Exhibit 10.4
TRADEMARK CO-EXISTENCE AGREEMENT
This Trademark Co-Existence Agreement (this "Agreement") is made
and
entered into as of this ___________, 2005,
by and between Ronald M. Popeil, an
individual ("Popeil"), and Ronco Marketing
Corporation, a Delaware corporation
("RMC").
RECITALS
A.
Reference is hereby made to that certain Asset Purchase Agreement
(the
"Asset Purchase Agreement"), dated December
10, 2004, by and among Popeil, Ronco
Inventions, LLC, Popeil Inventions, Inc.,
RP Productions, Inc., RMP Family Trust
(collectively, the "Popeil Entities"), on
the one hand, and RMC, on the other
hand.
B. Pursuant to the Asset
Purchase Agreement, the Popeil Entities have
agreed to sell, transfer, convey, assign
and deliver certain assets to RMC,
including without limitation the
Intellectual Property (as defined in the Asset
Purchase Agreement), which includes all of
the Popeil Entities' right, title and
interest in and to the trademarks POPEIL
and RON POPEIL (collectively, the marks
POPEIL and RON POPEIL, together with the
name, approved likeness, approved
silhouette and voice of Popeil shall be
referred to herein as the "Marks").
C.
Pursuant to the Asset Purchase Agreement, the parties hereto
have
agreed that Popeil shall retain certain use
and approval rights in and to the
Marks for only specified purposes as set
forth herein.
D. Popeil
and RMC desire to assure worldwide peaceful co-existence of
their respective exclusive use rights in
and to the Marks in accordance with the
terms set forth herein.
AGREEMENT
In
consideration of the mutual covenants and undertakings set forth
in
this Agreement and for other good and
valuable consideration, the receipt and
sufficiency of which are hereby
acknowledged, the parties hereto hereby agree as
follows:
1. Consent
to Co-Exist.
(a) RMC hereby acknowledges and agrees that Popeil shall have
the
right to use and exploit the Retained
Rights (as defined below) in connection
with the Marks throughout the universe in
perpetuity, in accordance with the
terms and conditions set forth herein. RMC
shall not object to, oppose or
otherwise seek to limit in any way Popeil's
exercise of the Retained Rights; nor
shall RMC use or exploit the Retained
Rights in any manner.
(b) Popeil hereby acknowledges and agrees that, except as set
forth
herein with respect to Popeil's rights to
the Retained Rights and Popeil's
rights under paragraph 10 below, RMC shall
have the right to use and exploit the
Marks throughout the universe in perpetuity
in accordance with the terms and
conditions set forth herein. Except as
otherwise provided for herein, Popeil
shall not object to, oppose or otherwise
seek to limit in any way RMC's exercise
of its rights to the Marks.
<PAGE>
(c) Given the disparate channels of trade, different targeted
consumers, and dissimilar focus of the
parties' goods and services, the parties
have determined that their respective uses
of the Marks are not likely to cause
confusion, mistake, or deception as to the
source or sponsorship of each of the
parties' goods and services.
(d) The parties agree that in the event that any confusion
arises,
they will cooperate and find ways to
eliminate or minimize the confusion,
without the obligation for either party to
cease or further restrict their
respective uses of the Marks.
2. Term.
The term of this Agreement shall commence upon the Closing Date
(as such term is defined in the Asset
Purchase Agreement) and shall continue in
perpetuity.
3.
Retained Rights.
