EXHIBIT
10.56
EXECUTION COPY
TRADEMARK
LICENSE AGREEMENT
This
TRADEMARK LICENSE AGREEMENT (this “ Agreement
”), is made and effective as of the 31 st
day of March, 2008 (the “ Effective
Date ”), by and between SaluMedica, LLC, a
Georgia limited liability company (“ Licensor
”), and MiMedx, Inc., a Florida corporation (“
MiMedx
”; and, together with any subsidiary, parent, affiliate,
or successor-in-interest of MiMedx, “ Licensee
”).
RECITALS:
A. Licensor
and Licensee (in particular, MiMedx Group, Inc., the parent
company of MiMedx) have entered into that certain Investment
Agreement of even date herewith (the “ Investment
Agreement ”) pursuant to which, among other
things, Licensor has subscribed for the “Closing
Shares” (as defined in the Investment Agreement) in
exchange for the license and other rights granted by Licensor
to Licensee in this Agreement and a Technology License
Agreement of even date herewith (the “ Technology
License
”);
B.
Licensor is the owner of certain intellectual
property rights with regard to certain biomaterials known as
Salubria™ biomaterials, and certain of those
intellectual property rights are included in the Trademark
Portfolio (as defined hereinafter); and
C.
Licensee is desirous of obtaining and
commercializing such intellectual property rights under the
terms set forth herein;
TERMS OF AGREEMENT:
NOW
THEREFORE, in consideration of ten U.S. dollars ($10.00) in
hand paid, the Closing Shares, the execution and delivery on
the date hereof of the Technology License, the premises, which
are incorporated and made part of this Agreement by this
reference, and the promised performance of each of the parties
of the terms set forth herein, and for other good and valuable
consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties hereto, intending to be legally
bound, mutually agree as follows:
I.
Grant
of
License
1.1 Licensor hereby
grants to Licensee an exclusive, fully-paid, worldwide,
royalty-free, perpetual, irrevocable, and non-terminable
(except as provided herein) license (the “
License
”), with the right to sublicense, to use the
trademark(s) and associated trademark
registration(s) listed in Exhibit
“
A
”
(the “ Trademark
Portfolio ”) in connection with the “Field
of Use” (as defined in the Technology License, and
referred to herein as the “ Licensed
Field of Use ”).
1.2 This
Agreement will terminate upon the occurrence of the first of
the following events:
(a) Licensee
may terminate this Agreement upon thirty (30) days’
prior written notice;
(b) This
Agreement shall automatically terminate if Licensee files for
bankruptcy protection, and in such event Licensor may, at its
own discretion, elect to assume or cancel any sublicenses that
Licensee has granted under this Agreement; and
(c) This
Agreement shall automatically terminate, on an asset-by-asset
basis, if Licensee abandons use of any asset in the Trademark
Portfolio. In the event that Licensee elects to
affirmatively abandon use of any asset in the Trademark
Portfolio, it shall provide Licensor with written notice of
such election.
1.3 Licensee
may sublicense its rights under this Agreement provided that
the sublicense includes a written agreement that imposes
substantially the same obligations on the sublicensee, and
grants both Licensor and Licensee the same rights of trademark
protection, as those stated in Article III of this
Agreement. Licensee will promptly provide Licensor
with written notice of any such sublicense.
1.4 Licensor
may not use, license, assign, or otherwise transfer any rights
to the Trademark Portfolio within the Licensed Field of
Use.
1.5 Licensor
may assign or collateralize this Agreement, in whole or in
part, and will promptly provide Licensee with written notice
of any such agreement.
1.6 Licensee
may assign or collateralize this Agreement, in whole or in
part, and will promptly provide Licensor with written notice
of any such agreement.
1.7 In
the event that Licensor elects to abandon any assets in the
Trademark Portfolio, then Licensee may elect to receive an
assignment of that asset, subject to any sublicenses that
Licensor has granted to third parties in that asset, at no
cost to Licensee.
1.8 In
the event that Licensor files for bankruptcy protection, then
Licensee may elect to receive an assignment of the Trademark
Portfolio, subject to any sublicenses that Licensor has
granted to third parties in the Trademark Portfolio, at no
cost to Licensee.
II. Fully
Paid
2.1 The
License granted to Licensee in this Agreement is fully paid
and may not be rescinded.
III. Protection
of Trademark Rights
3.1 Licensor
will have the right and responsibility to maintain and renew
the trademark registrations(s) in the Trademark Portfolio at
its sole cost and discretion.
3.2 Licensee
will promptly notify Licensor if it becomes aware of any
entity that is apparently infringing an asset in the Trademark
Portfolio.
3.3 Licensor
will promptly notify Licensee if it becomes aware of any
entity that is apparently infringing an asset in the Trademark
Portfolio.
3.4 Neither
party will be required by this Agreement to become a party to
any adversarial proceeding including, by way of example, any
dispute, litigation, arbitration, mediation, administrative
proceeding, or regulatory proceeding.
3.5 Licensor
will have the first right to elect to enforce or defend the
assets in the Trademark Portfolio outside the Licensed Field
of Use at its sole cost and retain any and all proceeds and
other benefits resulting from such enforcement.
3.6 Each
party will provide reasonable cooperation in connection with
any adversarial proceeding conducted by the other party
involving any asset in the Trademark Portfolio including, by
way of example, producing documents, answering
interrogatories, and sitting for depositions, at no cost to
the other party other than recovery of its actual
out-of-pocket expenses directly incurred in providing such
cooperation.
3.7 In
the event that Licensor determines that it will not enforce or
defend any right in the Trademark Portfolio outside the
Licensed Field of Use after receiving sixty (60) days written
notice of an apparent infringement, then, subject to any
sublicenses tha
