EXHIBIT 10.7
[EXECUTION COPY]
AGREEMENT TO ASSIGN TRADEMARK RIGHTS
AND LIMITED CONSENT TO USE CENTEX TRADEMARKS
THIS AGREEMENT (this "Agreement") is entered into as of June 30, 2003 (the
"Effective Date") by and between Centex Corporation, a corporation organized
under the laws of the State of Nevada ("Centex"), and Cavco Industries, Inc., a
corporation organized under the laws of the State of Delaware ("Cavco"). Centex
and Cavco are hereinafter referred to as the "Parties."
WHEREAS, the Parties have entered into a Distribution Agreement dated as
of May 30, 2003 (the "Distribution Agreement"); and
WHEREAS, as part of the consideration of the Distribution Agreement,
Centex desires to assign, and Cavco desires to acquire, all right, title, and
interest in and to a number of trademarks that are owned by Centex.
NOW, THEREFORE, for and in consideration of the mutual covenants contained
herein, and for other good and valuable consideration, receipt of which each
party hereby acknowledges, the Parties hereby agree as follows:
1. DEFINITIONS
1.1 "Assigned Marks" means the trademarks listed in Exhibit 1 and all
Intellectual Property Rights therein.
1.2 "Intellectual Property Rights" means copyrights, patents (including
patent improvements), patent applications, trade secrets, trademarks, trade
names or service marks, pending trademark applications or existing trademark
registrations with the United States Patent and Trademark Office, or other
intellectual property rights (including common law rights) under applicable law.
2. GRANT OF RIGHTS
2.1 Centex agrees to assign all of Centex's right, title and interest in
the Assigned Marks to Cavco as set forth in this Agreement. In order to perfect
such ownership transfer, contemporaneously with the execution of this Agreement,
Centex has executed a separate assignment document to be recorded with the
United States Patent and Trademark Office. Centex shall reasonably cooperate
with Cavco in the filing and prosecution of the Assigned Marks if necessary.
2.2 Centex promptly shall deliver to Cavco all documentation pertaining
to the Assigned Marks, including copies of all correspondence to or from
examining authorities regarding such Assigned Marks, trademark searches
pertaining to such Assigned Marks, and all correspondence with any attorney
involved in the preparation and/or prosecution of the Assigned Marks.
3. LIMITED CONSENT TO USE CENTEX TRADEMARK
3.1 As soon as practicable, and in any event within six (6) months after
the Effective Date, Cavco, at Cavco's expense, shall remove any and all exterior
and interior signs and identifiers which refer or pertain to Centex. After such
period, Cavco shall not use or display the name "Centex" or variations thereof,
or other trademarks, tradenames, logos or identifiers using such name or
otherwise owned by or licensed to Centex which have not been assigned or
licensed to Cavco (collectively, the "Centex Trademarks"), without the prior
written consent of Centex. However, nothing contained in this Agreement shall
prevent Cavco from using the Centex name in public filings with governmental
authorities, materials intended for distribution to Cavco stockholders, or any
other communication in any medium which describes the relationship between the
Parties.
3.2 Cavco shall have the right to use existing products, supplies and
documents (including, but not limited to, purchase orders, forms, labels,
shipping materials, catalogues, sales brochures, operating manuals,
instructional documents and similar materials, and advertising material) being
transferred to it which have imprinted thereon or otherwise use a Centex
Trademark, for a period not to exceed six (6) months following the Effective
Date. However, Cavco agrees (i) to use only such supplies and documents existing
in inventory as of the Effective Date and (ii) not to order or utilize in any
manner any additional supplies and documents which have imprinted thereon or
otherwise use a Centex Trademark.
3.3 Cavco acknowledges and agrees that Centex does not consent to any
use of the Centex Trademarks by Cavco other than as provided above, and that no
license to use the Centex Trademarks has been granted to Cavco by Centex by this
Section 3. The provisions of this Section 3 provide only a limited consent from
Centex to Cavco to continue to display the Centex Trademarks on existing signage
and other items until the earlier of (i) six months from the date of this
Agreement; or (ii) the date Cavco fully complies with the provisions of Section
3.1, and for no other reason.
4. WARRANTIES
4.1 Centex represents and warrants that: (a) it is a corporation duly
organized, validly existing, and in good standing under the laws of the State of
Nevada and has full power and authority to enter into this Agreement and perform
its obligations hereunder; (b) immediately prior to the execution of this
Agreement, Centex owns all right, title and interest in and to the Assigned
Marks; and (c) it has the legal right to grant all the rights it purports to
grant and to convey all the rights it purports to convey pursuant to Section 2.1
above.
4.2 Cavco represents and warrants that: (a) it is a corporation duly
organized, validly existing, and in good standing under the laws of the State of
Delaware and has
full power and authority to enter into this Agreement and perform its
obligations hereunder.
5. GENERAL
5.1 Entire Agreement. This Agreement constitutes the entire agreement of
the Parties with respect to the subject matter hereof, and to the extent that
this agreement is inconsistent with any prior agreement(s) between the Parties,
the terms of this agreement are to control.
5.2 Amendment. This Agreement shall not be amended or otherwise modified
except by a written agreement dated subsequent to the date of this Agreement and
signed on behalf of Centex and Cavco by their respective duly authorized
representatives.
5.3 Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of Texas.
5.4 Assignment. This Agreement shall be binding upon and inure to the
benefit of the Parties hereto and the Parties' respective successors and
assigns.
5.5 No Waiver. No waiver of any breach of any provision of this
Agreement shall constitute a waiver of any prior, concurrent or subsequent
breach of the same or any other provisions hereof, and no waiver shall be
effective unless made in writing and signed by an authorized representative of
the waiving party.
5.6 Savings Clause. If any provision of this Agreement shall be held by
a court of competent jurisdiction to be illegal, invalid or unenforceable, the
remaining provisions shall remain in full force and effect.
5.7 Further Assurances. The Parties agree to take such further action
and execute, deliver and/or file such documents or instruments as are necessary
to carry out the terms and purposes of this Agreement.
5.8 Section Headings. The section headings used in this Agreement are
intended for convenience only and shall not be deemed to supersede or modify any
provisions.
IN WITNESS WHEREOF, the Parties have executed this Agreement as of the
Effective Date.
CENTEX CORPORATION CAVCO INDUSTRIES, INC.
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
------------------------- -------------------------
Its: Senior Vice President Its:President and Chief Executive
Officer
EXHIBIT 1
ASSIGNED MARKS
CAVCO
CAVCO HOMES
SUNBUILT
VILLAGER
SUN VILLA
CEDAR COURT
WESTCOURT
WINROCK
CATALINA
CAVCO GOLD KEY GUARANTEE
SAGUARA
ELITE
DESERT ROSE
SUNBURST
CAVCO CABINS
AAA HOMES
CAVCO HOME CENTER