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Exhibit 10.9
TRADENAME AND TRADEMARK LICENSE AGREEMENT
This is a TRADENAME AND TRADEMARK LICENSE AGREEMENT (the "Agreement"),
dated as of August 29, 1997, by and between Spectra-Physics, Inc., a Delaware
corporation ("Licensor"), SPECTRA-PHYSICS AB, a corporation organized under the
laws of Sweden ("SPAB") SPECTRA-PHYSICS LASERPLANE, INC., a Delaware corporation
("SPLP") and SPECTRA-PHYSICS VISION TECH O.Y., a corporation organized under the
laws of Finland ("SPVT") (SPAB, SPLP and SPVT are collectively referred to
herein as "Licensee").
Background
A. Licensor is the owner of the tradename, trademark and service xxxx
SPECTRA-PHYSICS and SPECTRA-PHYSICS EL-1 (together, the "Spectra-Physics Xxxx")
and the stylized "S" logo and other logotypes in which the Spectra-Physics Xxxx
is used (collectively, the "Logos"), with the Spectra-Physics Xxxx and the Logos
to be referred to collectively herein as the "Marks". Licensor is the owner of
the registrations of the Marks shown in the attached Schedule 1.
B. SPLP is the owner of registrations for the trademark SPECTRA-PHYSICS
LASERPLANE and SPECTRA-PHYSICS EL-1 in the countries shown on the attached
Schedule 2.
C. Licensor wishes to license the Marks to Licensee for use by Licensee
and its sublicensees subject to and in accordance with the terms and conditions
contained in this Agreement.
Terms
NOW THEREFORE, in consideration of the mutual representations,
warranties, covenants and agreements contained herein and for other good and
valuable consideration, the receipt and adequacy of which is hereby
acknowledged, the parties hereto, intending to be legally bound hereby, agree as
follows:
1. Grant of License; Permitted Uses.
(a) Licensor hereby grants to SPAB, for the duration of the term
of this Agreement, a non-transferable, royalty-free, non-exclusive, worldwide
right and license to use the
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Spectra-Physics Xxxx as part of SPAB tradename and corporate name in connection
with SBAB's activities as a holding company for other businesses, and to use the
Logos in connection with such tradename and corporate name. SPAB is also hereby
granted the right to sublicense to (i) SPAB's direct and indirect subsidiaries
whose only business is to act as a holding company for other businesses, the
right to use the Spectra-Physics Xxxx as part of their respective tradenames and
corporate names and to use the Logos in connection with such tradenames and
corporate names and (ii) SPAB's other direct and indirect subsidiaries, the
right to use the Marks in connection with the sale, promotion or marketing of
any goods or services but only to the extent necessary to indicate that the
manufacturer, provider or distributor is affiliated with Licensee or one of its
sublicensees (for example, "A Division of Spectra-Physics AB", or "A Subsidiary
of Spectra-Physics AB"); provided that in the case of this clause (ii) neither
the size nor the placement of such legend will be prominent. Except as provided
for in the previous sentence, SPAB may not sublicense the Spectra-Physics Xxxx
to any of its subsidiaries which are operating (as opposed to holding)
companies. The right and license granted in this Section 1(a) is limited solely
to use of the Spectra-Physics Xxxx as a tradename and corporate name, and the
use of the Logos in connection with its tradename and corporate name, and does
not grant any right to use any Xxxx as a trademark or service xxxx identifying
the source or origin of goods or services. Examples of ways in which SPAB and
its permitted sublicensees may use the Marks as tradenames and corporate names
include the following:
(i) on letterhead, business cards, memoranda, administrative forms,
press releases, stock certificates and legal documents, and any similar
materials used in the administration of its business; and
(ii) on signage used in connection with the administration or
operation of its business, including without limitation signage used in and on
facilities and vehicles.
