EXHIBIT 10.33
TRADEMARK LICENSE AGREEMENT
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THIS TRADEMARK LICENSE AGREEMENT ("Agreement"), effective as of December
1, 2004, is made by and between CARALOE, INC. ("Licensor"), a Texas
corporation, having its principal place of business at ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇, and MANNATECH, INC., ("Licensee"), a Texas
corporation, having its principal place of business at ▇▇▇ ▇. ▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇.
W I T N E S S E T H:
- - - - - - - - - -
WHEREAS, simultaneously with the execution of this Agreement, Licensor
and Licensee are entering into a non-exclusive Supply Agreement of even date
herewith (the "Supply Agreement") for the sale by Licensor and purchase
by Licensee, through its manufacturer, Natural Alternatives Incorporated
("NAI") of bulk aloe ▇▇▇▇ mucilaginous polysaccharide (hereinafter referred
to under the product name of "Manapol[R] powder") to be used in products
manufactured by Licensee and NAI (the "Manufactured Products");
WHEREAS, ▇▇▇▇▇▇▇▇▇▇ Laboratories, Inc., a Texas corporation
("▇▇▇▇▇▇▇▇▇▇"), claims the ownership of the trademark Manapol[R] (the
"▇▇▇▇") and has granted to Licensor a license to use the ▇▇▇▇ and to license
others to use it on an exclusive and/or a non-exclusive basis;
WHEREAS, Licensee is desirous of obtaining from Licensor, and Licensor is
willing to grant to Licensee, a license to use the product name Manapol[R]
(the "▇▇▇▇") in connection with the advertising and sale of the Manufactured
Products subject to the terms, conditions and restrictions set forth herein;
and
WHEREAS, Licensor and Licensee are mutually desirous of insuring the
consistent quality of all products sold in connection with the ▇▇▇▇;
NOW, THEREFORE, in consideration of premises, the mutual covenants,
promises and agreement set forth herein, and other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged,
the parties hereby covenant, promise and agree as follows:
Article 1
LICENSE
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1.1 Terms and Conditions. Licensor hereby grants to Licensee the non-
transferable right and license to use the ▇▇▇▇ in connection with the
labeling, advertising and sale of Manufactured Products manufactured and
sold by Licensee during the Term of this Agreement. During the Term of this
Agreement, Licensee shall have (a) the non-exclusive right to use the ▇▇▇▇
in connection with Manufactured Products containing Manapol[R] powder that
are intended for sale to the ultimate consumer in the United States, Canada,
and Mexico, and (b) the non-exclusive right to use the ▇▇▇▇ in connection
with Manufactured Products containing Manapol[R] powder that are intended
for sale to the ultimate consumer in places other that the United States,
Canada and Mexico, that are specifically and mutually agreed upon from time
to time and listed in Exhibit A hereto. The countries in Exhibit A may be
removed by Caraloe upon written notice to Mannatech that an exclusive
Trademark License Agreement has been executed for that country. In that
event, Mannatech shall no longer be allowed to use the Manapol[R] Trademark
within the country removed by Caraloe after its existing supplies have been
exhausted. Relative to Japan, Mannatech may use the Trademark on a non-
exclusive basis under the same conditions as those listed in Exhibit A
except no drink may be sold using Manapol[R] powder or the Trademark.
1.2 License Coterminous With Supply Agreement. The license granted by
this Agreement shall run conterminously with the Supply Agreement, and any
actions or events which shall operate to extend or terminate the Supply
Agreement shall automatically extend or terminate this Agreement
simultaneously.
1.3 Sublicenses. Licensee shall not have the right to grant sublicenses
without the written permission of Licensor with respect to the license
granted herein; however, Licensee may engage a third party or parties to
make and affix labels for the Manufactured Products in compliance with
Articles 2, 3, and 4 hereof, and/or to distribute and sell the Manufactured
Products in compliance with the terms and conditions of this Agreement.
Licensee shall be expressly obligated to ensure full compliance with all
terms and conditions of this Agreement.
Article 2
CERTAIN OBLIGATIONS OF LICENSEE AND LICENSOR
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2.1 Representations by Licensee. Licensee shall not represent in any
manner that it owns any right, title or interest in or to the ▇▇▇▇.
Licensee acknowledges that its use of the ▇▇▇▇ shall inure to the benefit of
Licensor and shall not create in Licensee's favor any right, title or
interest in or to the ▇▇▇▇.
2.2 Discontinuation of Use of ▇▇▇▇. Upon the expiration or termination
of this Agreement, Licensee will cease and desist from all use of the ▇▇▇▇
in any manner and will not adopt or use, without Licensor's prior written
consent, any work or ▇▇▇▇ which is confusingly or deceptively similar to the
▇▇▇▇, except that Licensee may continue to use the ▇▇▇▇ under the terms and
conditions of this Agreement in connection with any remaining supplies of
Manapol[R] powder purchased by Licensee from Licensor until such supplies
are exhausted.
