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TRADEMARK SECURITY AGREEMENT
EXHIBIT 10.29D
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TRADEMARK SECURITY AGREEMENT
THIS TRADEMARK SECURITY AGREEMENT ("Security Agreement"),
dated as of November 8, 1995, is executed by and between XIRCOM, INC., a
California corporation ("Grantor"), and THE CIT GROUP/CREDIT FINANCE, INC.
("Lender").
RECITALS
A. Pursuant to a Loan and Security Agreement of even
date herewith (the "Loan Agreement"), between Grantor and Lender, Lender has
extended or agreed to extend certain credit facilities to Grantor upon the
terms and subject to the conditions set forth therein.
B. Lender's obligation to extend or continue to extend
the credit facilities to Grantor under the Loan Agreement is subject, among
other conditions, to receipt by Lender of this Security Agreement duly executed
by Grantor.
AGREEMENT
NOW, THEREFORE, in consideration of the above recitals and for
other good and valuable consideration, the receipt and adequacy of which are
hereby acknowledged, Grantor hereby agrees with Lender as follows:
1. Definitions and Interpretation. When used in this
Security Agreement, the following terms shall have the following respective
meanings:
"Affiliate" shall mean any person or entity
controlling, controlled by or under common control with another person
or entity.
"Collateral" shall have the meaning given to that
term in Paragraph 2 hereof.
"Obligations" shall mean and include all loans,
advances, debts, liabilities and obligations, howsoever arising, owed
by Grantor to Lender of every kind and description (whether or not
evidenced by any note or instrument and whether or not for the payment
of money), direct or indirect, absolute or contingent, due or to
become due, now existing or hereafter arising pursuant to the terms of
the Loan Agreement or any of the other Loan Documents, including
without limitation all interest, fees, charges, expenses, attorneys'
fees and accountants' fees chargeable to and payable by Grantor
hereunder and thereunder.
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"Patent and Trademark Office" shall mean the United
States Patent and Trademark Office or any successor office or agency
thereto.
"Trademarks" shall have the meaning given to that
term in Attachment I hereto.
"UCC" shall mean the Uniform Commercial Code as in
effect in the State of California from time to time.
Unless otherwise defined herein, all other capitalized terms
used herein and defined in the Loan Agreement shall have the respective
meanings given to those terms in the Loan Agreement, and all terms defined in
the UCC shall have the respective meanings given to those terms in the UCC.
2. Grant of Security Interest. As security for the
Obligations, Grantor hereby pledges, mortgages and grants to Lender a security
interest in the property described in Attachment I annexed hereto (collectively
and severally, the "Collateral"), which Attachment I is incorporated herein by
this reference.
3. Representations and Warranties. Grantor represents
and warrants to Lender that:
(a) Grantor is the owner of the Collateral (or,
in the case of after-acquired Collateral, at the time Grantor acquires
rights in the Collateral, will be the owner thereof) and that no other
Person has (or, in the case of after-acquired Collateral, at the time
Grantor acquires rights therein, will have) any right, title, claim or
interest (by way of Lien or otherwise) in, against or to the
Collateral;
(b) Lender has (or in the case of after-acquired
Collateral, at the time Grantor acquires rights therein, will have) a
first priority perfected security interest in the Collateral;
(c) Grantor has full corporate power and
authority to grant the security interest herein granted, and the
execution and delivery of this Security Agreement by Grantor and the
performance of its obligations hereunder, have been duly authorized by
all necessary corporate action on the part of Grantor;
(d) Grantor does not own any Trademarks
registered in, or the subject of pending applications in, the Patent
and Trademark Office or any similar offices or agencies in any other
country or any political subdivision thereof, other than those
described inSchedule A or Schedule B to Attachment I hereto;
(e) Grantor has the sole and full right, title
and interest in and to each of the Trademarks shown on Schedule A to
Attachment I hereto for the goods and services covered by the
registrations thereof, unencumbered except as set forth in Schedule C
to Attachment I hereto, and such registrations are valid and
enforceable and in full force and effect;
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(f) There is no claim by any third party that any
Trademarks are invalid or unenforceable or do or may violate the
rights of any Person;
(g) All licenses of Trademarks which Grantor has
granted to any Person are set forth in Schedule C to Attachment
Ihereto;
(h) All licenses of Trademarks which any Person
has granted to Grantor are set forth in Schedule D to Attachment I
hereto.
