TRADEMARK LICENSE AND DOMAIN NAME AGREEMENT

 

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                                                                    EXHIBIT 10.5

 

 

                   TRADEMARK LICENSE AND DOMAIN NAME AGREEMENT

 

 

         THIS AGREEMENT (this "Agreement") is entered into as of January 30,

2004 (the "Effective Date") by and between Centex Corporation, a corporation

organized under the laws of the State of Nevada ("Centex"); Eagle Materials Inc.

(formerly known as Centex Construction Products, Inc., or "CXP"), a corporation

organized under the laws of the State of Delaware ("Eagle"); and Centex

Materials, LLC, a limited liability company organized under the laws of the

state of Delaware ("CM"). Centex, Eagle and CM are sometimes hereinafter

referred to collectively as the "Parties."

 

         WHEREAS, CXP was a wholly-owned subsidiary of Centex prior to

completing an initial public offering of 51% of its common stock on April 19,

1994; and

 

         WHEREAS, in connection with the initial public offering, Centex and CXP

entered into a Trademark License Agreement dated April 19, 1994 (the

"Predecessor Agreement") pursuant to which Centex licensed the use of the CENTEX

trademark and certain other trademarks owned by Centex to CXP, and which remains

in full force and effect; and

 

         WHEREAS, CXP and Centex entered into an Agreement and Plan of Merger

with ARG Merger Corporation dated as of July 21, 2003 (the "Merger Agreement"),

pursuant to which a portion of the shares of CXP's common stock owned by Centex

will be exchanged for an equal number of shares of CXP Class B Common Stock, the

purpose of which is to facilitate the tax-free distribution by Centex to its

stockholders of its approximately 65% equity ownership interest in CXP; and

 

         WHEREAS, CXP and Centex also entered into a Distribution Agreement

dated as of July 21, 2003 (the "Distribution Agreement") pursuant to which (i)

CXP will pay a cash dividend to all of the holders of CXP's common stock

immediately prior to the reclassification and distribution; (ii) Centex will

distribute all of its holdings of CXP Class B Common Stock and all of its

holdings of CXP's common stock to Centex's stockholders on a pro rata basis; and

(iii) CXP changed its corporate name to Eagle Materials, Inc.; and

 

         WHEREAS, Eagle and Centex mutually desire to terminate the Predecessor

Agreement; and

 

         WHEREAS, as a related company of Centex, CXP used certain trademarks in

connection with its business, and the Parties desire to enter into this

Agreement to govern the continued use of those trademarks after the termination

of the Predecessor Agreement and the transactions described above.

 

         NOW, THEREFORE, in consideration of the mutual covenants contained

herein, and for other good and valuable consideration, receipt of which is

hereby acknowledged, the Parties hereby agree as follows:

 

 

 

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1. DEFINITIONS

 

         1.1 "Centex Materials Marks" means the combined term "Centex Materials"

and the marks set forth in Exhibit 1.1 hereto.

 

         1.2 "CXP Domain Name" means www.centex-cxp.com.

 

         1.3 "Domain Names" means the domain names set forth in Exhibit 1.2

hereto and any other domain names that incorporate the Licensed Marks and are

owned by Centex.

 

         1.4 "Eagle Business" means each and every business conducted at any

time prior to, on or after the Effective Date by Eagle, CXP or any current or

future Subsidiary of Eagle, whether or not such Subsidiary is a subsidiary of

Eagle as of the Effective Date.

 

         1.5 "Eagle Group" means Eagle, CXP and each entity that is a current or

future Subsidiary of Eagle, whether or not such Subsidiary is a subsidiary of

Eagle as of the Effective Date.

 

         1.6 "Eagle Marks" means the marks set forth in Exhibit 1.5 hereto.

 

         1.7 "Licensed Marks" means the marks set forth in Exhibit 1.6 hereto.

 

         1.8 "Subsidiary" means, with respect to any entity, (i) any corporation

of which at least fifty percent (50%) of the securities, or fifty percent (50%)

of other ownership interests, or at least fifty percent (50%) of the ordinary

voting power are directly or indirectly owned or controlled by such entity or

its Subsidiaries; (ii) any partnership of which such entity or one of its

Subsidiaries is a general partner or as to which such entity or its Subsidiaries

are entitled to receive at least fifty percent (50%) of the assets upon the

liquidation thereof; or (iii) any limited liability company of which such entity

or one of its Subsidiaries is a manager or is entitled to exercise management

rights over the conduct of the business of such limited liability company, or as

to which such entity or its Subsidiaries are entitled to receive at least fifty

percent (50%) of the assets upon the liquidation thereof.

