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EXHIBIT
10.37
TRADEMARK LICENSE
AGREEMENT
This Trademark
License Agreement (“Agreement”), entered into and
effective as of the latest date indicated in the signature block at
the foot of this Agreement (the “Effective Date”), is
by and between SALUMEDICA, LLC, a Georgia Limited Liability Company
with offices located at 112 Krog Street, Suite 4, Atlanta, Georgia
30307 (“SaluMedica” or the “Licensor”); and
SpineMedica Corp., a Florida Corporation with offices located at
1234 Airport Road, Suite 105 Destin, Florida 32541
(“SpineMedica” or the
“Licensee”).
BACKGROUND
WHEREAS SaluMedica
is the owner of certain intellectual property rights;
and
WHEREAS SpineMedica
is desirous obtaining and commercializing these intellectual
property rights under the terms set forth below.
NOW THEREFORE, in
consideration of ten dollars ($10) in hand paid, the execution and
delivery on the date hereof that certain Technology License
Agreement between the parties (the “Technology
License”), and the promised performance by each of the
parties of the terms set forth herein, the parties hereto,
intending to be legally bound, mutually agree as
follows:
TERMS OF
AGREEMENT
I. Grant of
License
1.1 SaluMedica
hereby grants SpineMedica an exclusive, royalty free, fully paid,
worldwide, perpetual (except as provided herein license
(“License”) to use the trademark(s) and associated
trademark registration(s) listed in Exhibit “A” (the
“Trademark Portfolio”) in connection with neurological
and orthopedic uses, including muscular and skeletal uses, related
to the rotator cuff and the hand (excluding the wrist) (the
“Licensed Field of Use”).
1.2 SaluMedica may
terminate this Agreement if SpineMedica is in material breach of
this Agreement and has not cured the breach within sixty
(60) days written notice of such breach, and the Agreement
will alternatively terminate upon the occurrence of the first of
the following events:
(a) SpineMedica may
terminate this Agreement with thirty (30) days written
notice;
(b) SaluMedica may
terminate this Agreement with thirty (30) days written notice
if it terminates the Technology License.
(c) this Agreement
will automatically terminate if SpineMedica files for bankruptcy
protection, and in this event SaluMedica may, at its own
discretion, elect to assume or cancel any sublicenses that
SpineMedica has granted under this Agreement;
(d) this Agreement
will automatically terminate, on an asset-by-asset basis, if
SpineMedica abandons use of any asset in the Trademark Portfolio.
In the event that
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SpineMedica elects to
affirmatively abandon use of any asset in the Trademark Portfolio,
it will promptly provide SaluMedica with written notice of this
decision.
1.3 SpineMedica 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 SaluMedica
and SpineMedica the same rights of trademark protection, as those
stated in Article III of this Agreement. SpineMedica will promptly
provide SaluMedica with written notice of any such
sublicense.
1.4 SaluMedica may
not use, assign or otherwise transfer any rights to the Trademark
Portfolio within the Licensed Field of Use.
1.5 SaluMedica may
assume or collateralize this Agreement, in whole or in part, and
will promptly provide SpineMedica with written notice of any such
agreement.
1.6 SpineMedica may
assume or collateralize this Agreement, in whole or in part, and
will promptly provide SaluMedica with written notice of any such
agreement.
1.7 In the event
that SaluMedica elects to abandon any assets in the Trademark
Portfolio, then SpineMedica may elect to receive an assignment of
that asset, subject to any sublicenses that SaluMedica has granted
to third parties in that asset, at no cost to
SpineMedica.
1.8 In the event
that SaluMedica files for bankruptcy protection, then SpineMedica
may elect to receive an assignment of the Trademark Portfolio,
subject to any sublicenses that SaluMedica has granted to third
parties in the Trademark Portfolio, at no cost to
SpineMedica.
II.
Payment
2.1 The License
granted to SpineMedica in this Agreement is fully paid and may not
be rescinded.
III. Protection Of
Trademark Rights
3.1 SaluMedica 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 SpineMedica
will promptly notify SaluMedica if it becomes aware of any entity
that is apparently infringing an asset in the Trademark
Portfolio.
3.3 SaluMedica will
promptly notify SpineMedica 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.
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3.5 SaluMedica 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 SaluMedica 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 that SaluMedica has
granted to third parties, SpineMedica may elect to enforce such
right in its own name and at its sole cost for past, presently
occurring, and future infringements and retain any and all proceeds
and other benefits resulting from such enforcement. In the event
that SpineMedica elects to enforce trademark rights under this
paragraph, then SaluMedica will assign the subject trademark(s) and
trademark registration(s) to SpineMedica subject to an exclusive
license (subject to any sublicenses to third parties that
SaluMedica may have granted) back to SaluMedica for use of the
Trademark Portfolio outside the Licensed Field of Use.
3.8 SpineMedica
will have the first right to elect to enforce or defend the assets
in the Trademark Portfolio within the Licensed Field of Use at its
sole cost and retain any and all proceeds and other benefits
resulting from such enforcement.
3.9 In the event
that SpineMedica determines that it will not enforce or defend any
right in the Trademark Portfolio within the Licensed Field of Use
after receiving sixty (60) days written notice of an apparent
infringement within the Licensed Field of Use, then SaluMedica may
elect to enforce such right in its own name and at its sole cost
for past, presently occurring, and future infringements and retain
any and all proceeds and
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