EXHIBIT 10.5
HALLIBURTON COMPANY
TRADEMARK LICENSE AGREEMENT
THIS AGREEMENT, effective as of April 10, 2001, by and between Halliburton
Company, having a principle place of business at 3600 Lincoln Plaza, 000 X.
Xxxxx Xx., Xxxxxx, Xxxxx 00000-0000 , hereinafter referred to as "LICENSOR," and
Dresser, Inc., having a principle place of business at 0000 Xxxxxxxx Xxxx,
Xxxxxxxxx, Xxxxx, 00000, hereinafter referred to as "LICENSEE."
WHEREAS, LICENSOR has adopted and is using the word, "XXXXXXXX" and
"XXXXXXXX and Design " as trademarks and service marks for a broad range of
goods and services in the United States and elsewhere throughout the world
(hereinafter collectively referred to as the "Marks"), and has on file with the
trademark offices of various countries pending trademark and service xxxx
applications and registrations covering the above-mentioned Marks, a listing of
which is attached hereto as Appendix A; and
WHEREAS, ASSIGNEE is acquiring the Dresser, Inc. from ASSIGNOR, pursuant to
a certain Amended and Restated Agreement and Plan of Recapitalization among
ASSIGNOR, ASSIGNEE and the seller named therein dated as of April 10, 2001 (the
"Recapitalization Agreement"), and in connection with such acquisition would
like to acquire any and all right, title and interest in and to the Marks
together with the goodwill of the business symbolized thereby, subject to the
Existing Licenses (as defined below), the General License (as defined below) and
the Exclusive License (as defined below); and
NOW, THEREFORE, in consideration of the mutual covenants of the parties in
this Agreement and the Recapitalization Agreement, and the sum of ten dollars
($10.00) herewith paid by LICENSEE to LICENSOR, the receipt and sufficiency of
which is hereby acknowledged by said LICENSOR, the parties hereby agree as
follows:
ARTICLE 1 - LICENSE
LICENSOR grants to LICENSEE the non-transferable right to use the Marks in
the Field of Use and to use the Marks in documentation related to the Field
of Use. This license is exclusive within the Field of Use. The "Field of
Use" includes valves for industrial use. The foregoing conveyance is
referred to herein as the "License."
LICENSEE acknowledges that the License and any subsequent assignment is
subject to license and ownership rights of other parties to the XXXXXXXX
marks in International Class 7 for pumps. LICENSEE consents to the use of
the XXXXXXXX marks by such parties within International Class 7.
ARTICLE 2 - QUALITY OF GOODS AND SERVICES
LICENSEE shall use the Marks only as described in the grant in Article 1,
and only in accordance with the guidance and directions furnished to
LICENSEE by LICENSOR, or its representatives or agents, but always the
quality of the LICENSED GOODS AND SERVICES and the quality of the
documentation shall always be satisfactory to LICENSOR or as specified by
it. LICENSOR shall be the sole judge, in its commercially reasonable
discretion, as to whether or not LICENSEE has met or is meeting the
standards of quality so established.
ARTICLE 3 - INSPECTION
LICENSEE shall permit duly authorized representatives of LICENSOR to
inspect the LICENSED GOODS and the documentation during normal business
hours and with at least 10 days' notice prior to any distribution of same,
for the purpose of ascertaining or determining compliance with Articles 1
and 2 hereof.
ARTICLE 4 - USE OF MARKS
When using the Marks under this agreement, LICENSEE undertakes to comply
substantially with all laws pertaining to service marks and trademarks in
force at any time in the United States and all foreign jurisdictions in
which the marks are used. This provision includes compliance with marking
requirements, showing that the Marks are owned by Halliburton Company.
ARTICLE 5 - EXTENT OF LICENSE
The right granted in paragraph 1 hereof shall be exclusive within the Field
of Use, but subject to any outstanding license agreements which LICENSOR
may currently have in force with other third parties. This license is not
assignable or transferable in any manner whatsoever, nor does LICENSEE have
the right to grant any sub-licenses except to affiliates, unless LICENSEE
has obtained prior written consent of LICENSOR.
