EXHIBIT 10.10
TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT (this "Agreement") is entered into by and
between HD AMERICA, INC. ("Licensor") and City Truck & Trailer Parts, Inc.
("Licensee") this 6/th/ day of July 1998 (the "Effective Date").
W I T N E S S E T H:
-------------------
A. Licensor is the owner of the intellectual property rights, including
rights in trademark, service xxxx, trade name, and copyright, associated
with the xxxx HDA PARTS SYSTEM (the "Trademark").
B. Licensor has applied to register the Trademark in the Principal Register
of the United States Patent and Trademark Office.
C. Licensee desires to take a license to use the Trademark, and Licensor
desires to grant Licensee a license to use the Trademark, all in
accordance with the term and conditions as are set forth herein.
NOW THEREFORE, in consideration of the foregoing, the mutual covenants
herein contained, and other good and valuable consideration (the receipt,
adequacy and sufficiency of which are hereby acknowledged by the parties by
their execution hereof), the parties agree as follows:
1. OWNERSHIP OF TRADEMARK AND GOODWILL. Licensee acknowledges that the
Trademark and the goodwill associated therewith is owned and will continue to be
owned by Licensor. Nothing in this Agreement shall give Licensee any right,
title or interest in the Trademark other than the right to use such Trademark in
accordance with the terms of the license granted hereunder. Licensee agrees
that it will not challenge Licensor's ownership of the Trademark, the validity
thereof, or in any manner oppose Licensor's application to register the xxxx,
nor will Licensee move to cancel the registration of the same.
2. GRANT OF LICENSE; TERRITORIAL USE. Effective as of the day hereof and
until the termination of this Agreement as provided for herein, Licensor hereby
grants to Licensee and Licensee accepts from Licensor an exclusive, royalty-free
and revocable license to use the Trademark within the United States, Canada and
Mexico. Licensor specifically reserves unto itself the right to assign or enter
into other licenses for use of any or all of the Trademark outside of the United
States, Canada and Mexico. Licensee acknowledges and agrees that the Trademark
is licensed "AS IS." Licensee may not assign or sublicense its rights or duties
pursuant to this Agreement. Nothing herein may be construed to grant a license
to Licensee for the use of any xxxx confusingly similar to the Trademark;
furthermore, the following marks owned by Licensor are specifically excluded
from this grant of license: HDA, HD America, HD America Inc. and Heavy Duty
America, and any marks confusingly similar thereto.
1
3. CONSIDERATION FOR LICENSE. Licensee shall pay all costs and expenses
associated with registering the Trademark, including attorney's fees within 30
days of receipt of an invoice from Licensor for such costs, expenses and
attorney's fees. Licensee also agrees to place its purchases of parts from
Licensor's vendors through the Licensor's purchasing programs and covenants and
agrees not to interfere with any purchasing agreements or relationships between
Licensor and any of its vendors, including, but not limited to, negotiating or
entering into any purchasing agreements with Licensor's vendors that do not
include Licensor as a party.
4. USE OF TRADEMARK; QUALITY OF TRADEMARKED GOODS AND SERVICES. Licensee
shall use its best efforts to preserve the existing standard of quality
associated with and goodwill generated by the Trademark.
Licensor is aware of the current standards of quality used by Licensee and
agrees that these are sufficient to protect the Trademark. Licensee agrees that
it will only sell products and services consistent with these current standards.
From time to time, Licensor can request reasonable samples of goods and services
sold under the Trademark to ensure quality.
In the event that a particular use of the Trademark by Licensee is deemed
objectionable by Licensor (at the sole discretion of the Licensor), Licensee
shall cease said use immediately upon written notification by Licensor and
Licensee will undertake any reasonable corrective action when requested by
Licensor.
5. TERMINATION OF LICENSE. This Agreement will automatically terminate
in the event that Licensee ceases to use the Trademark for any reason. In
addition, Licensor may terminate this Agreement at any time following Licensee's
breach of any term herein, including, but not limited to Licensee's failure to
maintain the current standards of quality, in accordance with the 60 day cure
period set forth as follows:
Following the breach of any term contained in this Agreement, Licensor
shall promptly notify Licensee of said breach. Licensee shall have 60 days from
receipt of notice to cure said breach to the satisfaction of Licensor. If the
breach is not cured to the satisfaction of Licensor, Licensor may terminate the
Agreement.
Upon termination, all rights and privileges granted such Licensee with
respect to the Trademark shall terminate and all rights in the Trademark and the
goodwill connected therewith shall remain the property of Licensor.
Upon termination of this Agreement for any reason, Licensee shall forthwith
discontinue the use of the Trademark and any xxxx confusingly similar thereto,
including, but not limited to the words H D A PARTS SYSTEM, and shall not
thereafter operate or do business under any name or in any manner that might
tend to give the general public the impression that it is affiliated with the
Licensor. Upon termination of this Agreement for any reason, Licensee shall
take such action as may be necessary to cancel any assumed name or equivalent
registration which contains any name or xxxx identical, or confusingly similar
with the Trademark, or any other name, trademark or
2
service xxxx of Licensor, and Licensee shall furnish Licensor with proof
of discharge of this obligation within thirty (30) days following the
termination as a Licensee.