 

2. THE PREDECESSOR AGREEMENT

 

         2.1 The Predecessor Agreement shall terminate automatically upon the

Effective Date, and Eagle hereby waives the right to receive the notice required

by Paragraph 1.b. of the Predecessor Agreement.

 

         2.2 Notwithstanding Paragraphs 9 and 10 of the Predecessor Agreement,

Eagle shall have the right to continue use of the trademarks that were the

subject of the Predecessor Agreement for a period of six (6) months after the

Effective Date. However, Eagle agrees (i) not to order after the Effective Date

any additional supplies and documents which have imprinted thereon the

trademarks that were the subject of the Predecessor Agreement; and (ii) as soon

as practicable during said six-month period, to

 

 

 

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remove all signs and identifiers used in the Eagle Business that refer to

Centex, except as provided in Section 3 below.

 

         2.3 Eagle acknowledges and agrees that six months after the Effective

Date, it can no longer use or display the name "Centex" or any variations

thereof, or other trademarks, tradenames, logos or identifiers using the name

"Centex" or otherwise owned by or licensed to Centex which have not been

assigned or licensed to Eagle without the prior written consent of Centex.

However, nothing contained in this Agreement shall prevent Eagle from using the

"Centex" name in public filings with governmental authorities, materials

intended for distribution to Eagle stockholders, or any other communication in

any medium which describes the current or former relationship between Centex,

CXP and/or Eagle.

 

3. THE CENTEX MATERIALS MARKS

 

         3.1 License Grant. Centex hereby grants to CM, and CM hereby accepts, a

non-sublicensable, exclusive, perpetual, and royalty-free license to use the

Centex Materials Marks in connection with its ready-mix concrete and aggregates

operations within the State of Texas, subject to the limitations set forth in

this Agreement. The grant of the license hereunder to the Centex Materials Marks

is non-transferable and non-assignable, except that CM may transfer and/or

assign the license to a Subsidiary that is the surviving company of a merger,

reorganization or consolidation with CM or another Subsidiary of the Eagle

Group. Except as expressly set forth herein, no rights or licenses are granted

to CM by Centex with respect to any other trademark, service mark, and/or trade

name other than the Centex Materials Marks.

 

         3.2 Ownership. CM acknowledges that Centex owns the Centex Materials

Marks and all rights therein and that nothing in this Agreement shall give CM

any right, title or interest in or to the Centex Materials Marks other than

pursuant to the license granted hereby.

 

         3.3 No Challenge. CM agrees that it will do nothing inconsistent with

Centex's ownership of the Centex Materials Marks and shall not claim adversely

to Centex, or assist any third party in attempting to claim adversely to Centex,

with regards to such ownership. CM agrees that it will not challenge the title

of Centex to the Centex Materials Marks, oppose any registration thereof, or

challenge the validity of this Agreement or the licenses granted herein.

 

         3.4 Maintenance. All costs associated with maintaining or renewing the

Centex Materials Marks shall be borne by CM. CM, in its discretion, shall have

the sole authority to decide whether to maintain and renew registrations for the

Centex Materials Marks. At CM's request and cost, Centex shall cooperate with CM

and shall in general take such actions as are necessary to facilitate the

maintenance and renewal of the Centex Materials Marks, including timely

executing all documents necessary to do so, including without limitation powers

of attorney, declarations, and affidavits. CM shall provide Centex any

reasonably required information requested by Centex to facilitate its timely

execution of such documents.

 

 

 

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         3.5 Quality Control.

 

         (a) CM and Centex acknowledge and agree that Centex is intimately

familiar with CM's abilities and expertise in the manufacture of readymix

concrete and aggregates (including without limitation sand, gravel and other

like material).

 

         (b) CM agrees that all goods sold under the Centex Materials Marks will

be of high quality, standard and skill. CM and Centex acknowledge and agree that

due to the longstanding close working relationship between them, the fact that

officer(s) of Centex are on Eagle's Board of Directors, and given the high

degree of Centex's familiarity with CM's abilities and expertise in the conduct

of its business, Centex is entitled to rely upon CM's own efforts to control the

quality of the goods and services offered under the Centex Materials Marks.

 

         (c) Notwithstanding the foregoing, Centex shall have the right to

impose on CM, as necessary, other specifications or requirements not provided

for in this Agreement to ensure the requisite quality standards with respect to

products manufactured or sold by CM that display the Centex Materials Marks.

