EXCLUSIVE TRADEMARK LICENSE AGREEMENT
This
Exclusive Trademark License Agreement (the “Agreement”)
is
made and entered into on this 20th day of April, 2007 (the “Effective
Date”)
by and
between In Stride L.L.C., a Delaware limited liability company that trades
in
the State of New Jersey as InStride Shoes L.L.C. and which has a principal
place
of business at ▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ (hereinafter referred
to as “Licensor”)
and
InStride Ventures, LLC, a Delaware limited liability company with a principal
place of business at c/o ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ Ventures LLC, ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇-▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇
▇▇▇▇▇,
▇▇▇▇▇▇-▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ (hereinafter referred to as “Licensee”).
Each
of Licensor and Licensee may be referred to herein as a “party” and collectively
as the “parties”.
RECITALS
WHEREAS,
Licensor is a distributor of footwear and owns certain Trademarks (as defined
below);
WHEREAS,
Licensee desires to be licensed by Licensor in the use of the
Trademarks;
WHEREAS,
Licensor desires to license Licensee's use of the Trademarks;
WHEREAS,
Licensor and Licensee are entering into this Agreement in connection with a
certain Operating Agreement dated as of April 20, 2007 by and among Licensor,
Licensee, ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ Ventures, LLC (“GFV”) and the other parties thereto
(the “Operating
Agreement”);
and
WHEREAS,
Licensor is a member of Licensee and will be involved in Licensee’s day to day
operations.
NOW,
THEREFORE, in consideration of the foregoing premises and the mutual covenants
and agreements set forth below, and for other good and valuable consideration,
the receipt and sufficiency of which are hereby acknowledged, the parties to
this Agreement covenant and agree as follows:
1.
License.
(a)
Licensor hereby grants to Licensee an exclusive (subject to Section 1(b) herein)
perpetual, royalty-free, and sub-licenseable (on terms and conditions
substantially consistent herewith) right and license to use the trademarks
and
related registrations identified on Exhibit
A
(collectively, the “Trademarks”)
in and
throughout the United States, its territories and possessions and Puerto Rico:
(i) as part of Licensee’s corporate name and tradename, (ii) upon or in
connection with footwear and related goods and services including, without
limitation, athletic, casual and post-operative shoes, shoe accessories and
socks that are intended to meet the medical needs of individuals with specific
footwear problems such as those related to diabetes (collectively, “Footwear”),
and
(iii) in connection with the manufacturing, sale and distribution of Footwear
through any channel of sale (e.g., direct, indirect, online, etc.), whether
by
Licensee or its suppliers, wholesalers, distributors or retailers. (b)
Notwithstanding the foregoing, Licensor shall have a limited right to continue
use of the Trademarks in connection with Footwear solely with respect to direct
sales thereof to (i) customers that have made purchases from Licensor prior
to
the Effective Date, to the extent identified on Exhibit
B
(the
“Existing
Customers”),
and
(ii) new customers obtained from and after the Effective Date that operate
retail stores with no more than six (6) locations for re-sale of such Footwear
to the general public from such retail locations (the “New
Customers”
and,
collectively with the Existing Customers, the “Customers”);
provided,
however,
that
Licensor shall not use the Trademarks in connection with sales of Footwear
to
any third party (other than Existing Customers) that has or does purchase
Footwear from Licensee. For the avoidance of doubt, except as permitted in
Section 1(b), Licensor agrees that it shall not otherwise use the Trademarks
(e.g., Licensor shall not sell directly to individuals, conduct sales through
the Internet or ecommerce technologies, sell Footwear to or through wholesalers
or distributors, etc.). Notwithstanding Section 2(b)(ii), Licensor and Licensee
agree and acknowledge that the New Customers may sell Footwear through the
Internet or ecommerce technologies; provided,
however,
that
any such sales shall be
ancillary
to such New Customers’ retail operations and not a material portion of such New
Customers’ revenue.
2.
Use
of
Trademarks; Quality Control.
