EXHIBIT 10.3.4
PATENT AND TRADEMARK SECURITY
AGREEMENT
BY BSST IN FAVOR
OF
COMERICA BANK DATED AS OF
NOVEMBER 14, 2002
PATENT AND TRADEMARK SECURITY
AGREEMENT
PATENT AND TRADEMARK SECURITY
AGREEMENT, dated as of November 14, 2002, made by BSST LLC, a
Delaware limited liability company (the “Grantor”) in
favor of COMERICA BANK, a Michigan banking corporation (the
“Bank”).
WITNESSETH:
WHEREAS, Amerigon Incorporated
(“Borrower”) is a party to the Credit Agreement dated
as of the date hereof (the “Credit Agreement”) between
the Bank and Borrower;
WHEREAS, Grantor has guaranteed
certain obligations of Borrower to the Bank under a Guaranty dated
as of the date hereof (as amended or modified from time to time,
the “Guaranty”);
WHEREAS, the Grantor owns certain
Trademarks (as defined below) and Trademark Licenses (as defined
below) listed on Schedule I attached hereto;
WHEREAS, the Grantor owns certain
Patents (as defined below) and Patent Licenses (as defined below)
listed on Schedule II attached hereto;
WHEREAS, it is a condition precedent
to the obligation of the Bank to make credit advances to the
Borrower under the Credit Agreement that the Grantor shall have
executed and delivered this Agreement to the Bank;
NOW, THEREFORE, in consideration of
the premises and to induce the Bank to enter into the Credit
Agreement and to make advances to the Borrower thereunder and under
the Note (as defined below), the Grantor hereby agrees with the
Bank, as follows:
1. Defined Terms .
(a) Unless otherwise defined herein,
capitalized terms defined in the Credit Agreement are used herein
as defined therein. The following terms shall have the following
meanings:
“ Agreement ”:
this Patent and Trademark Security Agreement, as the same may be
amended, supplemented, waived or otherwise modified from time to
time.
“ BSST Patent and Trademark
Collateral ”: as defined in Section 2 of this
Agreement.
“ Code ”: the
Uniform Commercial Code as from time to time in effect in the State
of Michigan.
“ Event of Default
”: any default or event of default described in
Section 7 of the Credit Agreement and lapse of any applicable
grace and/or cure periods.
“ General Intangibles
” as defined in the Code, including, without limitation, all
Patents and Trademarks now or hereafter owned by the Grantor to the
extent such Patents and Trademarks would be included in General
Intangibles under the Code.
“ Lien ”: any
lien, security interest, pledge, encumbrance or other similar
charge, whether voluntary or involuntary and however
created.
“ Note ”: the
collective reference to the notes issued pursuant to the Credit
Agreement and any modifications, amendments, renewals or extensions
thereof.
“ Obligations ”:
all obligations and liabilities of the Grantor to the Bank, whether
direct or indirect, absolute or contingent, due or to become due,
or now existing or hereafter incurred, including, without
limitation, obligations and liabilities which may arise under, out
of, or in connection with, the Guaranty or any other document made,
delivered or given by Grantor to the Bank in connection therewith,
in each case whether on account of principal, interest,
reimbursement obligations, fees, indemnities, costs, expenses or
otherwise (including, without limitation, all reasonable fees and
disbursements of counsel to the Bank).
“ Patent License
”: all United States license agreements with any other person
in connection with any of the Patents or such other person’s
patents, whether the Grantor is a licensor or a licensee under any
such license agreement, including, without limitation, the license
agreements listed on Schedule II hereto and made a part hereof,
subject, in each case, to the terms of such license agreements and
the right to prepare for sale, sell and advertise for sale, all
inventory now or hereafter covered by such licenses.
“ Patents ”: all
United States patents, patent applications including, without
limitation, all patents and patent applications identified in
Schedule II attached hereto and made a part hereof, and including
without limitation (a) all inventions and improvements
described and claimed therein, (b) the right to sue or
otherwise recover for any and all past, present and future
infringements and misappropriations thereof, (c) all income,
royalties, damages and other payments now and hereafter due and/or
payable with respect thereto (including, without limitation,
payments under all licenses entered into in connection therewith,
and damages and payments for past or future infringements thereof),
and (d) all rights corresponding thereto in the United States
and all reissues, divisions, continuations, continuations-in-part,
substitutes, renewals,, and extensions thereof, all improvements
thereon, and all other rights of any kind whatsoever of the Grantor
accruing thereunder or pertaining thereto (Patents and Patent
Licenses being, collectively, the “Patent
Collateral”).