(b) Licensor hereby grants to SPLP and its subsidiaries and
sublicensees (collectively, the "SPLP Licensees") the right to continue to use
the Marks, to the extent and in the manner that such Marks are already being
used as of the date of this Agreement, until August 29, 1998. The overall
quality of the goods and services sold by the SPLP Licensees in connection with
the Marks during such period will not be substantially below that of the goods
and services sold by the SPLP Licensees in connection with the Marks and Logos
on the date of this Agreement.
(c) Licensor hereby grants to SPVT for the duration of the term
of this Agreement a non-transferable, royalty-free, non-exclusive worldwide
right and license to use the Spectra-Physics Marks as part of SPVT's tradename
and corporate name and to use the Logos in connection with its tradename and
corporate name. The right and license granted in this Section 1(c) is limited
solely to use of the Spectra-Physics Xxxx as a tradename and corporate name, and
the use of the Logos in connection with its tradename and corporate name, and
does not grant any right to use any Xxxx as a trademark or service xxxx
identifying the source or origin of goods or
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services. Examples of the ways in which SPVT may use the Marks in its tradename
and corporate name can be found in Sections 1(a)(i) and (ii).
(d) Neither Licensee nor any sublicensee of Licensee shall
register its securities on any stock exchange in the United States under any
corporate name incorporating any Xxxx.
(e) Subject to the limitations on use described in Sections 1(a)
and (c) above, SPAB and SPVT and their sublicensees shall have the right to
develop and use new logotypes and designs for the Marks (collectively, "New
Marks"). Each New Xxxx will be submitted to Licensor for Licensor's approval
prior to use, such approval not to be unreasonably withheld, and will be deemed
approved unless Licensor notifies SPAB or SPVT, as the case may be, of its
objections within 30 business days after submission to Licensor. Each New Xxxx
shall be owned by Licensor and, if registered, registered in Licensor's name,
and shall be automatically considered a "Xxxx" under this Agreement for all
purposes.
2. Ownership and Maintenance of Marks; Infringement Claims.
(a) Licensee acknowledges that the ownership of all right, title
and interest in and to the Marks are and shall remain solely vested in Licensor,
and Licensee agrees that all of its use and its sublicensees' use of the Marks
shall inure to the exclusive benefit of Licensor for all purposes.
(b) Licensor, at its own expense, shall have primary
responsibility for maintaining and defending the validity of the Marks and its
ownership of the Marks as it sees fit, for seeking and maintaining such
registrations of the Marks as Licensor deems advisable, and for taking such
steps as Licensor deems prudent to protect the Marks against infringement.
(c) Licensee shall promptly notify Licensor of (i) any
unauthorized use or infringement by any third party of the Marks which Licensee
deems material and (ii) any assertion by any third party which Licensee deems
material that Licensee's or any sublicensee's use of the Marks constitutes
trademark, service xxxx, trade dress or trade name infringement, unfair
competition or any other tortious act. Licensor may prosecute or defend any
claim or action alleging infringement or unfair competition or any other claim
or action involving the Marks as it in its reasonable business judgment deems
advisable. Licensor may conduct each such prosecution or defense as it deems
prudent provided that it keeps Licensee reasonably informed of the progress of
such action, and may enter into any settlement or compromise of such claims or
actions on Licensee's behalf, provided that Licensor may not enter into any
settlement or compromise which would result in the abandonment of any Xxxx which
Licensee or one of Licensee's sublicensees is currently using, without the
reasonable consent of such Licensee or sublicensee, as the case may be.
3. SPLP Trademark Registrations.
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In consideration of the license rights available to SPLP under
this Agreement, SPLP agrees to voluntarily cancel the trademark registrations
shown on the attached Schedule 2 (the "SPLP Registrations") in each country in
which such xxxx is registered on August 29, 1998 or as soon as practicable after
SPLP has obtained registration of the xxxx LASERPLANE in such country, whichever
is earlier. Notwithstanding the existence of the SPLP Registrations, until their
cancellation SPLP shall permit the use of the Marks by Licensor and any licensee
of Licensor in the countries shown on the attached Schedule 2. SPLP agrees not
to oppose, contest or otherwise initiate any proceedings seeking to prevent
Licensor's use or registration of the Marks in the countries shown on the
attached Schedule 2.
