COMVERGE, INC. TRADEMARK LICENSE AGREEMENT
Exhibit
10.2
This Trademark License Agreement (the
“Agreement”), effective as of June 11, 2010, is by and between COMVERGE, INC., a
Delaware corporation (“Comverge”) and PROJECTS INTERNATIONAL, INC., a District
of Columbia corporation (“Licensee”).
BACKGROUND
COMVERGE and Licensee have entered into
a Joint Venture Master Agreement, dated as of the date of this Agreement (the
“Master
Agreement”). Under the Master Agreement, COMVERGE and Licensee
have agreed to identify and jointly pursue Projects to provide demand response,
smartgrid and energy efficiency projects to customers in the Territory (as
defined in the Master Agreement).
COMVERGE is the owner by reason of
applications and registrations thereof and the extensive use of various service
marks, trademarks, company names, trade names, trade dress, and trading styles,
as shown in Schedule
A (the “COMVERGE
Marks”).
Licensee
desires to use the COMVERGE Marks in the conduct of the Business contemplated
under the Master Agreement (the “Licensed
Activities”). Under the terms of the Master Agreement,
COMVERGE agreed to provide to Licensee the license rights with respect to the
COMVERGE Marks necessary to permit the conduct of the Business.
Capitalized
terms used in this Agreement without definition have the meaning specified in
the Master Agreement.
For and
in consideration of the mutual promises, covenants and obligations set forth in
this Agreement and for other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the Parties agree as
follows:
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1.
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COMVERGE
hereby grants to the Licensee a non-exclusive, non-assignable,
sublicensable, royalty-free license to use the COMVERGE Marks in the
Territory solely in connection with the Licensed
Activities. “Territory” has the meaning specified in the Master
Agreement. This Agreement will continue in effect with respect
to each of the Country Groups within the Territory for the period
specified in Section 11 of the Master Agreement. If a
country is removed from the Territory in accordance with the provisions of
the Master Agreement, then that country will automatically be deemed
removed from the Territory under this
Agreement.
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2.
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Licensee
shall have the right to sublicense the COMVERGE Marks, which sublicense
shall be subject to the terms and provisions of this Agreement, in
accordance with the terms contained in this Agreement. For any
sublicense of the COMVERGE Marks, Licensee shall be responsible for
ensuring that the sublicensee has confirmed in writing its acceptance of
and agreement to comply with the terms of this Agreement prior to any use
of the COMVERGE Marks by a sublicensee. Any such sublicense
will be subject to the prior written approval of COMVERGE, in its sole
discretion.
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3.
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Licensee
hereby acknowledges that COMVERGE is authorized to license the COMVERGE
Marks, and that Licensee has not acquired any ownership interest in the
COMVERGE Marks and will not acquire any ownership interests in the
COMVERGE Marks by reason of this Agreement. All use of the
COMVERGE Marks by Licensee or its sublicensees shall be solely for the
benefit of COMVERGE, and the goodwill accrued to Licensee or its
sublicensees arising from use of the COMVERGE Marks shall accrue solely to
COMVERGE.
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4.
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Licensee
shall not perform any act, and shall use its best efforts not to permit
any act to be done, that would or may impair the rights of COMVERGE in and
to the COMVERGE Marks or jeopardize or invalidate any registration or any
application for registration of the COMVERGE Marks by COMVERGE, nor
perform any act that may assist or give rise to an application to remove
any of the COMVERGE Marks from the Register or that may prejudice the
right or title of COMVERGE to any of the COMVERGE
Marks.
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5.
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Licensee
agrees that it shall use the COMVERGE Marks without alteration or
modification. Licensee shall use the COMVERGE Marks in
connection with the Licensed Activities in accordance with the
instructions of COMVERGE and shall use the COMVERGE Marks with uniform
quality which is satisfactory to COMVERGE or as specified by
COMVERGE. Licensee shall permit authorized representatives of
COMVERGE to inspect and examine, during business hours upon reasonable
notice, the offices and facilities of Licensee to review any items and
advertisements bearing the COMVERGE Marks, at any time, so as to determine
whether Licensee is conducting the Licensed Activities under the COMVERGE
Marks consistent with the quality standards and specifications promulgated
by COMVERGE. COMVERGE may request samples of the items and
advertisements at least on an annual basis (or more frequently, as
determined by COMVERGE), and Licensee agrees to provide such samples to
COMVERGE. COMVERGE shall advise Licensee of any discrepancies
in quality or adherence to specifications, and Licensee, upon receipt of
such notification, hereby agrees to promptly correct any discrepancies to
the satisfaction of COMVERGE. Licensee shall bear the
reasonable costs of such inspection or as mutually agreed upon by the
parties hereto.
