EXHIBIT 10.50
TRADEMARK SECURITY AGREEMENT
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THIS TRADEMARK SECURITY AGREEMENT is made as of August 16, 1996 (this
"Agreement"), by and between Visual Numerics, Inc., a Texas corporation
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("Borrower"), and ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, an individual ("Lender").
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W I T N E S S E T H:
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WHEREAS, Borrower and Lender are parties to that certain Loan and
Security Agreement of even date herewith (as the same may hereafter be modified,
amended, restated or supplemented from time to time, the "Loan Agreement"),
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pursuant to which Lender may, from time to time, extend credit to Borrower; and
WHEREAS, Lender has required Borrower to execute and deliver this
Agreement (i) in order to secure the prompt and complete payment, observance and
performance of all of the Borrower's "Liabilities" (as defined in the Loan
Agreement) and (ii) as a condition precedent to any extension of credit under
the Loan Agreement;
NOW, THEREFORE, in consideration of the premises set forth herein and
for other good and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, Borrower agrees as follows:
1. Defined Terms.
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(A) Unless otherwise defined herein, each capitalized term used
herein that is defined in the Loan Agreement shall have the meaning specified
for such term in the Loan Agreement.
(B) The words "hereof," "herein" and "hereunder" and words of like
import when used in this Agreement shall refer to this Agreement as a whole and
not to any particular provision of this Agreement, and section or paragraph
references are to this Agreement unless otherwise specified.
(C) All terms defined in this Agreement in the singular shall have
comparable meanings when used in the plural, and vice versa, unless otherwise
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specified.
2. Incorporation of Premises. The premises set forth above are
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incorporated into this Agreement by this reference thereto and are made a part
hereof.
3. Incorporation of the Loan Agreement. The Loan Agreement and the
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terms and provisions thereof are hereby incorporated herein in their entirety by
this reference thereto and are made a part hereof.
4. Security Interest in Trademarks. To secure the complete and
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timely payment, performance and satisfaction of all
of the Liabilities of Borrower, Borrower hereby grants to Lender a security
interest in, as and by way of a first mortgage and security interest having
priority over all other security interests, with power of sale to the extent
permitted by applicable law, all of Borrower's now owned or existing and
hereafter acquired or arising:
(A) trademarks, registered trademarks, trademark applications,
service marks, registered service marks and service ▇▇▇▇ applications,
including, without limitation, the trademarks, registered trademarks,
trademark applications, service marks, registered service marks and service
▇▇▇▇ applications listed on Schedule A attached hereto and made a part
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hereof, and (i) all renewals thereof, (ii) all income, royalties, damages
and payments now and hereafter due and/or payable under and with respect
thereto, including, without limitation, payments under all licenses entered
into in connection therewith and damages and payments for past or future
infringements or dilutions thereof, (iii) the right to ▇▇▇ for past,
present and future infringements and dilutions thereof, (iv) the goodwill
of Borrower's business symbolized by the foregoing and connected therewith,
and (v) all of Borrower's rights corresponding thereto throughout the world
(all of the foregoing trademarks, registered trademarks and trademark
applications, and service marks, registered service marks and service ▇▇▇▇
applications, together with the items described in clauses (i)-(v) in this
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paragraph 4(A), are sometimes hereinafter individually and/or collectively
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referred to as the "Trademarks"); and
(B) rights under or interests in any trademark license agreements or
service ▇▇▇▇ license agreements with any other party, whether Borrower is a
licensee or licensor under any such license agreement, including, without
limitation, those trademark license agreements and service ▇▇▇▇ license
agreements listed on Schedule B attached hereto and made a part hereof,
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together with any goodwill connected with and symbolized by any such
trademark license agreements or service ▇▇▇▇ license agreements, and the
right to prepare for sale and sell any and all Inventory now or hereafter
owned by Borrower and now or hereafter covered by such licenses (all of the
foregoing are hereinafter referred to collectively as the "Licenses").
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Notwithstanding the foregoing provisions of this paragraph 4(B), the
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Licenses shall not include any license agreement in effect as of the date
hereof which by its terms prohibits the grant of the security contemplated
by this Agreement; provided, however, that upon the termination of such
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prohibitions for any reason whatsoever, the provision of this paragraph 4
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shall be deemed to apply thereto automatically.
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5. Restrictions on Future Agreements. Borrower will not, without
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Lender's prior written consent, enter into any agreement, including, without
limitation, any license agreement, which is inconsistent with this Agreement,
and Borrower further agrees that it will not take any action, and will use its
best efforts not to permit any action to be taken by others, including, without
limitation, licensees, or fail to take any action, which would in any respect
affect the validity or enforcement of the rights transferred to Lender under
this Agreement or the rights associated with the Trademarks or Licenses.
