Exhibit 10.61
KINGFISHER TRADEMARK and TRADE NAME LICENSE AGREEMENT
THIS LICENSE AGREEMENT is by and between Kingfisher America, Inc., a
Delaware Corporation having a place of business at Xxxxx Xxxxxx Xxxxx, Xxxxx
000, Xxxxxxxxx, XX 00000 (hereinafter "Licensor") and Mendocino Brewing Company,
a California Corporation having a place of business at 0000 Xxxxxxx Xxxx, Xxxxx,
XX 00000 (hereinafter "Licensee").
WHEREAS, Licensor is owner by assignment of the United States rights to the
xxxx KINGFISHER, pending United States Trademark Application, Serial Number
75/927,777, filed February 24, 2000 for fermented alcoholic beverages made with
malt, namely assorted beers, in International Class 32 (hereinafter the "Xxxx"),
and the name "Kingfisher Brewing Company" (hereinafter the Name), and the
goodwill of the businesses in connection with which the Xxxx and Name are used.
WHEREAS, Licensee would like to license rights to the Xxxx and Name for use
in connection with the brewing and distribution of assorted beers in the United
States.
NOW, THEREFORE, in consideration of the foregoing and of the mutual
promises hereinafter set forth, Licensor and Licensee hereby agree as follows:
1. Grant of Royalty Free, Exclusive License. Licensor hereby grants to
Licensee, a royalty free, exclusive license to use the Xxxx and Name in
connection with the brewing and distribution of assorted beers throughout the
United States of America, and its territories and possessions. The License
granted herein shall take effect upon the date this License Agreement is
executed by both Licensor and Licensee, and shall continue in force until the
expiration or termination of the Distribution Agreement dated 9 October 1998 by
and between United Breweries International (U.K.) Limited and UBSN Limited, a
copy of which is attached as Exhibit A, and incorporated by reference herein.
Expiration or termination of the Distribution Agreement dated 9 October 1998
shall be in
KINGFISHER TRADEMARK and TRADE NAME LICENSE AGREEMENT
Page 1 of 5
accordance with the provisions of that Distribution Agreement. Licensee may not
assign, transfer, or sublicense this License without the prior written consent
of Licensor.
2. Scope of Use and Standard to be Maintained by Licensee. Licensee agrees
to use the Xxxx and Name only for the brewing and distribution of assorted bees
throughout the United States, and for promotion and advertising related directly
thereto. Licensee agrees that all beers bearing the Xxxx and Name will be of a
high quality satisfactory to Licensor. Licensor shall have the right to
determine whether the beers are of satisfactory quality. Licensee agrees to
cooperate with Licensor in facilitating Licensor's control of the nature and
quality of the assorted beers offered under the Xxxx and Name, to permit
reasonable, periodic inspection of Licensee's operations, at reasonable times
and with reasonable notice. Licensor reserves the right to inspect the quality
of the beers provided by the Licensee to assure that quality is maintained.
Licensor shall also have the right to require from time to time that the
Licensee submit samples of advertising and promotional materials to Licensor for
inspection and approval, and to review Licensee's beers to assure that quality
under the Xxxx and Name is being maintained. Licensee shall comply with all
applicable laws and regulations and obtain all appropriate government approvals
pertaining to the importation, distribution, sale and advertising of assorted
beers offered under the Xxxx and Name.
3. Qualified Permission to file "KINGFISHER BREWING COMPANY" as a
Fictitious Business Name in Mendocino County, California. Licensee hereby grants
licensee permission to file "Kingfisher Brewing Company" as a Fictitious
Business Name in Mendocino County, California, and to use the Fictitious
Business Name of "Kingfisher Brewing Company" on labels and on advertising and
promotional materials for the beers produced under the KINGFISHER xxxx, with the
following qualifications and conditions: (1) License will provide Licensor with
a copy of its Fictitious Business Name application as well as a certified copy
of the Kingfisher Brewing Company Fictitious Business Name Registration
Certificate within 14 days of its registration by Mendocino County. (2) Licensee
will use the "Kingfisher Brewing Company" Fictitious Business Name only on
labels and advertising and promotional materials for beers brewed and
distributed under
KINGFISHER TRADEMARK and TRADE NAME LICENSE AGREEMENT
Page 2 of 5
the licensed KINGFISHER xxxx. (3) In the event of the termination or
cancellation of this License, within 30 days of the date of cancellation,
Licensee will submit written notice of cancellation of the Kingfisher Brewing
Company Fictitious Business Name to the proper authorities in Mendocino County.
