Exhibit 10.22
EXECUTION COPY
TRADEMARK LICENSE AGREEMENT
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THIS TRADEMARK LICENSE AGREEMENT (this "Agreement") is made as of this
15th day of November, 2001 the "Effective Date") by and between American Home
Products Corporation, a Delaware corporation having its principal place of
business at 0 Xxxxxxx Xxxxx, Xxxxxxx, XX 00000 ("AHPC"), and Women's First
Health Care (Women First) having its principal place of business at 00000 Xx
Xxxxxx Xxxxx, Xxxxx 000, Xxx Xxxxx, XX 00000.
1. AHPC and Women First are parties to that certain Asset
Purchase Agreement (the "Asset Purchase Agreement"), dated as of November 15,
2001 pursuant to which AHPC agreed to sell to Women First and Women First agreed
to purchase from AHPC the Product(s) (as defined in the Asset Purchase
Agreement).
2. AHPC is the owner of rights in, and the goodwill associated
with, the Licensed Trademarks (as defined below); and
3. AHPC and Women First desire to enter into this Agreement for
purposes of licensing Women First to use the Licensed Trademarks in the
Territory (as defined in the Asset Purchase Agreement).
NOW, THEREFORE, the parties hereto agree, as follows:
1. DEFINITIONS; RULES OF INTERPRETATION
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1.1 Definitions. Unless otherwise specifically provided herein,
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all defined terms herein shall have the meanings ascribed them in the Asset
Purchase Agreement in effect on the effective date of this Agreement. For
purposes of this Agreement, the
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term "Licensed Trademarks" shall mean each Licensed Trademarks described on
Exhibit A hereto.
1.2 Rules of Interpretation.
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(a) All definitions (whether set forth herein or by
reference) shall apply equally to both the singular
and plural forms of the terms defined.
(b) In the event that any of the terms or provisions of
this Agreement shall be in conflict with or be
inconsistent with any of the terms or provisions of
the Asset Purchase Agreement, the terms and
provisions of the Asset Purchase Agreement shall
govern.
2. GRANT OF LICENSE; ROYALTY
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2.1 License. Subject to the terms and conditions of this
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Agreement, during the Term, AHPC grants to Women First, and Women First accepts
from AHPC, the exclusive right and license to use (including in advertising,
promotional and marketing materials), copy, publicly display, and sublicense (it
being understood that any sublicensee shall be required to adhere to all terms
of this Agreement and Women First shall be responsible for any breach of this
Agreement by any sublicensee) the Licensed Trademarks solely in connection with
the sale, distribution, marketing, advertising and promotion in the Territory of
the Current Products as described in Exhibit A attached hereto (collectively
"Licensed Products"). Women First agrees that it shall not knowingly use the
Licensed Trademarks at any time outside the Territory or knowingly use any of
the Licensed Trademarks for any products other than Licensed Products, or for
any other purpose except as provided herein. AHPC agrees that it shall not use
or publicly display the Licensed Trademarks during the Term.
2.2 Limitation of Rights. Women First shall have the right to use
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the Licensed Trademarks only in the manner and to the extent specifically
permitted by this
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Agreement. AHPC retains all rights not expressly granted to Women First in this
Agreement. If Women First fails to pay to AHPC the payment required by Section
2.1 of the Asset Purchase Agreement when due, then Women First's rights to use
the Licensed Trademarks shall automatically and immediately terminate and Women
First shall immediately cease using the licensed Trademarks and immediately
execute and deliver to AHPC any documents or instruments reasonably requested by
AHPC to give full effect to the provisions of this Section 2.2.
3. TERM AND TERMINATION.
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3.1 Term. Unless earlier terminated pursuant to this Section 3,
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this Agreement shall continue on a Trademark by Trademark basis for the
respective term identified in Exhibit A attached hereto (the "Term"). For
purposes of clarity, AHPC agrees that the term of the license for the trademark
WYGESIC, Registration No. 1,055,196 shall expire two (2) years from when Women
First begins marketing WYGESIC or December 31, 2004, whichever comes first.
