AGREEMENT
This Agreement made this 3rd day of December, 1997, by and between
Xxxxxxx X. Xxxxxxxx, an individual doing business as Value America, with a
principal place of business at 0000 Xxxxxx Xxxxx Xxxxx, Xxxxxxxx, XX 00000
(hereinafter referred to as "Xxxxxxxx"); and
Value America, Inc., a corporation of Virginia, having its principal place of
business at 0000 Xxxxxxxxxxxx Xxxxx, Xxxxxxxxxxxxxxx, XX 00000, (hereinafter
referred to as "VA-Virginia");
Whereas, Xxxxxxxx is the owner of U.S. Registration No. 1,964,038 for the xxxx
Value America for preparing and disseminating advertising matter, including
direct mail advertising; and
Whereas, VA-Virginia desires to use the xxxx Value America for an Internet
retail store; and
Whereas, VA-Virginia is the applicant for registration of the marks listed in
Appendix A; and
Whereas, VA-Virginia intends to be the applicant for registration of the marks
listed in Appendix B for use in connection with its operation as an Internet
retailer; and
Whereas, VA-Virginia is the owner of U.S. Registration No. 2,098,957 for the
xxxx Value America; and
Whereas, VA-Virginia recognizes the validity of Xxxxxxxx'x registered xxxx and
wishes to avoid any conflict therewith, and
Whereas, Xxxxxxxx recognizes the validity of VA-Virginia's registered xxxx and
wishes to avoid any conflict therewith, and
Now, therefore, in consideration of the sum of One Dollar and other good and
valuable consideration, it is agreed as follows:
X. Xxxxxxxx will execute and deliver to VA-Virginia, the Consent Agreement
attached hereto as Exhibit 1.
II. VA-Virginia recognizes the validity of Xxxxxxxx'x registered xxxx and
wishes to avoid any conflict therewith, and Xxxxxxxx recognizes the
validity of VA-Virginia's registered xxxx and wishes to avoid any
conflict therewith. Both
Agreement Page 2
parties agree that with respect to (i) the use by VA-Virginia of the
xxxx containing the words Value America in connection with an Internet
retail store, and (b) the use by Xxxxxxxx of the xxxx containing the
words Value America for preparing and disseminating advertising matter,
including direct mail advertising, they will not:
A. oppose, object to, or seek to cancel the registrations owned by the
other,
B. oppose, object to, or seek to cancel any applications made in the
future by the other, provided that, in the case of VA-Virginia, said
future applications are limited to its operation as an Internet
retailer, and that, in the case of Xxxxxxxx, said applications are
limited to its operation in preparing and disseminating advertising
matter, including direct mail advertising, and
C. institute trademark infringement actions against the other.
III. VA-Virginia will pay to Xxxxxxxx, the sum of Fifteen Thousand
($15,000.00), in payments as follows:
A. Eight Thousand Dollars ($8,000.00) simultaneously upon execution of
this Agreement; and
B. The balance of Seven Thousand Dollars ($7,000.00) within three (3)
months after the date of this Agreement.
IV. If any payment with respect to Paragraphs III (A) and III (B) is not
paid when due:
A. VA-Virginia shall pay a late fee of $100.00, plus interest on the
unpaid balance at the rate of eight (8%) percent per year, and
B. VA-Virginia shall pay all reasonable legal fees and expenses
incurred by Xxxxxxxx in connection with collection of the unpaid
balance.
V. As security for the payment of the amounts set forth in Paragraph III
(B), it is agreed as follows:
A. If the amount due to Xxxxxxxx are not paid when due, Xxxxxxxx may
file with the USPTO, the Consent to Cancellation attached hereto
as Exhibit 2, and VA-Virginia agrees that it will not oppose such
cancellation. If the amount due to Xxxxxxxx is paid when due, the
Consent to Cancellation attached hereto as Exhibit 2 shall be null,
void and of no effect, and shall be marked as such, signed by
Xxxxxxxx, and returned to VA-Virginia within ten (10) days after
payment.