“ Trademark License
”: all United States license agreements with any other person
in connection with any of the Trademarks or such other
person’s names or trademarks, whether the Grantor is a
licensor or a licensee under any such license agreement, including,
without limitation, the license agreements listed on Schedule I
hereto and made a part hereof, subject, in each case, to the terms
of such license agreements, and the right to prepare for sale, sell
and advertise for sale, all inventory now or hereafter covered by
such licenses.
“ Trademarks ”:
all trademarks, service marks, trademark and service mark
registrations, and applications for trademark or service mark
registrations (except for “intent to use” applications
for trademark or service mark registrations filed pursuant to
Section 1(b) of the Lanham Act, unless and until an Amendment
to Allege Use or a Statement of Use under Sections 1(c) and 1(d) of
said Act has been filed), and any renewals thereof, including,
without limitation, each registration and application identified in
Schedule I attached hereto and made a part hereof, and including
without limitation (a) the right to sue or otherwise recover
for any and all past, present and future infringements and
misappropriations thereof, (b) all income, royalties, damages
and other payments now and hereafter due and/or payable with
respect thereto (including, without limitation, payments under all
licenses entered into in connection therewith, and damages and
payments for past or future infringements thereof) and (c) all
rights corresponding thereto in the United States and all other
rights of any kind whatsoever of the Grantor accruing thereunder or
pertaining thereto, together in each case with the goodwill of the
business connected with the use of, and symbolized by, each such
trademark, service mark, trade name, trade dress or other indicia
of trade origin (Trademarks and Trademark Licenses being,
collectively, the “ Trademark Collateral
”).
(b) The words “hereof,”
“herein” and “hereunder” and words of
similar import when used in this Agreement shall refer to this
Agreement as a whole and not to any particular provision of this
Agreement, and section and paragraph references are to this
Agreement unless otherwise specified.
(c) The meanings given to terms
defined herein shall be equally applicable to both the singular and
plural forms of such terms.
2. Grant of Security Interest . As
collateral security for the prompt and complete payment and
performance when due (whether at the stated maturity, by
acceleration or otherwise) of the Obligations, the Grantor hereby
assigns, pledges and grants to the Bank a security interest in all
of the following property now owned or at any time hereafter
acquired by the Grantor or in which the Grantor now has or at any
time in the future may acquire any right, title or interest
(collectively, the “ BSST Patent and Trademark
Collateral ”):
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(ii)
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all Trademark
Licenses;
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(iv)
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all Patent
Licenses;
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(v)
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all general
intangibles connected with the use of or symbolized by the
Trademarks and Patents; and
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(vi)
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to the extent
not otherwise included, all proceeds and products of any and all of
the foregoing;
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Notwithstanding anything herein to
the contrary, “BSST Patent and Trademark Collateral”
shall not include any general intangible that is the subject of a
written agreement which specifically prohibits assignment thereof
or grant of a security interest therein but only to the extent of
such prohibition, and only to the extent that the terms and
provisions of such written agreement, document or instrument
creating or evidencing such property or any rights relating thereto
expressly prohibit the granting of a security interest therein or
condition the granting of a security interest therein on the
consent of a third party whose consent has not been obtained or
would cause, or allow a third party to cause, forfeiture of such
property upon the granting of a security interest therein or a
breach under any written agreement relating thereto; provided,
however, that immediately upon the effectiveness, lapse or
termination of such provision, the BSST Patent and Trademark
Collateral shall include, and Grantor shall be deemed to have
granted a security interest in all such general intangibles as if
such term had never been in effect.
