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LICENSE AGREEMENT

License Agreement

LICENSE AGREEMENT | Document Parties: TC GLOBAL, INC. | Green Mountain Coffee Roasters, Inc You are currently viewing:
This License Agreement involves

TC GLOBAL, INC. | Green Mountain Coffee Roasters, Inc

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Title: LICENSE AGREEMENT
Governing Law: Delaware     Date: 6/29/2009

LICENSE AGREEMENT, Parties: tc global  inc. , green mountain coffee roasters  inc
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Exhibit 10.32

CONFIDENTIAL TREATMENT

[***] Indicates that text has been omitted which is the subject of a confidential treatment request. This text has been separately filed with the SEC.

 

LICENSE AGREEMENT

THIS LICENSE AGREEMENT (this “ Agreement ”) dated as of March 27, 2009, (the “ Effective Date ”) by and among Green Mountain Coffee Roasters, Inc., a Delaware corporation, with its head office located at 33 Coffee Lane, Waterbury, Vermont 05676-1529 (“ GMCR ”) and TC Global, Inc. f/k/a Tully’s Coffee Corporation, a Washington corporation with its head offices located at 3100 Airport Way South, Seattle, Washington 98134 ( “ Tully’s ”).

WHEREAS, GMCR and Tully’s have previously entered into an Asset Purchase Agreement, dated as of September 15, 2008, as amended by Amendment No. 1 thereto dated November 12, 2008 and Amendment No. 2 thereto dated February 6, 2009 (the “ Transaction Agreement ”), whereby GMCR is purchasing the assets associated with the wholesale business of Tully’s, including the “Tully’s” world-wide brand and other trade names, trademarks and service marks;

WHEREAS, simultaneously with the execution hereof, GMCR and Tully’s have entered into a Supply Agreement, dated as of the date hereof (the “ Supply Agreement ”), whereby GMCR has agreed to supply Tully’s with Licensed Products and Other Coffee Products;

WHEREAS, conditional upon the successful completion of the transactions contemplated in the Transaction Agreement and Supply Agreement, GMCR has agreed to grant Tully’s a license to trademarks, including the “Tully’s” world-wide brand (excluding Japan) and other trade names, trademarks and service marks, to use such marks in accordance with the terms of the Agreement herein;

WHEREAS, agreement of Tully’s and GMCR, respectively, to enter into this License Agreement is a condition precedent to each party’s obligations to close the transactions contemplated by the Transaction Agreement;

WHEREAS, upon the closing of the transactions contemplated by the Transaction Agreement, GMCR as the new owner of the “Tully’s” brand wants to ensure the quality of the product sold as Tully’s coffee at “Tully’s” branded retail, franchised and licensed locations;

NOW THEREFORE in consideration of the mutual covenants contained herein, and other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the parties hereto covenant and agree as follows:

I. DEFINITIONS

The following terms in this Agreement shall have the following meanings:

Affiliate ” shall mean, with respect to a party, all employees, family or other relatives, officers, directors, and equity holders of such person, as well as any other Person controlling, controlled by or under common control with such party, where “control” means the ownership, directly or indirectly, of a controlling share of the equity interests of the party or the possession

 

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CONFIDENTIAL TREATMENT

[***] Indicates that text has been omitted which is the subject of a confidential treatment request. This text has been separately filed with the SEC.

 

by other means, whether directly or indirectly, of the power to direct the management and policies of a party.

Benchmark Store ” shall mean a bona fide, standalone Licensed Retail Store open for business in the ordinary and commercially reasonable course for such store in accordance with the terms of this Agreement.

Change of Control ” shall mean with respect to any party hereto (i) any sale, transfer, assignment or other disposition, whether by operation of law or otherwise, of the voting or other securities, which results in any single third party owning more than a majority of such party’s voting stock, (ii) the sale of substantially all of such party’s assets in one or a series of transactions to a single third party buyer, (iii) a merger or consolidation of such party with any other third party entity, or (iv) the acquisition by a third party of the right to nominate a controlling majority of members of the board of directors of such party.

Contract Year ” shall have the meaning set forth in the Supply Agreement.

Force Majeure ” shall have the meaning set forth in the Supply Agreement.

Licensed Product ” shall mean [***] .