B. In addition to or in lieu of the remedy specified in paragraph V (A)
above, if the amount due to Xxxxxxxx are not paid when due,
Xxxxxxxx may file
Agreement Page 3
with the USPTO, the Assignment attached hereto as Exhibit 3, and
VA-Virginia agrees that it will not take any action to oppose or
otherwise interfere with such assignment. If the amount due to
Xxxxxxxx is paid when due, the Assignment attached hereto as
Exhibit 3 shall be null, void and of no effect, and shall be marked
as such, signed by Xxxxxxxx, and returned to VA-Virginia within
ten (10) days after payment.
C. VA-Virginia agrees to indemnify and hold Xxxxxxxx harmless against
any expenses, including attorney fees, incurred in connection with
the recovery of the amounts due to Xxxxxxxx under Paragraphs III
and IV of this Agreement.
D. The payment obligations of VA-Virginia pursuant to Paragraphs III
and IV of this Agreement shall be personally guaranteed by Xxx
Xxxxxxx and Xxxx Xxxxxxx, husband and wife.
VI. Upon payment by VA-Virginia to Xxxxxxxx within three (3) months of the date
of this Agreement (or such shorter time as is specified in subparagraph
VI (F) below), of a non-refundable option fee of Five Thousand Dollars
($5,000.00), VA-Virginia shall have an option to obtain from Xxxxxxxx, an
assignment of U.S. Registration No. 1,964,038 for the xxxx Value America,
upon the following terms and conditions:
A. In order to exercise the option, VA-Virginia shall notify Xxxxxxxx,
within six (6) months of the date of this Agreement, of its intention
to do so.
B. Within forty-eight (48) hours of the giving of the notice referred to
above, VA-Virginia shall pay to Xxxxxxxx, the additional sum of Five
Thousand Dollars ($5,000.00), plus the amount specified in
Paragraph III (B) if then unpaid. Accordingly, at this point,
VA-Virginia will have paid Xxxxxxxx the total sum of Twenty Five
Thousand Dollars ($25,000.00).
X. Xxxxxxxx shall, upon receipt of such payment in the manner indicated
in paragraph VI (E) below, and provided that the total of all
payments to Xxxxxxxx equals Twenty Five Thousand Dollars
($25,000.00), assign to VA-Virginia all of his right, title and
interest in and to U.S. Registration No. 1,964,038 for the xxxx
Value America, subject to the reservation indicated below.
D. The form of the assignment shall be as set forth in Exhibit 4, and
shall reserve to Xxxxxxxx the right to continue to use the xxxx
Value America for preparing and disseminating advertising matter,
including direct mail advertising, in connection with Xxxxxxxx'x
business.
E. Payments by VA-Virginia to Xxxxxxxx pursuant to paragraph VI (B)
shall be made by wire transfer to the account of Xxxxx X.
Xxxxxxxx, Esq., attorney trust account, or as otherwise mutually
agreed by the parties.
Agreement Page 4
F. In the event that Xxxxxxxx receives a bona-fide written offer with
respect to his rights in the xxxx Value America, the three month
period specified in this paragraph VI shall be reduced to a period
of seventy-two (72) hours following the furnishing of a copy of said
written offer to VA-Virginia.
G. If the option is not exercised within six (6) months of the date of
this Agreement, the option shall expire, Xxxxxxxx may retain the
non-refundable option fee, and Xxxxxxxx shall be under no further
obligation with respect thereto.
VII. This Agreement shall be governed by the laws of the State of Georgia. Any
action relating to this Agreement shall be brought in the courts in
Georgia.
VIII. If any portion of this Agreement is found to be invalid or unenforceable,
the remaining provisions shall remain in effect and the parties will
immediately begin negotiations to replace invalid or unenforceable
portions that are essential parts of this Agreement.
IX. All notices under this Agreement shall be in writing and deemed to have
been made and received when personally served, or when mailed by certified
or registered mail, postage prepaid return receipt requested, and
addressed to each party at the address set forth on the front of this
Agreement or such other address as a party designates in writing.
X. The obligations in this Agreement shall be binding upon the parties hereto,
their heirs, representatives, successors and assigns.
XI. This Agreement is personal to the parties hereto, and shall not be assigned
by either party without the express written permission of the other party.
If all of the assets or stock of VA-Virginia are sold or transferred to
a third party, or if an agreement is made for such sale or transfer, the
remaining amounts due to Xxxxxxxx under Paragraph III (B) shall be
immediately due and payable.
