TRADEMARK COLLATERAL
SECURITY AND PLEDGE AGREEMENT
TRADEMARK COLLATERAL SECURITY AND PLEDGE AGREEMENT dated as of August 13,
1999 (the "Trademark Agreement"), between REPUBLIC TECHNOLOGIES INTERNATIONAL,
LLC, a Delaware limited liability company having its principal place of business
at ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇, ▇▇ ▇▇▇▇▇, (the "Borrower"), and BANKBOSTON,
N.A., a national banking association having an office at ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇, as administrative agent (hereinafter, in such capacity, the
"Agent") for itself and other lending institutions (hereinafter, collectively,
the "Banks") which are, or may in the future become, parties to a Revolving
Credit Agreement of even date herewith (as amended and in effect from time to
time, the "Credit Agreement"), among the Borrower, the Banks, the Agent and the
other parties thereto.
WHEREAS, it is a condition precedent to the Banks' making any loans or
otherwise extending credit to the Borrower under the Credit Agreement that the
Borrower execute and deliver to the Agent, for the benefit of the Banks and the
Agent, a trademark agreement in substantially the form hereof;
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.
Capitalized terms used herein and not otherwise defined herein shall have
the respective meanings provided therefor in the Credit Agreement. In addition,
the following terms shall have the meanings set forth in this Section 1 or
elsewhere in this Trademark Agreement referred to below:
Assignment of Marks. See Section 2.1.
Associated Goodwill. All goodwill of the Borrower and its business,
products and services appurtenant to, associated with or symbolized by the
Trademarks and the use thereof.
Pledged Trademarks. All of the Borrower'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 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 Borrower that
uniquely reflect or embody the Associated Goodwill, (other than any assets,
rights and
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interests of a type in which the Agent does not otherwise have a security
interest pursuant to the Security Agreement or the Patent Agreement) including
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 under or in association with any
of the Trademarks; and
(b) the following documents and things, if any, in the possession or
under the control of the Borrower, or subject to its demand for possession
or control, related to the production, delivery, provision and sale by the
Borrower, or any affiliate, franchisee, licensee or contractor, of
products or services sold by or under the authority of the Borrower 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 Borrower,
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;
(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 under or in connection with the Trademarks or Trademark
Rights;
(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 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 Borrower (or any of its affiliates, franchisees,
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licensees or contractors) of products or services sold 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 Borrower pursuant to any and all past, present and future
franchising or licensing agreements in favor of the Borrower, or to which the
Borrower is a party, pertaining to any Trademarks, Trademark Registrations, or
Trademark Rights owned or used by third parties in the past, present or future,
including the right (but not the obligation) in the name of the Borrower or the
Agent after the occurrence of an Event of Default to enforce, and ▇▇▇ and
recover for, any breach or violation of any such agreement to which the Borrower
is a party.
Trademark Registrations. All past, present or future federal, state 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 Borrower or the Agent after the occurrence of an Event of Default, 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 ▇▇▇ or bring opposition or cancellation proceedings in the name
of the Borrower or the Agent after the occurrence of an Event of Default 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.
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 Borrower, that (i) are set forth on
Schedule A hereto, or (ii) have been adopted, acquired, owned, held or used by
the Borrower or are now owned, held or used by the Borrower, in the Borrower's
business, or with the Borrower's products and services, or in which the Borrower
has any right, title or interest, or (iii) are in the future adopted, acquired,
owned, held and used by the Borrower in the Borrower's business or with the
Borrower's
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products and services, or in which the Borrower in the future acquires any
right, title or interest.
use. With respect to any Trademark, all uses of such Trademark by, for or
in connection with the Borrower or its business or for the benefit of the
Borrower or its business, including all such uses by the Borrower itself, by any
of the affiliates of the Borrower, or by any franchisee, licensee or contractor
of the Borrower.
Unless otherwise provided herein, the rules of interpretation set forth in
Section 1.2 of the Credit Agreement shall be applicable to this Trademark
Agreement.
2. GRANT OF SECURITY INTEREST.
2.1. Security Interest; Assignment of Marks. As collateral security for
the payment and performance in full of all of the Obligations, the Borrower
hereby unconditionally grants to the Agent, for the benefit of the Banks and the
Agent, 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 Agent for the benefit of the Banks and the Agent.
