Exhibit 4.2
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TRADEMARK COLLATERAL
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SECURITY AND PLEDGE AGREEMENT
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TRADEMARK COLLATERAL SECURITY AND PLEDGE AGREEMENT dated as of June 30,
2004, between SWANK, INC., a Delaware corporation having its principal place of
business at 00 Xxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000 (the "Assignor"), and XXXXX
FARGO FOOTHILL, INC., a California corporation having an office at Xxx Xxxxxx
Xxxxx, 00xx Xxxxx, Xxxxxx XX 00000, (the "Lender").
WHEREAS, the Assignor and the Lender are parties to a Loan and Security
Agreement dated as of the date hereof (as amended and in effect from time to
time, the "Loan Agreement"), among the Assignor and the Lender.
WHEREAS, it is a condition precedent to the Lender making any loans or
otherwise extending credit to the Assignor under the Loan Agreement that the
Assignor execute and deliver to the Lender a trademark agreement in
substantially the form hereof;
WHEREAS, the Assignor has executed and delivered to the Lender the Loan
Agreement, pursuant to which the Assignor has granted to the Lender a security
interest in certain of the Assignor's personal property and fixture assets,
including without limitation the trademarks, service marks, trademark and
service xxxx registrations, and trademark and service xxxx registration
applications listed on Schedule A attached hereto, all to secure the payment and
performance of the Obligations (as defined in the Loan Agreement); and
WHEREAS, this Trademark Agreement is supplemental to the provisions
contained in the Loan Agreement;
NOW, THEREFORE, in consideration of the premises contained herein and
for other good and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, the parties hereto hereby agree as follows:
1. DEFINITIONS.
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Capitalized terms used herein and not otherwise defined herein shall
have the respective meanings provided therefor in the Loan Agreement. In
addition, the following terms shall have the meanings set forth in this ss.1 or
elsewhere in this Trademark Agreement referred to below:
Assignment of Marks. See ss.2.1.
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Associated Goodwill. All goodwill of the Assignor and its business,
products and services appurtenant to, associated with or symbolized by the
Trademarks and the use thereof.
Pledged Trademarks. All of the Assignor's right, title and interest in
and to all of the Trademarks, the Trademark Registrations, the Trademark License
Rights, the Trademark Rights, the Associated Goodwill, the Related Assets, and
all accessions to, substitutions for, replacements of, and all products and
proceeds of any and all of the foregoing.
PTO. The United States Patent and Trademark Office.
Related Assets. All assets, rights and interests of the Assignor that
uniquely reflect or embody the Associated Goodwill, including all rights and
interests of the Assignor in and to the following:
(a) all patents, inventions, copyrights, trade secrets,
confidential information, formulae, methods or processes, compounds,
recipes, know-how, methods and operating systems, drawings,
descriptions, formulations, manufacturing and production and delivery
procedures, quality control procedures, product and service
specifications, catalogs, price lists, and advertising materials,
relating to the manufacture, production, delivery, provision and sale
of goods or services, in each case under or in association with any of
the Trademarks; and
(b) the following documents and things in the possession or
under the control of the Assignor, or subject to its demand for
possession or control, related to the production, delivery, provision
and sale by the Assignor, or any affiliate, franchisee, licensee or
contractor, of products or services sold by or under the authority of
the Assignor, in each case in connection with the Trademarks or
Trademark Rights, whether prior to, on or subsequent to the date
hereof:
(i) all lists, contracts, ancillary documents and
other information that identify, describe or provide
information with respect to any customers, dealers or
distributors of the Assignor, its affiliates or franchisees or
licensees or contractors, for products or services sold under
or in connection with the Trademarks or Trademark Rights,
including all lists and documents containing information
regarding each customer's, dealer's or distributor's name and
address, credit, payment, discount, delivery and other sale
terms, and history, pattern and total of purchases by brand,
product, style, size and quantity, in each case relating to
the Trademarks or Trademark Rights;
(ii) all agreements (including franchise agreements),
product and service specification documents and operating,
production and quality control manuals relating to or used in
the design, manufacture, production, delivery, provision and
sale of products or services, in each case under or in
connection with the Trademarks or Trademark Rights;
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(iii) all documents and agreements relating to the
identity and locations of all sources of supply, all terms of
purchase and delivery, for all materials, components, raw
materials and other supplies and services used in the
manufacture, production, provision, delivery and sale of
products or services in each case under or in connection with
the Trademarks or Trademark Rights; and
(iv) all agreements and documents constituting or
concerning the present or future, current or proposed
advertising and promotion by the Assignor (or any of its
affiliates, franchisees, licensees or contractors) of products
or services in each case under or in connection with the
Trademarks or Trademark Rights.