ARTICLE 6
NEW APPLICATIONS AND AMENDMENT OF EXISTING REGISTRATIONS
(a) Prior to the Effective Date, LICENSOR owned title to registrations for
the marks for pumps in International Class 7 and valves in International
Class 9. LICENSOR agrees to use commercially reasonable efforts to file and
prosecute trademark applications in the United States of America and in the
CTM office of the European Community for: "XXXXXXXX" and "XXXXXXXX"
(Stylized) for valves in International Class 9.
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(b) LICENSEE consents to the filing of the above applications recited in
paragraph (a).
(c) LICENSOR agrees that upon registration of the XXXXXXXX xxxx for valves
in International Class 9, it will assign the rights in and to such xxxx,
along with the related goodwill, to LICENSEE. Following such assignment,
all obligations of LICENSOR to LICENSEE, including the License, shall
terminate.
(d) After termination of this License, LICENSOR consents to the ownership
and filing of future applications by LICENSEE of marks incorporating the
term "XXXXXXXX" within the Field of Use only.
(e) LICENSEE agrees that it will not file any applications for registration
of any marks incorporating the term "XXXXXXXX" for use on any goods or
services other than within the Field of Use. This clause shall survive the
termination of this License.
ARTICLE 7 -- ASSIGNMENT
As set forth in Article 6, LICENSOR agrees to assign the newly filed U.S.
and CTM Registrations for Class 9 valves to Licensee, contingent upon
issuance of a registration and the filing and acceptance of a Section 8 and
15 Affidavit of Continuous Usage by the U.S. Patent and Trademark Office
for the U.S. applications identified in paragraph 6(a).
ARTICLE 8 - INDEMNITY AND DISCLAIMER OF WARRANTIES
LICENSOR assumes no liability to LICENSEE or to third parties with the
performance characteristics of the services or goods rendered by LICENSEE.
Furthermore, LICENSEE shall indemnify LICENSOR against damages, costs and
losses incurred as a result of claims of third parties against LICENSOR
involving the marketing or sale of LICENSEE's goods or services, including,
but not limited to, liability for any claim of third parties relating to
trademark, patent, copyright, or trade secret infringement by LICENSEE or
in connection with LICENSEE's goods or services.
ARTICLE 9 -- TERMINATION
Except as otherwise provided, herein, this agreement shall remain in full
force and effect. If LICENSEE makes any assignments of assets or business
for the benefit of creditors, or a trustee or receiver is appointed to
conduct its business or affairs or it is adjudged in any legal proceeding
to be either a voluntary or involuntary bankruptcy, the rights granted
herein shall forthwith cease and terminate without any prior written notice
or legal action by LICENSOR. If LICENSEE materially breaches this
agreement, such as by using the Marks outside the granted scope of this
license, LICENSOR may cancel the License immediately. Upon assignment of
the XXXXXXXX xxxx in International Class 9 to LICENSEE in accordance with
Articles 6 and 7, this Agreement will terminate.
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ARTICLE 10 - OWNERSHIP OF MARKS
LICENSEE and all parties to this agreement acknowledge LICENSOR's exclusive
right, title in and to the Marks and any registrations that have issued or
may issue thereon, and will not at any time due or cause to be done in the
act or thing contesting or in any way impairing or tending to impair part
of such right, title and interest. In connection with its use of the Marks,
neither LICENSEE nor any other party hereto shall in any manner represent
that he or it has any ownership in the Marks or registrations thereof, and
all parties acknowledge that use of the Marks shall inure to the benefit of
LICENSOR. On termination of this agreement in any manner provided herein,
LICENSEE will cease and desist from all use of the Marks in any way and
will deliver up to LICENSOR, or its duly authorized representatives, all
material and papers upon which the Marks appear; and furthermore, LICENSEE
will not at any time adopt or use without LICENSOR's prior written consent,
any word or xxxx which is likely to be similar to or confusing with the
Marks.
LICENSEE shall take all reasonable steps to promptly advise LICENSOR of any
infringement or apparent infringement as soon as it becomes known to
LICENSEE. LICENSOR shall have sole control to take proceedings, as it deems
appropriate, for infringement of the Marks, and LICENSEE shall cooperate
fully, at LICENSOR'S expense, with LICENSOR in respect of any such
proceedings.
