Exhibit 10.4
BEHRINGER HARVARD HOLDINGS
SERVICE MARK LICENSE AGREEMENT
THIS SERVICE MARK LICENSE AGREEMENT
(this “ Agreement ”) is made and entered into
this 2nd day of September, 2008, (the “ Effective Date
”), by and between BEHRINGER HARVARD HOLDINGS, LLC, a
Delaware limited liability company (the “ Licensor
”), and BEHRINGER HARVARD MULTIFAMILY REIT I, INC., a
Maryland corporation (the “ Licensee
”).
RECITALS
WHEREAS , Licensor is the owner of valid and subsisting
rights in and to the service marks “BEHRINGER HARVARD”
(U.S. Registration No. 2,947,624); and the “BEHRINGER
HARVARD MISCELLANEOUS CIRCULAR DESIGN LOGO” (U.S.
Registration No. 3,200,214) (referred to herein collectively
as the “ Licensed Mark ”) and similar marks in a
variety of design and words-only formats, both in the United States
and in various foreign jursidictions; and
WHEREAS , of even date herewith, Behringer Harvard
Multifamily Advisors I LP, a Texas limited partnership and an
affiliate of Licensor (the “ Advisor ”), and
Licensee have entered into an Advisory Management Agreement,
pursuant to the terms of which Advisor will provide certain
management and financial advisory services to Licensee in
accordance with the terms and conditions thereof (the “
Advisory Agreement ”); and
WHEREAS , Licensor is a “sponsor” of
Licensee, as that term is defined in the charter of Licensee;
and
WHEREAS, for so long as Licensor desires to sponsor
Licensee, Licensor desires to permit Licensee to utilize the
Licensed Mark solely in connection with the operation and promotion
of Licensee’s real estate business as intended to be
conducted as of the Effective Date (the “ REIT
Operations ”).
NOW, THEREFORE
, in consideration of the mutual
covenants and promises contained in this Agreement, the Advisory
Agreement and other good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged and accepted by
the parties to this Agreement, Licensor and Licensee mutually agree
as follows:
AGREEMENTS
1.
Grant of License;
Territory.
a.
Upon the terms and conditions
hereinafter set forth, Licensor hereby grants to Licensee, for the
period specified in Section 5 hereof, a non-exclusive,
royalty-free, limited and nontransferable license to use the
Licensed Mark solely for the purpose of identifying and promoting
the REIT Operations worldwide. In addition, each person or
entity directly or indirectly controlled by Licensee on or after
the Effective Date, either through the ownership of voting
securities or otherwise (each such person or entity a “
Licensee Subsidiary ”), shall have all of the rights
granted to Licensee in this Section 1(a), but only during such
period that such person or entity is directly or indirectly
controlled by Licensee, either through the ownership of voting
securities or otherwise. Any reference in this Agreement to
use of the Licensed Mark by or other actions of Licensee shall be
deemed to include use of the Licensed Mark by or other actions of
any Licensee Subsidiary during such period that such Licensee
Subsidiary is directly or indirectly controlled by Licensee, either
through the ownership of voting securities or otherwise.
b.
Licensor expressly reserves all
rights with respect to the Licensed Mark not expressly granted
herein. Except as provided in Section 1(a) with
respect to a Licensee Subsidiary, Licensee shall have no right to
sublicense the use of the Licensed Mark to any other person or
entity without the prior written consent of Licensor, which may be
withheld or granted in Licensor’s sole and absolute
discretion.
2.
Acknowledgement of
Ownership.
a.
Licensee acknowledges the great
value of the goodwill associated with the Licensed Mark and the
ownership of the Licensed Mark by Licensor. Licensee agrees
that nothing in this Agreement shall give Licensee any right,
title, or interest in or to the Licensed Mark other than the rights
granted the Licensee in accordance with this Agreement.
Licensee further acknowledges that all goodwill arising from the
ownership and use of the Licensed Mark (as distinguished from any
enhancement of value to Licensee’s business arising from the
license granted hereunder) shall inure exclusively to the benefit
of Licensor. All artwork, designs, stylized logotypes or
other presentation materials whatsoever including the Licensed Mark
or any elements thereof, and all copies and extracts thereof shall,
notwithstanding their invention or use by Licensee, be and remain
the sole property of Licensor. Nothing in this Agreement
shall be construed to prevent Licensor from granting any other
licenses for the use of the Licensed Mark or from utilizing the
Licensed Mark, or any variation thereof, in any manner
whatsoever.
b.