Trademark Agreement. This Trademark Collateral Security and Pledge
Agreement, as amended and in effect from time to time.
Trademark License Rights. Any and all past, present or future rights
and interests of the Assignor pursuant to any and all past, present and future
franchising or licensing agreements in favor of the Assignor, or to which the
Assignor is a party, pertaining to any Trademarks, Trademark Registrations, or
Trademark Rights owned by the Assignor in the past, present or future, including
the right (but not the obligation) in the name of the Assignor or the Lender to
enforce, and xxx and recover for, any breach or violation of any such agreement
to which the Assignor is a party.
Trademark Registrations. All past, present or future federal, state,
local and foreign registrations of the Trademarks, all past, present and future
applications for any such registrations (and any such registrations thereof upon
approval of such applications), together with the right (but not the obligation)
to apply for such registrations (and prosecute such applications) in the name of
the Assignor or the Lender, and to take any and all actions necessary or
appropriate to maintain such registrations in effect and renew and extend such
registrations.
Trademark Rights. Any and all past, present or future rights in, to and
associated with the Trademarks throughout the world, whether arising under
federal law, state law, common law, foreign law or otherwise, including the
following: all such rights arising out of or associated with the Trademark
Registrations; the right (but not the obligation) to register claims under any
state, federal or foreign trademark law or regulation; the right (but not the
obligation) to xxx or bring opposition or cancellation proceedings in the name
of the Assignor or the Lender for any and all past, present and future
infringements or dilution of or any other damages or injury to the Trademarks,
the Trademark Rights, or the Associated Goodwill, and the rights to damages or
profits due or accrued arising out of or in connection with any such past,
present or future infringement, dilution, damage or injury; and the Trademark
License Rights.
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Trademarks. All of the trademarks, service marks, designs, logos,
indicia, trade names, corporate names, company names, business names, fictitious
business names, trade styles, elements of package or trade dress, and other
source and product or service identifiers, used or associated with or
appurtenant to the products, services and businesses of the Assignor, that (i)
are set forth on Schedule A hereto, or (ii) are owned by the Assignor, or (iii)
are in the future owned by the Assignor, or in which the Assignor in the future
acquires any ownership interest.
use. With respect to any Trademark, all uses of such Trademark by, for
or in connection with the Assignor or its business or for the direct or indirect
benefit of the Assignor or its business, including all such uses by the Assignor
itself, by any of the affiliates of the Assignor, or by any franchisee, licensee
or contractor of the Assignor.
Unless otherwise provided herein, the rules of interpretation set forth
in ss.1.4 of the Loan Agreement shall be applicable to this Trademark Agreement.
2. GRANT OF SECURITY INTEREST.
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2.1. Security Interest; Assignment of Marks. As collateral security for
the payment and performance in full of all of the Obligations, the Assignor
hereby unconditionally grants to the Lender a continuing security interest in
and first priority lien on the Pledged Trademarks, and pledges and mortgages
(but does not transfer title to) the Pledged Trademarks to the Lender. In
addition, the Assignor has executed in blank and delivered to the Lender an
assignment of federally registered trademarks in substantially the form of
Exhibit 1 hereto (the "Assignment of Marks"). The Assignor hereby authorizes the
Lender to complete as assignee and record with the PTO the Assignment of Marks
upon the occurrence and during the continuance of an Event of Default and the
proper exercise of the Lender's remedies under this Trademark Agreement and the
Loan Agreement.
2.2. Conditional Assignment. In addition to, and not by way of
limitation of, the grant, pledge and mortgage of the Pledged Trademarks provided
in ss.2.1, the Assignor grants, assigns, transfers, conveys and sets over to the
Lender the Assignor's entire right, title and interest in and to the Pledged
Trademarks; provided that such grant, assignment, transfer and conveyance shall
be and become of force and effect only (i) upon or after the occurrence and
during the continuance of an Event of Default and (ii) either (A) upon the
written demand of the Lender at any time during such continuance or (B)
immediately and automatically (without notice or action of any kind by the
Lender) upon an Event of Default for which acceleration of the Loans and other
Obligations is automatic under the Loan Agreement or upon the sale or other
disposition of or foreclosure upon the Collateral pursuant to the Loan Agreement
and applicable law (including the transfer or other disposition of the
Collateral by the Assignor to the Lender or its nominee in lieu of foreclosure).
