|
Exhibit
10.36
EXECUTION VERSION
KINDRED TRADEMARK
LICENSE AGREEMENT
This TRADEMARK LICENSE
AGREEMENT (“ Agreement ”), entered into this
31st day of July, 2007 (the “ Effective Date ”),
is by and between Kindred Healthcare, Inc., a Delaware corporation
located at 680 South 4th Street, Louisville, KY 40202
(“Kindred”), and Kindred Pharmacy Services, Inc., a
Delaware corporation located at 1901 Campus Place , Louisville, KY
40299 (“KPS”).
BACKGROUND
A. Kindred is the owner of
the valuable trademarks, service marks, trade names, trade dress,
designs, characters, logos, and internet domain names, as more
particularly described on Exhibit A, attached hereto as may be
modified, amended or supplemented from time to time through the
prior written agreement signed by the parties (collectively, the
“Trademarks”);
B. Kindred desires to utilize
the substantial goodwill to maintain and develop opportunities
through the licensing of the Trademarks together with any and all
related advertising and promotional activities associated
therewith;
C. KPS desires to use the
Trademarks described on Exhibit A together with any and all related
advertising and promotional activities associated therewith;
and
D. Because of the need to
protect, promote and enhance the goodwill, image and reputation of
the Trademarks, Kindred is willing to grant KPS such rights only in
accordance with the terms and conditions contained in this
Agreement.
NOW THEREFORE , in
consideration of the promises and mutual covenants contained in
this Agreement, and for other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the
parties agree as follows:
| |
1.1 |
Grant of License . (a) Kindred hereby grants to KPS
a non-exclusive, revocable (in accordance with Section 10)
license to use the Trademarks within the United States. KPS shall
at all times fulfill each of the obligations set forth in this
Agreement. The rights granted in this Agreement are sometimes
referred to herein as the “License.” All rights not
expressly granted in this Agreement to KPS are reserved by
Kindred. |
| |
1.2 |
Transfer of License . KPS shall have no right to
transfer, assign, or sublicense the License granted in Paragraph
1.1 without the express, prior written consent of Kindred, which
shall not be unreasonably withheld. This Agreement shall inure to
the benefit of the permitted successors, assigns and sublicensees
of KPS and the successors, assigns, and sublicensees of Kindred.
For the purposes of this Paragraph 1.2, a change in control shall
not constitute an assignment. |
1
EXECUTION VERSION
| |
1.3 |
Limitations on Grant . Without expanding the foregoing,
the License is limited by the following: |
| |
1.3.1 |
The License shall not be deemed to restrict or prohibit in any
way Kindred’s right to use its Trademarks for its own
marketing, advertising, promotion or other purposes which may
include the use of Kindred’s Trademarks by Kindred, its
affiliates, agents, distributors, or customers for operations for
services similar or identical. |
| |
1.4 |
Modifications of the Trademarks . KPS acknowledges that,
from time to time and without notice to KPS, it may be necessary or
desirable for Kindred to modify certain elements of the Trademarks,
to add elements to the Trademarks, or to discontinue use of some or
all of the elements. Accordingly, Kindred does not represent or
warrant that the Trademarks or any of their elements will be
maintained or used in any particular fashion. At Kindred’s
option, any such new elements or modifications to existing elements
occurring after the Effective Date may be included in the
Trademarks. Upon receipt of notice from Kindred of such
modification or discontinuance of any of the Trademarks, KPS shall
cease use of all discontinued and unmodified Trademarks and replace
them (as applicable) with the modified versions. Any modification
of any Trademark or reduction in the number of licensed Trademarks
shall have no effect on Paragraph 2 below. KPS acknowledges that
Kindred is not obligated to provide it with a license for any