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 Section
2.1, the Borrower grants, assigns, transfers, conveys and sets over to the
Agent, for the benefit of the Banks and the Agent, the Borrower'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 Agent at any time
during such continuance or (B) immediately and automatically (without notice or
action of any kind by the Agent) upon an Event of Default for which acceleration
of the Loans is automatic under the Credit Agreement or upon the sale or other
disposition of or foreclosure upon the Collateral pursuant to the Credit
Agreement and applicable law (including the transfer or other disposition of the
Collateral by the Borrower to the Agent or its nominee in lieu of foreclosure).
2.3. Assignment of Marks. The Assignor agrees to execute and deliver to
the Agent, upon the request of the Agent given after the occurrence and during
the continuance of an Event of Default, an assignment of federally registered
trademarks substantially in the form of Exhibit 1 attached hereto (the
"Assignment of Marks"). The Assignor hereby authorizes the Agent 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
Agent's remedies under the Trademark Agreement and the Security Agreement. In
addition, the Assignor hereby constitutes and appoints the Agent as its
attorney-in-fact to execute and deliver the Assignment of Marks as provided in
Section 10 below.
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3. REPRESENTATIONS, WARRANTIES AND COVENANTS.
The Borrower represents, warrants and covenants that except to the extent
the failure of the following, individually or in the aggregate, to be true would
not have a Material Adverse Effect: (i) Schedule A sets forth a true and
complete list of all material subsisting trademark registrations (state, federal
and foreign) and pending trademark registration applications (state, federal and
foreign) and common law trademarks now owned by the Borrower (collectively, the
"Section 3 Marks"); (ii) the Section 3 Marks are subsisting and have not been
adjudged invalid or unenforceable, in whole or in part, and there is no
litigation or proceeding pending concerning the validity or enforceability of
the Section 3 Marks; (iii) to the best of the Borrower's knowledge, each of the
Section 3 Marks is valid and enforceable; (iv) to the best of the Borrower's
knowledge, there is no infringement by others of the Section 3 Marks which could
reasonably be expected to have a Material Adverse Effect; (v) no claim is
pending that the use of any of the Section 3 Marks does or may violate the
rights of any third person, and to the best of the Borrower's knowledge, there
is no infringement by the Borrower of the trademark rights of others; (vi) the
Borrower owns each of the Section 3 Marks, free and clear of any liens, charges,
encumbrances and adverse claims, including pledges, assignments, licenses,
registered user agreements and covenants by the Borrower not to ▇▇▇ third
persons, other than the security interest and assignment created by the this
Trademark Agreement and security interests permitted by the Credit Agreement
(provided, that with respect to any Trademarks registered in a jurisdiction
other than the United States or Canada, such representation is to the Borrower's
knowledge); (vii) the Borrower has the right to enter into this Trademark
Agreement and to perform its terms and has entered and will enter into
appropriate agreements with all relevant present and future employees, agents,
consultants, licensors and licensees that will enable them to comply with the
covenants herein contained; (viii) the Borrower has used, and will continue to
use, proper statutory and other appropriate proprietary notices in connection
with its use of the Trademarks consistent with its reasonable business judgment;
(ix) the Borrower has used, and will continue to use for the duration of this
Trademark Agreement, consistent standards of quality with respect to products
and services sold or provided under the Trademarks consistent with its
reasonable business judgment; (x) this Trademark Agreement will create in favor
of the Agent a valid and perfected first priority security interest in the
Section 3 Marks upon making the filings referred to in clause (xi) of this
Section 3; and (xi) except for the filing of financing statements in the State
of Ohio 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 Borrower or the effectiveness
of the security interest granted hereby or for the execution, delivery and
performance of this Trademark Agreement by the Borrower, or (B) for the
perfection of or the exercise by the Agent of any of its rights and remedies
hereunder.
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4. INSPECTION RIGHTS.
The Borrower hereby grants to each of the Agent and the Banks and its
employees and agents the right to visit the Borrower'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 in each
case at such reasonable times during regular business hours and at such
reasonable intervals as the Agent or any Bank may reasonably request, and prior
to an Event of Default, upon reasonable notice, in all cases subject to the
confidentiality provisions contained in Section 8.9.1 of the Credit Agreement.
5. NO TRANSFER OR INCONSISTENT AGREEMENTS.
Without the Agent's prior written consent, and except for licenses of
Pledged Trademarks in the ordinary course of the Borrower's business or as
permitted by the Credit Agreement, the Borrower will not (i) mortgage, pledge,
assign, encumber, grant a security interest in, transfer, license or alienate
any of the Pledged Trademarks, or (ii) enter into any agreement (for example, a
license agreement) that is inconsistent with the Borrower's obligations under
this Trademark Agreement or the Credit Agreement.