Further, for purposes of clarity, AHPC agrees that the term of the license for
the trademarks EQUAGESIC, Registration No. 682,783, and SYNALGOS, Registration
No. 2,463,891 to Women First shall expire upon payment in full by Women First
for a license to the trademarks in accordance with the payment schedule set
forth in the Asset Purchase Agreement, and at the conclusion of such payments,
AHPC shall assign the trademarks EQUAGESIC and SYNALGOS to Women First. To
facilitate the assignment of the trademarks EQUAGESIC and SYNALGOS to Women
First, AHPC agrees that it shall, at the request and expense of Women First,
perform or cause to be performed such acts and execute, acknowledge and deliver
at the request of Women First, such documents as may reasonably be required to
evidence or effectuate the assignment to Women First.
3.2 Termination. Notwithstanding the foregoing, this Agreement may
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be terminated by AHPC at any time upon written notice thereof to Women First
upon the occurrence of any of the following:
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(a) Breach of any duty or obligation of Women First hereunder not
cured within thirty (30) days after receipt of written notice
thereof from AHPC;
(b) Institution by Women First of bankruptcy, insolvency,
liquidation or receivership proceedings, or proceedings for
reorganization under bankruptcy or comparable laws, the
effectiveness of which is not stayed or dismissed within sixty
(60) days after such institution;
(c) Women Firsts' making of a general assignment for the benefit
of creditors; and
(d) Women Firsts' failure to use the Licensed Trademarks,
excluding WYGESIC, Trademark Registration No. 1,055,196, for
twelve months in connection with sales of the Licensed
Products.
4. EFFECTS OF TERMINATION.
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Upon the expiration or termination of this Agreement, Women First shall
(i) immediately discontinue all use of the Licensed Trademarks, their component
parts or any colorable imitations thereof, individually or in combination with
any other words, letters, symbols or designs and (ii) immediately take all
necessary action and execute and deliver to AHPC any documents and instruments
reasonably requested by AHPC to give full effect to the provisions of this
Section 4; provided, however, Women First may exercise its rights under this
Agreement to sell any unsold inventory of the Licensed Products for a period not
to exceed thirty (30) days after the expiration or termination of this
Agreement. The termination of this Agreement shall not affect any obligation
accruing prior to such termination. In the event that Women First fails promptly
upon written request by AHPC to comply with any of its agreements in this
Section 4, Women First hereby irrevocably consents to AHPC's taking any action
necessary to give effect to such agreements.
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5. REPRESENTATIONS AND WARRANTIES AND QUALITY CONTROL
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5.1 Representations and Warranties of Licensor. AHPC represents
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and warrants that (i) it is the sole owner of the intellectual property rights
in the Licensed Trademarks; (ii) it has the full power and authority to grant
the rights granted by this Agreement free and clear of any obligations to any
third party; (ii) the rights granted by AHPC to Women First under this Agreement
do not infringe any United States copyright, trademark, service xxxx, tradename,
or any other intellectual property (excluding patents) right of any third party;
and (iii) there is currently no actual or threatened suit by any third party
against AHPC that would directly or indirectly affect the intellectual property
rights granted by AHPC to Women First under this Agreement.
5.2 Quality Control. If any product sold under the Licensed
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Trademarks is not manufactured by AHPC, at least thirty (30) days prior to use,
or distribution thereof, Women First shall deliver to AHPC for inspection,
testing and/or review samples of product to be sold and all new, or changes to
existing, labels, packaging materials, brochures and advertising materials
bearing the Licensed Trademarks; and Women First shall not offer for sale, sell,
distribute or use any such new or changed product or materials without AHPC's
express prior written approval, which approval shall not be unreasonably
withheld. AHPC's approval shall be deemed to have been given if AHPC does not
object within ten (10) business days from receipt of such written notice. In
order to determine Women First's compliance with this Section 5, AHPC or its
authorized representative may inspect and/or test, at reasonable times and under
reasonable circumstances, all uses of the Licensed Trademarks by Women First and
all underlying goods. Each product produced or distributed hereunder shall
comply with all applicable laws and regulations and shall conform in all
respects to the sample of such product approved by AHPC hereunder. In the event
of any material non-conformity or any material deterioration in the quality of a
product sold under the Licensed Trademarks, AHPC may, in addition to other
available remedies, by written notice to
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Women First, require that such product be immediately withdrawn from the market
and Women First shall promptly cause such withdrawal.