trademarks that do not appear on Exhibit A currently or as may be
modified in accordance with this Agreement. |
| 2. |
Compensation . In consideration of the rights granted
herein, KPS shall pay to Kindred a license fee in the amount of one
thousand dollars ($1,000), the sufficiency of which is hereby
acknowledged. |
| |
3.1 |
Use of the Trademarks . The License granted hereunder is
merely permissive; KPS has the right, but not the duty or
obligation, to use any of the Trademarks in commerce. Provided
however, that should KPS use any such Trademarks, in order to
protect Kindred’s rights in the Trademarks, KPS shall meet
the Quality Standards, as defined below, and shall do so in a
manner which is consistent with Kindred’s then current
marketing practices and objectives for the promotion. Except as set
forth in Section 9, KPS shall bear all costs in connection
with such activities, including but not limited to market research,
advertising, product development, and any costs incurred relating
to all advertising and promotional materials. |
| |
3.2 |
Legal Clearance . It shall be the sole obligation of KPS
to ensure that the marketing and promotion with respect to the
Trademarks comply with all applicable laws, rules and
regulations. |
2
EXECUTION VERSION
| |
4.1 |
Standard of Quality . To protect, promote, and enhance
the image, goodwill, and reputation of the Trademarks, KPS shall
meet or exceed the following standards (collectively, the
“Quality Standards”): |
| |
4.1.1 |
KPS must conform to the commercially reasonable quality
standards approved by Kindred, who reserves the right to modify
such quality standards from time to time by giving written notice
to KPS; |
| |
4.1.2 |
KPS must comply fully with all applicable laws and regulations
and the intellectual property notice requirements identified in
Paragraph 5; and |
| |
4.1.3 |
KPS must produce goods and/or provide services that have such
style, appearance, and quality as to be adequate and well suited
for exploitation in accordance with the purposes of this Agreement
and in no way reflect adversely upon the image, goodwill, and
reputation of Kindred or the Trademarks. |
| |
4.2 |
Determinations . Determinations as to whether any item
or activity meets the Quality Standards shall be made solely by
Kindred in the exercise of its reasonable discretion. |
| |
4.3 |
Right of Approval . Kindred shall have the right to
review and approve any advertisements, promotional materials, or
other items created under the Trademarks, which approval shall not
be unreasonably withheld. |
| |
4.4 |
Right of Inspection . Kindred has the right to inspect
KPS’s premises at any location in which KPS uses the
Trademarks to ensure compliance with the Quality Standards upon 3
business days’ prior written notice. If KPS fails to meet the
Quality Standards at any time, then Kindred shall not thereafter be
required to provide notice prior to an inspection. |
| |
4.5 |
Failure to Meet Quality Standards . If KPS fails to meet
the Quality Standards or fails to maintain the Quality Standards
throughout the Term, then, upon receipt of written notice from
Kindred, KPS shall have 60 days in which to cure the deficiency, or
to satisfy Kindred that reasonable steps to do so have been and are
being taken to cure the deficiency within a period of time
acceptable to Kindred (in either case, the “Notice
Period”). If at the end of the Notice Period such deficiency
still exists, as reasonably determined by Kindred, then KPS shall
immediately discontinue any portion of use which Kindred has
specified and in connection with which the Quality Standards have
not been met. |
| |
5.1 |
Intellectual Property Notices . All marketing or
advertising material on which any of the Trademarks appear shall
contain such legends, markings, and/or notices as |
3
EXECUTION VERSION
are reasonably required from
time to time by Kindred and as described on Exhibit A. Such
legends, markings and/or notices must be clearly visible and
unaltered in any way.
