EXHIBIT 10.9
[Letterhead of X.X. Xxxx & Associates, Inc.]
TRADEMARK LICENSE
PARTIES:
Falcon Shoe Manufacturing Co.
#0 Xxxxx Xxxxxx
Xxxxxxxx, XX 00000 ("Licensee")
and
X.X. Xxxx & Associates, Inc.
000 Xxxxx Xxxx Xxxx
P.O. Box 9329
Newark, DE 19714-9329 ("Gore")
WHEREAS:
Licensee has the ability to produce and market high quality products
incorporating advanced fabric and construction technologies, resulting in
products uniquely suited to their intended uses successfully placed into the
hands of satisfied consumers. Licensee desires to produce high quality products
incorporating high technology fabrics, related items, and advanced design and
construction techniques supplied by Xxxx, and to make use of trademarks owned by
Xxxx to promote and sell these products. Xxxx desires to license its
trademark(s) listed on Schedule B ("the Mark") to customers who will supply the
market with high quality products which will produce consumer satisfaction and
enhance the value of the Mark as a brand, producing mutually beneficial results
and growth in the respective businesses of Licensee and Xxxx.
1. Subject to the remaining terms of this Agreement, including all
Schedules to it, Xxxx grants to Licensee a non-exclusive, non-transferable
License to use the Mark under the terms and conditions set forth below. The
Xxxx xxx be used only on products that are of styles and constructions which
have been approved in advance by Xxxx, and meet the quality standards contained
in Schedule A. These items are hereinafter referred to as "Products." In
consideration for this License, Xxxxxxxx agrees to honor the conditions hereof,
and shall pay Xxxx a one-time royalty of U.S. $1.00.
2. Licensee recognizes Xxxx'x ownership of the Mark and the validity of
this License. Licensee agrees to do nothing inconsistent with such ownership or
to challenge the validity of this License. Licensee agrees not to use the Mark
in any way not specifically permitted by this License.
3. Licensee agrees that Xxxx make take all reasonable steps necessary to
continuously monitor the quality of the Products. Such steps may include, but
are not limited to, inspection of manufacturing operations for Products,
inspection and approval of designs,
and testing prototypes or samples of Products submitted to or otherwise obtained
by Xxxx. Xxxx will maintain such designs, prototypes and samples in confidence.
It is Licensee's responsibility to obtain Xxxx'x prior written approval of
Products under Xxxx'x quality standards prior to the production of Products in
commercial quantities. Xxxx will exert its best efforts to ensure it does not
impede the regular design or production schedule for Products. Licensee agrees
to give Xxxx reasonable advance notice of any change in design, materials, or
manufacturing process or location for an approved style. Licensee agrees that it
will have all Products manufactured only by a manufacturer certified by Xxxx for
the manufacture of Products.
4. Licensee represents and warrants to Xxxx that all Products produced
hereunder shall conform to all applicable specifications and standards,
including those set forth in Schedule A; shall be free from defects in materials
and workmanship; and shall be merchantable and fit for the purpose for which
they are intended.
5. If for any reason Licensee, or any certified manufacturer acting on
Licensee's behalf, produces Products which do not meet Xxxx'x quality standards,
those Products shall be disposed of only in a manner approved in writing and in
advance by Xxxx, and all labels and tags identifying Xxxx or the Mark will be
removed under Xxxx'x supervision.
6. This License expressly includes the right to use the Mark in
advertising and promotional materials. Licensee agrees to use the Mark only in
the manner set forth in the guide for the proper use of the Mark which is
attached hereto as Schedule B, and, if the Mark is to be used in any manner
instructions for which are not contained in Schedule B, Licensee shall seek
Xxxx'x prior written approval and advice regarding the intended usage.
7. Licensee understands and agrees that approval to use the Mark in
conjunction with a particular brand or label owned by Licensee is limited to
that brand or label, and use of the Mark with a different brand or label owned
by Licensee requires Xxxx'x prior written approval even if the Product design
and construction is not modified. Where this is the case, such brands will be
listed in Schedule C. Any change in design, materials, or manufacturing process
or location for an approved style or brand must be approved in writing by Xxxx
before the Xxxx xxx be applied to Products incorporating such change.
8. Any material change in the record or beneficial ownership of Licensee
shall constitute an attempted transfer of this License which Xxxx may or may
not, in its sole and absolute discretion, approve.
9. The failure of either party to insist upon strict adherence to any
term of this Agreement on any occasion or for any period of time shall not be
considered a waiver, nor shall such failure deprive that party or limit its
exercise of the right thereafter to insist upon strict adherence to that term or
any other terms of this Agreement.