(a) Further to the Asset Purchase Agreement, Popeil shall retain
the
following worldwide royalty-free perpetual
exclusive rights in and to the Marks
(collectively, the "Retained Rights"):
(i) Popeil or his designees will have the right to use the
Marks and/or license the Marks to any third
party for use in connection with any
Exempted Works, as such term is defined in
the New Product Development
Agreement, and any products or works
derived or resulting from such Exempted
Works;
(ii) Popeil or his designees will have the right to use and
license the phrase "invented by Ron Popeil"
or "created by Ron Popeil" (each as
and only to the extent permitted under the
New Product Development Agreement);
(iii) Popeil or his designees will retain the right to use the
Marks in connection with, and to the extent
licensed pursuant to that certain
agreement between IGT and Popeil, dated
February 27, 2004;
(iv) Popeil shall have the right to use the Marks and/or to
license the Marks to any third party for
use (a) in any book or article
(collectively, any "Publication"), or any
motion picture, television or home
video production (collectively, any
"Production") featuring, about and/or
created by Ronald M. Popeil including,
without limitation, the motion picture
tentatively entitled "Salesman of the
Century" and any television program or
series (including, by way of example but
not limitation, any cooking show on
which Ronald M. Popeil appears and/or any
reality-based or fictional program or
series, but not including any home shopping
or infomercial-type program, the
principal purpose of which is to obtain and
fulfill sales orders); (b) on the
advertising, marketing, promotional and/or
packaging materials for any
Publication or Production; (c) on any
ancillary merchandise usually and
customarily offered in connection with
motion pictures and television
productions (e.g., t-shirts, sweatshirts,
hats, aprons and other clothing,
companion books and other printed
materials, mugs, posters, and soundtrack
albums, videocassettes and DVD's, theme
park attractions, etc.) offered in
connection with any Publication or
Production (but specifically excluding any
merchandise that competes with any of the 5
Product Line Categories set forth in
the New Product Development Agreement of
even date entered into among Popeil,
Alan L. Backus and RMC); and (d) on or in
connection with any slot machine or
other such gaming device featuring the
Marks;
2
<PAGE>
(v) Popeil or his designees will have the right to utilize and
depict any or all of the Ronco (as defined
in the Asset Purchase Agreement)
products in and in connection with any of
the foregoing retained rights,
including, without limitation, in motion
pictures, IGT gaming devices and
related goods (e.g., signs, seats and
promotional materials); and
(vi) Popeil will retain the right to enter into a licensing or
other
arrangement with Sara Lee Corporation on
behalf of RMC under which such
manufacturer(s) or distributor(s) will have
the right to manufacture and sell
food products bearing the Popeil or Ronco
name; provided, that 100% of any
royalties, minimum guarantees or similar
payments received by RMC from any such
arrangement will be applied to repayment of
the Notes issued by RMC pursuant to
the Asset Purchase Agreement until all
obligations under such Notes have been
repaid in full (such payments to be made to
the holder of the Notes or to a
designee duly acting on behalf of such
holder), and thereafter Popeil, in his
individual capacity, will be entitled to
50% of any such gross royalties or
gross payments received by RMC and RMC will
be entitled to the remaining 50% of
any such royalties or payments received by
RMC.
4.
Existing Third Party Rights To Marks. RMC hereby further
acknowledges
that its rights in and to the Marks as
acquired under the Asset Purchase
Agreement are subject to the third party
rights to Popeil's name and likeness
previously granted to QVC pursuant to that
certain agreement dated as of April
2, 2000, between QVC, Inc. and Ronco,
Inc.
5.
Consideration. In consideration of the rights granted to each
party
hereunder and under the Asset Purchase
Agreement, each party agrees to be bound
by the applicable terms and conditions
hereof and all of their respective
representations, warranties and agreements
hereunder and thereunder.
6. Quality
Control.
(a) The quality of all of the goods and products in connection
with
which RMC uses the Marks (collectively, the
"Products") shall equal or exceed
the quality of the products in connection
with which the Marks have been
previously used by Popeil. Without limiting
the foregoing, any infomercial
produced in connection with any Product
shall be truthful and shall not mislead
consumers in any manner whatsoever, and, in
the event RMC changes any existing
infomercial conveyed to RMC pursuant to the
Asset Purchase Agreement in any
manner whatsoever, the resulting
infomercial shall also be truthful and shall
not mislead consumers in any manner
whatsoever.
(b) Each party shall accurately reproduce the Marks. No partial
version of the Mark