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6.
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Trademark
Usage
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A.
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Licensee
shall furnish to COMVERGE annually (or more frequently if requested by
COMVERGE), a list of all sublicensees. Such list shall include
the name and address of each
sublicense.
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B.
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Licensee
shall use the COMVERGE Marks in strict accordance with the latest version
of the COMVERGE Branding Guidelines provided by COMVERGE, a copy of which
Licensee acknowledges receipt.
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C.
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Upon
termination of this Agreement, or upon transfer of any branded property to
a third party for any reason (sale, destruction, grant), all
COMVERGE-branded property must be fully neutralized of the COMVERGE brand,
whereby Licensee must destroy all COMVERGE decals and other
lettering.
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7.
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Licensee
agrees and acknowledges that it will not adopt, use, or register any
domain name, trademark, service ▇▇▇▇, certification ▇▇▇▇ or other
designation similar to, or containing in whole or in part, the COMVERGE
Marks. COMVERGE shall have the sole right to and in its sole
discretion may commence, prosecute or defend and control any action
concerning the COMVERGE Marks.
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8.
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Licensee
agrees that it shall use its best efforts to monitor the use of the
COMVERGE Marks by its sublicensees. Licensee shall provide
written notice to COMVERGE of any violation of this Agreement by a
sublicensee within ten (10) Business Days of discovery of such
violation. Licensee shall take all reasonable steps to require
its sublicensees to cease and desist any use of COMVERGE Marks that
violates this Agreement. If Licensee is not able to remedy the
violation of this Agreement within one (1) month of the discovery of such
violation, COMVERGE shall have the right to take any legal enforcement
action it deems necessary to remedy the violation of this Agreement, and
Licensee agrees to terminate the sublicense agreement with the offending
sublicensee immediately.
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9.
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Licensee
shall provide written notice to COMVERGE of any infringement of the
COMVERGE Marks by any party of which Licensee becomes
aware.
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10.
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COMVERGE
may terminate this Agreement at any time, upon thirty (30) days’ notice to
the Licensee. In addition, if COMVERGE in its sole discretion
believes that the COMVERGE Marks are being improperly used by Licensee,
COMVERGE may immediately terminate this
Agreement.
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11.
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Upon
the expiration or termination of this Agreement for any reason whatsoever
Licensee shall notify its sublicensees and both Licensee and sublicensees
shall immediately cease any use of the COMVERGE Marks, or any depiction
thereof, in any form and for any purpose whatsoever and shall immediately
return to COMVERGE any advertising, promotional or printed materials
bearing any the COMVERGE Marks.
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12.
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COMVERGE
shall not be liable to Licensee or its sublicensees for damages, losses or
expenses of any kind caused by or related to the non-renewal or
termination of this Agreement, including (i) loss of prospective profits
and (ii) expenses, investments and commitments incurred in connection with
this Agreement.
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13.
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In
the event of termination or non-renewal for any reason of this Agreement,
Licensee shall cooperate fully with COMVERGE and shall not prevent or
attempt to prevent or otherwise impede (whether through action or
inaction) COMVERGE from operating in the Territory itself or through any
other entity, or entering into a relationship, and working with, an entity
other than Licensee or its sublicensees. Licensee and its
sublicensees shall not prevent or attempt to prevent any new service
provider, distributor, or partner of COMVERGE from using any of the
COMVERGE Marks or registering itself as a licensee of the COMVERGE
Marks.
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14.
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The
Parties agree that all questions as to validity, construction and
performance of this Agreement shall be governed by the laws of the United
States of America and the laws of the State of Delaware, applicable to
contracts wholly to be performed in said state. Subject to the
terms of this section, the Parties further agree that all disputes which
may arise under, out of or in connection with or in relation to this
Agreement, which cannot be resolved by negotiation between the parties,
shall be resolved in accordance with the provisions of Section 27 of the
Master Agreement.
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15.
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COMVERGE
and Licensee shall execute and do, and shall procure all other necessary
persons to execute and do, all documents, acts and things as may be
necessary or desirable for giving effect to this
Agreement.
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16.