2.3. Supplemental to Loan Agreement. Pursuant to the Loan Agreement the
Assignor has granted to the Lender a continuing security interest in and lien on
the Collateral (including the Pledged Trademarks). The Loan Agreement, and all
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rights and interests of the Lender in and to the Collateral (including the
Pledged Trademarks) thereunder, are hereby ratified and confirmed in all
respects. In no event shall this Trademark Agreement, the grant, assignment,
transfer and conveyance of the Pledged Trademarks hereunder, or the recordation
of this Trademark Agreement (or any document hereunder) with the PTO, adversely
affect or impair, in any way or to any extent, the Loan Agreement, the security
interest of the Lender in the Collateral (including the Pledged Trademarks)
pursuant to the Loan Agreement and this Trademark Agreement, the attachment and
perfection of such security interest under the Uniform Commercial Code
(including the security interest in the Pledged Marks), or any present or future
rights and interests of the Lender in and to the Collateral under or in
connection with the Loan Agreement, this Trademark Agreement or the Uniform
Commercial Code. Any and all rights and interests of the Lender in and to the
Pledged Trademarks (and any and all obligations of the Assignor with respect to
the Pledged Trademarks) provided herein, or arising hereunder or in connection
herewith, shall only supplement and be cumulative and in addition to the rights
and interests of the Lender (and the obligations of the Assignor) in, to or with
respect to the Collateral (including the Pledged Trademarks) provided in or
arising under or in connection with the Loan Agreement and shall not be in
derogation thereof, provided, that in the event of any inconsistency between
this Trademark Agreement and the Loan Agreement, the provisions of the Loan
Agreement shall govern.
3. REPRESENTATIONS, WARRANTIES AND COVENANTS.
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The Assignor represents, warrants and covenants that: (a) Schedule A
(as the same may be supplemented by written notice from the Assignor to the
Lender) sets forth a true and complete list of all Trademarks and Trademark
Registrations now owned by the Assignor; (b) the Trademarks and Trademark
Registrations are subsisting and, to the best of the Assignor's knowledge, have
not been adjudged invalid or unenforceable, in whole or in part, and, to the
best of the Assignor's knowledge, there is no litigation or proceeding pending
concerning the validity or enforceability of the Trademarks or Trademark
Registrations, except, in each case, where such an event could not reasonably be
expected to have a Material Adverse Change; (c) to the best of the Assignor's
knowledge, each of the Trademarks and Trademark Registrations is valid and
enforceable, except where the invalidity or unenforceability of such Trademark
or Trademark Registration, as the case may be, could not reasonably be expected
to have a Material Adverse Change; (d) to the best of the Assignor's knowledge,
there is no infringement by others of the Trademarks, Trademark Registrations or
Trademark Rights, other than an infringement by others occurring after the
Closing Date and which the Assignor has provided the Lender with prompt notice
thereof; (e) to the best of the Assignor's knowledge, no claim has been made
that the use of any of the Trademarks does or may violate the rights of any
third person, and to the best of the Assignor's knowledge, there is no
infringement by the Assignor of the trademark rights of others; (f) other than
as permitted by Section 5 hereof, the Assignor is the sole and exclusive owner
of the entire and unencumbered right, title and interest in and to each of the
Trademarks, free and clear of any liens, charges, encumbrances and adverse
claims, including pledges, assignments, licenses, registered user agreements and
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covenants by the Assignor not to xxx third persons, other than the security
interest and assignment created by the Loan Agreement and this Trademark
Agreement and any Permitted Liens; (g) the Assignor has the unqualified right to
enter into this Trademark Agreement and to perform its terms; (h) the Assignor
has used, and will continue to use, proper statutory and other appropriate
proprietary notices in connection with its use of the Trademarks; (i) the
Assignor has used, and will continue to use for the duration of this Trademark
Agreement, consistent standards of quality in its manufacture and provision of
products and services sold or provided under the Trademarks; (j) this Trademark
Agreement, together with the Loan Agreement, will create in favor of the Lender
a valid and perfected first priority security interest in the Pledged Trademarks
upon making the filings referred to in clause (k) of this ss.3; and (k) except
for the filing of financing statements with the Secretary of State for the State
of Delaware under the Uniform Commercial Code and the recording of this
Trademark Agreement with the PTO, no authorization, approval or other action by,
and no notice to or filing with, any governmental or regulatory authority,
agency or office is required either (A) for the grant by the Assignor or the
effectiveness of the security interest and assignment granted hereby or for the
execution, delivery and performance of this Trademark Agreement by the Assignor,
or (B) for the perfection of or the exercise by the Lender of any of its rights
and remedies hereunder.