4. Term and Termination.
(a) This Agreement shall have an initial term of fifteen (15)
years commencing on the date of this Agreement and shall automatically renew for
successive one (1)-year terms, provided, however, that Licensor may terminate
this Agreement (as to any Licensee ("Terminated Licensee") in the event of a
material breach of any of the terms hereof by such Licensee if such breach is
not cured within 90 days after Licensor has delivered written notice of such
breach to the alleged breaching Licensee.
5. Effect of Termination. Upon the termination of this Agreement for
whatever reason then, as to the Terminated Licensee:
(a) the license of the Marks to the Terminated Licensee, all of
the Terminated Licensee's rights under this Agreement, and the rights under any
sublicenses of the Marks granted by the Terminated Licensee shall cease;
(b) the Terminated Licensee and such Terminated Licensee's
sublicensees shall (i) immediately cease all use of the Marks and all materials
bearing the Marks (such materials to be returned to Licensor or destroyed), and
(ii) shall not adopt or use any marks that are identical or similar to the
Marks;
(c) the Terminated Licensee and each of such Terminated
Licensee's sublicensees shall immediately change its corporate name to delete
any Xxxx which appears in that name; and
(d) all of the other rights, duties and obligations of the
Terminated Licensee and Licensor (but only with respect to such Terminated
Licensee) shall terminate.
6. Sublicensing. Without Licensor's consent, Licensee may not sublicense
its rights under this Agreement, except that SPAB and SPVT may, without
Licensor's consent, sublicense such rights to their direct or indirect
subsidiaries so long as each such sublicense is within the scope of, is subject
to the limitations set forth in, and otherwise complies with, this Agreement.
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7. Miscellaneous.
(a) Notices. All notices, requests, consents, approvals, demands
and other communications under this Agreement shall be in writing and shall be
deemed to have been duly given when delivered personally, when mailed, postage
prepaid, by United States first-class mail or certified or registered mail,
return receipt requested, or when receipt thereof is acknowledged after being
delivered by overnight courier or delivery service, telegram, facsimile,
telecopy or other electronic transmission device, to the appropriate party at
the following address (or at such other addresses as each party may designate in
writing from time to time):
(i) If to Licensor:
Spectra-Physics Lasers, Inc.
(f.k.a. Spectra-Physics, Inc.)
0000 Xxxxx Xxxxx Xxxxxx
Xxxxxxxx 0
Xxxxxxxx Xxxx, XX 00000
Attention: President
Fax: (000) 000-0000
(ii) If to SPAB or SPVT:
Spectra-Physics AB
Box 5226
Xxxxxxxxxx 00, 0xx Xxxxx
000 00 Xxxxxxxxx, Xxxxxx
Attention: President
Fax: (00) 00-000-0000
(iii) If to SPLP:
Spectra Precision, Inc.
(f.k.a. Spectra-Physics Laserplane, Inc.)
0000 Xxxxxxxxxxxx Xxxx
Xxxxxx, XX 00000-0000
Attention: President
Fax: (000) 000-0000
(b) Successors and Assigns; Assignment. This Agreement and the
rights and obligations of the parties hereunder shall be binding upon and shall
inure to the benefit of the parties hereto and their respective successors and
permitted assigns. Neither this Agreement nor any right or obligation hereunder
may be assigned, transferred, delegated, pledged, hypothecated
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or otherwise disposed of, in any voluntary or involuntary manner, whether by
transfer, merger, acquisition, affiliation, division, conversion, dissolution,
liquidation or otherwise, by Licensee without the prior written consent of
Licensor. Such assignment shall not relieve the assignor of its obligations
incurred prior to the date of the assignment hereunder. Any purported assignment
without such consent shall be null and void and not enforceable against the
non-assigning parties. Notwithstanding anything contained in this Section 6(b),
any merger or consolidation involving Licensee or any acquisitions of all or
substantially all of the assets of Licensee shall not be deemed as assignment
pursuant to this Section 6(b) nor a violation of this Section 6(b) if the
surviving individual or entity assumes full liability for the fulfillment of
Licensee's obligations hereunder. Licensor reserves the right to assign any or
all of its rights and obligations under this Agreement at its discretion.