6. AFTER-ACQUIRED TRADEMARKS, ETC.
6.1. After-acquired Trademarks. If, before the Obligations shall have been
finally paid and satisfied in full, the Borrower shall obtain any right, title
or interest in or to any other or new Trademarks, Trademark Registrations or
Trademark Rights, the provisions of this Trademark Agreement shall automatically
apply thereto and the Borrower shall promptly provide to the Agent notice
thereof in writing and execute and deliver to the Agent such documents or
instruments as the Agent may reasonably request further to implement, preserve
or evidence the Agent's interest therein.
6.2. Amendment to Schedule. The Borrower authorizes the Agent to modify
this Trademark Agreement and the Assignment of Marks, without the necessity of
the Borrower's further approval or signature, only to amend Exhibit A hereto and
the Annex to the Assignment of Marks to include any future or other Trademarks,
Trademark Registrations or Trademark Rights under Section 2 or Section 6.
7. TRADEMARK PROSECUTION.
7.1 Borrower Responsible. The Borrower 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
each of the Agent and the Banks harmless from any and all reasonable costs,
damages, liabilities and expenses that may be incurred by the Agent or any Bank
in connection with the Agent's interest in the Pledged Trademarks or any other
action or failure to act in connection with this Trademark Agreement or the
transactions
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contemplated hereby. In respect of such responsibility, the Borrower shall
retain qualified counsel.
7.2. Borrower's Duties, etc. The Borrower shall have the right and the
duty, consistent with its reasonable business judgment, through qualified
counsel, to prosecute diligently any trademark registration applications of the
Section 3 Marks pending as of the date of this Trademark Agreement or thereafter
with respect to any other Trademarks, to preserve and maintain all rights in the
Trademark Registrations and material unregistered Trademarks, 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 Trademark Registrations and
material unregistered Trademarks. Any expenses incurred in connection with such
applications and actions shall be borne by the Borrower. Except in the exercise
of its reasonable business judgment, the Borrower shall not abandon any filed
trademark registration application, or any Trademark Registration or material
unregistered Trademark, without the consent of the Agent, which consent shall
not be unreasonably withheld.
7.3. Borrower's Enforcement Rights. The Borrower shall have the right and
the duty, consistent with its reasonable business judgment, to bring suit or
other action in the Borrower's own name to maintain and enforce the Trademarks,
the Trademark Registrations and the Trademark Rights. The Borrower may require
the Agent to join in such suit or action as necessary to assure the Borrower's
ability to bring and maintain any such suit or action in any proper forum if
(but only if) the Agent is completely satisfied that such joinder will not
subject the Agent or any Bank to any risk of liability. The Borrower shall
promptly, upon demand, reimburse and indemnify the Agent for all damages, costs
and expenses, including reasonable legal fees, incurred by the Agent pursuant to
this Section 7.3.
7.4. Protection of Trademarks, etc. In general, the Borrower shall take
any and all such actions (including institution and maintenance of suits,
proceedings or actions), consistent with its reasonable business judgment, as
may be necessary or appropriate to properly maintain, protect, preserve, care
for and enforce the Pledged Trademarks in all material respects. The Borrower
shall not knowingly take or fail to take any action, nor permit any action to be
taken or not taken by others under its control, that would materially adversely
affect the validity, grant or enforcement of the Pledged Trademarks.
7.5. Notification by Borrower. Promptly upon obtaining knowledge thereof,
the Borrower will notify the Agent 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 (other than
routine office action developments) or the Borrower'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 Borrower or the Agent to dispose of any of the Pledged Trademarks
or the rights and
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remedies of the Agent in relation thereto (including but not limited to the levy
of any legal process against any of the Pledged Trademarks).
8. REMEDIES.
Upon the occurrence and during the continuance of an Event of Default, the
Agent shall have, in addition to all other rights and remedies given it by this
Trademark Agreement (including, without limitation, those set forth in Section
2.2, the Credit 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 Agent may immediately, without demand of
performance and without other notice (except as set forth next below) or demand
whatsoever to the Borrower, 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
Borrower may have therein, and after deducting from the proceeds of sale or
other disposition of the Pledged Trademarks all expenses incurred by the Agent
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 Credit Agreement. Notice of any sale, license or other disposition of the
Pledged Trademarks shall be given to the Borrower at least ten (10) 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 Borrower
hereby agrees shall be reasonable notice of such public or private sale or other
disposition. At any such sale or other disposition, the Agent 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.