4. INSPECTION RIGHTS.
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The Assignor hereby grants to the Lender and its employees and agents
the right to visit the Assignor's plants and facilities that manufacture,
inspect or store products sold under any of the Trademarks, and to inspect the
products and quality control records relating thereto at reasonable times during
regular business hours; provided, that so long as no Default or Event of Default
has occurred and is continuing, Lender's inspection rights shall be upon
reasonable advance notice to the Assignor.
5. NO TRANSFER OR INCONSISTENT AGREEMENTS.
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Without the Lender's prior written consent and except for licenses of
the Pledged Trademarks in the ordinary course of the Assignor's business
consistent with its past practices, the Assignor will not (a) mortgage, pledge,
assign, encumber, grant a security interest in, transfer, license or alienate
any of the Pledged Trademarks, or (b) enter into any agreement (for example, a
license agreement) that is inconsistent with the Assignor's obligations under
this Trademark Agreement or the Loan Agreement.
6. AFTER-ACQUIRED TRADEMARKS, ETC.
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6.1. After-acquired Trademarks. If, before the Obligations shall have
been finally paid and satisfied in full, the Assignor shall acquire ownership of
other or new Trademarks, Trademark Registrations or Trademark Rights, the
provisions of this Trademark Agreement shall automatically apply thereto and the
Assignor shall promptly provide to the Lender notice thereof in writing and
execute and deliver to the Lender such documents or instruments as the Lender
may reasonably request further to implement, preserve or evidence the Lender's
interest therein.
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6.2. Amendment to Schedule. The Assignor authorizes the Lender to
modify this Trademark Agreement and the Assignment of Marks, without the
necessity of the Assignor's further approval or signature, by amending Exhibit A
hereto and the Annex to the Assignment of Marks to include any future or other
Trademarks, Trademark Registrations or Trademark Rights under ss.2 or ss.6.
7. TRADEMARK PROSECUTION.
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7.1. Assignor Responsible. The Assignor shall assume full and complete
responsibility for the prosecution, defense, enforcement or any other necessary
or desirable actions in connection with the Pledged Trademarks, and shall hold
the Lender harmless from any and all costs, damages, liabilities and expenses
that may be incurred by the Lender in connection with the Lender's interest in
the Pledged Trademarks or any other action or failure to act in connection with
this Trademark Agreement or the transactions contemplated hereby. In respect of
such responsibility, the Assignor shall retain trademark counsel reasonably
acceptable to the Lender.
7.2. Assignor's Duties, etc. The Assignor shall have the right and the
duty, through trademark counsel reasonably acceptable to the Lender, to
prosecute diligently any trademark registration applications of the Trademarks
pending as of the date of this Trademark Agreement or thereafter, to preserve
and maintain all rights in the Trademarks and Trademark Registrations, including
the filing of appropriate renewal applications and other instruments to maintain
in effect the Trademark Registrations and the payment when due of all
registration renewal fees and other fees, taxes and other expenses that shall be
incurred or that shall accrue with respect to any of the Trademarks or Trademark
Registrations. Any expenses incurred in connection with such applications and
actions shall be borne by the Assignor. The Assignor shall not abandon any filed
trademark registration application, or any Trademark Registration or Trademark,
without the consent of the Lender, which consent shall not be unreasonably
withheld, other than those Trademark Registrations and Trademarks that are no
longer used or useful in the conduct of the Assignor's business.