2.3 FDA Compliance of Products. All products on which the ▇▇▇▇ is
used by Licensee shall be manufactured, packaged, labeled, advertised,
marketed and sold in compliance with (i) the Federal Food, Drug and Cosmetic
Act and the rules and regulations promulgated thereunder, as amended from
time to time if sold for use within the United States, and (ii) all other
applicable laws, rules and regulations if sold for use outside the United
States.
2.4 Inspection. Upon reasonable notice, Licensor reserves the right to
inspect Licensee's products bearing the ▇▇▇▇ and Licensee's manufacturing
facilities at all reasonable times to insure Licensee's compliance with this
Agreement.
2.5 Use of Trademark. Licensee shall not use the ▇▇▇▇ except as
specifically set forth herein. Without limiting the generality of the
preceding sentence, Licensee shall not use the ▇▇▇▇ in connection with the
sale or advertising of any products other than the Manufactured Products.
Any use of the trademark, "Manapol[R]" pursuant to this agreement is non-
exclusive. Whenever the Licensee uses the trademark, "Manapol[R]", it shall
also indicate that such name is the registered trademark of Licensor and
shall take all reasonable measures to assure that there is no confusion of
ownership of the ▇▇▇▇ or the substance which it identifies, the same being
the proprietary property of the Licensee. Likewise, Licensor, if referring
to Ambrotose[R], shall indicate that the same is the trademark of Mannatech
and shall take all reasonable measures to assure that there is no confusion
of ownership of the ▇▇▇▇ or the substance which it identifies, the same
being the proprietary property of the Licensee.
2.6 Trademark Registration. At Licensor's request and expense and,
except as otherwise provided herein at Licensor's sole discretion and
option, Licensee shall take whatever action is reasonably necessary to
assist ▇▇▇▇▇▇▇▇▇▇ or its assigns in registering the ▇▇▇▇ with the U.S.
Patent and Trademark Office ("USPTO") and/or in perfecting, protecting or
enforcing ▇▇▇▇▇▇▇▇▇▇'▇ and Licensor's rights in and to the ▇▇▇▇. Licensee
understands that ▇▇▇▇▇▇▇▇▇▇ or its assigns may rely solely on Licensee's use
of the ▇▇▇▇ to obtain or maintain registration with the USPTO.
Article 3
MANUFACTURING AND SALE
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3.1 Manufacturing Facilities. All manufacturing of the Manufactured
Products shall be done in the Licensee's own facilities or qualified
contract manufacturing facilities.
3.2 Combination with Other Products. Licensee shall not combine
Manapol[R] powder with any product or substance in any manner which would
violate any laws, rules or regulations of any state, federal or other
governmental body in which the Manufactured Products are sold. Licensee
shall not combine Manapol[R] powder with any other substance in a
Manufactured Product that is to be advertised or sold for use or consumption
by humans or animals if the approval of the U.S. Food and Drug
Administration (the "FDA") or the U.S. Department of Agriculture ("USDA")
for such use or consumption is required and has not been obtained.
3.3 Compliance by Third Parties. Licensee shall take all steps
necessary to ensure that its distributors and any other parties to whom it
sells any of the Manufactured Products for resale do not re-label,
repackage, advertise, sell or attempt to sell MANAPOL[R] powder or any of
the Manufactured Products in a manner that would violate this Agreement is
done by Licensee.
Article 4
LABELS AND ADVERTISING
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4.1 FDA Compliance of Labels and Advertising. All labels and
advertising relating to the Manufactured Products offered in connection with
the ▇▇▇▇ must strictly comply with all applicable rules and regulations of
the FDA if sold for use within the United States, and all other applicable
laws, rules and regulations wherever sold. Information regarding the
ingredients of Manapol[R] powder shall be furnished to Licensee by Licensor
from time to time.
4.2 Mandatory Requirements. Licensee shall cause all labels, packaging,
advertising and promotional materials used by it in advertising, marketing
and selling any product manufactured by or on behalf of Licensee that
contains Manapol[R] to contain (i) the ▇▇▇▇, (ii) a statement setting forth
the concentration of Manapol[R] powder contained in such product, and (iii)
the following legend:
Manapol[R] is a registered trademark of ▇▇▇▇▇▇▇▇▇▇ Laboratories, Inc.
4.3 Claims by Licensee. Licensee hereby agrees not to make, or permit
any of its employees, agents or distributors to make any claims of any
properties or results relating to Manapol[R] powder or any Manufactured
Product which would violate any applicable law.
