Exhibit 10.12
TRANSITIONAL TRADEMARK LICENSE
AGREEMENT
This
Transitional Trademark License Agreement (this “ Trademark
Agreement ”) is made and entered into as of this 23 day
of March 2006, by and between General Motors Acceptance
Corporation, a Delaware corporation (“ Parent
”), and GMAC Commercial Holding Corp., a Nevada corporation
(the “ Company ”). Parent and Company are
referred to herein, collectively, as the “ Parties
” and, individually, as a “ Party
.”
RECITALS
WHEREAS, Parent,
GMAC Mortgage Group, Inc., a Michigan corporation (“
Seller ”), Company and GMACCH Investor LLC, a Delaware
limited liability company (“ Investo r”), have
entered into that certain Amended and Restated Stock Purchase
Agreement dated August 2, 2005, as amended (the “ Stock
Purchase Agreement ”) pursuant to which Seller has agreed
to sell and Investor has agreed to purchase 780 shares of common
stock, par value $.01 per share, of the Company (“ Common
Stock ”), representing 78% of the issued and outstanding
shares of Common Stock; and
WHEREAS, in the
context of such sale, Parent desires to grant to Company, and
Company desires to accept, a limited license to use certain of
Parent’s trademarks, service marks, trade dress, trade names,
company names, logos, slogans and domain names solely in a certain
specified field of use.
NOW, THEREFORE, in
consideration of the foregoing and the covenants contained in this
Trademark Agreement, and for other good and valuable consideration,
the receipt and sufficiency of which are hereby acknowledged, the
Parties hereto agree as follows.
1.
DEFINITIONS AND ORDER OF PRECEDENCE.
1.1.
Definitions . The following terms, when used herein with
initial capital letters, shall have the respective meaning set
forth in this Article 1. The singular includes the plural and vice
versa. Words or phrases, including, without limitation, initially
capitalized terms, used in this Trademark Agreement and not
otherwise defined herein shall have the respective meanings
assigned to them in the Stock Purchase Agreement.
a.
“ Brand Standards ” shall mean the brand
standards of Parent published at www.gmacbrand.com , as
amended from time to time.
b.
“ Claims ” shall mean commenced or threatened
third party claims, demands, causes of action, suits or similar
proceedings by a third party against a Party.
c.
“ Field of Use ” shall mean Commercial Capital
Business.
d.
“ GM ” shall mean General Motors
Corporation.
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e.
“ Marks ” shall mean the trademarks, service
marks, trade dress, trade names, company names, logos, slogans and
domain names of Parent that Company was using as of the Closing
Date.
f.
“ Party ” or “ Parties ”
shall have the meaning ascribed to such term in the preamble.
g.
“ Term ” shall mean the term of this Trademark
Agreement commencing on the Closing Date and continuing for a
period of eighteen (18) months from the Closing Date, unless
terminated pursuant to the termination provisions of Section 5.1
hereof and except and to the extent this Trademark Agreement
continues pursuant to Section 2.2 hereof.
1.2.
Order of Precedence . In the case of ambiguity or conflict
between or among the terms and conditions of this Trademark
Agreement and the terms and conditions of the Stock Purchase
Agreement, the terms and conditions of this Trademark Agreement
shall control with respect to the use of the Marks.
2.
LICENSE.
2.1.
Cessation of Use . Except as provided in Sections 2.2, 2.3
and 5.4, Company shall cease using the Marks no later than the
expiration or termination of the Term of this Trademark
Agreement.
2.2.
License Grant . Subject to the terms and conditions of this
Trademark Agreement, Parent grants to Company, a limited,
worldwide, royalty-free, non-exclusive, non-transferable and
non-assignable license (without the right to sublicense) to use the
Marks solely (i) in the ordinary course of its business, (ii) in a
manner which is consistent with the manner in which the Company
uses the Marks as of the Closing Date, except as provided in this
Trademark Agreement, (iii) in the Field of Use, and (iv) during the
Term hereof. Company may allow the other GMACCH Companies to use
the Marks in the same manner Company itself may use the Marks.