9. COLLATERAL PROTECTION.
If the Borrower shall fail to do any act that it has covenanted to do
hereunder, or if any representation or warranty of the Borrower shall be
breached, the Agent, in its own name or that of the Borrower (in the sole
discretion of the Agent), 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 Borrower agrees promptly to reimburse the Agent for any reasonable cost
or expense incurred by the Agent in so doing.
10. POWER OF ATTORNEY.
If any Event of Default shall have occurred and be continuing, the
Borrower does hereby make, constitute and appoint the Agent (and any officer or
agent of the Agent as the Agent may select in its exclusive discretion) as the
Borrower's true and lawful attorney-in-fact, with full power of substitution and
with the power to endorse the Borrower's name on all applications, documents,
papers and
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instruments necessary for the Agent 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 Agent to
assign, pledge, convey or otherwise transfer title in or dispose of any of the
Pledged Trademarks or any interest of the Borrower therein to any third person
including without limitation executing the Assignment of Marks and completing
the same as assignee, if applicable, and, in general, to execute and deliver any
instruments or documents and do all other acts that the Borrower is obligated to
execute and do hereunder. The Borrower hereby ratifies all that such attorney
shall lawfully do or cause to be done by virtue hereof and releases each of the
Agent and the Banks 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 Agent under this power of attorney (except for the Agent's or any such
Person'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.
The Borrower 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 Agent may request as necessary to implement and effect
fully the intentions, purposes and provisions of this Trademark Agreement, or to
assure and confirm to the Agent the grant, perfection and priority of the
Agent's security interest in the Pledged Trademarks.
12. TERMINATION.
At such time as all of the Obligations have been finally paid and
satisfied in full, this Trademark Agreement shall terminate and the Agent shall,
upon the written request and at the expense of the Borrower, execute and deliver
to the Borrower all deeds, assignments and other instruments as may be necessary
or proper to release the security interest in and lien on the Pledged Trademarks
hereunder and to reassign to the Borrower any Pledged Trademarks conditionally
assigned pursuant to Section 2.2 hereof previously granted, assigned,
transferred and conveyed to the Agent by the Borrower 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 Agent
pursuant hereto or the Security Agreement.
13. COURSE OF DEALING.
No course of dealing between the Borrower and the Agent, nor any failure
to exercise, nor any delay in exercising, on the part of the Agent, any right,
power or privilege hereunder or under the Credit Agreement or any other
agreement shall operate as a waiver thereof; nor shall any single or partial
exercise of any right,
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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.
Any and all reasonable fees, costs and expenses, of whatever kind or
nature, including the reasonable attorneys' fees and expenses incurred by the
Agent 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
Borrower.
15. OVERDUE AMOUNTS.
Until paid, all amounts due and payable by the Borrower hereunder shall be
a debt secured by the Pledged Trademarks and other Collateral and shall bear,
whether before or after judgment, interest at the rate of interest for overdue
principal set forth in the Credit Agreement.
16. NO ASSUMPTION OF LIABILITY; INDEMNIFICATION.
NOTWITHSTANDING ANYTHING TO THE CONTRARY CONTAINED HEREIN, NEITHER THE
AGENT NOR ANY BANK ASSUMES ANY LIABILITIES OF THE BORROWER WITH RESPECT TO ANY
CLAIM OR CLAIMS REGARDING THE BORROWER'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 BORROWER, AND THE
BORROWER SHALL INDEMNIFY THE AGENT AND THE BANKS FOR ANY AND ALL REASONABLE
COSTS, EXPENSES, DAMAGES AND CLAIMS, INCLUDING LEGAL FEES, INCURRED BY THE AGENT
OR ANY BANK WITH RESPECT TO SUCH LIABILITIES.
17. NOTICES.
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 set forth in Section 20 of the Credit
Agreement.
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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 Agent (with the consent of the Majority Banks) and the Borrower,
except as provided in Section 6.2. The Agent shall not be deemed to have waived
any right hereunder unless such waiver shall be in writing and signed by the
Agent and the Majority Banks. A waiver on any one occasion shall not be
construed as a bar to or waiver of any right on any future occasion.
