TRADEMARK LICENSE AND SUPPLY AGREEMENTIP Intellectual Property License Assignment Agreement |
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UNITED FUEL & ENERGY CORP | Cardlock Fuels System, Inc | Southern Counties Oil Co | UNITED FUEL & ENERGY CORPORATION. RealDealDocs™ contains millions of easily searchable legal documents and clauses from top law firms. Search for free - click here. |
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EXHIBIT
10.1
CERTAIN
INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND
FILED
SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT
HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.
TRADEMARK
LICENSE AND SUPPLY AGREEMENT
This
Trademark License and Supply Agreement (this “Agreement”)
is
made as of October 5, 2007, by and between United Fuel & Energy, a Nevada
corporation (the “UFEN”),
and
Southern Counties Oil Co., a California limited partnership, d.b.a. SC Fuels
(“SC
Fuels”).
WHEREAS,
SC Fuels is the owner of the trademark and tradename “SC Fuels” and federal
registrations therefor in the forms set forth on Schedule
A
attached
hereto (the “Licensed
Trademark(s)”).
WHEREAS,
UFEN, among other things, is in the
business of distributing fuel to commercial vehicles at unmanned locations
through the use of an access or keycard system
(the
“UFEN
Business”)
and
UFEN is in the process of acquiring all the capital stock of Cardlock Fuels
System, Inc., a California corporation (“CFS”),
that
currently distributes fuel to commercial vehicles at unmanned locations through
the use of an access or keycard system under the Licensed Trademarks (the
“Acquired
Sites”).
WHEREAS,
following the closing of the acquisition of CFS, UFEN desires to continue to
use
the Licensed Trademark(s) in connection with the UFEN Business for a period
of
time and SC Fuels is willing to grant to UFEN the right to use the Licensed
Trademark(s) in connection with the UFEN Business, subject to the terms and
conditions of this Agreement.
NOW
THEREFORE, in consideration of the mutual promises and covenants set forth
herein, the parties, intending to be legally bound, hereto agree as
follows:
ARTICLE
1 - GRANT OF LICENSE
1.1 SC
Fuels
hereby grants to UFEN, and UFEN hereby accepts, a non-exclusive, royalty-free
license to use the Licensed Trademark(s) solely in connection with the UFEN
Business during the Term and in the Territory, subject to the terms, conditions
and limitations set forth in this Agreement.
1.2 Except
as
provided in this Article, the license granted herein shall be nontransferable,
non-assignable, and shall not be sublicensed without the prior written consent
of SC Fuels.
1.3 The
Territory covered by this Agreement shall be the United States.
ARTICLE
2 - OWNERSHIP AND USE OF THE LICENSED TRADEMARKS
2.1 UFEN
acknowledges that SC Fuels owns the Licensed Trademark(s), all goodwill
associated therewith, and all rights therein and that nothing in this Agreement
shall give UFEN any right, title or interest in or to the Licensed Trademark(s)
other than pursuant to the license granted hereby. UFEN agrees that its use
of
the Licensed Trademark(s) shall inure to the benefit of SC Fuels.
2.2 UFEN
agrees that it will do nothing inconsistent with SC Fuels’ ownership of the
Licensed Trademark(s) and shall not make any claim adverse to SC Fuels, or
assist any third party in attempting to make any claim adverse to SC Fuels
with
regard to such ownership. UFEN agrees that it will not challenge the title
of SC
Fuels to the Licensed Trademark(s), oppose any application thereof, petition
to
cancel any registration thereof, or challenge the validity of this Agreement
or
the license granted herein. Furthermore, UFEN will not register, nor attempt
to
register, any tradename or trademark which, in whole or in part, incorporates
or
is confusingly similar to the Licensed Trademark(s).
2.3 Without
the prior written approval of SC Fuels, UFEN is not authorized to use the
Licensed Trademark(s) in connection with any business activity unrelated to
the
UFEN Business at the Acquired Sites.
2.4 Notwithstanding
the license granted herein and any of the provisions hereof, no rights or
licenses are granted to UFEN with respect to any other trademark, service mark,
and/or trade name not listed on Schedule
A
hereto.