ARTICLE 11 - MISCELLANEOUS
Any notices required or permitted to be given under this agreement shall be
deemed sufficiently given if mailed by registered mail, postage prepaid,
addressed to the party to be notified at its address shown below, or at
such other address as may be furnished in writing to the notifying party.
Governing Law. This Agreement shall be construed (both as to validity and
performance) and enforced in accordance with, and governed by, the laws of
the State of Texas applicable to agreements made and to be performed wholly
within such jurisdiction. Any judicial proceeding brought against either of
the parties hereto with respect to this Agreement shall be brought in the
United States federal court for the Southern District of Texas irrespective
of where such party may be located at the time of such proceeding, and by
execution and delivery of this Agreement, each of the parties hereto hereby
consents to the exclusive jurisdiction of such court and waives any defense
or opposition to such jurisdiction.
Arbitration. Any dispute relating to this Agreement shall be resolved by
binding arbitration under the Commercial Arbitration Rules (the "AAA
Rules") of the American Arbitration Association (the "AAA"). This
arbitration provision is expressly made pursuant to and shall be governed
by the Federal Arbitration Act, 9 U.S.C. Sections 1-14. The parties hereto
agree that, pursuant to Section 9 of the Federal Arbitration Act, a
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judgment of a United States District Court of competent jurisdiction shall
be entered upon the award made pursuant to the arbitration. Three
arbitrators, who shall have the authority to allocate the costs of any
arbitration initiated under this paragraph, shall be selected in accordance
with the following sentence within ten (10) days of the submission to the
AAA of the response to the statement of claim or the date on which any such
response is due, whichever is earlier. The selection shall be made as
follows: one by the LICENSOR, one by the LICENSEE and one by the two so
selected, provided, however, that only the third arbitrator shall be
required to be neutral. The arbitrators shall conduct the arbitration in
accordance with the Federal Rules of Evidence. The arbitrators shall decide
the amount and extent of pre-hearing discovery which is appropriate. The
arbitrators shall have the power to enter any award of monetary or
injunctive relief (including the power to issue permanent injunctive relief
and also the power to reconsider any prior request for immediate injunctive
relief by either of the parties and any order as to immediate injunctive
relief previously granted or denied by a court in response to a request
therefor by either of the parties), including the power to render an award
as provided in Rule 43 of the AAA Rules; provided, however, that the
arbitrators shall not have the power to award punitive or consequential
damages under any circumstances (whether styled as punitive, exemplary, or
treble damages, or any penalty or punitive type of damages) regardless of
whether such damages may be available under applicable Law, the parties
hereby waiving their rights, if any, to recover any such damages, whether
in arbitration or litigation. The arbitrators shall award the prevailing
party its costs and reasonable attorney's fees, and the losing party shall
bear the entire cost of the arbitration, including the arbitrators' fees.
The arbitration award may be enforced in any court having jurisdiction over
the parties and the subject matter of the arbitration. The arbitration
shall be held in Houston, Texas.
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IN WITNESS WHEREOF the parties have caused this Agreement to be executed by
their duly authorized officers on the respective dates and at the respective
places hereinafter set forth.
LICENSOR LICENSEE
Halliburton Company Dresser, Inc.
0000 Xxxxxxx Xxxxx 0000 Xxxxxxxx Xxxx
000 X. Xxxxx Xx. Xxxxxxxxxx, XX 00000
Xxxxxx, XX 00000-0000 (000) 000-0000 (Ph)
(000) 000-0000 (Ph) (000) 000-0000 (Fax)
(000) 000-0000 (Fax)
By: /s/ XXXXX X. XXXXXX By: /s/ XXXXX X. XXXXXXX
-------------------------------- -----------------------------------
Xxxxx X. Xxxxxx Xxxxx X. Xxxxxxx
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Typed or Printed Name Typed or Printed Name
Title: Sr. Vice President Title: Vice President
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Date: 10 April 2001 Date:
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