Contemporaneous with the submission, Licensee will provide Licensor with a copy
of the cancellation notice submitted to Mendocino County. Licensee will also
provide Licensor with confirmation of cancellation of the Fictitious Business
Name when received from Mendocino County. (4) Licensee agrees not to file
"Kingfisher Brewing Company" as a Fictitious Business Name in any place or
county other than Mendocino County, California. (5) Licensee agrees not to adopt
"Kingfisher Brewing Company" as its corporate name, or thename of any entity of
which it owns any part. (6) Licensee agrees not to register or attempt to
register "Kingfisher Brewing Company" as a xxxx anywhere in the world.
4. Rights and Goodwill in Licensed Xxxx and in the Name KINGFISHER BREWING
COMPANY Inure to Licensor. Licensee recognizes and acknowledges the validity of
the Xxxx "Kingfisher" and the Name "Kingfisher Brewing Company", that all rights
therein and goodwill pertaining thereto belong exclusively to Licensor, that all
rights resulting from Licensee's use of the Xxxx and the Name inure solely and
completely to the benefit of Licensor. Licensee agrees not to challenge the
Licensed Xxxx "Kingfisher."
5. Indemnification. Licensor will hold Licensee harmless against any and
all third party claims that use of the Licensed Xxxx or Name is liable to cause
deception or confusion to the public or is liable to infringe any valid
intellectual property right of any third party. Licensee agrees to promptly
notify Licensor in writing of any infringement of the licensed Xxxx, or of any
assertion by a third party that use of the Licensed Xxxx or Name infringes their
intellectual property rights.
6. Notice Addresses. Any notice required or permitted to be given under
this License shall be by written communications directed by one party to the
other at its notice address as follows:
KINGFISHER TRADEMARK and TRADE NAME LICENSE AGREEMENT
Page 3 of 5
Licensor: Kingfisher America, Inc.
Attention, Xxxx Xxxxxxxxx, Secretary
Xxxxx Xxxxxx Xxxxx, Xxxxx 000
Xxxxxxxxx, XX 00000
Licensee: Mendocino Brewing Company
Attention X. Xxxxxxxxx
0000 Xxxxxxx Xxxx
Xxxxx, XX 00000
Notice addresses may be changed by providing the affected party to this
License with a written notice.
7. Effects of and Procedure on Termination or Cancellation. Upon
termination or cancellation of this License from Licensor, Licensee agrees to
immediately discontinue use of the Name "Kingfisher Brewing Company" and the
Xxxx "Kingfisher" and not to use any name or xxxx confusingly similar thereto
for any purpose, and to destroy all product and printed materials bearing the
Name and Xxxx, unless Licensor has granted to Licensee a period of time certain
in which to dispose of product bearing the Name and Xxxx.
8. Entire Agreement. This License Agreement contains the entire agreement
between the parties relating to the subject mater hereof, and all prior
proposals, discussions or writings are superseded hereby.
9. Severability. This finding by any court that a provision of this License
Agreement is invalid shall not operate or be construed to invalidate the balance
of the provisions contained in this License Agreement, which provisions shall
continue to remain in force and effect.
10. Construction. This License Agreement shall be governed by the laws of
the State of California as they relate to contracts entered into and performed
in
KINGFISHER TRADEMARK and TRADE NAME LICENSE AGREEMENT
Page 4 of 5
Sausalito, County of Marin, California. Licensor agrees to personal and subject
matter jurisdiction in a court of competent jurisdiction in Marin County,
California.
11. No Oral Changes. This License Agreement may not be changed, modified or
amended, except by a written agreement executed by the Licensor and the
Licensee.
IN WITNESS WHEREOF, the parties hereto execute this License Agreement by
their duly authorized representatives on the date set forth below. Licensor,
Kingfisher America, Inc. By
/s/ Xxxx Xxxxxxxxx 07/17/01
---------------------------------- --------------------
Xxxx Xxxxxxxxx, Secretary/Treasurer Date
Licensee, Mendocino Brewing Company
By
---------------------------------- --------------------
Date
----------------------------------------------------------------
Printed Name and Title of Person Signing for Licensee
KINGFISHER TRADEMARK and TRADE NAME LICENSE AGREEMENT
Page 5 of 5