6. INTELLECTUAL PROPERTY
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6.1 Use and Display of the Licensed Trademarks. Women First shall
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use and display the Licensed Trademarks in a conspicuous manner in connection
with the Licensed Products. Without limiting the generality of the foregoing:
(a) Women First shall include in all advertising and promotional
material created by or for Women First in which the Licensed
Trademarks appears such legends, markings, and notices (such
as (R)) as required or permitted by any applicable laws or
regulations.
(b) Women First shall not use the Licensed Trademarks or any marks
confusingly similar thereto (i) in connection with any goods
other than products made to the specifications for the
Licensed Products or (ii) as part of or in connection with the
legal name of any person or the tradename of any person;
(c) Women first shall not have the right to use any variation of
the Licensed Trademarks without AHPC's written approval (which
approval shall be in AHPC's sole discretion) and, in the event
that AHPC approves the use of any variation of a Licensed
Trademarks, such approved variation shall become a Trademark
owned by AHPC and governed by the terms of this Agreement.
(d) Women First shall not use the Licensed Trademarks with any
other trademark or tradename, owned or controlled by AHPC
except for the transition period as defined in the Asset
Purchase Agreement during which Women First would be selling
the product(s) in AHPC tradedress.
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6.2 Ownership and Maintenance of Licensed Trademarks. AHPC shall, at AHPC's
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cost and expense, register and maintain the licensed Trademarks in the
Territory, including all renewals of registrations for the term of this
Agreement. AHPC expressly reserves the sole and exclusive ownership of the
Licensed Trademarks and all rights relating thereto. Women First hereby
acknowledges that AHPC is the sole and exclusive owner of the Licensed
Trademarks. Women First shall not question or otherwise challenge, either
directly or indirectly, during the term of this Agreement, AHPC's ownership of,
and rights in, the Licensed trademarks and the goodwill associated therewith or
the validity of this Agreement. Upon AHPC's request, Women First shall provide
necessary samples and information to permit AHPC to effect trademark or service
xxxx registrations and execute and deliver to AHPC any documents required by
AHPC to confirm AHPC's ownership of the licensed trademarks. Women First shall
not at any time, either during the term of this Agreement, apply to register the
Licensed Trademarks, or any xxxx confusingly similar thereto, as a trademark or
service xxxx anywhere in the world.
6.3 No Assignment. It is understood and agreed that nothing in this
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Agreement will be deemed in any way to constitute an assignment by AHPC of the
Licensed Trademarks or of the goodwill associated therewith, or to give Women
First any right, title, or interest in and to the Licensed Trademarks or the
goodwill associated therewith (except the right to make use thereof as herein
provided).
6.4 Infringements by Third parties. Women First shall notify AHPC promptly
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of any use by any Person of a trademark or a xxxx similar to one or more of the
Licensed Trademarks in the Territory. AHPC in its sole discretion shall decide
whether or how to proceed against a third party infringer. Women First shall
cooperate fully with AHPC in connection with the prosecution of any claim
against any such third party infringer in the Territory. If requested by AHPC,
Women First shall join with AHPC, at AHPC's expense, in any such action as AHPC
in its sole discretion may deem advisable,
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provided, however, that Women First shall have no right to take any action with
respect to the Licensed Trademarks without AHPC's prior written approval , which
may be withheld in AHPC's sole discretion. The proceeds of any settlement of, or
recovery from, any such action shall belong entirely to AHPC. If AHPC declines
in writing to bring any action against an alleged third party infringer in the
Territory, Women First may proceed against such alleged third party infringer in
the Territory and will bear all expenses of the action. If necessary for Women
First to proceed, AHPC shall join with Women First, at Women First's expense.
The proceeds of any settlement of recovery from any such action initiated by
Women First shall belong entirely to Women First.
7. INDEMNIFICATION
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7.1 Indemnification by AHPC. AHPC agrees to defend, indemnify and
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hold harmless Women First from and against any and all claims of third parties
and liabilities, judgments, penalties, losses, costs, damages and expenses
resulting therefrom, arising from trademark infringement claims by third parties
by reason of Women First's use of the Licensed Trademarks in accordance with
this Agreement. In the event of any such claim, upon written request by AHPC,
Women First shall immediately cease and desist from any and all further use or
display of the Licensed Trademarks.