4. Covenants of Grantor. Grantor hereby agrees:
(a) Grantor shall perform all acts and execute
all documents, including, without limitation, Grants of Security
Interest substantially in the form of Attachment II annexed hereto,
that may be necessary or desirable to record, maintain, preserve,
protect and perfect Lender's interest in the Collateral, the Lien
granted to Lender in the Collateral and the first priority of such
Lien;
(b) Except to the extent that Lender shall give
its prior written consent,
(i) Grantor shall continue to use the
Trademarks in connection with each and every trademarked class
of goods or services applicable to its current line as
reflected in its current catalogs, brochures, price lists or
similar materials in order to maintain the Trademarks in full
force and effect free from any claim of abandonment for
nonuse, and Grantor shall not (and will not permit any
licensee thereof to) do any act or omit to do any act whereby
any Trademark may become invalidated and shall notify Lender
immediately if Grantor knows of any reason or has reason to
know that any application or registration may become
invalidated; and
(ii) Grantor shall not assign, sell,
mortgage, lease, transfer, pledge, hypothecate, grant a
security interest in or Lien upon, encumber, grant an
exclusive or non-exclusive license, or otherwise dispose of
any of the Collateral, and nothing in this Security Agreement
shall be deemed a consent by Lender to any such action except
as expressly permitted herein;
(c) Grantor shall promptly pay Lender for any and
all sums, costs, and expenses which Lender may pay or incur pursuant
to the provisions of this Security Agreement or in enforcing the
Obligations, the Collateral or the security interest granted
hereunder, including, without limitation, all filing or recording
fees, court costs, collection charges, travel, and reasonable
attorneys' fees and expenses, all of which together with interest at
the highest rate then payable on the Obligations shall be part of the
Obligations and be payable on demand;
(d) Grantor shall promptly notify Lender upon the
filing with the Patent and Trademark Office or any similar office or
agency in any other country or any political subdivision thereof,
either by Grantor or by any agent, employee,
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licensee or designee of Grantor, of (i) an application for the
registration of any Trademark with the Patent and Trademark Office or
any similar office or agency in any other country or any political
subdivision thereof or (ii) any assignment of any Trademark which
Grantor may acquire from a third party. Upon the request of Lender,
Grantor shall execute and deliver any and all documents, instruments,
and agreements as Lender may request to evidence Lender's security
interest in such Trademark (and the goodwill and general intangibles
of Grantor relating thereto or represented thereby), and Grantor
authorizes Lender to amend an original counterpart of the applicable
Grant of Security Interest executed pursuant to Subparagraph 4(a) of
this Security Agreement without first obtaining Grantor's approval of
or signature to such amendment, and to record such security interest
with the Patent and Trademark Office;
(e) Grantor shall keep the Collateral free of all
Liens, except in favor of Lender;
(f) Grantor shall take all necessary steps in any
proceeding before the Patent and Trademark Office or any similar
office or agency in any other country or any political subdivision
thereof, to diligently prosecute or maintain, as applicable, each
application and registration of the Trademarks;
(g) So long as any of the Obligations are
outstanding, Grantor shall make application to the Patent and
Trademark Office (and assign any such application to Lender as
security) to register any registerable but unregistered material
Trademarks used by Grantor in connection with its products or
services, unless Grantor, in the exercise of its prudent business
judgment, deems any such Trademark not to have any significant
commercial value or determines that its rights are better used as a
common law trademark;
(h) Grantor shall (i) use proper statutory notice
in connection with any use of the Trademarks, and (ii) maintain
consistent standards of quality in its manufacture of products sold
under the Trademarks or provision of services in connection with the
Trademarks;
(i) Grantor agrees that if it or any Affiliate
learns of any use by any Person of any term or design likely to cause
confusion with any Trademark, Grantor shall promptly notify Lender of
such use and of all steps taken and to be taken to remedy any
infringement of any Trademark; and
(j) Grantor shall at all times keep at least one
complete set of its records concerning the Collateral at its chief
executive office and shall make such records available for inspection
by Lender at such times as Lender may reasonably request.