2.5 The
license granted herein is conditioned upon UFEN’s full and complete compliance
with the marking provisions of the trademark laws of the United States.
UFEN
agrees
that it will display the Licensed Trademark(s) only in such form or manner
as
shall be specifically approved by SC Fuels. UFEN also shall cause to appear
on
all materials on or in connection with which the Licensed Trademark(s) is/are
used, such legends, markings and notices as SC Fuels may request in order to
give appropriate notice of any trademark rights therein, namely, “Used under
license from SC Fuels.”
2.6 Upon
reasonable request by SC Fuels, UFEN shall allow SC Fuels to inspect the
Acquired Sites where the Licensed Trademark(s) are used during normal business
hours, and any materials produced by or on behalf of UFEN that bear the Licensed
Trademark(s).
2.7 UFEN
agrees to assist SC Fuels in recording this Agreement with appropriate
government authorities in the Territory, where such recording is required by
law
or regulation or where such recording is permitted or desired by SC
Fuels.
2.8 All
costs
associated with recording this Agreement and the license granted herein shall
be
borne by UFEN. All costs associated with registering, maintaining and/or
renewing any Licensed Trademark(s) shall be borne by SC Fuels.
ARTICLE
3 - NEW TRADEMARKS
3.1 Should
UFEN desire to develop a trademark using the name “SC Fuels” in any form other
than the Licensed Trademark(s), it must first consult with and obtain the
written approval of SC Fuels, which may be withheld in its sole discretion.
Such
newly developed trademarks will be registered in the name of SC Fuels, and
will
be deemed to be Licensed Trademark(s) licensed to UFEN hereunder and will be
subject to all of the terms and conditions of this Agreement. Use of any such
developed trademarks shall inure to the benefit of SC Fuels. SC Fuels’ approval
will not be contingent upon the payment of any fee or royalties to SC Fuels;
however, the cost of obtaining and maintaining such new trademarks shall be
borne solely by UFEN.
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ARTICLE
4 - SUPPLY PROVISIONS
4.1 As
partial consideration of the granting of the license herein, UFEN agrees that
SC
Fuels shall be the primary supplier of motor fuels to UFEN at the Acquired
Sites, subject to the availability of supply from SC Fuels. SC Fuels’ motor
fuels purchased by UFEN shall at all times be the brands and grades generally
offered and/or approved for sale by SC Fuels in the geographic area in which
the
Acquired Sites are located. Three of the Acquired Sites are subject to branded
supply agreements with major oil companies and are therefore not included in
this supply agreement.
4.2 The
purchase price to be paid by UFEN to SC Fuels for the motor fuel sold and
delivered to UFEN is
set
forth on Schedule
B
attached
hereto.
4.3 The
freight rate to be paid by UFEN to SC Fuels for the motor fuels delivered to
UFEN is set forth on Schedule
B
attached
hereto. The following services shall be provided in connection with payment
of
this freight rate: tank monitoring, dispatch, transport, fuel surcharges and
demurrage. Deliveries of motor fuels purchased by UFEN from SC Fuels shall
be
made at times determined by SC Fuels and upon UFEN ordering no less than a
full
truck and trailer quantity. UFEN also agrees to permit SC Fuels to utilize
the
Acquired Sites for the delivery of product retains.
4.4 Although
SC Fuels will make every reasonable effort to accommodate UFEN with respect
to
short notice and off-hour deliveries, in no instance shall SC Fuels be required
to make or arrange for deliveries to the Acquired Sites: (a) sooner than
forty-eight (48) hours following UFEN’s order for such delivery; (b) during
other than normal business hours; or (c) on Sundays or legal holidays.
4.5 Title
to
and risk of loss of motor fuel sold and delivered by SC Fuels to UFEN shall
pass
to UFEN at the time the motor fuel enters the Acquired Sites. UFEN expressly
waives any claim against SC Fuels as to quantity or quality of motor fuel sold
and delivered under this Agreement, unless notice is presented in writing to
SC
Fuels by UFEN within forty-eight (48) hours after delivery.