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 Borrower 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 Borrower by mail at the address specified in
Section 17. The Borrower 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 BORROWER 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 Borrower 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 Borrower (i)
certifies that neither the Agent or any Bank nor any representative, agent or
attorney of the Agent or any Bank has represented, expressly or otherwise, that
the Agent or any Bank would not, in the event of litigation, seek to enforce the
foregoing waivers, and (ii) acknowledges that, in entering into the Credit
Agreement and the other Loan Documents to which the Agent or any Bank is a
party, the Agent and the Banks are relying upon, among other things, the waivers
and certifications contained in this Section 20.
-12-
21. OTHER ASSET INTERCREDITOR AGREEMENT.
This Agreement is subject to the terms of the Other Asset Intercreditor
Agreement.
22. MISCELLANEOUS.
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 Borrower and its respective successors and assigns, and shall inure to
the benefit of the Agent, the Banks and their respective successors and assigns.
In the event of any irreconcilable conflict between the provisions of this
Trademark Agreement and the Credit Agreement, the provisions of the Credit
Agreement 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 Borrower acknowledges receipt of a copy of
this Trademark Agreement.
IN WITNESS WHEREOF, this Trademark Agreement has been executed as of the
day and year first above written.
REPUBLIC TECHNOLOGIES
INTERNATIONAL, LLC
By:_____________________________________
Name:
Title:
BANKBOSTON, N.A., as Agent
By:_____________________________________
Name:
Title:
CERTIFICATE OF ACKNOWLEDGMENT
COMMONWEALTH OR STATE OF____________)
) ss.
COUNTY OF __________________________)
Before me, the undersigned, a Notary Public in and for the county
aforesaid, on this __ day of August, 1999, personally appeared
_____________________________________ to me known personally, and who, being by
me duly sworn, deposes and says that he is the
___________________________________________ of REPUBLIC TECHNOLOGIES
INTERNATIONAL, LLC, and that said instrument was signed and sealed on behalf of
said corporation by authority of its [______________], and said
_____________________________________ acknowledged said instrument to be the
free act and deed of said corporation.
__________________________
Notary Public
My commission expires:
SCHEDULE A
Trademarks and Trademark Registrations
U.S. TRADEMARKS:
Trademark Registrations --
or United States Patent and Trademark Office
Service ▇▇▇▇ Registration No. Registration Date
------------------------------------- --------------- -----------------
MULTICUT 772,111 06/30/64
HP 9-4 875,008 08/19/69
CENTURY SERIES 880,328 11/11/69
LINE-FREE 1,229,261 03/08/83
TUFF-LINE 1,240,859 06/07/83
MULTIFORM 1,351,299 07/30/85
DK1210 1,394,644 05/27/86
JALLOY 1,597,154 05/22/90
IMP 1,597,155 05/22/90
REPUBLIC ENGINEERED STEELS and Design 1,638,873 03/26/91
REPUBLIC ENGINEERED STEELS 1,638,874 03/26/91
C-R 2,046,480 03/18/97
Trademarks Pending with U.S. Patent
and Trademark Office
Trademark Pending Applications
or United States Patent and Trademark Office
Service ▇▇▇▇ Registration No. Registration Date
----------------------------------- ----------------------------------
CAST-ROLL 74/663,754 04/20/95
CAST-ROLL and Design 74/678,211 05/22/95
AGATHON 75/399,659 12/03/97
REPUBLIC TECHNOLOGIES INTERNATIONAL 75/549,790 09/09/98
REPUBLIC TECHNOLOGIES INTERNATIONAL 75/549,791 09/09/98
-2-
FOREIGN TRADEMARKS:
ARGENTINA:
TITLE REG. NO. APP. NO.
REPUBLIC TECHNOLOGIES INTERNATIONAL 2206519
REPUBLIC TECHNOLOGIES INTERNATIONAL and Design ▇▇▇▇▇▇▇
▇▇▇▇▇▇:
TITLE REG. NO. APP. NO.
REPUBLIC TECHNOLOGIES INTERNATIONAL and Design 821462008
REPUBLIC TECHNOLOGIES INTERNATIONAL 821462016
CANADA:
TITLE REG. NO. APP. NO.
BISMA-LED 131,688
REPUBLIC ENGINEERED STEELS 418,420
BETTER BY EXPERIENCE 461,922
Design Only (Stylized Bar and Maple Leaf Design) 465,947
CHINA:
TITLE REG. NO. APP. NO.