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Nothing
herein contained shall be construed to place COMVERGE and Licensee in a
relationship as partners, joint venturers, employer and employee, or
principal and agent respectively, and Licensee shall have no power to
obligate or bind COMVERGE in any manner
whatsoever.
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17.
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Licensee
shall have no right to make an assignment of this Agreement unless such
assignment shall first be approved in writing by COMVERGE, in its sole
discretion. If any transfer of Licensee’s interest in this
Agreement shall be made by sale of any part of Licensee’s business or
assets or by execution or similar legal process, or if a petition is filed
by or against Licensee to adjudicate Licensee a bankrupt or insolvent
under the law, or if a receiver or trustee is appointed for the Licensee’s
business or assets, or if a petition is filed by or against Licensee under
any provision of law for a corporate reorganization or any arrangement
with Licensee's creditors, or if in any manner the interest of Licensee
under this Agreement shall pass to another by the operation of law, then,
in any of said events Licensee shall be deemed to have committed a
material breach of this Agreement and this Agreement shall terminate
automatically.
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18.
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Any
notices or other communications required to be given by either Party
pursuant to this Agreement must be in writing and shall be considered to
have been given (i) when received if personally delivered, (ii) on the
date of transmission if sent by facsimile and confirmed by telephone and
by electronic facsimile confirmation, or (iii) the next Business Day if
sent via nationally recognized commercial delivery
service.
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A.
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For
the purpose of notices, the addresses of the Parties are as
follows:
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Comverge:
▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇
▇▇▇
▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: Chief
Financial Officer
with a
copy to :
▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇
▇▇▇
▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: General
Counsel
and
King
& Spalding LLP
▇▇▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention:
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Licensee :
Projects International,
Inc.
▇▇▇
▇▇▇▇
▇▇▇▇▇▇ ▇▇
▇▇▇▇▇
▇▇▇▇
▇▇▇▇▇▇▇▇▇▇,
▇.▇. ▇▇▇▇▇
Attention:
Chief Financial Officer
or to
another person or address as either COMVERGE or Licensee may designate for
itself by notice given to the other Party in the manner described
above.
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19.
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Amendments
to this Agreement or its Schedule may be made only by a written agreement
and signed by each of the Parties.
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20.
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The
invalidity of any provision of this Agreement shall not affect the
validity of any other provision of this
Agreement.
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21.
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This
Agreement and the Schedule attached hereto constitute the entire contract
between the Parties with respect to the subject matter of this Agreement
and supersede all previous oral and written agreements, contracts,
understandings, and communications of the Parties in respect of the
subject matter of this Agreement. The headings to Articles are for ease of
reference only and shall have no legal effect. As used in this
Agreement, “including” means, in each instance, “including without
limitation”.
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22.
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Failure
or delay on the part of either Party to exercise any right, power, or
privilege under this Agreement shall not operate as a waiver thereof, nor
shall any single or partial exercise of any right, power, or privilege
preclude exercise of any other right, power, or
privilege.
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23.
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If
any provisions of this Agreement are determined to be illegal or
unenforceable in any respect, the Parties will use good faith efforts to
agree upon the modifications to be made to this Agreement; provided,
however, that if the Parties shall fail to agree, then this Agreement
shall be considered divisible as to such provision, which shall be
inoperative, and the validity, legality and enforceability of the
remaining provisions shall not in any way be affected or impaired
thereby.
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IN
WITNESS WHEREOF, the Parties have caused their duly authorized officers to
execute this Agreement on the dates indicated below.
By: /s/ ▇▇▇▇▇▇▇
▇▇▇▇▇▇
Name: ▇▇▇▇▇▇▇
▇▇▇▇▇▇
Title:
EVP-CFO
Dated:
June 11,
2010
[NOTARY]
PROJECTS
INTERNATIONAL, INC.
By: /s/ ▇▇▇▇▇
▇▇▇▇▇
Name:
▇▇▇▇▇
▇▇▇▇▇
Title:
President
Dated:
6/11/10
[NOTARY] District
of Columbia: SS
[NOTARY
STAMP] Subscribed
and Sworn to before me, in my presence,
This 11th day of June,
2010
/s/ ▇▇▇▇▇ ▇.
▇▇▇▇▇
▇▇▇▇▇ ▇. ▇▇▇▇▇, Notary Public,
D.C.
My Commission Expires
5-14-2013
SCHEDULE
A
COMVERGE
MARKS
COMVERGE
APOLLO