5. Authorized Action by Lender.
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(a) Lender may, in its sole discretion, pay any
amount or do any act required of Grantor hereunder or requested by
Lender to preserve, defend, protect, maintain, record or enforce
Grantor's obligations contained herein, the Obligations, the
Collateral, or the right, title and interest granted Lender by this
Security Agreement, and which Grantor fails to do or pay, and any such
payment shall be deemed an advance by Lender to Grantor and shall be
payable on demand together with interest at the highest rate then
payable on the Obligations. Lender will promptly notify Grantor of
any payment by Lender referred to in this Section 5(a).
(b) Grantor agrees to execute and deliver to
Lender three originals of a Special Power of Attorney in substantially
the form ofAttachment III to this Agreement for the implementation of
the recording, giving of notice, preservation, assignment, sale or
other disposal of the Collateral pursuant toParagraph 2 and
Subparagraphs 5(a) and 7(a).
(c) Grantor hereby grants to Lender and its
employees and agents the right to visit Grantor's business facilities
during normal business hours and with proper notice at which Grantor
manufactures products or provides services, which products or services
are sold under or provided in connection with any of the Trademarks,
and to inspect such products and the quality control records relating
thereto or observe the provision of such services.
6. Litigation and Other Proceedings.
(a) Grantor shall have the obligation to commence
and diligently prosecute such suits, proceedings or other actions for
infringement or other damage, or reexamination or reissue proceedings,
or opposition or cancellation proceedings as are reasonable, in
Grantor's exercise of its prudent business judgement, to protect any
of the Trademarks. No such suit, proceeding or other actions shall be
settled or voluntarily dismissed, nor shall any party be released or
excused of any claims of or liability for infringement, without the
prior written consent of Lender, which consent shall not be
unreasonably withheld.
(b) Upon the occurrence and during the
continuation of an Event of Default, Lender shall have the right but
not the obligation to bring suit or institute proceedings in the name
of Grantor or Lender to enforce any rights in the Collateral,
including any license thereunder, in which event Grantor shall at the
request of Lender do any and all lawful acts and execute any and all
documents required by Lender in aid of such enforcement. If Lender
elects not to bring suit to enforce any right under the Collateral,
including any license thereunder, Grantor agrees to use all reasonable
measures, whether by suit, proceeding or other action, to prevent the
infringement of any right under the Collateral by any Person and for
that purpose
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agrees to diligently maintain any action, suit or proceeding against
any Person so infringing necessary to prevent such infringement.
7. Default and Remedies.
(a) Grantor shall be deemed in default under this
Security Agreement upon the occurrence of an Event of Default. Upon
the occurrence and during the continuation of any such Event of
Default, Lender may, at its option, and (except if otherwise specified
below) without notice to or demand on Grantor, and in addition to all
rights and remedies available to Lender under the Loan Agreement or
the other Loan Documents, do any one or more of the following:
(i) upon ten (10) Business days' prior notice to
Grantor, direct Grantor not to make any further use of the
Trademarks (or any ▇▇▇▇ similar thereto) for any purpose;
(ii) at any time and from time to time, upon ten
Business (10) days' prior notice to Grantor, license, whether
general, special or otherwise, and whether on an exclusive or
nonexclusive basis, any of the Trademarks throughout the world
for such term or terms, on such conditions, and in such
manner, as Lender shall in its sole discretion determine;
(iii) at any time and from time to time, enforce (and
upon notice to Grantor have the exclusive right to enforce)
against any licensee or sublicensee all rights and remedies of
Grantor in, to and under any one or more license agreements
with respect to the Collateral (without assuming any
obligations or liability thereunder), and take or refrain from
taking any action under any thereof;
(iv) at any time and from time to time, upon ten (10)
Business days' prior notice to Grantor, assign, sell, or
otherwise dispose of, the Collateral or any of it, either with
or without special or other conditions or stipulations, with
power to buy the Collateral or any part of it, and with power
also to execute assurances, and do all other acts and things
for completing the assignment, sale or disposition which
Lender shall, in its sole discretion, deem appropriate or
proper; and
(v) in addition to the foregoing, in order to
implement the assignment, sale or other disposal of any of the
Collateral pursuant to clause (a)(iv) hereof, Lender may, at
any time, pursuant to the authority granted in the Power of
Attorney executed pursuant to Subparagraph 5(b) hereof,
execute and deliver on behalf of Grantor, one or more
instruments of assignment of the Trademarks (or any
application for registration thereof), in form suitable for
filing, recording or registration in any country.