4.4 FDA or USDA Approval of Claims. If Licensee desires to seek FDA or
USDA approval as to any specific claims with respect to Manapol[R] powder or
any Manufactured Product, Licensee herby agrees to (i) notify Licensor of
the claims and the application prior to filing and (ii) to keep Licensor
informed as to the progress of the application, including but not limited to
sending Licensor copies of all communications or notes to or from the FDA or
USDA, as applicable.
4.5 Right to Approve Labels, etc. If Licensor so requests, Licensee
shall not use any label, advertisement or marketing material that contains
the ▇▇▇▇ unless such label, advertisement or marketing material has first
been submitted to and approved by Licensor. Licensor shall not unreasonably
withhold its approval of any such label, advertisement or marketing
material.
Article 5
NEGATION OF WARRANTIES, DISCLAIMER AND INDEMNITY
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5.1 Negation of Warranties, etc. Nothing in this Agreement shall be
construe or interpreted as:
(a) a warranty or representation by Licensor that any
product made, used, sold or otherwise disposed of under the
license granted in this Agreement is or will be free of
infringement or the like of the rights of third parties; or
(b) an obligation by Licensor to bring or prosecute actions
or suits against third parties for infringement or the like of the
▇▇▇▇ or of any registration that may subsequently be granted for
such ▇▇▇▇; or
(c) granting by implication, estoppel or otherwise any
licenses or rights other than those expressly granted hereunder.
5.2 Disclaimer. LICENSOR MAKES NO REPRESENTATIONS, EXTENDS NO
WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED
TO WARRANTIES OF MERCHANTABILITY, FITNESS AND FITNESS FOR A PARTICULAR
PURPOSE, AND ASSUMES NO RESPONSIBILITIES WHATSOEVER WITH RESPECT TO THE USE,
SALE OR OTHER DISPOSITION BY LICENSEE OR ITS CUSTOMERS, VENDORS OR OTHER
TRANSFEREES, WITH RESPECT TO THE ▇▇▇▇ OR ANY PRODUCTS MADE OR SOLD BY
LICENSEE. THE FOREGOING NOTWITHSTANDING, LICENSOR DOES REPRESENT THAT THE
Manapol[R] POWDER DOES MEET THE SPECIFICATIONS OUTLINED ON EXHIBIT A OF THE
SUPPLY AGREEMENT AND THAT IT IS A FOOD SUPPLEMENT UNDER THE FDA RULES AND
REGULATIONS.
5.3 Liability of Licensee for Products. Licensee shall assume all
financial and other obligations for the products made and sold by it under
this Agreement and Licensor shall not incur any liability or responsibility
to Licensee or to third parties arising out of or connected in any manner
with Licensee's products made or sold pursuant to this Agreement. In no
event shall Licensor be liable for lost profits, special damages,
consequential damages or contingent liabilities arising out of or connected
in any manner with this Agreement or the products made or sold by Licensee
under this Agreement.
5.4 Indemnity of Licensor. Licensee agrees to defend, indemnify and
hold Licensor, its officers, directors, employees and agents, harmless
against all claims, liabilities, demands, damages, expenses or losses
arising out of or connected with (a) the wrongful or negligent use by
Licensee of the ▇▇▇▇ or (b) any use, sale or other disposition of Licensee's
products by Licensee or by any other party.
5.5 Negation of Trademark Warranty. Licensee acknowledges that Licensor
makes no warranty, express or implied, with respect to its ownership of any
rights relating to the ▇▇▇▇.
Article 6
TERM AND TERMINATION
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6.1 Term. Unless terminated earlier as provided for herein, this
Agreement shall remain in full force and effect for a one (1)-year period
beginning on December 1, 2004 and ending at midnight on November 30, 2005.
This Agreement may be extended or renewed as provided in Section 1.2, or
otherwise by the written agreement of the parties.
6.2 Breach of Agreement. Except as provided otherwise in Section 6.3,
if either party breaches any material provision of this Agreement and fails
to cure the breach within thirty (30) days after receipt of written notice
from the nonbreaching party specifying the breach, then the nonbreaching
party may terminate this Agreement upon written notice to the breaching
party, which right of termination shall be in addition to, and not in lieu
of, all other tights and remedies the nonbreaching party may have against
the breaching party under this Agreement, at law or in equity. Failure by
Licensor to give notice of termination with respect to any such failure
shall not be deemed a waiver of its right at a later date to give such
notice if such failure continues or again occurs, or if another failure
occurs. A breach by either party of a material provision of the Supply
Agreement shall be deemed a breach by such party of a material provision of
this Agreement.