10. (a) This Agreement shall take effect on the date indicated below and
shall continue in force for one (1) year from that date. This Agreement may be
terminated by either party at any time thereafter by giving ninety (90) days'
advance written notice. If this
Agreement is not so terminated, then it shall automatically be renewed for
successive one (1) year periods, subject to earlier termination as provided
herein.
(b) This Agreement may be terminated at any time by an agreement in
writing signed by both Parties.
(c) In the event of a breach of this Agreement by either Party at any
time, this Agreement may be terminated by the other Party by giving thirty (30)
days' written notice specifying the breach, provided, however, that the
breaching Party shall have the opportunity to cure the specified breach within
that thirty (30) day period to the satisfaction of the other Party, in which
case this Agreement shall remain in effect.
11. Upon termination of this Agreement, Licensee undertakes to discontinue
immediately any further use of the Mark when Licensee's then-existing stock of
Products which comply with Xxxx'x quality standards is exhausted; to destroy all
labels, labeling and printed material bearing the Mark; and not use any
trademarks similar to the Mark. Licensee further promises that after
termination of this Agreement, Licensee will not claim that the use of the Mark
by Licensee has created any right, title or interest in or to the Mark on
Licensee's part and shall take whatever steps are necessary to ensure that the
Mark and all goodwill connected with the Mark remain Xxxx'x property.
12. All materials, documents, information and equipment which Xxxx
supplies or discloses to Licensee, whether in writing or orally, shall be
considered proprietary trade secrets of Xxxx. Licensee agrees not to disclose
any such matters to any third party without Xxxx'x advance written consent or to
use it in any way detrimental to Xxxx'x interests. Licensee further agrees to
make sure that the dissemination of such information among its employees is
restricted to those persons who have a demonstrated need to have access to it to
design, make, promote and sell Products, and then only after securing a pledge
of confidentiality from them. However, confidential information subject to the
restrictions of this paragraph shall not include
(a) information currently in the public domain;
(b) information which becomes public through no fault of Licensee;
(c) information previously known to Licensee prior to its disclosure to
Licensee by Xxxx, as shown by Licensee's contemporaneous written records; or
(d) information disclosed to Licensee by a third party not in breach of any
agreement.
Xxxx agrees to give comparable treatment to any of Licensee's proprietary
information which is specifically identified as such in writing at the time of
disclosure. The obligations of each party under this paragraph will remain in
full force and effect for three (3) years following any termination of this
Agreement.
13. This Agreement shall be governed by and construed in accordance with
the laws of the State of Delaware, U.S.A., not including its choice of law
provisions.
14. This Agreement may be amended only in a written document dated after
the date of this Agreement signed by the party sought to be charged, except for
Schedules A, B and C to this Agreement which can be amended by Xxxx at its
discretion from time to time by sending a copy of the new Schedule to Licensee.
15. This Agreement and the attached Schedules is intended to be the final
written expression of all the terms included herein and the complete and
exclusive statement of the Parties' agreement on the subject governed hereby.
These terms may not be contradicted by evidence of any prior agreement or of a
contemporaneous oral agreement, may be amended only as provided in paragraph 14
above, and may otherwise be explained, supplemented, modified, altered, waived
or suspended only by a writing signed by both Parties. This Agreement and its
Schedules shall be for purposes of interpretation, construction and all other
purposes be deemed to have been drafted by both Parties.
AGREED TO AND ACCEPTED THIS 25 day of JULY , 1994.
------ ----------- --
FALCON SHOE MANUFACTURING CO. X.X. XXXX & ASSOCIATES, INC.
By: /s/ Xxxxxxxx X. Xxxxxxxx By: /s/ Xxxxx X. Xxxxxxxxx
----------------------------------- -----------------------------
Xxxxxxxx X. Xxxxxxxx Xxxxx X. Xxxxxxxxx
----------------------------------- --------------------------------
(Print Name) (Print Name)
JWB/jes
UNIVTM
1/27/93
Attachments
Schedule A: Quality Standards
Schedule B: Trademark Usage Guide
Schedule C: Customer Brand Name Identification
SCHEDULE A
XXXX-TEX(R) FOOTWEAR QUALITY STANDARDS
End Use Application: Hunting Footwear
A. Waterproofness
1. All footwear must be constructed with GORE-SEAM tape and Xxxx Seam
Sealing Machines using current, seam sealing materials or other approved
materials and technology.
2. All booties must be tested after manufacture using a Xxxx Bootie Testing
Machine (BTM) or other approved test that is set to inflate the bootie
to a pressure of 1 psi. Booties must not leak air bubbles at a rate
greater than 1 bubble per 7 seconds.
