KINDRED TRADEMARK LICENSE AGREEMENTTrademark Concurrent Use Agreement |
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PHARMERICA CORP | Kindred Healthcare, Inc | Kindred Pharmacy Services, Inc. RealDealDocs™ contains millions of easily searchable legal documents and clauses from top law firms. Search for free - click here. |
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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. | Grant of Rights . |
| 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. |
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| 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. | Exploitation by KPS . |
| 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. |
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| 4. | Quality Standards . |
| 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. | Product Notices . |
| 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 |
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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, |
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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. | Infringement |
| 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. |
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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 |
