EXHIBIT 10.12 INVENTORY TRADEMARK LICENSE AGREEMENTTrademark License Agreement |
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Exhibit 10.12
INVENTORY TRADEMARK LICENSE AGREEMENT
This
Inventory Trademark License Agreement ("Agreement") is made and
entered into this 14th day of April, 2006, by and between Abbott
Laboratories, a
corporation organized and existing under the laws of the State of
Illinois and
having a principal place of business at 100 Abbott Park Road,
Abbott Park,
Illinois 60064 ("Licensor") and ImaRx Therapeutics, Inc., a
corporation
organized and existing under the laws of Delaware and having a
principal place
of business at 1635 East 18th Street, Tucson, Arizona 85719
("Licensee").
WHEREAS, Licensor and Licensee (each a "Party" and, collectively,
the
"Parties") have entered into an Asset Purchase Agreement dated
April 10, 2006
(the "Asset Purchase Agreement"), pursuant to which Licensee has
agreed to
acquire, and Licensor has agreed to sell, certain assets of the
Licensor's
pharmaceutical products division;
WHEREAS, the assets to be transferred include an Inventory of the
Products
(as defined in the Asset Purchase Agreement); and
WHEREAS, Licensee desires to obtain a trademark and trade name
license to
promote, market and sell certain Products existing as of the
Closing Date (as
defined in the Asset Purchase Agreement); and
WHEREAS, Licensor is willing to grant such a license upon the terms
and
conditions set forth below.
NOW,
THEREFORE, in consideration of entering into the Asset Purchase
Agreement and the mutual agreements and undertakings contained
herein and for
other good and valuable consideration (the receipt and sufficiency
of which is
hereby acknowledged), the Parties agree as follows.
1. DEFINITIONS:
Capitalized terms used in this Agreement and not otherwise defined
herein
shall have the meanings assigned to them in the Asset Purchase
Agreement. For
purposes of this Agreement, the following words and phrases shall
have the
following meanings:
1.1
"Licensed Marks" shall mean: those trademarks identified on
Schedule 1
attached hereto.
1.2
"Losses" shall mean all damages, liabilities, costs and
expenses,
including settlement and arbitration costs and reasonable
attorneys' fees and
costs.
1.3
"Territory" shall mean, for each Licensed Mark, each of those
territories in which Licensor or its Affiliates owns or possesses
rights to such
Licensed Mark.
2. GRANT
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2.1
During the term of this Agreement, and subject to the terms and
conditions hereof and of the Asset Purchase Agreement, the Licensor
hereby
grants to the Licensee, in the Territory, an exclusive, fully
paid-up,
non-transferable and non-assignable license, without the right to
sublicense
("Inventory Trademark License"), to use the Licensed Marks solely
in connection
with the promotion, marketing and sale of the Inventory in the
Territory.
2.2
Notwithstanding anything else in this Agreement to the contrary,
absent
Licensor's express prior written consent, Licensee's use of the
Licensed Marks
shall cease at the end of the earlier of (i) the completion of the
sale of all
Inventory by Licensee, and (ii) the date upon which the expiration
date for all
Inventory has expired, at which time the Inventory Trademark
License shall
automatically terminate without further action by either Party and
Licensee
shall cease all use of the Licensed Marks, except for commercially
reasonable
ancillary use to the extent required for regulatory purposes
relating to the
Inventory for a period of up to 24 months after the termination of
this
Agreement.
2.4
Without the prior written consent of Licensor, Licensee shall have
no
power or right to, and shall not, sell, assign, sublicense or
otherwise transfer
the Inventory Trademark License to any Person, including by a
change of control
of Licensee, or by operation of law, except for (i) sublicensing,
with
Licensor's prior written consent, within Licensee's trade channels
solely for
the purposes of selling and marketing the Inventory, and (ii) to
any permitted
assignee of Licensee's rights and obligations under the Asset
Purchase Agreement
to the extent permitted therein.
2.5
Licensee shall comply with all applicable laws, rules,
regulations,
ordinances, permits and licenses when exercising its rights under
this
Agreement, including in the manufacture, promotion, marketing and
sale of
Products.