Licensed Retail Store ” shall mean a physical retail location operating under certain Licensed Marks under this Agreement by Tully’s or its sublicensees at which brewed coffee is the primary product sold to the end-use consumer for on and off premises consumption. For the avoidance of doubt, the term Licensed Retail Store includes both standalone locations (e.g., Benchmark Stores) and physical retail locations within larger environments with their own separate menus and facilities (e.g., counter space, cash register or order pick-up), for example: kiosks, store-in-store locations (e.g., [***] ), locations sharing space with food service establishments (e.g., [***] ), and locations within other large-scale facilities (e.g., airports, hospitals, manufacturing facilities (e.g., [***] ) and educational institutions (e.g., [***] ); provided, however, that nothing within such larger environments shall constitute a Licensed Retail Store except the specific areas where coffee is ordered, brewed, sold and consumed.

North America ” shall mean the United States of America, Canada, Mexico and the Islands of the Caribbean.

Other Coffee Products ” shall have the meaning set forth in the Supply Agreement.

Products ” shall have the meaning set forth in the Supply Agreement.

Promotional and Advertising Material ” shall mean labels, packaging, advertising brochures, catalogues and other written or graphic material, all advertising, including television,

 

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CONFIDENTIAL TREATMENT

[***] Indicates that text has been omitted which is the subject of a confidential treatment request. This text has been separately filed with the SEC.

 

radio, newspaper and other media advertising, signage, stationery, store and point-of-sale displays, and all other materials upon which any of the Licensed Marks are placed.

TCAP License ” shall mean the October 12, 2007 Exclusive License Agreement between Tully’s and Tully’s Coffee Asia Pacific, Inc., in the form attached at Exhibit 1 without modification.

II. GRANT OF RIGHTS

(a) GMCR is the owner of all right, title and interest in and to certain trade names associated with the “Tully’s” brand, as more fully set forth in Schedule A attached hereto (the “ Business Names ”), and certain trade and service marks set forth in Schedule B attached hereto (the “ Trademarks ”), including, without limitation, all goodwill associated therewith, all registrations and applications to register associated therewith, and all claims, causes and rights to sue arising therefrom. The Business Names and Trademarks are hereinafter collectively referred to as the “ Licensed Marks .”

(b) Subject to the terms and conditions of this Agreement, GMCR hereby grants [***] .

(c) [***] .

(d) [***] .

(e) [***] .

(e) [sic] [***] .

(f) [***] .

(g) [***] .

(h) [***] .

(i) [***] .

 

III. RIGHTS OF OWNERSHIP AND LIMITATION ON EXCLUSIVITY

(a) Tully’s acknowledges that: (i) as between the parties, the Licensed Marks are the exclusive property of GMCR; (ii) nothing in this Agreement shall give Tully’s any right, title or interest in or to the Licensed Marks by themselves or in combination with any other words, except in accordance with the express terms of this Agreement; and (iii) all use and any goodwill generated through the use of the Licensed Marks shall inure exclusively to the benefit of and be owned by GMCR.

(b) [***] .

(c) [***] .

(d) [***] .

(e) Tully’s acknowledges that GMCR has the exclusive worldwide right (excluding Japan), and nothing in this Agreement shall grant Tully’s any rights thereof, to use the Licensed Marks for wholesale and retail sale of products that utilize Keurig, Incorporated’s single-cup

 

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CONFIDENTIAL TREATMENT

[***] Indicates that text has been omitted which is the subject of a confidential treatment request. This text has been separately filed with the SEC.

 

brewing technology, or any similar technology developed in the future by Keurig, Inc. or any successors or Affiliates, including without limitation K-Cups portion packs and K-Cups.

IV. NOTICE TO THE PUBLIC

(a) Tully’s (or its sublicensees) shall prominently display at each Licensed Retail Store a sign stating that (i) Tully’s (or its sublicensees) is an independent owner of such Licensed Retail Store operating the Licensed Retail Store under a license from GMCR, (ii) Tully’s (or its sublicensees) is not affiliated with GMCR in any other manner, and (iii) GMCR has no interest in the Licensed Retail Store. GMCR reserves the right to specify the form, content and manner of display of such notice.

(b) Tully’s shall not use the name “Tully’s” in its corporate name, with the exception of the registration of a d/b/a or similar assumed name certificate.

V. TERM

The term of this Agreement (“ Term ”) is perpetual until this Agreement is terminated by either party in accordance with the terms herein.

