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EXHIBIT 10.5
TRADEMARK AND TRADE NAME LICENSE
AGREEMENT
Between
HARRIS CORPORATION
and
HARRIS STRATEX NETWORKS, INC.
Dated: January 26, 2007
TRADEMARK AND TRADE NAME LICENSE
AGREEMENT
THIS TRADEMARK AND TRADE "NAME
LICENSE AGREEMENT (this " Agreement "), dated as of
January 26, 2007 (the " Effective Date "), is
made by and between HARRIS CORPORATION, a Delaware corporation ("
Harris " or " Licensor "), and HARRIS
STRATEX NETWORKS, INC., a Delaware corporation ("
Licensee ").
RECITALS
WHEREAS, in connection with the
combination of Harris’ Microwave Communications Division with
Stratex Networks, Inc., a Delaware corporation ("
Stratex "), Harris, the Company, Stratex, and Stratex
Merger Corp., a Delaware corporation and wholly owned subsidiary of
the Company, have entered into an Amended and Restated Formation,
Contribution and Merger Agreement, dated as of December 18,
2006, as amended by that certain letter agreement, dated
January 26, 2007 (the " Formation Agreement "),
among the parties thereto, pursuant to which Licensee was formed to
acquire Stratex pursuant to the Merger (as defined in the Formation
Agreement) and to receive the Contributed Assets (as defined in the
Formation Agreement) from Harris in the Contribution Transaction
(as defined in the Formation Agreement), in each case on the terms
and subject to the conditions set forth in the Formation
Agreement;
WHEREAS, Licensor owns
(i) the trade name "HARRIS" and (ii) the trademarks
"HARRIS" and "HARRIS" with a stylized "A" as illustrated on
Exhibit A hereto, and has established a
commercial reputation for high quality and reliability for services
and products sold thereunder, and has trademark applications and
registrations thereon and/or trademark rights in many countries
throughout the world;
WHEREAS, in connection with the
transfer to Licensee of the Contributed Assets pursuant to the
Formation Agreement, Licensee desires to obtain license rights in
the Licensed Trademark (as defined below) and Licensed Trade Name
(as defined below) of Licensor for use by the Licensee solely in
connection with its business and Licensor is willing to grant such
a limited license under all the terms, restrictions, and conditions
set out herein; and
WHEREAS, Harris and Stratex would
not have entered into the Formation Agreement without the
undertakings contained in this Agreement, and the execution and
delivery of this Agreement is a condition to closing under the
Formation Agreement.
NOW, THEREFORE, in consideration
of the foregoing and the mutual covenants and agreements contained
in this Agreement and for other good and valuable consideration,
the receipt and sufficiency of which are hereby mutually
acknowledged, the parties, intending to be legally bound, agree as
follows:
1. Definitions
. Unless otherwise defined in this Agreement, any term used but not
expressly defined in this Agreement shall have the meaning ascribed
to such term in the Formation Agreement.
" Affiliates " has
the meaning assigned to such term by Rule 405 under the
Securities Act of 1933, as amended; provided, however , that
neither Licensee nor any of its Subsidiaries shall be deemed to be
an Affiliate of Licensor or any of Licensor’s other
Subsidiaries.
" Existing Licensee Business
Products " means the products of the MCD Business that are
in inventory or that have otherwise been manufactured or produced
(or manufactured or produced in part) but not sold to a third party
as of the Closing Date.
" Existing Marketing and
Promotional Material " means brochures, package inserts,
product manuals, data books, signage and other sales, promotional,
advertising and marketing material, in whatever medium, of the MCD
Business that are for use in connection with Existing Licensee
Business Products and that are in inventory or otherwise physically
exist as of the Closing Date.
" Existing Packaging
" means containers, boxes, or other packaging materials of the MCD
Business that are for use in connection with Existing Licensee
Business Products and that are in inventory or otherwise physically
exist as of the Closing Date.
" Licensee Business
Products " means Existing Licensee Business Products and
New Licensee Business Products.
" Licensed Trademark
" means the trademark applications for, the registrations of and
all trademark rights in the "HARRIS" mark identified as
Item 1. on Exhibit A hereto.
" Licensed Trade
Name " means the trade name "HARRIS" without a stylized
"A".