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(b) Grantor agrees to pay when due all reasonable costs
incurred in any such transfer of the Trademarks, including, without
limitation, any taxes, fees and reasonable attorneys' fees and
expenses, and all such costs shall be added to the Obligations.
Lender may apply the proceeds actually received from any such license,
assignment, sale or other disposition to the reasonable costs and
expenses thereof, including, without limitation, reasonable attorneys'
fees and all legal, travel and other expenses which may be incurred by
Lender, and then to the Obligations, in such order as to principal or
interest as Lender may desire; and Grantor shall remain liable and
will pay Lender on demand any deficiency remaining, together with
interest thereon at a rate equal to the highest rate then payable on
the Obligations and the balance of any expenses unpaid. Nothing
herein contained shall be construed as requiring Lender to take any
such action at any time. In the event of any such license,
assignment, sale or other disposition of the Collateral, or any of it,
after the occurrence or continuation as hereinabove provided of an
Event of Default, Grantor shall supply its know-how and expertise
relating to the manufacture and sale of the products bearing the
Trademarks or in connection with which the Trademarks are used, and
its consumer or customer lists and other records relating to the
Trademarks and to the distribution of products or the provisions of
services, to Lender or its designee.
8. Reassignment. Upon the payment in full of the
Obligations and the termination of the Loan Agreement and Lender's obligation
to provide advances thereunder, Lender shall execute and deliver to Grantor all
assignments and other instruments as may be necessary to vest in Grantor full
right, title and interest in and to the Collateral, subject to any disposition
thereof which may have been made by Lender pursuant to the provisions of this
Security Agreement.
9. Indemnification and Release.
(a) Grantor assumes all responsibility and
liability arising from the use of the Trademarks, and Grantor shall
indemnify and hold Lender and its directors, officers, employees,
agents and any of their respective Affiliates (Indemnitees") harmless
from and against any claim, suit, loss, damage or expense (including,
without limitation, reasonable attorneys' fees and expenses) arising
out of or in connection with any alleged infringement of any trademark
or alleged defect in any product manufactured, promoted or sold by
Grantor (or any Affiliate of Grantor) in connection with any
Trademark, or out of the manufacture, promotion, labeling, sale or
advertisement of any product or service by Grantor (or any Affiliate
of Grantor). Grantor agrees that Lender does not assume, and shall
have no responsibility for, the payment of any sums due or to become
due under any agreement or contract included in the Collateral or the
performance of any obligations to be performed under or with respect
to any such agreement or contract by Grantor, and Grantor hereby
agrees to indemnify and hold each Indemnitee harmless with respect to
any and all claims by any Person relating thereto.
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(b) Grantor agrees to indemnify and hold each
Indemnitee harmless from and against any claim, suit, loss, damage or
expense (including, without limitation, reasonable attorneys' fees and
expenses) arising out of or in connection with any action taken or
omitted to be taken by Lender pursuant to clause 7(a)(iii) hereof with
respect to any license agreement of Grantor.