VI. USAGE STANDARDS

(a) Tully’s shall use the Licensed Marks only for uses expressly permitted under this Agreement.

(b) Tully’s shall not use any other mark, name, style, logo or design, other than the Licensed Marks, in connection with the Licensed Products without the prior written consent of GMCR.

(c) Tully’s shall not register, or attempt to register, any of the Licensed Marks or any other mark, name, style, logo or design that is confusingly similar to any of the Licensed Marks.

(d) Tully’s shall not alter the Licensed Marks, develop derivatives or new variations of the Licensed Marks, or combine the Licensed Marks with other marks, designs, names, styles words or branding, without the prior written consent of GMCR. All new versions, derivatives and variations of the Licensed Marks, and any designs, words, or branding developed or acquired by Tully’s that is confusingly similar to the Licensed Marks, shall be and are owned exclusively and entirely by GMCR (including all goodwill associated therewith) and shall be deemed to be Licensed Marks governed by the terms of this Agreement.

(e) Tully’s shall not affiliate the Licensed Marks, or any of them, with offensive or repugnant materials or practices, such as, without limitation, hate speech or discrimination based on race, ethnic or religious heritage, nationality, gender, sexual preference, pornography or other

 

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CONFIDENTIAL TREATMENT

[***] Indicates that text has been omitted which is the subject of a confidential treatment request. This text has been separately filed with the SEC.

 

obscenity; illegal use of drugs or alcohol or any other illegal activity, rotten, spoiled, or otherwise unhealthful food or beverages.

(f) Whenever Tully’s uses the Licensed Marks in connection with any licensed use pursuant to this Agreement, Tully’s shall cause the “®” symbol to be placed adjacent to each federally registered Licensed Mark and the “TM” or “SM”, as applicable, symbol to be placed adjacent to each unregistered Licensed Mark.

(g) Tully’s shall require its authorized sublicensees, to comply with each of the Licensed Mark usage standards set forth in this Section VI.

VII. QUALITY CONTROL

(a) Tully’s shall secure and maintain in force all required licenses, permits and certificates relating to the operation of each Licensed Retail Store and the operation of any wholesale business pursuant to this Agreement. All commercial activity of Tully’s at such Licensed Retail Store or wholesale operation pursuant to this Agreement: (i) shall be carried out in compliance with all applicable laws and regulations, including, without limitation, any and all health and safety regulations, or regulations directed at the proper handling of food and beverages; and (ii) shall be carried out in a manner and of a quality that is consistent with or better than the manner and quality of such activities by Tully’s prior to the Effective Date hereof, in any event consistent with the best practices for a premium coffee retail outlet or wholesale distributor, and makes commercially reasonable use of advances in science, technology, or methods of doing business that arise after the Effective Date as necessary to maintain relative position of the reputation of Tully’s with regard to quality of licensed activity in relation to competitors .

(b) Tully’s acknowledges that GMCR has the right to control the quality of any products sold under the Licensed Marks or the nature of packaging or advertising used under or otherwise associated with the Licensed Marks, or any other permissible licensed uses of the Licensed Marks by Tully’s under this Agreement, in order to protect GMCR’s rights in the Licensed Marks and the public perception of the Licensed Marks.

(c) From time to time, but not more often than [***] , and upon reasonable notice, GMCR shall have the right to appoint an independent inspector at its sole expense to conduct inspections, during normal business hours and without disruption to Tully’s business and operations, for the sole purpose of ensuring that Tully’s is complying with its obligations under this Agreement; provided, however, that Tully’s may require any such independent inspector hired by GMCR to execute a commercially reasonable confidentiality agreement prior to conducting any inspection in order to protect Tully’s trade secrets and confidential and proprietary information.

 

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CONFIDENTIAL TREATMENT

[***] Indicates that text has been omitted which is the subject of a confidential treatment request. This text has been separately filed with the SEC.

 

(d) At the request and expense of GMCR, Tully’s shall provide to GMCR a commercially reasonable number of Licensed Products, Other Coffee Products, any Promotional and Advertising Material or merchandising items or reasonable facsimiles thereof, and other tangible items exploited by Tully’s pursuant to this Agreement, and, in the event it is not commercially reasonable to provide such samples, upon prior written notice, shall allow GMCR to inspect and audit Tully’s activities under this Agreement as set forth above, but solely for the purpose of confirming the compliance of Tully’s with the quality covenants set forth herein.