(a)
Licensee shall use the Trademarks in the forms identified on Exhibit
A,
and in
such other forms that Licensor shall approve in writing (in its reasonable
discretion) from time to time. Licensee shall use upon or in connection with
the
Footwear a “™” symbol or, if a U.S. Federal Trademark Registration has been
obtained, a ‘®’ symbol. (b) To ensure that the quality of the Footwear is
consistent with the Trademarks used to identify it, Licensor retains the right,
subject to Section 2(c) below, to monitor the quality of the Footwear by
inspecting production samples thereof no more than once (1) per calendar year
that this Agreement is in effect and prior to any new product being developed
or
sold in the marketplace. Notwithstanding the foregoing, Licensor acknowledges
and agrees that Footwear that is identical or substantially conforms to the
quality of footwear previously or hereinafter sold by Licensor to the Customers
shall be deemed to be of sufficient quality for all purposes of this Agreement.
(c) To the extent that Licensor reasonably objects to any Footwear designs,
production samples and/or any advertising or promotional materials (e.g.,
pictures and illustrations) relating to the Footwear, Licensor shall provide
notice of such objection to Licensee within seven (7) days of its review
thereof. Licensor shall not object to such materials unreasonably, and if
Licensor has not so objected, Licensee shall be permitted to use such materials
for the current and any future or repeat uses. (d) All use of any Trademarks
licensed by this Agreement and used on any Footwear shall inure to the benefit
of Licensor.
3.
Trademark
Protection; Third Party Infringement; Infringement Notification; Further
Assurances.
(a)
Licensor agrees, at Licensor’s expense, to obtain, maintain, defend and protect
the Trademarks against infringement by third parties in all countries of the
world where the Footwear is or will be sold including, without limitation,
instituting suit to seek injunctions and monetary damages.
(b) Licensee
shall have the right to participate in prosecuting such actions against
infringers and, if it so participates, it shall fund fifty percent (50%) of
the
costs and expenses thereof and be entitled to fifty percent (50%) of any
recovery of monetary damages. If Licensee does not so participate, Licensor
shall fund one hundred percent (100%) of the costs and expenses thereof and
be
entitled to one hundred percent (100%) of any recovery of monetary damages.
If
Licensor fails to prosecute actions against any third party that Licensee
reasonably believes is infringing the Trademarks, Licensee shall have the right
to prosecute such action independently and, if it exercises such right, it
shall
fund one hundred percent (100%) of the costs and expenses thereof and be
entitled to one hundred percent (100%) of any recovery of monetary damages.
To
the extent that Licensor fails to fulfill its obligations pursuant to Section
3(a) and/or as necessary for Licensee prosecute actions against infringers
as
permitted in the preceding sentence, Licensor irrevocably constitutes and
appoints Licensee as its true and lawful representative and attorney-in-fact,
with full power and authority in its name, place and stead, to fulfill such
Licensor obligations and prosecute such actions. The foregoing grant of
authority is a special power of attorney coupled with an interest, shall be
irrevocable and shall continue in full force and effect notwithstanding the
subsequent merger, dissolution or other termination of the existence of
Licensor.
(c)
If
either party shall become aware of any infringement by third parties of any
right licensed under this Agreement or any other use of the Trademarks or any
term confusingly similar to the Trademarks, such party shall promptly notify
the
other party of that infringement or use.
(d)
The
parties shall promptly do such acts and execute, acknowledge, and deliver such
documentation as is necessary for the parties to fulfill their respective
obligations pursuant to this Section 3.
4.
Warranties
and Representations; Indemnification.
(a)
Licensor warrants, represents and covenants that (i) it is the owner of all
right, title, and interest in and to the Trademarks and has the sole and
exclusive right to license the Trademarks, to enter into this Agreement, and
to
agree to the terms and conditions hereof, (ii) it has received no notice of,
and
there are not currently pending or threatened, any actions, claims or
proceedings relating, directly or indirectly, to the Trademarks, and (iii)
the
Trademarks do not infringe upon or otherwise violate the trademark, intellectual
property or proprietary rights of any
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third
party. (b) Licensor hereby agrees to indemnify, defend and hold harmless
Licensee, its members and managers, their affiliates, and all of their
respective members, managers, officers, directors, employees, agents and
representatives from and against any and all third party claims relating,
directly or indirectly, to the breach of Licensor’s representations, warranties,
covenants and/or agreements including, without limitation, all liability,
losses, judgments, settlements, costs and expenses relating thereto (reasonable
attorneys’ fees, etc.). For the avoidance of doubt (and not by way of
limitation) in the event that a third party claims that Licensee’s use of the
Trademarks as contemplated hereunder infringes, violates or misappropriates
the
rights of such third party, Licensor shall be responsible for one hundred
percent (100%) of the costs and expenses incurred by Licensee as a result of
such claim (including, without limitation, reasonable attorneys’ fees) and for
fully indemnifying, defending and holding Licensee harmless in connection with
such claim.