Notwithstanding the foregoing or any other provision to the
contrary, Company may continue to use the Marks to the extent
required by applicable Law or as may be needed to comply with legal
or contractual obligations until the third anniversary of the
Closing Date.
2.3.
Company May Reference its Former Name . Until the third
anniversary of the Closing Date, each of Company and the other
GMACCH Companies may state in its signage, print materials
(including any letterhead, stationary and business cards),
promotional materials, point of sale materials or advertising copy
that it was formerly known as “GMAC Commercial Holding
Corp.” or, as applicable, such GMACCH Company’s name as
was used immediately prior to the Closing Date; provided, however,
that each of the Company and the other GMACCH Companies may
continue to make such statements as set
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forth in this Section
2.3 as necessary to comply with applicable Law and as any third
party would have the right to make such statements.
2.4.
No Other Rights . Any rights not expressly granted to
Company under this Trademark Agreement are reserved by Parent.
Company shall have no power or right to, and shall not, sell,
assign, sublicense or otherwise transfer this Trademark Agreement
or the license granted hereunder, to any third party, except as
provided in Section 2.2. In using the Marks pursuant to this
Trademark Agreement, Company shall in no way represent that it has
any right, title or interest in the Marks other than those
expressly granted under the terms and conditions of this Trademark
Agreement.
2.5.
Extension of Company’s Obligations . Company shall be
responsible for any breach of, or failure to comply with, the
provisions of this Trademark Agreement by any other GMACCH Company
and Company’s and each other GMACCH Company’s officers,
employees, and other non-traditional employees and independent
contractors acting under and consistent with the instruction of
Company or other GMACCH Companies.
3.
OWNERSHIP AND PROTECTION OF THE MARKS.
3.1.
Parent’s Ownership . Company acknowledges and agrees
that the (i) Company shall not, directly or indirectly, contest or
challenge Parent’s sole and exclusive ownership of all right,
title and interest in and to the Marks or the validity thereof,
including, without limitation, the goodwill associated therewith,
and (ii) all goodwill arising from the use of the Marks shall inure
solely to the benefit of Parent and its Affiliates. Except for the
right to use the Marks in accordance with this Trademark Agreement,
Company shall acquire no right, title or interest in (or adopt,
use, register or apply for registrations anywhere for) the Marks
(or any translations, variations, adaptations, derivations or
combinations of the foregoing) or marks confusingly similar thereto
as a result of exercise of any rights under this Trademark
Agreement.
3.2.
Notice of Infringement . Company shall give Parent prompt
written notice of any actual or threatened infringement of the
Marks by any third party after Company has actual knowledge of such
infringement or threatened infringement.
3.3.
Notice of Regulatory Action . Company shall promptly notify
Parent if Company receives, or if Company becomes aware that, a
citation has been issued or investigation commenced by any
regulatory agency (federal, state or local) for violation of any
Law that may have a reasonable likelihood of having a material
adverse effect on Parent or its Affiliates or materially damage the
goodwill associated with the Marks.
3.4. Protection of
Rights in Marks . Company shall provide Parent with all
commercially reasonable cooperation to assist Parent in protecting
any of
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Parent’s rights
in the Marks affected by, or related to, Company’s use of the
Marks under this Trademark Agreement. Company shall not commence or
prosecute any registrations, claims or suits in its own name or in
the name of Parent.
4.
QUALITY CONTROL AND USE OF MARKS.
4.1.
Quality Control . All services provided in connection with
the Marks shall meet or exceed the level of quality of such
services as maintained by Parent in keeping with the reputation and
goodwill associated with the Marks as of the Closing Date. Company
may not materially vary such quality standards or any of the
services offered in connection with the Marks without the prior
written consent of Parent. Parent acknowledges that as of the
Closing Date, Parent is familiar with the Company’s services,
and the quality standards thereof, and the services of the
Commercial Capital Business, and the quality standards thereof,
prior to the Closing Date met or exceeded the foregoing
standard.
4.2.
Use of Marks . Company shall comply in all material respects
with the Brand Standards of Parent in its use of the Marks in
keeping with the reputation and goodwill associated with the Marks
as of the Closing Date. Parent acknowledges that as of the Closing
Date, Parent is familiar with the Company’s use of the Marks,
and t
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