6. New Trademarks and Licenses. Borrower represents and warrants
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that, (i) the Trademarks listed on Schedule A include all of the trademarks,
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registered trademarks, trademark applications, service marks, registered service
marks and service ▇▇▇▇ applications now owned or held by Borrower, (ii) the
Licenses listed on Schedule B include all of the trademark license agreements
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and service ▇▇▇▇ license agreements under which Borrower is the licensee or
licensor, (iii) there are no Liens, claims or encumbrances in such Trademarks
and Licenses as of the date hereof and (iv) no Liens, claims or encumbrances in
such Trademarks and Licenses will be granted by Borrower to any Person or
asserted by any Person against Borrower other than Lender. If, prior to the
termination of this Agreement, Borrower shall (a) obtain rights to any new
trademarks, registered trademarks, trademark applications, service marks,
registered service marks or service ▇▇▇▇ applications, (b) become entitled to
the benefit of any trademarks, registered trademarks, trademark applications,
trademark licenses, trademark license renewals, service marks, registered
service marks, service ▇▇▇▇ applications, service ▇▇▇▇ licenses or service ▇▇▇▇
license renewals whether as licensee or licensor, or (c) enter into any new
trademark license agreement or service ▇▇▇▇ license agreement, the provisions of
paragraph 4 above shall automatically apply thereto. Borrower shall give to
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Lender written notice of events described in clauses (a), (b) and (c) of the
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preceding sentence promptly after the occurrence thereof, but in any event not
less frequently than on a quarterly basis. Borrower hereby authorizes Lender to
modify this Agreement unilaterally (x) by amending Schedule A to include any
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future trademarks, registered trademarks, trademark applications, service marks,
registered service marks and service ▇▇▇▇ applications and by amending Schedule
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B to include any future trademark license agreements and service ▇▇▇▇ license
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agreements, which are Trademarks or Licenses under paragraph 4 above or under
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this paragraph 6, and (y) by filing, in addition to and not in substitution for
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this Agreement, a duplicate original of this Agreement containing on Schedule A
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or Schedule B thereto, as the case may be, such future trademarks, registered
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trademarks, trademark applications, service marks, registered service marks and
service ▇▇▇▇ applications, and trademark license agreements and service ▇▇▇▇
license agreements.
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7. Royalties. Borrower hereby agrees that the use by Lender of the
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Trademarks and Licenses as authorized hereunder in connection with Lender's
exercise of its rights and remedies under paragraph 15 or pursuant to subsection
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8.2 of the Loan Agreement shall be coextensive with Borrower's rights thereunder
and with respect thereto and without any liability to Borrower for royalties or
other related charges from Lender.
8. Right to Inspect; Further Assignments and Security Interests.
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Lender may at all reasonable times (and at any time when an Event of Default or
Default exists) have access to, examine, audit, make copies (at Borrower's
expense) and extracts from and inspect Borrower's premises and examine
Borrower's books, records and operations relating to the Trademarks and
Licenses. From and after the occurrence of an Event of Default or a Default,
Borrower agrees that Lender, or a conservator appointed by Lender, shall have
the right to establish such reasonable additional product quality controls as
Lender or such conservator, in its sole and absolute judgment, may deem
necessary to assure maintenance of the quality of products sold by borrower
under the Trademarks and the Licenses or in connection with which such
Trademarks and Licenses are used. Borrower agrees (i) not to sell or assign its
respective interests in, or grant any license under, the Trademarks or the
Licenses without the prior written consent of Lender, (ii) to maintain the
quality of such products as of the date hereof, and (iii) not to change the
quality of such products in any material respect without Lender's prior written
consent.
9. Nature and Continuation of Lender's Security Interest;
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Termination of Lender's Security Interest. This Agreement is made for
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collateral security purposes only. This Agreement shall create a continuing
security interest in the Trademarks and Licenses and shall terminate only when
the Liabilities have been paid in full in cash and the Loan Agreement has been
terminated. When this Agreement has terminated, Lender shall promptly execute
and deliver to Borrower, at Borrower's expense, all termination statements and
other instruments as may be necessary or proper to terminate Lender's security
interest in the Trademarks and the Licenses, subject to any disposition thereof
which may have been made by Lender pursuant to this Agreement or the Loan
Agreement.