6.3 Immediate Termination. Licensor may immediately terminate this
Agreement, upon written notice to Licensee, upon the occurrence of any one
or more of the following events: (i) Licensee breaches any provision of
Articles 2, 3, or 4; (ii) Licensee fails to purchase and/or to pay for the
quantities of Manapol[R] powder that it is obligated to purchase and pay for
under the Supply Agreement in accordance with the terms thereof; (iii)
Licensee voluntarily seeks protection under any federal or state bankruptcy
or insolvency laws; (iv) a petition for bankruptcy or the appointment of a
receiver is filed against Licensee and is not dismissed within thirty (30)
days thereafter; (v) Licensee makes any assignment for the benefit of its
creditors; or (vi) Licensee ceases doing business.
6.4 Survival of Provisions. In the event of termination, cancellation
or expiration of this Agreement for any reason, Sections 2.2, 2.3, 5.1, 5.2,
5.3, 5.4, 5.5 and 7.1 hereof shall survive such termination, cancellation or
expiration and remain in full force and effect.
Article 7
MISCELLANEOUS
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7.1 Equitable Relief. A breach or default by Licensee of any of the
provisions of Articles 2, 3 and 4 hereof shall cause Licensor to suffer
irreparable harm and, in such event, Licensor shall be entitled, as a matter
of right, to a restraining order and other injunctive relief from any court
of competent jurisdiction, restraining any further violation thereof by
Licensee, its officers, agents, servants, employees and those persons in
active concert or participation with them. The right to a restraining order
or other injunctive relief shall be supplemental to any other right or
remedy Licensor may have, including, without limitation, the recovery of
damages for the breach or default of any of the terms of this Agreement.
7.2 Amendment. This Agreement may be changed, modified, or amended only
by an instrument in writing duly executed by each of the parties hereto.
7.3 Entire Agreement. This Agreement constitutes the full and complete
agreement of the parties hereto and supersedes any and all prior
understandings, whether written or oral, with respect to the subject matter
hereof.
7.4 No Waiver. The failure of either party to insist upon strict
performance of any obligation hereunder by the other party, irrespective of
the length of time for which such failure continues, shall not be a waiver
of its right to demand strict compliance in the future. No consent or
waiver, express or implied, by either party to or of any breach or default
in the performance of any obligation hereunder by the other party shall
constitute a consent or waiver to or of any other breach or default in the
performance of the same or any other obligation hereunder.
7.5 Notices. All notices required or permitted to be made or given
pursuant to this Agreement shall be in writing and shall be considered as
properly given or made when personally delivered or when duly deposited in
the mails, first class mail, postage prepaid, or when transmitted by prepaid
telegram, and addressed to the applicable address first above written or to
such other address as the addressee shall have theretofore specified in a
written notice to the notifying party.
7.6 Assignment. This Agreement or any of the rights or obligations
created herein may be assigned, in whole or in part, by Licensor. However,
this Agreement is personal to Licensee, and Licensee may not assign this
Agreement or any of its rights, duties or obligations under this Agreement
to any third party without Licensor's prior written consent, and any
attempted assignment by Licensee not in accordance with this Sections 7.6
shall be void.
7.7 Relationship of Parties. Nothing contained herein shall be
construed to create or constitute any employment, agency, partnership or
joint venture arrangement by and between the parties, and neither of them
has the power or authority, express or implied, to obligate or bind the
other in any manner whatsoever.
7.8 Remedies Cumulative. Unless otherwise expressly provided herein,
the rights and remedies hereunder are in addition to, and not in limitation
of, any other rights and remedies, at law or in equity, and the exercise of
one right or remedy will not be deemed a waiver of any other right or
remedy.
7.9 Successors and Assigns. The provisions of this Agreement shall be
binding upon and inure to the benefit of the parties and their respective
successors and assigns, provided, however, that the foregoing shall not be
deemed to expand or otherwise affect the limitations on assignment and
delegation set forth in Section 7.6 hereof, and except as otherwise
expressly provided in this Agreement, no other person or business entity is
intended to or shall have any right or interest under this Agreement.
7.10 Governing Law. This Agreement shall be governed by and interpreted,
construed and enforced in accordance with the laws of the Sate of Texas,
excluding, however, any conflicts of law rules that would require the
application of the laws of any other state or country.
7.11 Headings. The headings used in this Agreement are for convenience
of reference only and shall not be used to interpret this Agreement.
7.12 Counterparts. This Agreement may be executed in multiple
counterparts, each of which shall be deemed an original and all of which
will constitute but one and the same instrument.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
by their duly authorized representatives as of the date first above written.
CARALOE, INC.
By: /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
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▇▇▇▇▇▇▇ ▇▇▇▇▇▇
Its: Chief Executive Officer
MANNATECH, INC.
By /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
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▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
Its: President
EXHIBIT A
Switzerland
The countries of the European Union as of December 1, 2004
Singapore
Malaysia
Australia
New Zealand
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