Licensee agrees that it shall not
attack the title of Licensor to the Licensed Mark, the validity of
the Licensed Mark, or the validity of this Agreement.
Licensee further agrees that it shall not at any time commence any
opposition or cancellation proceeding regarding the Licensed Mark,
or any other mark of Licensor, with the U.S. Patent and Trademark
Office or any other agency that registers trademarks, commence any
civil proceeding for damages or injunctive relief or make any other
legal claim that would, directly or indirectly, hinder the value of
or the Licensor’s ownership or use of the Licensed Mark or
prevent the U.S. Patent and Trademark Office or any other agency
that registers trademarks from issuing a trademark registration to
Licensor for the Licensed Mark, or any variations thereof, or from
renewing any trademark registration for the Licensed Mark, or any
variations thereof.
c.
Licensee shall not register or
attempt to register the Licensed Mark alone or as part of its own
trademark, service mark, Internet domain name, copyright, assumed
name or trade name (except as may be otherwise required by
applicable law in connection with Licensee’s REIT Operations
during the term of this Agreement), nor shall Licensee use in such
manner or attempt to register any name or designation confusingly
similar to the Licensed Mark as determined in Licensor’s sole
and absolute discretion.
d.
Licensee may not use the Licensed
Mark in any manner to disparage Licensor, its products or services,
or in any manner which, in Licensor’s reasonable judgment,
may diminish or otherwise damage Licensor’s goodwill in the
Licensed Mark or Licensor’s business reputation.
e.
The provisions of this
Section 2 shall survive the expiration or termination of this
Agreement for any reason.
3.
Quality Control.
a.
Licensee shall use the Licensed Mark
solely as permitted in Section 1(a) above in a manner
that will reasonably protect Licensor’s rights and goodwill
therein, and will comply with all reasonable and customary
trademark usage guidelines delivered to Licensee by Licensor from
time to time, including those regarding the use of notices,
legends, or markings that may be required by Licensor in order to
give customary notice of ownership, including those provided in
Section 4 hereof.
2
b.
Licensee shall, upon
Licensor’s reasonable request: (i) permit Licensor to
inspect the manner in which the Licensee exercises the rights
granted hereunder to use the Licensed Mark, and (ii) make
available for Licensor’s inspection, at reasonable times and
after reasonable notice from Licensor, all of Licensee’s
materials relating to or displaying the Licensed Mark or any
elements thereof.
c.
Licensee agrees that the products
and/or services offered in connection with the Licensed Mark shall
be sold and/or distributed in accordance with all Federal, State
and local laws.
d.
If at any time the Licensee’s
promotional materials, documents or signage bearing the Licensed
Mark do not meet the quality standards described in this
Section 3, Licensor shall have the right to require the
Licensee to discontinue any and all such nonconforming uses of the
Licensed Mark immediately upon notice whereupon Licensee agrees to
use its best efforts to cease all such nonconforming uses
immediately.
4.
Protection of Licensed
Mark.
a.
Each time the Licensed Mark is used
on any product, document, signage, exterior display or other
printed or tangible material or on the Internet, Licensee shall
legibly include either the trademark or service mark notice
“TM” or “SM”, as appropriate, or the
Federal registration notice ®, if directed to do so by
Licensor, adjacent to the first prominent use of the Licensed Mark
therein or thereon.
b.
When directed by Licensor to do so,
Licensee shall include the following notice on any packaging,
product, advertising, or promotional materials incorporating the
Licensed Mark presented in any medium now known or hereafter
created:
“BEHRINGER
HARVARD” is a
service mark of Behringer Harvard Holdings, LLC.
c.
Licensee agrees to provide Licensor
with such assistance as Licensor may reasonably require, at
Licensor’s expense, in the procurement of any protection of
Licensor’s rights to the Licensed Mark, or any similar
mark.
d.
Licensee agrees that at all times
during the term of this Agreement it will diligently and
continuously cause to be promoted and rendered the REIT Operations
as set forth in Section 1 hereof. Licensor shall not be
under any obligation whatsoever to utilize the Licensed Mark or any
variation thereof.
5.
Term.
This Agreement shall continue in
force and effect from the Effective Date and shall be coterminous
with the Licensor’s sponsorship of Licensee, unless
terminated earlier as provided for herein. For purposes of
the p