REPUBLIC TECHNOLOGIES INTERNATIONAL 9900021774
REPUBLIC TECHNOLOGIES INTERNATIONAL and Design 9900021775
-3-
CTM:
TITLE REG. NO. APP. NO.
REPUBLIC ENGINEERED STEELS 218321
REPUBLIC ENGINEERED STEELS and Design 218370
EL SALVADOR:
TITLE REG. NO. APP. NO.
REPUBLIC STEEL 182
FRANCE:
TITLE REG. NO. APP. NO.
REPUBLIC ENGINEERED STEELS 1581607
GERMANY:
TITLE REG. NO. APP. NO.
REPUBLIC ENGINEERED STEELS 39405602
REPUBLIC TECHNOLOGIES INTERNATIONAL 39913296.8/06
REPUBLIC TECHNOLOGIES INTERNATIONAL and Design 39913296.1/06
ISRAEL:
TITLE REG. NO. APP. NO.
REPUBLIC ENGINEERED STEELS ▇▇▇▇▇
▇▇▇▇▇:
TITLE REG. NO. APP. NO.
REPUBLIC ENGINEERED STEELS 2526903
REPUBLIC TECHNOLOGIES INTERNATIONAL and Design 20824/1999
-4-
KOREA:
TITLE REG. NO. APP. NO.
REPUBLIC TECHNOLOGIES INTERNATIONAL ▇▇-▇▇▇▇-▇▇▇▇
REPUBLIC TECHNOLOGIES INTERNATIONAL and Design ▇▇-▇▇▇▇-▇▇▇▇
MEXICO:
TITLE REG. NO. APP. NO.
REPUBLIC ENGINEERED STEELS 418095
REPUBLIC TECHNOLOGIES INTERNATIONAL 366755
REPUBLIC TECHNOLOGIES INTERNATIONAL and Design 366754
TAIWAN:
TITLE REG. NO. APP. NO.
REPUBLIC TECHNOLOGIES INTERNATIONAL 88009877
REPUBLIC TECHNOLOGIES INTERNATIONAL and Design 88009878
UNITED KINGDOM:
TITLE REG. NO. APP. NO.
REPUBLIC ENGINEERED STEELS 1418821
REPUBLIC TECHNOLOGIES INTERNATIONAL 2191262
REPUBLIC TECHNOLOGIES INTERNATIONAL & Design 2191260
MATERIAL UNREGISTERED TRADEMARKS:
EXHIBIT 1
ASSIGNMENT OF TRADEMARKS AND SERVICE MARKS
WHEREAS, REPUBLIC TECHNOLOGIES INTERNATIONAL, LLC, a limited liability
company organized and existing under the laws of the State of Delaware, having a
place of business at ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇, ▇▇ ▇▇▇▇▇ (the "Borrower"), 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 and in the foreign trademark offices identified on such Annex;
and
WHEREAS, __________________________________________________________, a
_________________________________ organized and existing under the laws 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 Borrower 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 ▇▇▇ 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 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 below.
IN WITNESS WHEREOF, the Borrower, by its duly authorized officer, has
executed this assignment, as an instrument under seal, on this __ day of
_____________, ____.
REPUBLIC TECHNOLOGIES
INTERNATIONAL, LLC
By:______________________________
Title:
The foregoing assignment of the Marks and the registrations thereof and
registration applications therefor by the Borrower to the Assignee is hereby
accepted as of the __ day of __________, ____.
_________________________________
By:______________________________
Title:
COMMONWEALTH OR STATE OF ______________________________)
) ss.
COUNTY OF _____________________________________________)
On this the __ day of August, 1999, before me appeared
________________________________, the person who signed this instrument, who
acknowledged that (s)he is the
__________________________________________________ of REPUBLIC TECHNOLOGIES
INTERNATIONAL MARKETING, LLC and that being duly authorized (s)he signed such
instrument as a free act on behalf of REPUBLIC TECHNOLOGIES INTERNATIONAL
MARKETING, LLC.
__________________________________
Notary Public
[Seal]
My commission expires:
ANNEX
Trademark Registrations --
or United States Patent and Trademark Office
Service ▇▇▇▇ Registration No. Registration Date
[List chronologically in ascending numerical order]
[TO BE COMPLETED BY BORROWER]
Trademark Pending Applications --
or United States Patent and Trademark Office
Service ▇▇▇▇ Serial No. Filing Date
[List chronologically in ascending numerical order]
[TO BE COMPLETED BY BORROWER]