" New Licensee Business
Products " means the products and services of Licensee and
its Subsidiaries the manufacture or production of which commences
after the Closing Date.
" New Marketing and
Promotional Material " means brochures, package inserts,
product manuals, data books, signage and other sales, promotional,
advertising and marketing material, in whatever medium, that are
for use in connection with Licensee Business Products and that are
manufactured or produced, or otherwise do not physically exist
until, after the Closing Date.
" New Packaging "
means containers, boxes, or other packaging materials that are for
use in connection with Licensee Business Products and that are
manufactured or produced, or otherwise do not physically exist
until, after the Closing Date.
" Subsidiary " means
any subsidiary of any entity that is directly or indirectly
wholly-owned by such entity.
" Stylized Mark "
means the trademark applications for, the registrations of and all
trademark rights in the "HARRIS" with a stylized "A" mark
identified as Item 2. on Exhibit A
hereto.
2. Grant of Limited
Trademark License . Subject to the terms and conditions of
this Agreement, Licensor hereby grants to Licensee and its
Subsidiaries for use solely by Licensee and its Subsidiaries, and
Licensee accepts from Licensor, a worldwide, royalty free, fully
paid-up, non-transferable, non-exclusive license, subject to
termination as provided in Section 13 of this Agreement, to
use the Licensed Trademark and the Stylized Mark subject to and in
accordance with the following limitations:
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(a) with respect to the Existing Licensee Business
Products, Existing Marketing and Promotional Material and Existing
Packaging only, in connection with the packaging, marketing, sale,
licensing, distribution and support of Existing Licensee Business
Products by the Licensee and any of its Subsidiaries prior to the
12-month anniversary of the Effective Date in the same manner the
Licensed Trademark and the Stylized Mark were used in the MCD
Business (as defined in the Formation Agreement) by the Licensor
and its Subsidiaries immediately prior to the Closing Date, with
time being of the essence; provided, however , that
beginning three (3) months after the Effective Date, any such
Existing Marketing and Promotional Material and/or Existing
Packaging used by Licensee or any of its Subsidiaries shall be
stamped, stickered or otherwise imprinted to prominently display
Licensee’s corporate name prior to any use thereof; and
provided, further , that Licensee and its Subsidiaries shall
refrain from all use of Existing Marketing and Promotional Material
and/or Existing Packaging after the 12-month anniversary of the
Effective Date and shall destroy all Existing Marketing and
Promotional Material and/or Existing Packaging which remains in
Licensee’s or its Subsidiaries’ possession or control
on or prior to the 12-month anniversary of the Effective Date;
and
(b) with respect to the New Licensee Business
Products, New Marketing and Promotional Material and New Packaging
only, in connection with the packaging, marketing, sale, licensing,
distribution and support of Licensee Business Products by the
Licensee and any of its Subsidiaries but only if the Licensed
Trademark is used as part of the "HARRIS" portion of a combined
"HARRIS STRATEX" trademark; provided, however , that when
labeling or otherwise marking a New Licensee Business Product, the
Licensed Trademark shall be used only as a component of the "HARRIS
STRATEX" trademark and not in combination with any other mark(s),
word(s) or symbol(s). In addition, the "HARRIS STRATEX" trademark
must be displayed without any variation within such trademark in
type font, type size, color and boldness, and without any
intervening or additional word(s) or symbol(s).
(c) Notwithstanding anything to the contrary in this
Section 2, within three (3) months after the Closing
Date, Licensee and its Subsidiaries shall remove the Stylized Mark
from all buildings, signs and vehicles used in connection with its
business.