4.6 SC
Fuels
and UFEN agree that the prices for gasoline and diesel fuel are subject to
annual review and adjustment following full and open negotiation. At the annual
review, if the parties fail to agree on the prices for gasoline and diesel
fuel,
this Agreement will terminate.
4.7 If
UFEN
fails to pay in accordance with agreed terms of payment, or if UFEN’s financial
capabilities or creditworthiness shall, in SC Fuels’ sole judgment, deteriorate,
SC Fuels may, without prejudice to any other lawful remedies, defer shipments
until payment is made, demand cash payments from UFEN, demand advance payments,
or cancel this Agreement. No payment made to SC Fuels by check, electronic
funds
transfer, or by any other instrument shall contain a restrictive endorsement
of
any kind, and any such restrictive endorsement shall have no legal effect even
if the instrument restrictively endorsed is processed for payment and SC Fuels
retains the proceeds.
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4.8 The
obligation of the parties to deliver and receive motor fuel under this Agreement
shall be suspended and excused if SC Fuels is prevented from or delayed in
transporting, or delivering, in its normal manner, products, or if UFEN is
prevented from receiving or selling products, because of acts of God,
earthquake, fire, flood or the elements generally, malicious mischief, riots,
strikes, lockouts, boycotts, picketing, labor disputes or disturbances, war,
compliance with any directive, order or regulation of any governmental authority
or representative thereof acting under claim or color of authority, or from
any
other cause beyond SC Fuels’ or UFEN’s reasonable control, whether or not
similar to the foregoing enumerated causes. Whenever such causes, in SC Fuels’
judgment, require restriction of deliveries, SC Fuels reserves the right in
its
sole discretion to restrict deliveries to UFEN without liability, whether or
not
SC Fuels is delivering products to others.
ARTICLE
5 - DURATION OF LICENSE AND TERMINATION
5.1 This
Agreement and the license granted herein shall be effective as of the closing
of
the acquisition of the Acquired Sites, and shall terminate upon the earlier
of
(i) three (3) years following the date thereof; or (ii) termination pursuant
to
this Article 5 (the “Term”).
5.2 Either
party hereto shall have the right to immediately terminate this Agreement,
or
any or all licenses granted herein, upon written notice to the other party
in
the event of a winding-up, sale, consolidation or merger wherein the other
party
is not the survivor, or any sequestration by governmental authority of the
other
party.
5.3 Either
party may terminate this Agreement if the other party shall have defaulted
in or
breached the performance of any of the duties, responsibilities, or obligations
provided for in this Agreement, and fails to cure and correct the foregoing
within fifteen (15) calendar days after having received written notice
thereof.
5.4 Each
party shall also have the right to immediately terminate this Agreement without
other cause or prior notice if the other party either: (a) makes an assignment
for the benefit of creditors; (b) makes a written admission of its inability
to
pay its debts or obligations as they become due; (c) defaults on payments owed
to the other party, and fails to cure such default within five (5) calendar
days
of being notified of such default; (d) files a voluntary petition in bankruptcy;
(e) is adjudicated bankrupt or insolvent; (f) files any petition or other
pleading seeking reorganization, arrangement, composition, readjustment,
dissolution, or similar relief under any statute, law or regulation, or
admitting or failing to contest the material allegations of a petition or other
pleading filed against such party in any such proceeding; (g) seeks, consents
to, or acquiesces in the appointment of any trustee, receiver, or liquidator
of
its business, or all or a substantial part of its assets, or fails to vacate
the
appointment of any trustee, receiver or liquidator for any such purpose within
thirty (30) days of such appointment; (h) permits the continuance of more than
thirty (30) days of any proceeding against it seeking any reorganization,
arrangement, composition, readjustment, liquidation, dissolution or similar
relief under any statute, law, or regulation; (i) willfully or fraudulently
misrepresents any fact or condition required by this Agreement; (j) willfully
or
fraudulently misrepresents any brand name product or service sold by it; (k)
conviction for fraud or criminal misconduct; or (l) the knowing failure to
comply with Federal or State laws or regulations.
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