3. Grantor Remains Liable; Limitations on
Bank’s Obligations . Anything herein to the contrary
notwithstanding, (a) the Grantor shall remain liable under the
contracts and agreements included in the BSST Patent and Trademark
Collateral to the extent set forth therein to perform all of its
duties and obligations thereunder to the same extent as if this
Agreement had not been executed, (b) the exercise by the Bank
of any of the rights hereunder shall not release the Grantor from
any of its duties or obligations under the contracts and agreements
included in the BSST Patent and Trademark Collateral, and
(c) the Bank shall not have any obligation or liability under
the contracts and agreements included in the BSST Patent and
Trademark Collateral by reason of this Agreement, nor shall the
Bank be obligated to perform any of the obligations or duties of
the Grantor thereunder or to take any action to collect or enforce
any claim for payment assigned hereunder.
4. Representations and
Warranties . The Grantor represents and warrants as
follows:
(a) Title; No Other Liens .
Except for the Liens granted to the Bank and the Permitted Liens
under the Credit Agreement, the Grantor is (or, in the case of
after-acquired BSST Patent and Trademark Collateral, will be) the
sole, legal and beneficial owner of the entire right, title and
interest in and to the Trademarks set forth on Schedule I hereto
and the Patents set forth in Schedule II hereto free and clear of
any and all Liens. No security agreement, financing
statement or other public notice similar in
effect with respect to all or any part of the BSST Patent and
Trademark Collateral is on file or of record in any public office
(including, without limitation, the United States Patent and
Trademark Office) except such as may have been filed in favor of
the Bank pursuant to this Agreement and Permitted Liens.
(b) Perfected First Priority
Liens .
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(i)
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This Agreement
is effective to create, as collateral security for the Obligations,
valid and enforceable Liens on the BSST Patent and Trademark
Collateral in favor of the Bank, subject to Permitted
Liens.
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(ii)
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Upon filing of
the financing statements delivered to the Bank (and the recording
of this Agreement in the United States Patent and Trademark
Office), the Liens created pursuant to this Agreement will
constitute valid and perfected Liens on the BSST Patent and
Trademark Collateral in favor of the Bank, which Liens, subject to
Permitted Liens, will be prior to all other Liens on the BSST
Patent and Trademark Collateral, and which Liens are enforceable as
such against all creditors of and purchasers (except to the extent
that the recording of an assignment or other transfer of title to
the Bank in the United States Patent and Trademark Office may be
necessary for such enforceability) from the Grantor, except as such
enforcement may be limited by bankruptcy, insolvency,
reorganization, moratorium or similar laws affecting the
enforcement of creditors’ rights generally and by general
equitable principles (whether considered in a proceeding in equity
or at law).
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(c) Consents . Except as
disclosed in Schedule III attached hereto, no consent of any party
(other than such Grantor) to any Patent License or Trademark
License constituting BSST Patent and Trademark Collateral is
required, or purports to be required, to be obtained by or on
behalf of such Grantor in connection with the execution, delivery
and performance of this Agreement that has not been obtained. Each
Patent License and Trademark License constituting BSST Patent and
Trademark Collateral is in full force and effect and constitutes a
valid and legally enforceable obligation of the Grantor and (to the
knowledge of the Grantor) each other party thereto except as
enforceability may be limited by bankruptcy, insolvency,
reorganization, moratorium or similar laws affecting the
enforcement of creditor’s rights generally and by general
equitable principles (whether enforcement is sought by proceedings
in equity or at law). No consent or authorization of, filing with
or other act by or in respect of any governmental authority is
required in connection with the execution, delivery, performance,
validity or enforceability of any of the Patent Licenses or
Trademark Licenses by any party thereto other than those which have
been duly obtained, made or performed and are in full force and
effect. Neither the Grantor nor (to the knowledge of the Grantor)
any other party to any Patent License or Trademark License
constituting BSST Patent and Trademark Collateral is in default in
the performance or observance of any of the terms thereof, except
for such defaults as would not reasonably be expected, in the
aggregate, to have a material adverse effect on the value of the
BSST Patent and Trademark Collateral. The right, title and interest
of the Grantor in, to and under each Patent License and Trademark
License constituting BSST Patent and Trademark Collateral are not
subject to any material defense, offset, counterclaim or
claim.