3. Grant of Limited
Trade Name License . Licensor hereby grants to Licensee for
use solely by Licensee and its Subsidiaries, and Licensee accepts
from Licensor, a personal, royalty free, fully paid-up, worldwide,
non-transferable, non-exclusive license, subject to termination as
provided in Section 13 of this Agreement, to use the Licensed
Trade Name subject to and in accordance with the following
limitations:
(a) the Licensed Trade Name may only be used as part
of Licensee’s and its Subsidiaries’ corporate and trade
names;
(b) the Licensee may only use the Licensed Trade Name
as part of its corporate and/or trade name if its corporate name is
"Harris Stratex Networks, Inc.";
(c) any corporate or trade name containing the
Licensed Trade Name must be used in conjunction with the "Stratex"
trade name solely in the following manner: "Harris Stratex" (with a
space between the Licensed Trade Name and the "Stratex" trade
name);
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(d) except as otherwise provided pursuant to
Section 3(f), all those words comprising any corporate or
trade name must be displayed without any variation within the
corporate or trade name in type font, type size, color and
boldness, and without any intervening or additional word(s) or
symbol(s); and
(e) to the extent Licensee incorporates the Licensed
Trade Name into the corporate and/or trade name of any of its
Subsidiaries, the name of any such Subsidiary shall comprise only
"Harris Stratex Networks", an applicable geographic or
country-specific identifier and an applicable corporate form (or
other entity) identifier.
(f) notwithstanding anything to the contrary in this
Section 3, Licensee and its Subsidiaries shall not have the
right to, and shall not, use the Licensed Trade Name as the
Stylized Mark, except as may be permitted by Section 2 of this
Agreement.
4. Non-Use .
Licensee acknowledges and agrees that none of Licensee or its
Subsidiaries has any right to use the Licensed Trademark, the
Stylized Mark or the Licensed Trade Name or any other related marks
or names anywhere in the world except pursuant to this Agreement,
and that Licensee and its Subsidiaries shall refrain from use of
the Licensed Trademark, the Stylized Mark and the Licensed Trade
Name except pursuant to this Agreement.
5. No Transfers; No
Sublicensing . None of Licensee or its Subsidiaries shall
have the right to transfer, directly or indirectly, its rights
under this Agreement or grant sublicenses to the Licensed
Trademark, the Stylized Mark or Licensed Trade Name;
provided that notwithstanding the foregoing Licensee and its
Subsidiaries may authorize persons contracted by Licensee to
manufacture its products to affix the Licensed Trademark, the
Licensed Trade Name to New Licensee Business Products, New
Marketing and Promotional Material and New Packaging in accordance
with this Agreement.
6. Trademark and Logo
Selection . Licensee and its Subsidiaries agree to refrain
from the adoption or use of any other trademark or trade name or
logo that is, or contains any element that is, confusingly similar
to the Licensed Trademark, the Stylized Mark or the Licensed Trade
Name. Licensee and its Subsidiaries further agree not to use any
logo, trademark or trade name including the name "Harris" except as
expressly permitted by, and in accordance with, the terms of this
Agreement.
7. Ownership;
Validity; Notification of Infringement .
(a) Licensee and its Subsidiaries acknowledge that the
Licensed Trademark, the Stylized Mark and the Licensed Trade Name
are the exclusive and sole property of Licensor. All use of the
Licensed Trademark, the Stylized Mark and the Licensed Trade Name
by Licensee and its Subsidiaries pursuant to this Agreement shall
inure solely to Licensor’s benefit. Licensee and its
Subsidiaries further agree that neither they nor any of their
agents or Affiliates will, at any time, directly or indirectly
challenge, contest, call into question or raise any questions
concerning (i) Licensor’s ownership or the validity of the
Licensed Trade Name, the Licensed Trademark, the Stylized Mark or
any registration or application for registration for the Licensed
Trademark or the Stylized Mark or (ii) the fact that
Licensee’s and its Subsidiaries’ rights under this
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Agreement are solely those of a licensee, which rights terminate
(except as otherwise set forth in this Agreement) upon termination
of this Agreement.
(b) Licensor agrees that if Licensor receives notice
of any pending or written claims, proceedings, hearings or demands
alleging that the Licensed Trademark, the Stylized Mark or the
Licensed Trade Name infringes or otherwise violates a third
party’s proprietary right, or challenging the legality,
validity, enforceability or ownership of any of the Licensed
Trademark, the Stylized Mark or the Licensed Trade Name, Licensor
will notify Licensee in writing promptly following receipt of
notice of such claims in order to permit Licensee and its
Subsidiaries, at their option, to cease using the Licensed
Trademark, the Stylized Mark and the Licensed Trade Name in
accordance with this Agreement and/or immediately terminate their
license rights under this Agreement.