Further, CM shall, on reasonable request and notice from Centex, make available

to CM samples of goods or materials displaying the Centex Materials Marks.

 

         3.6 Protection; enforcement.

 

         (a) CM shall promptly notify Centex of any and all infringements,

imitations, simulations or other illegal use or misuse of the Centex Materials

Marks that come to CM's attention. As the sole owner of the Centex Materials

Marks, Centex shall determine whether to take any action to prevent the

infringement, imitation, simulation or other illegal use or misuse of the Centex

Materials Marks.

 

         (b) CM shall render Centex all reasonable assistance in connection with

any matter pertaining to the protection, enforcement or infringement of the

Centex Materials Marks, whether in the courts, administrative or quasi-judicial

agencies, or otherwise.

 

         3.7 Termination. Centex shall have the right to terminate this license

upon the occurrence of one or more of the following: (a) any material breach by

CM of its obligations under this Agreement which remains uncured for thirty (30)

days or more following written notice of such breach from Centex, or (b) CM

abandons the use of the Centex Materials Marks, or provides notice to Centex of

its desire to terminate the license. Upon termination of the license, CM agrees

it shall immediately cease any and all use of the Centex Materials Marks.

 

4. THE LICENSED MARKS

 

         4.1 License Grant. Centex hereby grants to Eagle, and Eagle hereby

accepts, an exclusive, perpetual, worldwide, royalty-free license to use the

Licensed Marks in connection with the Eagle Business, subject to the limitations

set forth in this Agreement. Eagle conducts the Eagle Business through the Eagle

Group. The grant of the license hereunder to the Licensed Marks (i) includes the

Eagle Group's right to use the Licensed

 

 

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Marks in connection with the Eagle Business, and (ii) is transferable and

assignable except to the extent that any such transfer or assignment is

prohibited by the provisions of Section 4.5(b) of that certain Distribution

Agreement between Centex and Eagle dated November 4, 2003. Notwithstanding the

licenses granted herein and any of the provisions hereof, no rights or licenses

are granted to Eagle by Centex with respect to any other trademark, service

mark, and/or trade name other than the Licensed Marks.

 

         4.2 Ownership. Eagle acknowledges that Centex owns the Licensed Marks

and all rights therein and that nothing in this Agreement shall give Eagle or

the Eagle Group any right, title or interest in or to the Licensed Marks other

than pursuant to the license granted hereby.

 

         4.3 No Challenge. Eagle agrees that it will do nothing inconsistent

with Centex's ownership of the Licensed Marks and shall not claim adversely to

Centex, or assist any third party in attempting to claim adversely to Centex,

with regards to such ownership. Eagle agrees that it will not challenge the

title of Centex to the Licensed Marks, oppose any registration thereof, or

challenge the validity of this Agreement or the licenses granted herein.

 

         4.4 Maintenance. All costs associated with maintaining or renewing the

Licensed Marks shall be borne by Eagle. Eagle, in its discretion, shall have the

sole authority to decide whether to maintain and renew registrations for the

Licensed Marks. At Eagle's request and cost, Centex shall cooperate with Eagle

and shall in general take such actions as are necessary to facilitate the

maintenance and renewal of the Licensed Marks, including timely executing all

documents necessary to do so, including without limitation all powers of

attorney, declarations and affidavits. Eagle shall provide Centex any reasonably

required information requested by Centex to facilitate its timely execution of

such documents.

 

         4.5 No Liens. Centex represents and warrants that the Licensed Marks

are not currently encumbered by any liens, security interests, or any rights of

others; and further, Centex will not permit or allow the Licensed Marks to be

sold, transferred, assigned or encumbered in any way without the prior written

consent of Eagle.

 

         4.6 Option to Purchase. After two (2) years from the Effective Date,

Eagle shall have the right to purchase any or all of the right, title and

interest in and to the Licensed Marks for a price to be mutually agreed to

between Eagle and Centex, such price to take into account the fact that Eagle

will already have the perpetual and exclusive right to use, maintain and enforce

the Licensed Marks pursuant to this Agreement.

 

         4.7 Quality Control.

 

         (a) Centex and Eagle acknowledge and agree that Centex is intimately

familiar with Eagle's abilities and expertise in the Eagle Business and the

manufacture of construction products, including without limitation cement,

clinker, readymix concrete, aggregates (i.e., sand, gravel and other like

material), paperboard and gypsum wallboard.

 

 

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         (b) Eagle agrees that all goods sold under the Licensed Marks will be

of high quality, standard and skill. Centex and Eagle acknowledge and agree that

due to the longstanding close working relationship between them, the fact that