(e) Notwithstanding Tully’s obligations, if GMCR determines in its reasonable judgment that any use of the Licensed Marks by Tully’s pursuant to this Agreement may be or is directly or indirectly injurious or prejudicial to the Licensed Marks, Tully’s shall cease or cause the cessation of such activity within a reasonable period of time following receipt of written notification from GMCR.

(f) Tully’s shall require its authorized sublicensees, to comply with each of the quality control requirements set forth in this Section VII, and similar provisions in the parties’ Supply Agreement, titled Adherence To Standards, set forth in Section VII of that agreement.

VIII. APPROVALS OF PROMOTIONAL AND ADVERTISING MATERIAL

(a) The parties acknowledge and agree that GMCR shall have the absolute right to approve Tully’s use of and manner of use of the Licensed Marks in any Promotional and Advertising Material. Tully’s shall retain creative control over all other elements of such Promotional and Advertising Material.

(b) When Promotional and Advertising Material is in the form of modifications of previously approved Promotional and Advertising Material, and it does not alter in any way the representation of the Licensed Marks on such Promotional and Advertising Material, Tully’s shall submit such materials to GMCR, and GMCR shall approve or disapprove such Promotional and Advertising Material with ten (10) business days of such receipt. If GMCR has not responded to any submission by the 11th day after such receipt, the submitted Promotional and Advertising Material shall automatically be deemed to have been approved, unless otherwise notified or if the submission has been approved subject to changes, then the submission shall be deemed approved only if the changes are made to the satisfaction of GMCR.

(c) If Tully’s Promotional and Advertising Material are not modifications of previously approved Promotional and Advertising Material, upon receipt of such materials, GMCR shall approve or disapprove them within thirty (30) calendar days. If GMCR has not responded to any submission by the 31st day after such receipt, the submitted Promotional and Advertising Material shall automatically be deemed to have been approved unless otherwise notified or if the submission has been approved subject to changes, then the submission shall be deemed approved only if the changes are made to the satisfaction of GMCR.

 

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CONFIDENTIAL TREATMENT

[***] Indicates that text has been omitted which is the subject of a confidential treatment request. This text has been separately filed with the SEC.

 

(d) Tully’s shall require its authorized sublicensees, to comply with each of the approvals requirements set forth in this Section VIII.

IX. WEBSITES

Tully’s shall ensure that all websites operated by Tully’s under this Agreement are consistent in all material respects with any appearance and design elements provided by GMCR, and at all times consistent with any brand concept conveyed by GMCR. GMCR shall have the right to inspect the websites at its discretion, and if, in GMCR’s sole discretion, an element of Tully’s websites does not conform to the standards provided by GMCR, GMCR may demand that element be immediately removed. Upon such demand, Tully’s shall have twenty-four (24) hours to remove the offending element.

X. SECONDARY VENDORS

(a) During the Term of this Agreement, Tully’s shall be permitted to source the Licensed Products through other suppliers (“ Secondary Vendors ”) only upon (i) termination of the Supply Agreement or (ii) the conditions set forth in the Supply Agreement. All Secondary Vendors shall meet GMCR’s quality and service standards for sourcing, roasting, packaging, labeling, storage and transportation of coffee, and such other standards or specifications as reasonably established by GMCR from time to time (the “ Roasting Standards ”), and all applicable quality standards and compliance with law and regulation provisions set forth in this Agreement. GMCR shall have the right to reject any Secondary Vender selected by Tully’s to roast or, as applicable, package coffee beans if GMCR reasonably determines that such vender does not have the financial capacity, proper facilities, expertise or experience to perform all of the functions required to deliver packaged roasted coffee beans and ground coffee to the Roasting Standards. Prior to Tully’s commercial sale of any Licensed Products supplied by a Secondary Vender under this Agreement and the License Agreement, samples of such products and any applicable packaging shall be sent to GMCR, and GMCR shall have the right to reasonably reject any product or packaging that fails to meet GMCR’s quality standards.

(b) Prior to becoming a Secondary Vendor, any prospective Secondary Vendor must agree that from time to time, but, absent evidence of a default in meeting GMCR’s quality standards, not m


 
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