaffiliated third parties are hereby assigned, effective as
of the Distribution Date, to New Ralcorp. New Ralcorp hereby
acknowledges that, effective as of the Distribution Date, it
has assumed the obligations under such license agreements and
other contracts pursuant to and in accordance with the terms
of the Reorganization Agreement. To the extent they are
non-assignable, Ralcorp shall use reasonable efforts to place
New Ralcorp
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in the same position as New Ralcorp would have been had the
rights under such agreements been assigned.
4. Scope and Modification.
Except as set forth in the Technology Agreement, the Merger Agreement
and the Reorganization Agreement, each of which shall control in the
event of any conflict, this Trademark Agreement sets forth the entire
agreement between the parties and supersedes all prior agreements and
understandings between the parties relating to the subject matter
hereof. None of the terms of this Trademark Agreement may be waived
or modified except as expressly agreed to, in writing, by each of the
parties or their Affiliates.
5. Successors and Assigns.
This Trademark Agreement and all the provisions hereof shall be
binding upon and inure to the benefit of the parties and each of their
respective successors and assigns.
6. Interpretation.
The section headings contained in this Trademark Agreement are solely
for the purpose of reference, are not part of the agreement of the
parties hereto, and shall not in any way affect the meaning or
interpretation of this Trademark Agreement.
7. Counterparts.
This Trademark Agreement may be executed in two or more counterparts,
each of which may be deemed an original, but all of which together
shall constitute one and the same instrument.
8. Governing Law.
This Trademark Agreement shall be governed by and construed and
interpreted in accordance with the laws of the State of Missouri.
9. Additional Documents.
The parties agree to execute or cause to be executed such additional
documents as may be reasonably required to give effect to their
undertakings in this Trademark Agreement.
10. Dispute Resolution.
The dispute resolution provisions of Article XII of the Reorganization
Agreement will control in the event of any dispute in relation to this
Agreement.
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IN WITNESS WHEREOF, the parties hereto have executed this Trademark
Agreement as of the date first above written.
RALCORP HOLDINGS, INC.
By: /s/ J. R. ▇▇▇▇▇▇▇▇▇▇
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Name: J. R. ▇▇▇▇▇▇▇▇▇▇
Title: Chief Executive Officer and
President
NEW RALCORP HOLDINGS, INC.
By: /s/ J. R. ▇▇▇▇▇▇▇▇▇▇
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Name: J. R. ▇▇▇▇▇▇▇▇▇▇
Title: Chief Executive Officer and
President
CHEX INC.
By: /s/ ▇. ▇. ▇▇▇▇▇▇▇▇
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Name: ▇. ▇. ▇▇▇▇▇▇▇▇
Title: President
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