10. Duties of Borrower. Borrower shall have the duty, to the extent
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desirable in the normal conduct of Borrower's business, to: (i) prosecute
diligently and in good faith any trademark application or service ▇▇▇▇
application that is part of the Trademarks pending as of the date hereof or
hereafter until the termination of this Agreement, and (ii) make application for
trademarks or service marks. Borrower further agrees to use its best efforts to
maintain in full force and effect the Trademarks and the Licenses that are or
shall be necessary or economically
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desirable in the operation of Borrower's business. Any expenses incurred in
connection with the foregoing shall be borne by Borrower. Lender shall not have
any duty with respect to the Trademarks and Licenses. Without limiting the
generality of the foregoing, Lender shall not be under any obligation to take
any steps necessary to preserve rights in the Trademarks or Licenses against any
other parties, but may do so at its option from and after the occurrence of an
Event of Default or a Default, and all expenses incurred in connection therewith
shall be for the sole account of Borrower and shall be added to the Liabilities
secured hereby.
11. Lender's Right to ▇▇▇. From and after the occurrence of an Event
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of Default or a Default, Lender shall have the right, but shall not be
obligated, to bring suit in its own name to enforce the Trademarks and the
Licenses and, if Lender shall commence any such suit, Borrower shall, at the
request of Lender, do any and all lawful acts and execute any and all proper
documents required by Lender in aid of such enforcement. Borrower shall, upon
demand, promptly reimburse Lender for all costs and expenses incurred by Lender
in the exercise of its rights under this paragraph 11 (including, without
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limitation, fees and expenses of attorneys and paralegals for Lender).
12. Waivers. Lender's failure, at any time or times hereafter, to
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require strict performance by Borrower of any provision of this Agreement shall
not waive, affect or diminish any right of Lender thereafter to demand strict
compliance and performance therewith nor shall any course of dealing between
Borrower and Lender have such effect. No single or partial exercise of any
right hereunder shall preclude any other or further exercise thereof or the
exercise of any other right. None of the undertakings, agreements, warranties,
covenants and representations of Borrower contained in this Agreement shall be
deemed to have been suspended or waived by Lender unless such suspension or
waiver is in writing signed by an officer of Lender and directed to Borrower
specifying such suspension or waiver.
13. Severability. Whenever possible, each provision of this
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Agreement shall be interpreted in such manner as to be effective and valid under
applicable law, but the provisions of this Agreement are severable, and if any
clause or provision shall be held invalid and unenforceable in whole or in part
in any jurisdiction, then such invalidity or unenforceability shall affect only
such clause or provision, or part hereof, in such jurisdiction, and shall not in
any manner affect such clause or provision in any other jurisdiction, or any
other clause or provision of this Agreement in any jurisdiction.
14. Modification. This Agreement cannot be altered, amended or
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modified in any way, except as specifically provided in paragraphs 4 and 6
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hereof or by a writing signed by the parties hereto.
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15. Cumulative Remedies; Power of Attorney. Borrower hereby
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irrevocably designates, constitutes and appoints Lender (and all Persons
designated by Lender in its sole and absolute discretion) as Borrower's true and
lawful attorney-in-fact, and authorizes Lender and any of Lender's designees, in
Borrower's or Lender's name, to take any action and execute any instrument to
the extent necessary to accomplish the purposes of this Agreement, including,
without limitation, from and after the occurrence of an Event of Default or a
Default and the giving by Lender of notice to Borrower of Lender's intention to
enforce its rights and claims against Borrower, to (i) endorse Borrower's name
on all applications, documents, papers and instruments necessary or desirable
for Lender in the use of the Trademarks or the Licenses, (ii) assign, pledge,
convey or otherwise transfer title in or dispose of the Trademarks or the
Licenses to anyone, (iii) grant or issue any exclusive or nonexclusive license
under the Trademarks or, to the extent permitted, under the Licenses, to anyone,
and (iv) take any other actions with respect to the Trademarks or the Licenses
as Lender deems in its best interest. Borrower hereby ratifies all that such
attorney shall lawfully do or cause to be done by virtue hereof. This power of
attorney is coupled with an interest and shall be irrevocable until all of the
Liabilities shall have been paid in full in cash and the Loan Agreement shall
have been terminated. Borrower acknowledges and agrees that this Agreement is
not intended to limit or restrict in any way the rights and remedies of Lender
under the Loan Agreement or any of the Financing Agreements, but rather is
intended to facilitate the exercise of such rights and remedies.