(c) Grantor agrees to indemnify and hold each
Indemnitee harmless from and against any claim, suit, loss, damage or
expense (including, without limitation, reasonable attorneys' fees and
expenses) arising out of or in connection with (i) any claim, suit or
proceeding instituted by Grantor or (ii) any action taken or omitted
to be taken by Lender pursuant to Subparagraph 6(b).
(d) Grantor hereby releases the Indemnitees from
any claims, causes of action and demands at any time arising out of or
with respect to any actions taken or omitted to be taken by the
Indemnitees under the powers of attorney granted under the Special
Power of Attorney executed pursuant to Subparagraph 5(b) herein, other
than actions taken or omitted to be taken through the gross negligence
or willful misconduct of such Indemnitees.
(e) Grantor agrees to cause Lender to be named as
an additional insured with respect to any policy of insurance held by
Grantor from time to time covering product liability or intellectual
property infringement risk.
10. Miscellaneous.
(a) Notices. Except as otherwise provided
herein, all notices, requests, demands or other communications to or
upon Lender or Grantor hereunder shall be addressed to Lender or
Grantor at the respective addresses indicated below or at such other
address as Lender or Grantor may designate by written notice to the
other party, and shall be deemed to have been given (i) in the case of
notice by letter, three (3) days after deposited in the mails
registered and return receipt requested, or (ii) in the case of notice
given by telecommunication, when sent with appropriate confirmation
received:
Lender: The CIT Group/Credit Finance, Inc.
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇, Esq.
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
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Grantor: Xircom, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: General Counsel
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
(b) Nonwaiver. No failure or delay on Lender's
part in exercising any right hereunder shall operate as a waiver
thereof or of any other right nor shall any single or partial exercise
of any such right preclude any other further exercise thereof or of
any other right.
(c) Amendments and Waivers. Except with respect
to action by Lender pursuant to Subparagraph 4(d), this Security
Agreement may not be amended or modified, nor may any of its terms be
waived, except by written instruments signed by Grantor and Lender as
required by the Loan Agreement. Each waiver or consent under any
provision hereof shall be effective only in the specific instances and
for the purpose for which given.
(d) Assignments. This Security Agreement shall
be binding upon and inure to the benefit of Lender and Grantor and
their respective successors and assigns;provided, however, that
Grantor and Lender may sell, assign and delegate their respective
rights and obligations hereunder only as permitted by the Loan
Agreement.
(e) Cumulative Rights, etc. The rights, powers
and remedies of Lender under this Security Agreement shall be in
addition to all rights, powers and remedies given to Lender by virtue
of any applicable law, rule or regulation of any governmental
authority, the Loan Agreement, any other Loan Document or any other
agreement, all of which rights, powers, and remedies shall be
cumulative and may be exercised successively or concurrently without
impairing Lender's rights hereunder. Grantor waives any right to
require Lender to proceed against any Person or to exhaust any
Collateral or to pursue any remedy in Lender's power.
(f) Payments Free of Taxes, Etc. All payments
made by Grantor under this Security Agreement shall be made by Grantor
free and clear of and without deduction for any and all present and
future taxes, levies, charges, deductions and withholdings. In
addition, Grantor shall pay upon demand any stamp or other taxes,
levies or charges of any jurisdiction with respect to the execution,
delivery, registration, performance and enforcement of this Security
Agreement. Upon request by Lender, Grantor shall furnish evidence
satisfactory to Lender that all requisite authorizations and approvals
by, and notices to and filings with, governmental authorities and
regulatory bodies have been obtained and made and that all requisite
taxes, levies and charges have been paid.
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(g) Partial Invalidity. If at any time any
provision of this Security Agreement is or becomes illegal, invalid or
unenforceable in any respect under the law of any jurisdiction,
neither the legality, validity or enforceability of the remaining
provisions of this Security Agreement nor the legality, validity or
enforceability of such provision under the law of any other
jurisdiction shall in any way be affected or impaired thereby.
(h) Governing Law. This Security Agreement shall
be governed by and construed in accordance with the laws of the State
of California without reference to conflicts of law rules.