7.2 Indemnification by Women First. Except as provided in Section
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7.1, Women First agrees to defend, indemnify and hold harmless AHPC from and
against any and all claims of third parties and liabilities, judgments,
penalties, losses, costs, damages and expenses resulting therefrom, arising (a)
from use of the Licensed Trademarks in connection with the promotion marketing,
offering for sale and sale of any product, and (b) by reason of any breach of
this Agreement by Women First, its agents, employees or representatives.
7.3 Procedures for Indemnification. With respect to any claims
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falling within the scope of the foregoing indemnifications:
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(a) Each party agrees to notify the other promptly and in writing
of such claims, and to keep the other fully advised with
respect to such claims and the progress of any legal actions
relating thereto in which the other party is not a
participant.
(b) AHPC shall have the sole right to undertake and control the
defense and settlement of any claims relating to the ownership
or validity of the Licensed Trademarks or of any pending
application or registration of the Licensed Trademarks. Women
First shall cooperate fully with AHPC in connection with the
defense of any such claims brought by third parties. If
requested by AHPC, Women First shall join with AHPC, at AHPC's
expense, in any such action as AHPC in its sole discretion
shall deem advisable.
(c) Women First shall have the right to participate at its own
expense in the defense of any claim instituted against it,
and, if it does so participate, it shall not have the right to
recover against AHPC the costs and expenses (including its
attorneys' fees) of its participation in such suit.
(d) In the event that a party assumes the defense of a claim
against the other party, the party assuming the defense shall
not enter into any compromise or settlement of the claim
without the prior written consent of the other party, which
consent shall not be unreasonably withheld.
7.4 LIABILITY DISCLAIMER. IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE
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OTHER PARTY FOR ANY SPECIAL, INCIDENTAL, CONSEQUENTIAL, EXEMPLARY OR PUNITIVE
DAMAGES OF ANY KIND (INCLUDING WITHOUT LIMITATION LOSS OF BUSINESS PROFITS, LOSS
OF SAVINGS, LOSS OF BUSINESS OPPORTUNITY) ARISING OUT OF OR IN CONNECTION WITH
THIS TRADEMARK LICENSE AGREEMENT, WHETHER BASED IN CONTRACT, TORT (INCLUDING
WITHOUT LIMITATION NEGLIGENCE) OR OTHERWISE, EVEN IF OTHER PARTY HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES OR SHOULD HAVE FORESEEN SUCH DAMAGES.
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7.5 LIMITATION OF LIABILITY. NOTWITHSTANDING ANY OTHER PROVISION IN THIS
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AGREEMENT TO THE CONTRARY, EITHER PARTY'S AGGREGATE TO THE OTHER PARTY FOR ALL
DAMAGES AND LOSSES, DIRECT OR INDIRECT, ARISING UNDER OR IN CONNECTION WITH THIS
AGREEMENT, WHETHER IN CONTRACT, TORT (INCLUDING NEGLIGENCE) OR OTHERWISE SHALL
NOT EXCEED THE AMOUNTS PAID BY WOMEN FIRST TO AHPC UNDER THIS AGREEMENT.
8. MISCELLANEOUS PROVISIONS
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8.1 Assignment. The rights and obligations of the parties hereto
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shall inure to the benefit of and shall be binding upon the authorized
successors and permitted assigns of each party. Neither party may, without the
prior written consent of the other party, which shall not be unreasonably
withheld take any of the following actions (collectively referred to herein as
an "Assignment"): (i) assign or transfer its rights or obligations under this
Agreement, (ii) license or sublicense any of its rights or obligations under
this Agreement, or (iii) designate another person to perform all or part of its
obligations under this Agreement or have all or part of its rights and benefits
under this Agreement; provided, however, that a party may make Assignments to
Affiliates of such party or to a successor, by merger, acquisition, or
otherwise, and provided, further that in the case of an Assignment to an
Affiliate the assigning party shall promptly notify the other party in writing
of such Assignment and shall remain liable (both directly and as guarantor) with
respect to all obligations so assigned. In the event of any permitted Assignment
or in the event that an Affiliate of either party shall exercise rights and/or
perform obligations hereunder pursuant to the terms of this Agreement, the
assignee or Affiliate, as the case may be, shall specifically assume and be
bound by the provisions of the Agreement by executing and agreeing to an
assumption agreement satisfactory to the other party hereto.