(c) Governing Law. This Agreement shall be governed by and
construed and enforced in all respects, whether as to validity, construction,
capacity, performance or otherwise, in accordance with the internal laws of the
State of Delaware applicable to contracts made and fully performed therein by
parties domiciled therein, without regard to the conflicts of laws provisions
thereof, except to the extent that the parties' respective rights and
obligations are subject to mandatory local, state and federal laws or
regulations.
(d) Headings; Interpretation. The headings preceding the test of
the sections and subsections and any table of contents of this Agreement are
used solely for convenience of reference by the parties hereto and shall not
constitute a part of this Agreement, nor shall they be given any legal effect or
otherwise affect the interpretation of this Agreement. Any rule of law or any
legal decision that would require interpretation of any claimed ambiguities in
this Agreement against the party that drafted it has no application and is
expressly waived by the parties hereto.
(e) Amendment. This Agreement shall not be modified in any manner
other than in a writing, signed by each of the parties hereto. No course of
dealing between the parties shall be effective to amend or waive any provision
of this Agreement.
(f) Waiver. The terms and provisions of this Agreement shall not
be waived at any time other than in a writing, signed by the party entitled to
the benefit thereof. The failure of any party hereto at any time to require
performance of any term or provision of this Agreement shall not affect such
party's right at a later time to enforce such term or provision. No consent to
or waiver of any breach of a term or provision of this Agreement by any party
hereto shall be deemed or construed to be a consent to or waiver of any other
breach. All rights and remedies reserved to any party hereto shall be cumulative
and shall not be in limitation of any other right or remedy which such party may
have at law or in equity.
(g) Entire Agreement. This Agreement contains all of the
representations, warranties, covenants, agreements, promises, conditions,
undertakings and inducements among the parties hereto relating to the subject
matter hereof and replaces and supersedes all prior and contemporaneous
representations, warranties, covenants, agreements, promises, conditions,
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undertakings and inducements, whether express or implied, oral or written, among
the parties hereto with respect thereto.
(h) Severability. Each term and provision of this Agreement shall
be construed as separable and divisible from every other term and provision and
the invalidity or unenforceability of any one term or provision shall not limit
the validity and enforceability, in whole or in part, of any other term or
provision hereof. Furthermore, in lieu of any such invalid or unenforceable term
or provision, the parties hereto intend that there shall be added as a part of
this Agreement a provision as similar in terms to such invalid or unenforceable
term or provision as may be valid and enforceable.
(i) Counterparts. This Agreement may be executed in any number of
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
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IN WITNESS WHEREOF, each of the parties hereto has executed this
Agreement or caused this Agreement to be executed by its duly authorized
representatives as of the day and year first above written.
SPECTRA PHYSICS, INC.
By: /s/ Xxxx X. Xxxxxx
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Name: Xxxx X. Xxxxxx
Title: President
SPECTRA-PHYSICS AB
By: /s/ Xxxxxxx X. Xxxxx
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Name: Xxxxxxx X. Xxxxx
Title: Senior Vice President and
Chief Financial Officer
And By: /s/ Xxxx Xxxxxxx
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Name: Xxxx Xxxxxxx
Title: Group Treasurer
SPECTRA-PHYSICS LASERPLANE, INC.
By: /s/ Xxxxx X. Xxxxxxxx
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Name: Xxxxx X. Xxxxxxxx
Title: President
SPECTRA-PHYSICS VISION TECH O.Y.
By: /s/ Xxxxxx Karppinan
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Name: Xxxxxx Karppinan
Title: President
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