(i) Submission to Jurisdiction. Grantor hereby
irrevocably and unconditionally:
(i) Submits for itself and its property in
any legal action or proceeding relating to this Security
Agreement, or for recognition and enforcement of any judgment
in respect thereof, to the non-exclusive jurisdiction of the
courts of the State of Illinois and the courts of the United
States of America located in Los Angeles County, California
and consents and agrees to suit being brought in such courts
as Lender may elect;
(ii) Waives any objection that it may now or
hereafter have to the venue of any such action or proceeding
in any such court or that such proceeding was brought in an
inconvenient court and agrees not to plead or claim the same;
(iii) Agrees as an alternate means of service
of process in any such legal action or proceeding to service
by mailing of copies thereof (by registered or certified mail,
if practicable) postage prepaid, to the then active agent or
to Grantor at its address set forth in Subparagraph 10(a)
hereof or at such other address of which Lender shall have
been notified pursuant thereto, and agrees that failure to
receive such copy or notice shall not affect or impair the
validity of such service or of any judgment rendered in any
action or proceeding based thereon; and
(iv) Agrees that nothing herein shall
affect Lender's right to effect service of process in any
other manner permitted by law, and that Lender shall have the
right to bring any legal proceedings (including a proceeding
for enforcement of a judgment entered by any of the
aforementioned courts) against Grantor in such courts or in
any other court or jurisdiction in accordance with applicable
law.
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(j) Jury Trial. EACH OF GRANTOR AND LENDER, AND
TO THE FULLEST EXTENT PERMITTED BY APPLICABLE LAW, HEREBY IRREVOCABLY
WAIVES ALL RIGHT TO TRIAL BY JURY AS TO ANY ISSUE RELATING HERETO IN
ANY ACTION, PROCEEDING, OR COUNTERCLAIM ARISING OUT OF OR RELATING TO
THIS AGREEMENT.
IN WITNESS WHEREOF, Grantor and Lender have caused this
Security Agreement to be executed as of the day and year first above written.
"GRANTOR"
XIRCOM, INC.
By: ▇. ▇▇▇▇▇▇▇▇
------------------------------
Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
------------------------
Title: Secretary
-----------------------
"LENDER"
THE CIT GROUP/CREDIT FINANCE, INC.
By: ▇▇▇▇▇ ▇▇▇▇▇
------------------------------
Name: ▇▇▇▇▇ ▇▇▇▇▇
------------------------
Title: Vice President
-----------------------
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ATTACHMENT I
TO TRADEMARK SECURITY AGREEMENT
(a) All trademarks, trade names, trade styles and service
marks, and all prints and labels on which said trademarks, trade names, trade
styles and service marks have appeared or appear, and all designs and general
intangibles of like nature, now existing or hereafter adopted or acquired, all
right, title and interest therein and thereto, all registrations and recordings
thereof, including without limitation, (i) all applications, registrations and
recordings in the Patent and Trademark Office or in any similar office or
agency of the United States, any State thereof, or any foreign country or any
political subdivision thereof, all whether now owned or hereafter acquired by
Grantor, including, but not limited to, those described in Schedules A and B to
this Attachment I, which Schedules A and B are incorporated herein by this
reference, and (ii) all reissues, extensions or renewals thereof and all
licenses thereof (collectively, the "Trademarks");
(b) All goodwill of Grantor's business symbolized by the
Trademarks and all customer lists and other records of Grantor relating to the
distribution of products or provision of services bearing or covered by the
Trademarks;
(c) All claims by Grantor against any Person for past,
present or future infringement of the Trademarks, including, without
limitation, the right to take any action to enforce such claims;
(d) All proceeds of the foregoing (including, without
limitation, whatever is receivable or received when Collateral or proceeds are
sold, collected, exchanged, licensed or otherwise disposed of, whether such
disposition is voluntary or involuntary, including, without limitation, rights
to payment and return premiums and insurance proceeds under insurance with
respect to any Collateral, and all rights to payment with respect to any cause
of action affecting or relating to the Collateral).