8.2 Governing Law. This Agreement and the respective rights and
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obligations of the parties shall be governed by and construed in accordance with
the internal and substantive laws of the State of New York (without regard to
principles of conflicts of laws).
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8.3 Section Headings. References herein to sections and Exhibits
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are to sections and Exhibits to this Agreement. The title of this Agreement and
the section headings contained herein are for convenience of reference only and
shall not define or limit the provisions hereof.
8.4 Severability. If any term, provision, covenant or condition of
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this Agreement is declared to be invalid, void or unenforceable, the remainder
of the provisions shall remain in full force and effect and shall in no way be
affected impaired or invalidated.
8.5 Waiver. The failure of either party to require the performance
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of any provision of this Agreement by the other party shall not be deemed a
waiver and shall not deprive the party of its full right to require such
performance in the particular instance or at any other time. Any waiver must be
in writing executed by the waiving party.
8.6 Notices. All communications in connection with this Agreement
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shall be in writing and sent by postage prepaid first class mail, courier, or
telefax, and if relating to default, late payment or termination, by certified
mail, return receipt requested, telefax or courier, addressed to each party at
the address above, in the case of AHPC, Attn: Senior Vice President and General
Counsel; FAX (000) 000-0000; with a copy to Wyeth-Ayerst Laboratories, 000
Xxxxxxxxx Xxxxxx, Xx. Xxxxxx, Xxxxxxxxxxxx 00000, Attn: Senior Vice President,
Global Business Development; FAX: (000) 000-0000; and in the case of Women
First, 00000 Xx Xxxxxx Xxxx, Xxxxx 000, Xxx Xxxxx, Xxxxxxxxxx 92130,Attn: Chief
Executive Officer and President; FAX (000) 000-0000; with a copy to Xxxxxx &
Xxxxxxx, 00000 Xxxx Xxxxx Xxxxx, Xxxxx 000, Xxx Xxxxx, XX 00000, Attn: Xxxxx X.
Xxxxx ; FAX (000) 000-0000
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8.7 No Agency or Franchise. This Agreement and the relations
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hereby established by and between AHPC and Women First do not constitute a
partnership, joint venture, agency, franchise or contract of employment between
them.
8.8 Complete Agreement. This Agreement and the Asset Purchase
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Agreement embody all of the terms and conditions of the agreement between the
parties with respect to the matters set forth herein and supersede any and all
prior or contemporaneous agreements, representations, understandings or
discussions of any kind between the parties.
8.9 Modifications. This Agreement may not be modified or amended
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except by writing which refers specifically to this Agreement signed on behalf
of both parties by their duly authorized officers.
8.10 Other Documents. The parties agree to implement this Agreement
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by executing or causing to be executed such additional documents and agreements
as may be necessary to fully protect the Licensed Trademarks and effectively
carry out the terms of this Agreement in accordance with applicable laws and
regulations.
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THE PARTIES HERETO, intending to be legally bound, have duly executed
this Agreement on the date first written above.
AMERICAN HOME PRODUCTS CORPORATION
By: /s/ XXXXXXX X. XXXXXXX
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Name: Xxxxxxx X. Xxxxxxx
Title: Vice President and Associate General Counsel
WOMEN FIRST HEALTHCARE, INC.
By: /s/ XXXXXX X. XXXXXX
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Name: Xxxxxx X. Xxxxxx
Title: Chairman, Chief Executive Officer
and President
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EXHIBIT A
Licensed Trademarks
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Trademark Country Reg. # Licensed Products Term
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WYGESIC United States 1,055,196 Propoxyphene HCL 2 years from
and acetaminophen date when
Women's First
begins marketing
WYGESIC
or December 31,
2004 whichever
is first
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EQUAGESIC United States 682,783 Meprobamate For a period to
with aspirin expire upon
payment in full
per schedule set
forth in Asset
Purchase
Agreement.
Xxxx will then be
assigned to
Women First
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SYNALGOS United States 2,463,891 Drocode bitrate,
Aspirin and caffeine For a period to
expire upon
payment in full
per schedule set
forth in Asset
Purchase
Agreement.
Xxxx will then be
assigned to
Women First
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