XII. This Agreement, including all of its attachments, constitutes the entire
agreement between the parties, and supersedes all prior agreements,
proposals, representations, statements or understandings, whether oral or
written. This Agreement shall not be contradicted, explained or
supplemented by any written or oral statements, proposals or
representations not expressly set forth in this Agreement or an
attachment hereto.
In witness whereof, the parties hereto set their hands and seals hereto on the
date first
Agreement Page 5
written above.
Witness:
/s/ Xxxxx Xxxxx /s/ Xxxxxxx X. Xxxxxxxx
-------------------------- ----------------------------------
Xxxxxxx X. Xxxxxxxx
Attest: Value America, Inc., a corporation of
Virginia
/s/ Xxxx X. Xxxxxxx /s/ Xxx Xxxxxxx
-------------------------- -------------------------------------
By: Xxx Xxxxxxx, President
PERSONAL GUARANTY
For valuable consideration, the receipt of which is acknowledged, it is
understood and agreed that the payment obligations of Value America, Inc.
under this Agreement are hereby personally guaranteed by the undersigned:
/s/ Xxx Xxxxxxx Dated: December 3, 1997
--------------------------------
Xxx Xxxxxxx, personally
/s/ Xxxx Xxxxxxx Dated: December 3, 1997
--------------------------------
Xxxx Xxxxxxx, personally
ACKNOWLEDGMENT
State of Georgia) ss.:
County of DeKalb
On this 8th day of December, 1997, before me personally came Xxxxxxx X.
Xxxxxxxx, to me known to be the individual described in and who executed the
foregoing instrument, and he acknowledged execution of the same.
/s/ Xxxxx X. Xxxxxxxxxx
----------------------------
A Notary Public
9-14-99
ACKNOWLEDGMENT
Commonwealth of Virginia ) ss.:
County of Albemarle
On this 3rd day of December, 1997, before me personally came Xxx Xxxxxxx and
Xxxx Xxxxxxx, husband and wife, to me known to be the individuals described
in and who executed the foregoing instrument, and they acknowledged
execution of the same.
/s/ Xxxxxx X. Xxxxxx
------------------------------
A Notary Public
My commission expires 12/31/98
Agreement Page 6
ACKNOWLEDGMENT
Commonwealth of Virginia ) ss.:
County of Albemarle )
On this 3rd day of December, 1997, before me personally came Xxxx X. Xxxxxxx,
and this person acknowledged under oath, to my satisfaction, that he is the
Secretary of Value America, Inc., a corporation of Virginia; that he is the
attesting witness to the signing of this instrument by Xxx Xxxxxxx, who is the
President of Value America, Inc., that this document was signed and delivered
by the corporation as its voluntary act duly authorized by a proper resolution
of its Board of Directors; that he knows the proper seal of the corporation
which was affixed to this instrument; and that he signed this proof to attest
to the truth of these facts.
/s/ Xxxx X. Xxxxxxx
-------------------------
ATTESTING WITNESS
/s/ Xxxxxx X. Xxxxxx
---------------------------
A Notary Public
My commission expires 12/31/98
Approved as to form by:
/s/ Xxxxx X. Xxxxxxxx Dated: December 4, 1997
--------------------------------
Xxxxx X. Xxxxxxxx, Esq.
Attorney for Xxxxxxx X. Xxxxxxxx
/s/ Xxx Xxxxxxx Dated: December 3, 1997
--------------------------------
Xxx Xxxxxxx, Esq.
Attorney for Value America, Inc.