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SCHEDULE A TO ATTACHMENT I
TO TRADEMARK SECURITY AGREEMENT
TRADEMARKS
Trademark Jurisdiction Reg. Date Reg. No.
--------- ------------ --------- --------
Xircom U.S. Patent and 10-30-90 1,619,539
Trademark Office
[I]A-1
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SCHEDULE B TO ATTACHMENT I
TO TRADEMARK SECURITY AGREEMENT
APPLICATIONS FOR TRADEMARKS
▇▇▇▇ Application Date Application No.
---- ---------------- ---------------
Netwave 11/04/94 74/595,458
[I]A-2
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SCHEDULE C TO ATTACHMENT I
TO TRADEMARK SECURITY AGREEMENT
LICENSES GRANTED BY GRANTOR TO THIRD PARTIES
From time to time, Grantor issues nonexclusive licenses.
[I]A-3
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SCHEDULE D TO ATTACHMENT I
TO TRADEMARK SECURITY AGREEMENT
LICENSES GRANTED BY THIRD PARTIES TO GRANTOR
LICENSED LOGOS
1. AT&T Virtual WorkPlace
2. Delrina
3. ETC
4. ▇▇▇▇▇ (SmartRing)
5. Microsoft Network (OnLine Services)
6. Novell Certified
7. OS/2 Ready
8. PC Card Solutions
9. Shiva PPP
10. SCO OK, Tested and Supported
11. Windows95 Certified
12. Network Global Navigator
AWARD LOGOS
1. Best of Byte-Comdex/Fall 94
2. LAN Mag 1995 Product of Year
3. Mobility Award Winner
4. PC Mag Tech Excellence
[I]D-1
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ATTACHMENT II TO TRADEMARK SECURITY AGREEMENT
GRANT OF SECURITY INTEREST
TRADEMARKS
THIS GRANT OF SECURITY INTEREST, dated as of November ___,
1995 is executed by XIRCOM, INC., a California corporation ("Grantor"), in
favor of THE CIT GROUP/CREDIT FINANCE, INC. ("Lender").
A. Pursuant to a Loan and Security Agreement of even
date herewith (the "Loan Agreement"), between Grantor and Lender, Lender has
extended and agreed to extend certain credit facilities to Grantor upon the
terms and subject to the conditions set forth therein;
B. Grantor has adopted, used and is using certain
trademarks, more particularly described on Schedules 1-A and 1-B annexed
hereto as part hereof, which trademarks are registered or subject to an
application for registration in the United States Patent and Trademark Office
(collectively, the "Trademarks");
C. Grantor has entered into a Trademark Security
Agreement dated the date hereof (the "Security Agreement") in favor of Lender;
and
D. Pursuant to the Security Agreement, Grantor has
granted to Lender a security interest in all right, title and interest of
Grantor in and to the Trademarks, together with the goodwill of the business
symbolized by the Trademarks and the customer lists and records related to the
Trademarks and the applications and registrations thereof, and all proceeds
thereof, including, without limitation, any and all causes of action which may
exist by reason of infringement thereof (the "Collateral"), to secure the
prompt payment, performance and observance of the Obligations, as defined in
the Security Agreement;
NOW, THEREFORE, for good and valuable consideration, receipt
of which is hereby acknowledged, Grantor does hereby further grant to Lender a
security interest in the Collateral to secure the prompt payment, performance
and observance of the Obligations.
II-1
19
Grantor does hereby further acknowledge and affirm that the
rights and remedies of Lender with respect to the security interest in the
Collateral granted hereby are more fully set forth in the Security Agreement,
the terms and provisions of which are hereby incorporated herein by reference
as if fully set forth herein.
Lender's address is: The CIT Group/Credit Finance, Inc.
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇ ▇▇▇ ▇▇▇▇▇, Esq.
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Telecopy: (▇▇▇) ▇▇▇-▇▇▇▇
IN WITNESS WHEREOF, Grantor has caused this Grant of Security
Interest to be executed as of the day and year first above written.