3. Licensee is responsible for assuring that all finished footwear is
waterproof.
4. Finished footwear must be tested for waterproofness using either a
hydrostatic water test or another method that has been approved by Xxxx.
Reduced testing levels will be permitted on production lines which can
be shown to produce 100% waterproof product on a continuing basis. New
test methods may be developed and instituted for in process testing of
footwear.
5. The licensee must work to limit the potential water weight gain of the
finished products by using construction materials which minimize water
absorption and retention.
B. Breathability
1. XXXX-TEX(R) footwear must be breathable and meet the criteria in
Addendum A1. Components in the construction of the upper portion of the
product that are completely impermeable to moisture vapor transmission,
are not permitted unless the components have been approved by Xxxx.
Examples of components that Xxxx will approve are toe boxes, heel
counters and eyelets.
2. Licensee and Xxxx will work together to improve the breathability of the
licensee's footwear. This includes participation in Xxxx'x effort to
continually improve breathability standards for licensed footwear.
Participation requires that the licensee make available to Xxxx finished
footwear for Moisture Vapor Transmission Rate (MVTR) testing.
C. Fit
1. Waterproof footwear must be constructed using patterns that provide
acceptable donning and comfortable fit.
D. Other Components
1. All components must be appropriate for wet service and any unique, end
use specific, environmental conditions. Examples of unacceptable
components are poorly attached soles, low grade leathers and materials
that are mechanically unstable in water.
E. Model Approval
1. All models of footwear utilizing XXXX-TEX(R) fabric must be approved by
Gore prior to production. A sample of each model of footwear,
representative of the product that will be sold by the licensee, must be
submitted to and approved through Xxxx'x footwear laboratory. Model
approval may be revoked if a previously qualified model fails to
maintain conformance to the quality standards and specifications.
2. Xxxx'x evaluation may include, but is not limited to:
a) hydrostatic testing for waterproofness
b) flex testing for waterproofness
c) MVTR testing of finished products for breathability
d) analysis of the pattern and construction for donning, fit,
wicking, height of functional waterproofness, insulation
properties and overall product quality.
e) review of the labeling and distribution plans to ensure the
product if appropriate for its intended end use.
f) the specific test methods and quality specification for a
particular type of footwear as described in Addendum A1.
3. At Xxxx'x discretion, one model number may be used to represent several
others when the models differ only with respect to cosmetic changes.
4. Men's styles should be submitted in sizes 9-10 medium (D), women's
models in sizes 6-8 medium (B).
F. Labeling
1. All licensed models must be clearly labeled with the brand name under
which the product will be sold. Additionally, each piece of footwear
must be clearly labeled as containing XXXX-TEX fabric.
ADDENDUM A1
QUALITY SPECIFICATIONS FOR
HUNTING XXXX-TEX(R) FOOTWEAR
A. TEST OF WATERPROOFNESS
----------------------
1. Footwear must pass greater than or equal to 500,000 flex cycles
without leakage using the Xxxx water exclusion tester.
B. TEST OF BREATHABILITY
---------------------
1. The minimum requirement for breathability as measured using the
Xxxx Boot MVTR Test are as follows:
Men's Women's
Size 42 (US 9-10) Size 37 (US 6-8)
----------------- ----------------
Boots
2.5 g/hr. 2.0 g/hr.
C. DESIGN REQUIREMENTS
-------------------
1. Waterline: The minimum waterproof height is 75% of the total
height. The height is measured from the featherline.
2. Waterproof gusset construction is required for tongues.
3. Padding is required on sharp edges to protect the XXXX-TEX(R)
fabric from abrasion or puncture, especially around the heel
counters, toe puffs, eyelets, etc.
4. A permanently attached "XXXX-TEX(R)" label is required.
5. All seams must be sealed.
6. Bootie style construction is required.
D. Technical suggestions for materials are available upon request.
SCHEDULE B
TRADEMARK LICENSE
BETWEEN
FALCON SHOE MANUFACTURING CO.
AND
X.X. XXXX & ASSOCIATES, INC.
Licensed Trademark(s)
---------------------
"XXXX-TEX"
"Guaranteed To Keep You Dry"
SCHEDULE B
GUIDE FOR PROPER USE OF THE "XXXX-TEX" TRADEMARK
As a growing company, X.X. Xxxx & Associates, Inc. owns many valuable
trademarks which identify and distinguish our products from those of other
companies. Xxxx'x trademarks are well known and signify to our customers that
they are buying quality, state-of-the-art products from a company with a
reputation for innovation, dependability, and integrity. Significant time,
effort, and money has been spent in the research, development, and promotion of
these products.