7.3. Assignor's Enforcement Rights. The Assignor shall have the right
and the duty to bring suit or other action in the Assignor's own name to
maintain and enforce the Trademarks, the Trademark Registrations and the
Trademark Rights, other than those Trademark Registrations and Trademarks that
are no longer used or useful in the conduct of the Assignor's business. The
Assignor may require the Lender to join in such suit or action as necessary to
assure the Assignor's ability to bring and maintain any such suit or action in
any proper forum if (but only if) the Lender is completely satisfied that such
joinder will not subject the Lender to any risk of liability. The Assignor shall
promptly, upon demand, reimburse and indemnify the Lender for all damages, costs
and expenses, including legal fees, incurred by the Lender pursuant to this
ss.7.3.
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7.4. Protection of Trademarks, etc. In general, the Assignor shall take
any and all such actions (including institution and maintenance of suits,
proceedings or actions) as may be necessary or appropriate to properly maintain,
protect, preserve, and enforce the Pledged Trademarks, other than those
Trademark Registrations and Trademarks that are no longer used or useful in the
conduct of the Assignor's business. The Assignor shall not take or fail to take
any action, nor permit any action to be taken or not taken by others under its
control, that would adversely affect the validity, grant or enforcement of the
Pledged Trademarks, other than those Trademark Registrations and Trademarks that
are no longer used or useful in the conduct of the Assignor's business.
7.5. Notification by Assignor. Promptly upon obtaining knowledge
thereof, the Assignor will notify the Lender in writing of the institution of,
or any final adverse determination in, any proceeding in the PTO or any similar
office or agency of the United States or any foreign country, or any court,
regarding the validity of any of the Trademarks or Trademark Registrations or
the Assignor's rights, title or interests in and to the Pledged Trademarks, and
of any event that does or reasonably could materially adversely affect the value
of any of the Pledged Trademarks, the ability of the Assignor or the Lender to
dispose of any of the Pledged Trademarks or the rights and remedies of the
Lender in relation thereto (including but not limited to the levy of any legal
process against any of the Pledged Trademarks).
8. REMEDIES.
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Upon the occurrence and during the continuance of an Event of Default
and the occurrence of the other events set forth in ss.2.2 above, the Lender
shall have, in addition to all other rights and remedies given it by this
Trademark Agreement (including, without limitation, those set forth in ss.2.2,
the Loan Agreement, and the other Loan Documents, those allowed by law and the
rights and remedies of a secured party under the Uniform Commercial Code as
enacted in the Commonwealth of Massachusetts, and, without limiting the
generality of the foregoing, the Lender may immediately, without demand of
performance and without other notice (except as set forth next below) or demand
whatsoever to the Assignor, all of which are hereby expressly waived, sell or
license at public or private sale or otherwise realize upon the whole or from
time to time any part of the Pledged Trademarks, or any interest that the
Assignor may have therein, and after deducting from the proceeds of sale or
other disposition of the Pledged Trademarks all expenses incurred by the Lender
in attempting to enforce this Trademark Agreement (including all reasonable
expenses for broker's fees and legal services), shall apply the residue of such
proceeds toward the payment of the Obligations as set forth in or by reference
in the Loan Agreement, with any remainder being returned to the Assignor or such
other Person who may be entitled to same under law. Notice of any sale, license
or other disposition of the Pledged Trademarks shall be given to the Assignor at
least five (5) days before the time that any intended public sale or other
public disposition of the Pledged Trademarks is to be made or after which any
private sale or other private disposition of the Pledged Trademarks may be made,
which the Assignor hereby agrees shall be reasonable notice of such public or
private sale or other disposition. At any such sale or other disposition, the
Lender may, to the extent permitted under applicable law, purchase or license
the whole or any part of the Pledged Trademarks or interests therein sold,
licensed or otherwise disposed of.
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9. COLLATERAL PROTECTION.
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If the Assignor shall fail to do any act that it has covenanted to do
hereunder, or if any representation or warranty of the Assignor shall be
breached, the Lender, in its own name or that of the Assignor (in the sole
discretion of the Lender), may (but shall not be obligated to) do such act or
remedy such breach (or cause such act to be done or such breach to be remedied),
and the Assignor agrees promptly to reimburse the Lender for any cost or expense
incurred by the Lender in so doing.