(d) Schedules I and II are
Complete; All Filings Have Been Made . Set forth in Schedules I
and H is a complete and accurate list of the Trademarks and Patents
owned by the Grantor as of the date hereof. The Grantor has made
all necessary filings and recordations to protect and maintain its
interest in the Trademarks and Patents set forth in Schedules I and
II, including, without limitation, all necessary filings and
recordings, and payments of all maintenance fees, in the United
States Patent and Trademark Office to the extent such Trademarks
and Patents are material to the Grantor’s business. Set forth
in Schedules I and II is a complete and accurate list of all of the
material Trademark Licenses and Patent Licenses owned by the
Grantor as of the date hereof.
(e) The Trademarks and Trademark
Licenses are Subsisting and Not Adjudged Invalid . As of the
date hereof, each material trademark registration and trademark
application of the Grantor set forth in Schedule I is subsisting as
of the date hereof and has not been adjudged invalid,
unregisterable or unenforceable, in whole or in part, and, to the
best of the Grantor’s knowledge, is valid, registrable and
enforceable. As of the date hereof, each of the Trademark Licenses
set forth in Schedule I is validly subsisting and has not been
adjudged invalid or unenforceable, in whole or in part, and, to the
best of the Grantor’s knowledge, is valid and enforceable. As
of the date hereof, the Grantor has notified the Bank in writing of
all uses of any item of Trademark Collateral of which the Grantor
is aware which could reasonably be expected to lead to such item
becoming invalid or unenforceable, including unauthorized uses by
third parties and uses which were not supported by the goodwill of
the business connected with such BSST Patent and Trademark
Collateral.
(f) The Patent and Patent
Licenses are Subsisting and Not Adjudged Invalid . As of the
date hereof, each material Patent and patent application of the
Grantor set forth in Schedule II is subsisting and has not been
adjudged invalid, unpatentable or unenforceable, in whole or in
part, and, to the best of the Grantor’s knowledge, is valid,
patentable and enforceable. As of the date hereof, each of the
material Patent Licenses set forth in Schedule II is validly
subsisting and has not been adjudged invalid or unenforceable, in
whole or in part, and, to the best of the Grantor’s
knowledge, is valid and enforceable. As of the date hereof, the
Grantor has notified the Bank in writing of all uses of any item of
Patent Collateral material to the Grantor’s business of which
the Grantor is aware which could reasonably be expected to lead to
such item becoming invalid or unenforceable.
(g) No Previous Assignments or
Releases . Except as expressly permitted by the Credit
Agreement and such as may have been filed in favor of Bank relating
to this Agreement, no effective financing statement or other
instrument similar in effect covering all or any part of the BSST
Patent and Trademark Collateral is on file in any filing or
recording office.
(h) Proper Statutory Notice .
The Grantor has marked its products with the trademark registration
symbol the numbers of all appropriate patents, the common law
trademark symbol or the designation “patent pending,”
as the case may be, to the extent that it is reasonably and
commercially practicable, in all material respects.
(i) No Knowledge of Claims Likely
to Arise . After reasonably inquiry, Grantor is not aware of
any pending or threatened claim by any third party that any of the
Borrower Patent and Trademark Collateral owned, held or used by
such Grantor is invalid or unenforceable.
(j) No Knowledge of Existing or
Threatened Claims . No claim has been made and is continuing
or, to the best of the Grantor’s knowledge, threatened that
the use by the Grantor of any item of material BSST Patent and
Trademark Collateral is invalid or unenforceable or that the use by
the Grantor of any material BSST Patent and Trademark Collateral
does or may violate the rights of any person. To the best of the
Grantor’s knowledge, there is currently no infringement or
unauthorized use of any item of material BSST Patent and Trademark
Collateral contained on Schedules I and II.
5. Covenants . The Grantor covenants and
agrees with the Bank that, from and after the date of this
Agreement until the payment in full of the Obligations:
(a) Further Documentation; Pledge
of Instruments and Chattel Paper . At any time and from time to
time, upon the written request of the Bank or the Grantor, as the
case may be, and at the sole expense of the Grantor, the Grantor or
the Bank, as the case may be, will promptly and duly execute and
deliver such further instruments and documents and take such
further action as the Bank or the Grantor may reasonably request
for the purpose of obtaining or preserving the full benefits of
this Agreement and of the rights and powers herein granted,
including, without limitation, the filing of any financing or
continuation statements under the Code in effect in any
jurisdiction with respect to the Liens created hereby. The Grantor
also hereby authorizes the Bank to file any such financing or
continuation statement without the signature of the Gr