TRADEMARK LICENSE AGREEMENT Whereas, the U.S. Securities and Exchange
Commission ("SEC") has adopted and is using the trademark EDGAR (the "Mark"),
and has used the Mark continuously in commerce since September 24, 1984; and
Whereas, National EDGAR Services, Inc. ("Licensee") desires to use the ...
TRADEMARK LICENSE AGREEMENT
Whereas, the U.S. Securities and Exchange Commission ("SEC") has adopted
and is using the trademark EDGAR (the "Mark"), and has used the Mark
continuously in commerce since September 24, 1984; and
Whereas, National EDGAR Services, Inc. ("Licensee") desires to use the Mark
as part of the mark(s) and name(s) listed on Schedule A hereto (the "Licensed
Marks") in connection with Licensee's services listed on Schedule A hereto (the
Now, therefore, in consideration of the mutual promises herein contained,
it is agreed that:
1. Grant of License
1.1 The SEC hereby grants to Licensee a non-exclusive,
non-assignable, royalty-free license to use the Licensed Marks in connection
with the Licensed Services, subject to the terms of this Trademark License
1.2 Nothing contained herein shall prevent the SEC from licensing
third-parties to use EDGAR-formative marks and names not identical to the
2. Quality Control
2.1 Before Licensee uses the Licensed Marks in connection with the
offering, selling, rendering, promoting or marketing of the Licensed Services,
it shall send at its own expense a representative sampling of items showing each
proposed use of the Licensed Marks to the SEC and obtain the SEC's approval of
the proposed use. The SEC may from time to time thereafter request in writing
samples of additional representative items showing Licensee's use of the
Licensed Marks. Licensee shall provide such items at its own expense within ten
(10) days following such request. In either case, the SEC shall review said
items within twenty (20) days of receipt to determine if they comply with this
Agreement. If the SEC has not objected in writing within twenty (20) days
following receipt of any items provided as required herein, they shall be deemed
2.2 The SEC shall have the right, at all reasonable times, to
inspect Licensee's Licensed Services and associated promotional and advertising
materials employing the Licensed Marks to determine whether such use is of
proper quality and otherwise consistent with the requirements of this Agreement.
2.3 The Licensed Services shall be offered, sold, advertised,
promoted, rendered, and distributed in accordance with all applicable national,
state, local, and other laws and regulations. The SEC's approval of any
advertising or promotional material bearing the Licensed Marks shall not mean
that the SEC has determined that such materials conform to the laws or
regulations of any jurisdiction.
3. Duration, Termination, and Renewal
3.1 The initial term of this Agreement is five (5) years from the
date of complete execution. This Agreement may be renewed for successive five
(5)-year terms by the mutual written consent of both parties and the execution
of a valid Renewal Agreement, provided Licensee has complied with the quality
control provisions of this Agreement. The SEC shall not unreasonably withhold
its consent to renewal of this Agreement. Upon termination or expiration of
this Agreement, all rights of Licensee to use the Licensed Marks shall
immediately terminate, and Licensee shall voluntarily abandon or cancel as
applicable all trademark applications and registrations and domain name
applications and registrations listed on Schedule A hereto within 30 days after
the termination or expiration of this Agreement.
3.2 This Agreement shall terminate immediately without notice if
Licensee is sold, or if Licensee files a petition in bankruptcy or is
adjudicated a bankrupt or insolvent, or makes an assignment for the benefit of
creditors, or an arrangement pursuant to any bankruptcy law, or if the Licensee
discontinues its business or a receiver is appointed for the Licensee or for the
Licensee's business and such receiver is not discharged within thirty (30) days.
3.3 In the event of a breach of any of the terms and conditions of
this Agreement by Licensee, the SEC shall give Licensee written notice of such
breach. In the event Licensee does not cure such breach within thirty (30)
days, the SEC may immediately terminate this Agreement and shall notify Licensee
in writing of such termination within five (5) days of such termination.
4. Validity of Ownership of Mark
4.1 It is understood and agreed that the SEC is the sole and
exclusive owner of all right, title, and interest in and to the Mark, and that
all use of the Mark within the Licensed Marks by Licensee shall inure to the
benefit of the SEC. Licensee shall acquire no right, title, or interest of any
kind or nature whatsoever in or to the Mark or the goodwill associated
therewith. It is further understood and agreed that the SEC shall acquire no
right, title, or interest in or to the terms "National" and "Services" as they
appear in the Licensed Marks. Licensee shall not file any trademark
applications for the Licensed Marks without first obtaining the SEC's written
consent, which consent shall not be unreasonably withheld. Licensee agrees that
it shall not obtain any rights to the Mark by itself by virtue of any trademark
registrations obtained for the Licensed Marks pursuant to this provision.
4.2 Licensee agrees not to contest or otherwise challenge or
attack the SEC's rights in or registrations for the Mark or the validity of the
license granted herein during the term of this Agreement and thereafter.
Licensee further agrees not to do anything, either by act of omission or
commission or directly or indirectly, which might impair, jeopardize, infringe
or violate the Mark, and agrees not to misuse or bring the Mark into disrepute.