Lender shall have, in addition to all other rights and remedies given
it by the terms of this Agreement, all rights and remedies allowed by law and
the rights and remedies of a secured party under the Uniform Commercial Code as
enacted in any jurisdiction in which the Trademarks or the Licenses may be
located or deemed located. Upon the occurrence of an Event of Default or a
Default and the election by Lender to exercise any of its remedies under Section
9-504 or Section 9-505 of the Uniform Commercial Code with respect to the
Trademarks and Licenses, Borrower agrees to assign, convey and otherwise
transfer title in and to the Trademarks and the Licenses to Lender or any
transferee of Lender and to execute and deliver to Lender or any such transferee
all such agreements, documents and instruments as may be necessary, in Lender's
sole discretion, to effect such assignment, conveyance and transfer. All of
Lender's rights and remedies with respect to the Trademarks and the Licenses,
whether established hereby, by the Loan Agreement, by any other agreements or by
law, shall be cumulative and may be exercised separately or concurrently.
Notwithstanding anything set forth herein to the contrary, it is hereby
expressly agreed that upon the occurrence of an Event of Default or a Default,
Lender may exercise any of the rights and remedies provided in
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this Agreement, the Loan Agreement and any of the other Financing Agreements.
16. Successors and Assigns. This Agreement shall be binding upon
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Borrower and its successors and assigns, and shall inure to the benefit of
Lender and its nominees, successors and assigns. Borrower's successors and
assigns shall include, without limitation, a receiver, trustee or debtor-in-
possession of or for Borrower; provided, however, that Borrower shall not
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voluntarily assign or transfer its rights or obligations hereunder without
Lender's prior written consent.
17. Governing Law. Lender and Borrower hereby accept this Agreement
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at Chicago, Illinois by signing and delivering it there. Any dispute between
Lender and Borrower arising out of, connected with, related to, or incidental to
the relationship between them in connection with this Agreement, and whether
arising in contract, tort, equity, or otherwise, shall be resolved in accordance
with the internal laws (as opposed to conflict of laws provisions) of the State
of Illinois.
18. Notices. All notices or other communications hereunder shall be
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given in the manner and to the addresses set forth in the Loan Agreement.
19. Section Titles. The section and paragraph titles herein are for
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convenience of reference only, and shall not affect in any way the
interpretation of any of the provisions hereof.
20. Execution in Counterparts. This Agreement may be executed in any
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number of counterparts and by different parties hereto in separate counterparts,
each of which when so executed shall be deemed to be an original and all of
which taken together shall constitute one and the same agreement.
[The Balance of This Page Intentionally Left Blank]
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IN WITNESS WHEREOF, the parties hereto have duly executed this
Agreement as of the day and year first above written.
VISUAL NUMERICS, INC., a Texas corporation
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
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Name:
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Title:
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ACCEPTED AND AGREED:
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, an individual
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
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Schedule A
to
Trademark Security Agreement
Dated as of August 16, 1996
TRADEMARKS AND TRADEMARK AND SERVICE ▇▇▇▇ APPLICATIONS
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REGISTERED U.S. TRADEMARKS AND SERVICE MARKS
DATE OF
REGISTRATION NO. REGISTRATION
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TRADE ▇▇▇▇
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1. IMSL No. 1,276,046 May 1, 1984
2. IMSL No. 1,183,603 December 29, 1981
3. exponent GRAPHICS No. 1663225 November 11, 1991
4. MATH/LIBRARY No. 1728710 October 27, 1992
SERVICE ▇▇▇▇
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1. IMSL No. 1,163,151 July 28, 1981
2. IMSL No. 1,678,900 March 10, 1992
PENDING APPLICATIONS FOR
U.S. TRADEMARK/SERVICE ▇▇▇▇ REGISTRATION
▇▇▇▇ SERIAL NO. FILING DATE
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1. STAT/LIBRARY No. 74/296622 July 22, 1992
Schedule B
to
Trademark Security Agreement
Dated as of August 16, 1996
LICENSE AGREEMENTS
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All licenses relating to the property described in Schedule A.
STATE OF ILLINOIS )
) SS
COUNTY OF ▇▇▇▇ )
The foregoing Trademark Security Agreement was acknowledged before me
this ___ day of August, 1996, by ______________________________, the
____________________________ of Visual Numerics, Inc., a Texas corporation, on
behalf of such corporation.
___________________________________
Notary Public
My commission expires: ____________
STATE OF ILLINOIS )
) SS
COUNTY OF ▇▇▇▇ )
The foregoing Trademark Security Agreement was acknowledged before me
this ___ day of August, 1996, by ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, an individual.
___________________________________
Notary Public
My commission expires: ____________