10. POWER OF ATTORNEY.
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If any Event of Default shall have occurred and be continuing and the
occurrence of the other events set forth in ss.2.2 above, the Assignor does
hereby make, constitute and appoint the Lender (and any officer or agent of the
Lender as the Lender may select in its exclusive discretion) as the Assignor's
true and lawful attorney-in-fact, with full power of substitution and with the
power to endorse the Assignor's name on all applications, documents, papers and
instruments necessary for the Lender to use the Pledged Trademarks, or to grant
or issue any exclusive or nonexclusive license of any of the Pledged Trademarks
to any third person, or to take any and all actions necessary for the Lender to
assign, pledge, convey or otherwise transfer title in or dispose of any of the
Pledged Trademarks or any interest of the Assignor therein to any third person,
and, in general, to execute and deliver any instruments or documents and do all
other acts that the Assignor is obligated to execute and do hereunder. The
Assignor hereby ratifies all that such attorney shall lawfully do or cause to be
done by virtue hereof and releases the Lender from any claims, liabilities,
causes of action or demands arising out of or in connection with any action
taken or omitted to be taken by the Lender under this power of attorney (except
for the Lender's gross negligence or willful misconduct). This power of attorney
is coupled with an interest and shall be irrevocable for the duration of this
Trademark Agreement.
11. FURTHER ASSURANCES.
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The Assignor shall, at any time and from time to time, and at its
expense, make, execute, acknowledge and deliver, and file and record as
necessary or appropriate with governmental or regulatory authorities, agencies
or offices, such agreements, assignments, documents and instruments, and do such
other and further acts and things (including, without limitation, obtaining
consents of third parties), as the Lender may request or as may be necessary or
appropriate in order to implement and effect fully the intentions, purposes and
provisions of this Trademark Agreement, or to assure and confirm to the Lender
the grant, perfection and priority of the Lender's security interest in the
Pledged Trademarks.
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12. TERMINATION.
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At such time as all of the Obligations have been finally paid and
satisfied in full, this Trademark Agreement shall terminate and the Lender
shall, upon the written request and at the expense of the Assignor, execute and
deliver to the Assignor all deeds, assignments and other instruments as may be
necessary or proper to reassign and reconvey to and re-vest in the Assignor the
entire right, title and interest to the Pledged Trademarks previously granted,
assigned, transferred and conveyed to the Lender by the Assignor pursuant to
this Trademark Agreement, as fully as if this Trademark Agreement had not been
made, subject to any disposition of all or any part thereof that may have been
made by the Lender pursuant hereto or the Loan Agreement.
13. COURSE OF DEALING.
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No course of dealing between the Assignor and the Lender, nor any
failure to exercise, nor any delay in exercising, on the part of the Lender, any
right, power or privilege hereunder or under the Loan Agreement or any other
agreement shall operate as a waiver thereof; nor shall any single or partial
exercise of any right, power or privilege hereunder or thereunder preclude any
other or further exercise thereof or the exercise of any other right, power or
privilege.
14. EXPENSES.
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Any and all fees, costs and expenses, of whatever kind or nature,
including the reasonable attorneys' fees and expenses incurred by the Lender in
connection with the preparation of this Trademark Agreement and all other
documents relating hereto, the consummation of the transactions contemplated
hereby or the enforcement hereof, the filing or recording of any documents
(including all taxes in connection therewith) in public offices, the payment or
discharge of any taxes, counsel fees, maintenance or renewal fees, encumbrances,
or otherwise protecting, maintaining or preserving the Pledged Trademarks, or in
defending or prosecuting any actions or proceedings arising out of or related to
the Pledged Trademarks, shall be borne and paid by the Assignor.
15. OVERDUE AMOUNTS.
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Until paid, all amounts due and payable by the Assignor hereunder shall
be a debt secured by the Pledged Trademarks and other Collateral and shall bear,
whether before or after judgment, interest at the then applicable rate of
interest set forth in the Loan Agreement.
16. NO ASSUMPTION OF LIABILITY; INDEMNIFICATION.
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NOTWITHSTANDING ANYTHING TO THE CONTRARY CONTAINED HEREIN, THE LENDER
DOES NOT ASSUME ANY LIABILITIES OF THE ASSIGNOR WITH RESPECT TO ANY CLAIM OR
CLAIMS REGARDING THE ASSIGNOR'S OWNERSHIP OR PURPORTED OWNERSHIP OF, OR RIGHTS
OR PURPORTED RIGHTS ARISING FROM, ANY OF THE PLEDGED TRADEMARKS OR ANY USE,
LICENSE OR SUBLICENSE THEREOF, WHETHER ARISING OUT OF ANY PAST, CURRENT OR
FUTURE EVENT, CIRCUMSTANCE, ACT OR OMISSION OR OTHERWISE. ALL OF SUCH
LIABILITIES SHALL BE EXCLUSIVELY THE RESPONSIBILITY OF THE ASSIGNOR, AND THE
ASSIGNOR SHALL INDEMNIFY THE LENDER FOR ANY AND ALL COSTS, EXPENSES, DAMAGES AND
CLAIMS, INCLUDING LEGAL FEES, INCURRED BY THE LENDER WITH RESPECT TO SUCH
LIABILITIES.