APPENDIX A
SERIAL NO.: 75-143,138
FILED: July 12, 0000
XXXXX XXXXXXX THE LIVING STORE! and Design
GOODS/SERVICES: MULTIMEDIA AND PRODUCT DEMONSTRATIONS USING
NARRATION, PHOTOGRAPHY, MUSIC, GRAPHICS AND ANIMATION TO CREATE
DEMONSTRATIONS THAT ARE EDUCATIONAL AND ENTERTAINING
INTL CLASS: 35 (Advertising & Business Services)
SERIAL NO.: 75-143,137
FILED: July 12, 0000
XXXXX XXXXXXX THE LIVING STORE! and Design
GOODS/SERVICES: RETAIL AND WHOLESALE DISTRIBUTORSHIPS FEATURING A
WIDE VARIETY OF CONSUMER PRODUCTS RENDERED BY MEANS OF GLOBAL
COMPUTER COMMUNICATIONS NETWORKS FEATURING INTERACTIVE DATA
BASE PROGRAMMING AND MULTIMEDIA PRODUCT DEMONSTRATIONS
INTL CLASS: 35 (Advertising & Business Services)
SERIAL NO.: 75-143,136
FILED: July 12, 0000
XXXXX XXXXXXX THE LIVING STORE! and Design
GOODS/SERVICES: RECORDING, SOUND AND IMAGE REPRODUCTION-RECORDED
NARRATION, AND MUSIC FOR PRODUCT PRESENTATIONS AND TESTIMONIALS;
IMAGE CREATION AND REPRODUCTION TO SUPPORT SALE OF CONSUMER
PRODUCTS ON THE INTERNET; VIDEO DEMONSTRATIONS OF CONSUMER
PRODUCTS
INTL CLASS: 9 (Electrical & Scientific Apparatus)
SERIAL NO.: 75-133,409
FILED: July 12, 0000
XXXXX XXXXXXX THE LIVING STORE! and Design
GOODS/SERVICES: PROVIDING TELECOMMUNICATIONS CONNECTED TO GLOBAL
COMPUTER NETWORKS INCLUDING HOSTING AND CONNECTIVITY VIA
TELEPHONY, COAXIAL AND/OR DIGITAL SATELLITE
INTL CLASS: 38 (Communications Services)
SERIAL NO.: 75-100,961
FILED: May 1, 1996
PUBLISHED: September 2, 0000
XXXXX XXXXXXX
GOODS/SERVICES: RETAIL AND WHOLESALE DISTRIBUTORSHIPS FEATURING A
WIDE VARIETY OF CONSUMER PRODUCTS RENDERED BY MEANS OF GLOBAL
COMPUTER COMMUNICATIONS NETWORKS FEATURING INTERACTIVE DATA
BASE PROGRAMMING AND MULTIMEDIA PRODUCT DEMONSTRATIONS
INTL CLASS: 35 (Advertising & Business Services)
Appendix A Page 2
SERIAL NO.: 75-099,776
FILED: May 1, 0000
XXXXX XXXXXXX
GOODS/SERVICES: (INT. CL. 9) PRERECORDED MUSICAL AND NARRATED
SOUND AND VIDEO RECORDINGS FOR PRODUCT PRESENTATIONS AND
TESTIMONIALS (INT. CL. 35) VIDEO DEMONSTRATIONS OF CONSUMER
PRODUCTS; PHOTOGRAPHIC IMAGE REPRODUCTION; CREATION AND
DISSEMINATION OF ADVERTISEMENTS TO SUPPORT SALES OF CONSUMER
PRODUCTS ON GLOBAL COMPUTER NETWORKS (INT. CL. 40) VIDEO
DEMONSTRATIONS OF CONSUMER PRODUCTS; PHOTOGRAPHIC IMAGE
REPRODUCTION; CREATION AND DISSEMINATION OF ADVERTISEMENTS TO
SUPPORT SALES OF CONSUMER PRODUCTS ON GLOBAL COMPUTER NETWORKS
(INT. CL. 41) AUDIO AND VIDEO RECORDING
INTL CLASS: 9 (Electrical & Scientific Apparatus)
35 (Advertising & Business Services)
40 (Material Treatment Services)
41 (Education & Entertainment Services)
SERIAL NO.: 75-099,775
FILED: May 1, 0000
XXXXX XXXXXXX
GOODS/SERVICES: MULTIMEDIA AND VIDEO PRODUCT DEMONSTRATIONS USING
NARRATION, PHOTOGRAPHY, MUSIC, GRAPHICS AND ANIMATION TO CREATE
DEMONSTRATIONS THAT ARE EDUCATIONAL AND ENTERTAINING
INTL CLASS: 35 (Advertising & Business Services)
APPENDIX B
Value America - The Retail Revolution
Value America - The Ultimate Superstore
Value America - The Future of Retailing
Value America - Down the Hall, Not Down the Street
Value America - The World's Best Store