4.3 Licensee agrees to cooperate with and assist the SEC in
protecting and enforcing the SEC's rights to the Mark. Licensee shall promptly
inform the SEC of any infringement or imitation of the Mark that comes to its
attention, and cooperate with the SEC in any such matters. The SEC shall have
the sole right at its own expense to determine whether or not any action shall
be taken on account of any such violation. The SEC shall receive all amounts
awarded as damages, profits, settlement proceeds or otherwise in connection with
such claims or suites brought by the SEC.
4.4 Licensee shall not take any legal action against any
EDGAR-formative marks or names that Licensee believes violate its rights in the
Licensed Marks without the prior written consent of the SEC, which consent shall
not be unreasonably withheld. Should the SEC grant such consent, the SEC shall
have the right to participate in the litigation and shall have the right to
approve any settlements. Said approval shall not be unreasonably withheld.
5. Use of the Licensed Marks
5.1 In using the Licensed Marks, Licensee shall clearly indicate
that the Mark is the property of the SEC. Licensee shall display this notice
conspicuously, in the form shown below, where possible, but at a minimum shall
display it in conjunction with Licensee's initial use of the Licensed Marks
within each of its products, services, or advertising or promotional materials
(e.g., on the first or welcome screen of any on-line computer service or
software product, on the cover or first page of any user manual or promotional
material, and after the first reference to the mark in any advertisement or
"EDGAR" is a trademark of the U.S. Securities and Exchange Commission. National
EDGAR Services, Inc. is not affiliated with or approved by the U.S. Securities
and Exchange Commission."
5.2 Licensee's use of the Licensed Marks shall not be portrayed,
directly or indirectly, as an endorsement or recommendation by the SEC of
Licensee or any of Licensee's products or services.
6. Governing Law
This Agreement shall be interpreted in accordance with the federal
common law as interpreted by the U.S. District Court for the District of
Columbia and its reviewing courts.
Licensee agrees to indemnify and hold the SEC harmless from any and
all claims, demands, causes of action, damages, judgments and attorney's fees
and costs arising from Licensee's offering, selling, promoting, advertising,
rendering and/or distribution of the Licensed Services and from Licensee's use
of the Licensed Marks.
All notices, requests, demands and other communications that are
required or permitted to be given to the parties under this Agreement shall be
in writing, delivered personally or sent by overnight courier or registered
mail, return receipt requested, postage prepaid, to the addresses set forth
below or as such other addresses specified by the parties, and shall be deemed
to have been given upon the delivery thereof:
If to the SEC: U.S. Securities and Exchange Commission
450 Fifth Street, N.W.
Washington, D.C. 20549-0207
Attn: Associate General Counsel
for Litigation and Administrative Practice
If to Licensee: National EDGAR Services, Inc.
938 Howe Street
Vancouver, British Columbia
V6Z 1N9 Canada
Attn: Scott Kerr
Kaplan Gottbetter & Levenson, LLP
630 Third Avenue
New York, New York 10017-6705
Attn: Adam S. Gottbetter, Esq.
9. Authority to Bind
Each of the parties hereto warrants and represents that the person(s)
executing this Agreement on its behalf has full authority to execute this
Agreement and to bind it as a party to this Agreement.
This Agreement shall be binding in all respects upon the parties
hereto, their subsidiaries, related companies, officers, directors,
stockholders, successors, permitted assigns, employees, agents, and all parties
in privity with or claiming under them. Licensee shall not assign or sublicense
any of its rights under this Agreement without the prior written consent of the
This Agreement and Schedule A hereto express the entire understanding
between the parties concerning its subject matter, and may not be modified
except by a written instrument signed by all parties. The failure of a party to
insist upon adherence to any term of this Agreement shall not be considered a
waiver or deprive the party of the right thereafter to insist upon strict
adherence to that term or any other term in this Agreement.
12.1 This Agreement is executed voluntarily and without any duress
or undue influence on the parties or their officers, employees, agents, or
attorneys and no party is relying on any inducement, promises, or
representations made by any other party or any of its officers, employees,
agents, or attorneys other than as set forth in this Agreement.
12.2 Licensee acknowledges that it selected, adopted, and cleared
the Licensed Marks, and that the SEC was not involved in any way in the
selection, adoption, or clearance of the Licensed Marks. By granting a license
to Licensee to use the Licensed Marks, the SEC is not making any determination,
rendering any opinion, or making any representation or warranty as to the
availability of the Licensed Marks, for use or registration in the United States
or any other country. Licensee uses and registers the Licensed Marks solely at
its own risk.
All headings used in this Agreement are for reference purposes only
and shall not be deemed to have any substantive effect.
U.S. SECURITIES AND NATIONAL EDGAR SERVICES, INC.
/s/ Richard D. Heroux By: /s/ Scott Kerr
RICHARD D. HEROUX
Office of Information Technology Name: SCOTT KERR
DATED: 10/25/02 DATED: 10/16/2002
SCHEDULE A TO TRADEMARK LICENSE AGREEMENT
1. List of Licensed Marks
National EDGAR Services, Inc.
NATIONAL EDGAR SERVICES
2. List of Licensed Services
Preparation and electronic transmission of regulatory agency documents to the
SEC for individuals and businesses.