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17. NOTICES.
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All notices and other communications made or required to be given
pursuant to this Trademark Agreement shall be in writing and shall be delivered
in hand, mailed by United States registered or certified first-class mail,
postage prepaid, or sent by telegraph, telecopy or telex and confirmed by
delivery via courier or postal service, addressed as follows:
(a) if to the Assignor, at 00 Xxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx
00000, Attention: President, or at such other address for notice as the
Assignor shall last have furnished in writing to the person giving the
notice, with copies to Jenkens & Xxxxxxxxx Xxxxxx Xxxxxx LLP, 000
Xxxxxxxxx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000, Attention: Xxxxxxx X.
Xxxxxxxx; and
(b) if to the Lender, at Xxxxx Fargo Foothill, Inc., 0000
Xxxxxxxx Xxxxxx, Xxxxx 0000 Xxxx, Xxxxx Xxxxxx, Xxxxxxxxxx 00000
Attention: Business Finance Manager, or at such other address for
notice as the Lender shall last have furnished in writing to the person
giving the notice.
Any such notice or demand shall be deemed to have been duly given or
made and to have become effective (i) if delivered by hand to a responsible
officer of the party to which it is directed, at the time of the receipt thereof
by such officer, (ii) if sent by registered or certified first-class mail,
postage prepaid, two (2) Business Days after the posting thereof, and (iii) if
sent by telegraph, telecopy, or telex, at the time of the dispatch thereof, if
in normal business hours in the country of receipt, or otherwise at the opening
of business on the following Business Day.
18. AMENDMENT AND WAIVER.
--------------------
This Trademark Agreement is subject to modification only by a writing
signed by the Lender and the Assignor, except as provided in ss.6.2. The Lender
shall not be deemed to have waived any right hereunder unless such waiver shall
be in writing and signed by the Lender. A waiver on any one occasion shall not
be construed as a bar to or waiver of any right on any future occasion.
-12-
19. GOVERNING LAW; CONSENT TO JURISDICTION.
--------------------------------------
THIS TRADEMARK AGREEMENT IS INTENDED TO TAKE EFFECT AS A SEALED
INSTRUMENT AND SHALL BE GOVERNED BY, AND CONSTRUED IN ACCORDANCE WITH, THE LAWS
OF THE COMMONWEALTH OF MASSACHUSETTS. The Assignor agrees that any suit for the
enforcement of this Trademark Agreement may be brought in the courts of the
Commonwealth of Massachusetts or any federal court sitting therein and consents
to the non-exclusive jurisdiction of such court and to service of process in any
such suit being made upon the Assignor by mail at the address specified in
ss.17. The Assignor hereby waives any objection that it may now or hereafter
have to the venue of any such suit or any such court or that such suit is
brought in an inconvenient court.
20. WAIVER OF JURY TRIAL.
--------------------
THE ASSIGNOR WAIVES ITS RIGHT TO A JURY TRIAL WITH RESPECT TO ANY
ACTION OR CLAIM ARISING OUT OF ANY DISPUTE IN CONNECTION WITH THIS TRADEMARK
AGREEMENT, ANY RIGHTS OR OBLIGATIONS HEREUNDER OR THE PERFORMANCE OF ANY SUCH
RIGHTS OR OBLIGATIONS. Except as prohibited by law, the Assignor waives any
right which it may have to claim or recover in any litigation referred to in the
preceding sentence any special, exemplary, punitive or consequential damages or
any damages other than, or in addition to, actual damages. The Assignor (i)
certifies that neither the Lender nor any representative, agent or attorney of
the Lender has represented, expressly or otherwise, that the Lender would not,
in the event of litigation, seek to enforce the foregoing waivers, and (ii)
acknowledges that, in entering into the Loan Agreement and the other Loan
Documents to which the Lender is a party, the Lender is relying upon, among
other things, the waivers and certifications contained in this ss.20.