Unfortunately, trademarks can be lost if they are not used correctly. A
trademark is lost when it become generic and sneaks into the language as a
common name description of the product, as distinguished from the source and
identity of the product. If a trademark becomes generic, the original owner
loses exclusive rights to use the mark. Any competitor can then use the
trademark and take advantage of the advertising and promotion dollars spent by
the former owner. Some famous former trademarks that have become generic are
nylon, escalator, kerosene, and zipper.
Fortunately, it is fairly easy to protect our trademarks. You need only
follow these six rules of proper trademark usage:
1. A trademark should always be used in a manner that will distinguish it from
the surrounding text. Capitalize trademarks completely, use initials caps
with quotes, bold face type, or italics, or as a minimum, use initial caps.
It is preferred that XXXX-TEX not be separated, i.e., GORE on one line and
TEX on another. The generic product name should not be capitalized.
Right: Garments of XXXX-TEX(R) fabric
Wrong: Garments of xxxx-tex fabric
2. Always follow trademark with the appropriate trademark notice and footnote.
The appropriate trademark notice should appear at least once in each piece
-------------
of printed matter, preferably the first time the trademark appears. The
footnote usually appears at the bottom of the last page.
Example: XXXX-TEX(R) fabric
Footnote: (R)Registered Trademark of X.X. Xxxx & Associates, Inc.
Example: XXXX-TEX insert
Footnote: Trademark of X.X. Xxxx & Associates, Inc.
3. Most importantly, a trademark is a proper adjective and when used in print
such as in advertising, catalogues, promotions, brochures, hang tags,
radio, etc. must always be followed by its generic or common name. The
trademark should never be used alone when it appears in text.
Right: XXXX-TEX(R) glove insert
Wrong: gloves made of XXXX-TEX
When a trademark is used directly on an article, such as a parka, jacket,
shoes, golf suit, etc., manufactured under license to the trademark owner's
specifications, then the article itself supplies the noun and the trademark can
stand alone.
Right: XXXX-TEX alone on a label incorporated in a parka,
jacket, rainsuit, etc.
When a trademark is used in print such as in advertising, catalogues,
hangtags, promotions, brochures, radio, etc., in reference to a licensed
product, it must be followed by its generic or common name.
Right: XXXX-TEX(R) parka, XXXX-TEX(R) gloves
4. Trademarks should never be used in the possessive sense.
Right: The popularity of XXXX-TEX(R) products.
Wrong: XXXX-TEX's popularity
5. Do not coin new words or terms for a trademark.
Wrong: This fabric has been GORE-TEXED
Wrong: GORE-TEXABLE fabric
6. Trademarks identify and distinguish our products from those of other
companies, therefore, our trademarks must not be combined or intermingled
with the trademarks of other companies.
Right: XXXX-TEX(R) golf shoes from ETONIC(R)
XXXX-TEX(R) shoes, the ULTRALIGHT collection from
TIMBERLAND/TM/
XXXX-TEX(R) parka - EXTREME GEAR from THE NORTH
FACE(R)
Wrong: ETONIC XXXX-TEX golf shoes
TIMBERLAND'S XXXX-TEX ULTRALIGHTS
THE NORTH FACE XXXX-TEX EXTREME GEAR
SCHEDULE B
Guide To The Proper Use Of The Trademark
"GUARANTEED TO KEEP YOU DRY"
"GUARANTEED TO KEEP YOU DRY" is a slogan trademark to be used in connection
with outerwear manufactured under the auspices of X.X. Xxxx & Associates, Inc.
It shall only be used on garment styles approved by X.X. Xxxx & Associates, Inc.
The trademark should be used either in all caps or initial caps with the
registered (R) following:
GUARANTEED TO KEEP YOU DRY(R)
Guaranteed to Keep You Dry(R)
Since slogans do not require the use of a noun, it may be used alone as
above. However, it may also be used in the following manner:
GUARANTEED TO KEEP YOU DRY(R) program
GUARANTEED TO KEEP YOU DRY(R) label
The slogan "GUARANTEED TO KEEP YOU DRY(R)" should never be sued in a non-
trademark manner such as:
This parka is guaranteed to keep you dry.
Alternative wording shall be used, for example:
This parka is engineered so you stay comfortable and dry.
SCHEDULE C
CUSTOMER BRAND NAME IDENTIFICATION
This section identifies Licensee's brand names which may be used on
Products which carry the Xxxx Trademarks listed in Schedule B.
Licensed Brand Names:
--------------------
Dunham