"GRANTOR"
XIRCOM, INC.
By:
------------------------------
Name:
------------------------
Title:
-----------------------
II-2
20
STATE OF CALIFORNIA )
) ss.:
COUNTY OF LOS ANGELES )
On November ___, 1995 before me, ______________________,
personally appeared ___________________________________________, personally
known to me (or proved to me on the basis of satisfactory evidence) to be the
person(s) whose name(s) is/are subscribed to the within instrument and
acknowledged to me that he/she/they executed the same in his/her/their
authorized capacity(ies), and that by his/her/their signature(s) on such
instrument the person(s) or the entity on behalf of which the person(s) acted,
executed the instrument.
WITNESS my hand and official seal.
Signature __________________________________ (Seal)
21
SCHEDULE 1-A TO GRANT OF SECURITY INTEREST
TRADEMARKS
▇▇▇▇ Registration Date Registration No.
---- ----------------- ----------------
Xircom 10-30-90 1,619,539
1-A-1
22
SCHEDULE 1-B TO GRANT OF SECURITY INTEREST
TRADEMARK APPLICATIONS
▇▇▇▇ Application Date Application No.
---- ---------------- ---------------
Netwave 11/04/94 74/595,458
1-A-2
23
ATTACHMENT III TO TRADEMARK SECURITY AGREEMENT
SPECIAL POWER OF ATTORNEY
STATE OF CALIFORNIA )
) ss.:
COUNTY OF LOS ANGELES )
KNOW ALL PERSONS BY THESE PRESENTS, THAT XIRCOM, INC., a
California corporation ("Grantor"), pursuant to a Trademark Security Agreement,
dated as of November ___, 1995 (the "Security Agreement"), by and between
Grantor and THE CIT GROUP/CREDIT FINANCE, INC. ("Lender"), hereby appoints and
constitutes Lender its true and lawful attorney, with full power of
substitution, and with full power and authority to perform the following acts
on behalf of Grantor:
1. For the purpose of assigning, selling, licensing or
otherwise disposing of all right, title and interest of Grantor in and to any
trademarks, trade names, trade styles and service marks, and all registrations,
recordings, reissues, extensions and renewals thereof, and all pending
applications therefor, and for the purpose of the recording, registering and
filing of, or accomplishing any other formality with respect to, the foregoing,
to execute and deliver any and all agreements, documents, instruments of
assignment or other papers necessary or advisable to effect such purpose;
2. For the purpose of evidencing and perfecting Lender's
interest in any trademark not previously assigned to Lender as security, or in
any trademark which Grantor may acquire from a third party, and for the purpose
of the recording, registering and filing of, or accomplishing any other
formality with respect to, the foregoing, to execute and deliver any and all
agreements, documents, instruments of assignment or other papers necessary or
advisable to effect such purpose.
3. To execute any and all documents, statements,
certificates or other papers necessary or advisable in order to obtain the
purposes described above as Lender may in its sole discretion determine.
1-A-3
24
This power of attorney is made pursuant to the Security
Agreement and takes effect solely for the purposes of Paragraph 2 and
Subparagraphs 5(a) and 7(a) thereof and is subject to the conditions thereof
and may not be revoked until the payment in full of all "Obligations" as
defined in the Security Agreement.
Dated: November ___, 1995
"GRANTOR"
XIRCOM, INC.
By:
------------------------------
Name:
------------------------
Title:
-----------------------
1-A-4
25
STATE OF CALIFORNIA )
) ss.:
COUNTY OF LOS ANGELES )
On November ___, 1995 before me, ______________________,
personally appeared ________________________________________, personally
known to me (or proved to me on the basis of satisfactory evidence) to be the
person(s) whose name(s) is/are subscribed to the within instrument and
acknowledged to me that he/she/they executed the same in his/her/their
authorized capacity(ies), and that by his/her/their signature(s) on such
instrument the person(s) or the entity on behalf of which the person(s) acted,
executed the instrument.
WITNESS my hand and official seal.
Signature __________________________________ (Seal)