| |
5.2 |
No Other Markings or Legends . Without first obtaining
Kindred’s prior written approval, KPS shall use no other
markings, legends, and/or notices in connection with the use of the
Trademarks other than as specified above, and such other markings,
legends, and/or notices as may from time to time be specified by
Kindred. |
| 6. |
Ownership and Control of the Trademarks . |
| |
6.1 |
Exclusive Property of Kindred . With respect to the
Trademarks, including all related rights and goodwill, which shall
inure solely to Kindred’s benefit, KPS acknowledges and
agrees that: |
| |
6.1.1 |
The Trademarks are Kindred’s exclusive property and are
distinctive or have acquired distinctiveness; |
| |
6.1.2 |
KPS shall not acquire rights or any other interest therein
without Kindred’s prior written consent; |
| |
6.1.3 |
KPS shall not challenge, attack, or contest the ownership or
validity of Kindred’s rights in the Trademarks or its
respective applications or registrations; |
| |
6.1.4 |
KPS shall not apply for, or be the assignee of, any trademark
protection which would affect any of Kindred’s rights in the
Trademarks, or file any document with any governmental authority,
or take any other action which could affect Kindred’s
ownership of the Trademarks, or aid or abet anyone else in doing
so; |
| |
6.1.5 |
KPS shall not commit any act or engage in any conduct which
adversely affects the Trademarks or any other trademarks, logos, or
copyrighted material of Kindred that relate to the Trademarks;
and |
| |
6.1.6 |
This Agreement shall in no way be construed as an assignment to
KPS of any right, title, and/or interest in and to the
Trademarks. |
| |
6.2 |
Registration by Kindred . Kindred has the exclusive
right, but not the obligation, to obtain at its own cost,
appropriate trademark protection for the Trademarks or any portion
thereof whether or not inside the United States. |
| |
6.3 |
Compliance with Trademark Laws . The License granted
under this Agreement is conditioned upon KPS’s full and
complete compliance with the provisions of the trademark and other
applicable laws, rules and regulations of the United
States, |
4
EXECUTION VERSION
the Commonwealth of Kentucky,
and any other federal, state, or local governmental authority
within the United States.
| |
6.4 |
Use of Similar Marks and Works . If KPS has obtained or
obtains, in any country, any right, title, or interest (including
the filing of any application for registration or the issuance of
any registration) in any of the following: 1) mark which is
confusingly similar to, or a translation and/or transliteration of,
any of the Trademarks; or 2) print, pattern, design, or
“work” as defined under the U.S. Copyright Act, which
is substantially similar to, or a derivative version of, any of the
Trademarks (collectively, “Related Marks &
Works”), KPS shall so notify Kindred and agrees that it has
acted or will act on and for Kindred’s behalf. KPS further
agrees to execute any and all instruments deemed by Kindred, its
attorneys, or representatives to be reasonably necessary to
transfer all of KPS’s right, title, or interest in the
Related Marks & Works to Kindred. Related Marks &
Works shall be considered included in the defined term
“Trademarks” for all purposes. |
| |
7.1 |
Control of Action . If a third party asserts that the
Trademarks or the License (collectively, the “Rights”)
infringe upon such third party’s rights, Kindred shall take
such action as is necessary to protect and validate the Rights
including, without limitation, arbitration, mediation, litigation,
or settlement. If a third party is infringing or threatens to
infringe the Rights, as determined by Kindred, Kindred may also
take such action(s). If Kindred pursues any action, Kindred shall
pay all costs and expenses, including attorneys’ fees,
incurred in connection therewith and Kindred shall be entitled to
receive and retain all amounts awarded as damages, profits, or
otherwise in connection with such suits. |
| |
7.2 |
Notice of Infringement . KPS shall promptly inform
Kindred of any known actual or threatened infringement of the
Trademarks. |
| |
7.3 |
Cooperation . KPS agrees to assist Kindred, at its own
expense, to the extent necessary to allow Kindred to accomplish its
objectives under this Paragraph. The parties may, with the consent
of the other party, prosecute such infringement in their own name,
in the name of Kindred or KPS, or may join the other party as a
party thereto. |
| 8. |
Representations and Warranties |
| |
8.1 |
Kindred’s Representations and Warranties . Kindred
represents and warrants to KPS that: |
| |
8.1.1 |
Kindred has the full right, power, and authority to enter into
and perform this Agreement. Kindred is not a party to any agreement
or understanding which would conflict with this
Agreement. |
5
EXECUTION VERSION
| |
8.2 |
KPS’s Representations and Warranties . KPS
represents and warrants to Kindred that: |
| |
8.2.1 |
KPS has the full right, power, and authority to enter into and
perform this Agreement. KPS is not a party to any agreement
or |
|