21. MISCELLANEOUS.
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The headings of each section of this Trademark Agreement are for
convenience only and shall not define or limit the provisions thereof. This
Trademark Agreement and all rights and obligations hereunder shall be binding
upon the Assignor and its respective successors and assigns, and shall inure to
the benefit of the Lender and its respective successors and assigns. In the
event of any irreconcilable conflict between the provisions of this Trademark
Agreement and the Loan Agreement, or between this Trademark Agreement and the
Loan Agreement, the provisions of the Loan Agreement or the Loan Agreement, as
the case may be, shall control. If any term of this Trademark Agreement shall be
held to be invalid, illegal or unenforceable, the validity of all other terms
hereof shall in no way be affected thereby, and this Trademark Agreement shall
be construed and be enforceable as if such invalid, illegal or unenforceable
term had not been included herein. The Assignor acknowledges receipt of a copy
of this Trademark Agreement.
-13-
IN WITNESS WHEREOF, this Trademark Agreement has been executed as of
the day and year first above written.
SWANK, INC.
By:__________________________________________
Name:
Title:
XXXXX FARGO FOOTHILL, INC.
By:__________________________________________
Name:
Title:
CERTIFICATE OF ACKNOWLEDGMENT
COMMONWEALTH OR STATE OF ______________________)
) ss.
COUNTY OF _____________________________________)
On this ___ day of June, 2004, before me, the undersigned notary public,
personally appeared ______________________, proved to me through satisfactory
evidence of identification, which were _____________________________, to be the
person whose name is signed on the preceding or attached document, and
acknowledged to me that (he)(she) signed it voluntarily for its stated purpose
(as ______________ for __________________, a _______________________).
------------------------------
(official signature and seal of notary)
My commission expires:
SCHEDULE A
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Trademarks and Trademark Registrations
--------------------------------------
EXHIBIT 1
---------
ASSIGNMENT OF TRADEMARKS AND SERVICE MARKS (U.S.)
-------------------------------------------------
WHEREAS, Swank, Inc., a corporation organized and existing under the
laws of the State of Delaware, having a place of business at 00 Xxxx Xxxxxx, Xxx
Xxxx, Xxx Xxxx 00000 (the "Assignor"), has adopted and used and is using the
trademarks and service marks (the "Marks") identified on the Annex hereto, and
is the owner of the registrations of and pending registration applications for
such Marks in the United States Patent and Trademark Office identified on such
Annex; and
WHEREAS, ____________, a __________________ organized under the laws of
the State of ____________________, having a place of business at
____________________ (the "Assignee"), is desirous of acquiring the Marks and
the registrations thereof and registration applications therefor;
NOW, THEREFORE, for good and valuable consideration, receipt of which
is hereby acknowledged, the Assignor does hereby assign, sell and transfer unto
the Assignee all right, title and interest in and to the Marks, together with
(i) the registrations of and registration applications for the Marks, (ii) the
goodwill of the business symbolized by and associated with the Marks and the
registrations thereof, and (iii) the right to xxx and recover for, and the right
to profits or damages due or accrued arising out of or in connection with, any
and all past, present or future infringements or dilution of or damage or injury
to the Marks or the registrations thereof or such associated goodwill.
This Assignment of Trademarks and Service Marks (U.S.) is intended to
and shall take effect as a sealed instrument at such time as the Assignee shall
complete this instrument by inserting its name in the second paragraph above and
signing its acceptance of this Assignment of Trademarks and Service Marks (U.S.)
below.
IN WITNESS WHEREOF, the Assignor, by its duly authorized officer, has
executed this assignment, as an instrument under seal, on this ___ day of __,
200_.
SWANK, INC.
By:__________________________________________
Name:
Title:
The foregoing assignment of the Marks and the registrations thereof and
registration applications therefor by the Assignor to the Assignee is hereby
accepted as of the __ day of _______, 200_.
By:__________________________________________
Name:
Title:
-2-
COMMONWEALTH OR STATE OF ______________________)
) ss.
COUNTY OF _____________________________________)
On this the ___ day of ______, 200__, before me appeared
______________, the person who signed this instrument, who acknowledged that
(s)he is the _____________ of Swank, Inc. and that being duly authorized (s)he
signed such instrument as a free act on behalf of Swank, Inc.
------------------------------
(official signature and seal of notary)
My commission expires:
ANNEX
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