(c) Notwithstanding paragraph 7(b), Licensee and its
Subsidiaries agree that they will not use and will cease use of the
Licensed Trademark and the Stylized Mark immediately and the
Licensed Trade Name as soon as reasonably practicable (including
changing their respective corporate names, and taking all steps as
may be required under applicable corporate law to effect such name
change(s)), upon notice from Licensor that, in the sole opinion of
Licensor, such use of the Licensed Trademark, the Stylized Mark or
the Licensed Trade Name could result in an adverse claim by a third
party against either Licensor or Licensee or their respective
Affiliates.
(d) Licensee and its Subsidiaries shall give Licensor
prompt written notice of any known or potential infringement known
to Licensee or any of its Subsidiaries of the Licensed Trademark,
the Stylized Mark or the Licensed Trade Name, and Licensee and its
Subsidiaries, at Licensor’s expense, shall render Licensor
full cooperation for the protection of the Licensed Trademark, the
Stylized Mark and/or the Licensed Trade Name. If Licensor decides
to enforce its rights in the Licensed Trademark, the Stylized Mark
and/or the Licensed Trade Name against a potential infringement,
all recoveries made shall be for the account of Licensor.
(e) It is understood that Licensee may contest and
defend any claims, proceedings, hearings or demands made against
Licensee or any of its Subsidiaries by a third party challenging
its use of the Licensed Trademark, the Stylized Mark or the
Licensed Trade Name but only to the extent that such claim,
proceeding, hearing or demand seeks a monetary recovery from
Licensee or any of its Subsidiaries.
8. Compliance,
Etc .
(a) Licensee and its Subsidiaries agree to comply with
any reasonable trademark and trade name usage guidelines provided
by Licensor to Licensee, as may be established from time to time by
Licensor, with respect to the appearance and manner of use of the
Licensed Trademark, the Stylized Mark and Licensed Trade Name. Each
time Licensee or its Subsidiaries intend to use any form of the
Licensed Trademark, the Stylized Mark or the Licensed Trade Name
not permitted by such usage guidelines, Licensee or its
Subsidiaries, as the case may be, shall submit such form to
Licensor for its prior written approval, notwithstanding any
previous use by Licensee or its Subsidiaries of such form of the
Licensed Trademark, the
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Stylized Mark or Licensed Trade Name. Unless Licensor objects or
denies approval for such use within thirty (30) Business Days
of actual receipt of notice of such use by Licensee (which notice
shall reference this section), such use shall be deemed approved by
Licensor; provided that the Licensor can by written notice
to Licensee (specifying reasonable grounds for such notice) later
object to any subsequent use of the Licensed Trademark, the
Stylized Mark or the Licensed Trade Name in such a manner and
Licensee or its Subsidiaries, as the case may be, shall cease such
use of the Licensed Trademark, the Stylized Mark or the Licensed
Trade Name as soon as reasonably practicable following the receipt
of such notice. Representative specimens showing the use of the
Licensed Trademark, the Stylized Mark and/or the Licensed Trade
Name by Licensee and its Subsidiaries shall be sent to Licensor
from time to time upon its reasonable request.
(b) Licensee and its Subsidiaries acknowledge that the
rights of Licensor in the Licensed Trademark, the Stylized Mark and
the Licensed Trade Name are paramount to any right hereby granted
to Licensee and its Subsidiaries, and Licensee and its Subsidiaries
agree that they will comply in all material respects with all
trademark laws and regulations of all countries where the Licensee
Business Products are marketed or sold or the Licensed Trademark,
the Stylized Mark or the Licensed Trade Name is used by Licensee
and its Subsidiaries. Should Licensee’s and its
Subsidiaries’ compliance with the laws or regulations of any
country result in the potential dilution or loss of trade name or
trademark rights of Licensor in the Licensed Trademark, the
Stylized Mark or the Licensed Trade Name, Licensee and its
Subsidiaries shall take such actions as may be reasonably required
by Licensor from time to time to preserve the validity and the
strength of the Licensed Trademark, the Stylized Mark and/or the
Licensed Trade Name.
(c) At the reasonable request of Licensor, Licensee
and its Subsidiaries agree to promptly provide to Licensor a list
of countries in which Licensee and its Subsidiaries intend to
market or sell the Licensee Business Products during the term of
this Agreement or otherwise conduct business using the Licensed
Trade Name. Licensee and its Subsi
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