6. GENERAL PROVISIONS
6.1. AMENDMENT AND MODIFICATION. No amendment, modification, supplement,
termination, consent or waiver of any provision of this Agreement, nor consent
to any departure therefrom, will in any event be effective unless the same is in
writing and is signed by the party against whom enforcement of the same is
sought. Any waiver of any provision of this Agreement and any consent to any
departure from the terms of any provision of this Agreement is to be effective
only in the specific instance and for the specific purpose for which given.
6.2. COUNTERPARTS. This Agreement may be executed by the parties on
any number of separate counterparts and via facsimile copies, and all such
counterparts so executed constitute one agreement binding on all the parties
notwithstanding that all the parties are not signatories to the same
counterpart.
6.3. ENTIRE AGREEMENT. This Agreement constitutes the entire
agreement among the parties pertaining to the subject matter hereof and
supersedes all prior agreements, letters of intent, understandings, negotiations
and discussions of the parties, whether oral or written.
6.4. FURTHER ASSURANCES. The parties will execute and deliver such
further instruments and do such further acts and things as may be required to
carry out the intent and purpose of this Agreement.
6.5. NO JOINT VENTURE OR PARTNERSHIP. The parties agree that nothing
contained herein is to be construed as making the parties joint venturers or
partners; furthermore, Licensee shall refrain from using the Trademark or making
any other representation that may indicate that such a relationship exists.
6.6. SUCCESSORS AND ASSIGNS. All provisions of this Agreement are
binding upon, inure to the benefit of, and are enforceable by or against, the
parties and their respective heirs, executors, administrators or other legal
representatives and permitted successors and assigns.
6.7. THIRD-PARTY BENEFICIARY. This Agreement is solely for the
benefit of the parties and their respective successors and permitted assigns,
and no other person or entity has any right, benefit, priority or interest
under, or because of the existence of, this Agreement.
6.8. SIGNATORY WARRANTY. Each person executing this Agreement
warrants that such person is authorized to do so on behalf of the party for whom
the person signs this Agreement.
6.9. VOID OR UNENFORCEABLE CLAUSES. Should one or more clauses of
this Agreement be held to be void or unenforceable for any reason by any court
of competent jurisdiction, such clause or clauses shall be deemed to be
separable in such jurisdiction and the remainder of this Agreement
3
shall be deemed to be valid and in full force and effect and the terms of
this Agreement shall be equitably adjusted so as to compensate the
appropriate party for any consideration lost because of the elimination of
such clause or clauses. It is the intent and expectation of each of the
parties that each provision of this Agreement will be honored, carried out
and enforced as written. Consequently, each of the parties agree that any
provisions of this Agreement sought to be enforced in any proceeding
hereunder shall, at the election of the party seeking enforcement and
notwithstanding the availability of an adequate remedy at law, be enforced
by specific performance.
6.10. WAVIER. Any waiver by either party of any breach by the other
shall not be deemed to be a wavier of any other or subsequent breach nor an
estoppel to enforce its rights in respect of any other or subsequent breach.
This Agreement shall not be waived, altered or rescinded, in whole or in part,
except by a writing signed by the party making the waiver or an officer of such
party as the case may be. This Agreement constitutes the sole agreements
between the parties with respect to the use of Licensor's trademarks and
embodies all prior agreement and negotiations with respect to the use of said
trademarks. There are no representations of any kind except as contained
herein.
6.11. APPLICABLE STATE LAW. Except as specifically agreed otherwise
herein, this agreement shall be deemed made when accepted by the Licensor and
shall be governed by and interpreted in accordance with the laws of the State of
Missouri and the federal trademark laws of the United States.
6.12. FUTURE AMENDMENTS. This Agreement shall be deemed to be
amended form time to time as may be necessary to bring any of its provisions
into conformity with valid applicable laws or regulations. This Agreement may
only be otherwise modified or amended by a written instrument signed by both
Licensor and Licensee.
6.13. LITIGATION. In the event any person who is not a licensee of
the Licensor uses or infringes the Trademark, the Licensee shall control all
litigation and shall be the sole judge as to whether or not suit shall be
instituted, prosecuted or settled, the terms of settlement, and whether or not
any other action is taken. Licensor will provide all necessary and useful
cooperation in connection therewith. Licensee and Licensor shall promptly
notify each other of any such use or infringement of which they become aware.
Licensor agrees not to xxx Licensee for trademark infringement arising out of
use of the Trademark permitted by this Agreement.
4
IN WITNESS WHEREOF, the parties hereby cause their respective
representatives to execute this Agreement.
HD AMERICA, INC. ("LICENSOR")
By: /s/ Xxxxxxx X Xxxxxxxx
Name: XXXXXXX X XXXXXXXX
Title: PRESIDENT
CITY TRUCK & TRAILER PARTS, INC. ("LICENSEE")
By: /s/ Xxxx X. Xxxxxxx
Name: XXXX X. XXXXXXX
Title: CHIEF EXECUTIVE OFFICER
5