5.
Termination;
Effect of Termination.
(a)
This Agreement may be terminated as follows: (i) if either Licensee or Licensor
materially fails to perform any of their respective obligations under this
Agreement, or otherwise materially breaches any of their respective
representations, warranties, covenants and agreements contained herein, the
other party may terminate this Agreement upon thirty (30) days' prior written
notice; provided,
however,
that
the non-performing or breaching party shall not have remedied such
nonperformance or breach during such thirty (30) day period, (ii) if GFV
materially fails to perform any of its obligations pursuant to the Operating
Agreement, or otherwise materially breaches any of its representations,
warranties, covenants and agreements contained in the Operating Agreement,
Licensor may terminate this Agreement upon thirty (30) days' prior written
notice; provided,
however,
that
GFV shall not have remedied such nonperformance or breach during such thirty
(30) day period, or (iii) upon the dissolution or bankruptcy of Licensee. (b)
Upon the termination of the Agreement, all rights granted to Licensee under
this
Agreement shall automatically revert to Licensor; provided,
however,
that
Licensee and any third party deriving rights therefrom may sell existing
inventories of Footwear on a nonexclusive basis for a period of one hundred
eighty (180) days, subject to all of the other terms and conditions of this
Agreement.
6.
Miscellaneous.
(a)
Notices.
All
notices or other instruments or communications given pursuant to this Agreement
shall be in writing, signed by the party giving the same, and shall be delivered
by hand or sent by registered or certified United States mail, return receipt
requested, postage prepaid, or by a recognized overnight delivery service,
addressed to the parties at their addresses set forth above. A party may, by
notice to the other party, specify any other address for the receipt of such
notices, instruments or communications. Except as expressly provided in this
Agreement, any notice, instrument or other communication shall be deemed
properly given only when received, or upon refusal of receipt, by the party
to
whom it is sent.
(b)
Governing
Law.
This
Agreement shall be governed by and construed in accordance with the laws of
the
State of New Jersey, excluding any conflict-of-laws rule or principle that
might
refer the governance, construction or interpretation of this Agreement to the
laws of another State.
(c)
Binding
Agreement.
This
Agreement shall be binding upon and inure to the benefit of the parties and
their successors and assigns.
(d)
Severability.
Each
term and provision of this Agreement is intended to be severable. If any term
or
provision of this Agreement is determined by a court of competent jurisdiction
to be unenforceable for any reason whatsoever that term or provision shall
be
ineffectual and void and the validity of the remainder of this Agreement shall
not be adversely affected thereby.
(e)
Entire
Agreement.
This
Agreement (including the exhibits hereto, all of which are incorporated herein
by reference) supersedes any and all other understandings and agreements, either
oral or in writing, between the parties with respect to the subject matter
hereof. The Recitals to this Agreement are an integral part hereof and are
incorporated herein by reference.
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(f) Amendment
or Modification.
This
Agreement (including the exhibits hereto) may be amended or modified from time
to time only by a written agreement executed by authorized representatives
of
the parties hereto.
(g) Reports
and Records.
To the
extent that Licensor or its members do not have access to the underlying
information, Licensee shall (upon Licensor’s written request) furnish Licensor
with semiannual reports of all sales of all products subject to this Agreement
and of all sublicensing agreements hereunder. Licensor shall have the right
to
inspect the books and records of Licensee relating to sales of all products
subject to this agreement and to all sublicensing agreements
hereunder.
(h) Offset.
Licensee shall have the right to offset any amounts payable by Licensor in
connection with this Agreement or related to the Trademarks against any amounts
payable by Licensee to Licensor (pursuant to the Operating Agreement or
otherwise).
(i) Customer
List.
The
customer list set forth in Exhibit
B
shall be
deemed a trade secret of Licensor and may not be divulged by Licensee to any
third party without the express written consent of Licensor. Upon the
termination of this Agreement, Licensee shall return any and all copies of
such
customer list to Licensor.
IN
WITNESS WHEREOF, each of the parties to this Agreement has caused this Agreement
to be executed by its duly authorized officers on the Effective
Date.
In
Stride
L.L.C., t/a InStride Shoes L.L.C.
InStride
Ventures, LLC
BY:_________________________________ BY:_________________________________
Name: Name:
Title:
Title:
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