3. PROTECTION OF THE LICENSED MARKS
3.1
Licensee understands and agrees that (a) Licensee shall not
directly or
indirectly challenge Licensor's sole and exclusive ownership of all
right, title
and interest in and to the Licensed Marks, including the goodwill
associated
therewith, and (b) all goodwill arising from the use of the
Licensed Marks shall
inure solely to the benefit of Licensor. Furthermore, Licensee
shall not assist
any third party in challenging Licensor's right, title and interest
in and to
the Licensed Marks.
3.2
Nothing contained in this Agreement shall be construed as an
assignment
to the Licensee of any right, title or interest in the Licensed
Marks, it being
understood that all rights, title and interests relating to the
Licensed Marks
are expressly reserved by the Licensor except for the rights being
expressly
licensed hereunder.
3.3
No right or license as to any of Licensor's intellectual property
or
products is being granted hereunder, except as expressly provided
herein.
3.4
Licensee shall not use the Licensed Marks other than as
permitted
hereunder and, in particular, shall not incorporate Licensor's name
or the
Licensed Marks in Licensee's
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corporate or business name in any manner whatsoever. In using the
Licensed
Marks, Licensee will in no way represent that it has any rights,
title or
interest in the Licensed Marks other than those expressly granted
under the
terms of this Agreement, and Licensee shall not represent itself as
an
"authorized representative of," or indicate in any other way any
affiliation
with, Licensor.
3.5
Licensor shall, at its expense, use commercially reasonable efforts
to
maintain in full force and effect all existing registrations of the
Licensed
Marks until the termination of this Inventory Trademark License.
Licensee shall,
at Licensor's expense, take all actions reasonably requested by
Licensor to
assist Licensor in defending or prosecuting any action or suit
relating to the
Licensed Marks as used in connection with this Agreement.
3.6
Licensee shall notify Licensor promptly if Licensee learns of
any
infringement or pending or threatened litigation involving the
Licensed Marks as
used in connection with this Agreement.
3.7
Licensee agrees not to adopt or use any trade name or trademark
which
is confusingly similar or likely to cause confusion with the
Licensed Marks.
Furthermore, Licensee agrees not to seek registration of any of the
Licensed
Marks or any trade name or trademark confusingly similar
thereto.
4 QUALITY CONTROL
4.1
Licensee shall use the Licensed Marks only with respect to the
promotion, marketing and sale of the Inventory as provided herein,
and shall not
affix any Licensed Marks to any products other than Products, or
use any
Licensed Marks in connection with any service (other than as
necessary to market
and sell Products).
4.2
All Products promoted, marketed and sold by Licensee under the
Licensed
Marks shall be of the same quality as the Products sold by Licensor
under the
Licensed Marks immediately prior to the Closing Date, and Licensee
shall
otherwise use the Licensed Marks in a manner consistent with
Licensor's use,
immediately prior to the Closing Date, of the Licensed Marks in
connection with
the Products. At Licensor's request, Licensee shall provide to
Licensor
representative samples of Licensee's use of the Licensed Marks and
permit
Licensor to inspect Licensee's facilities as necessary for Licensor
to confirm
Licensee's compliance with this Article 4, provided that Licensor
agrees to
provide a minimum of ten (10) days' prior written notice before
conducting any
such inspection, and any such inspection shall be conducted during
regular
business hours and in a manner that is not disruptive to Licensee's
business
operations.
4.3
In using the Licensed Marks as permitted hereunder in connection
with
the promotion, marketing and sale of the Inventory, Licensee shall
duly include
all notices and legends with respect to the Licensed Marks as may
be required by
applicable federal, state or local trademark laws or which may be
reasonably
requested by Licensor.
5. GOODWILL AND IRREPARABLE HARM
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5.1
Licensee acknowledges that its failure to manufacture, sell,
promote,
and distribute the Products or otherwise use the Licensed Marks in
accordance
with the provisions of this Agreement will result in immediate and
irreparable
damage to Licensor and that Licensor may have no adequate remedy at
law for such
failures by Licensee.
5.2
Licensee further agrees that in the event of any breach of this
Agreement by Licensee, Licensor, in addition to all other remedies
available to
it hereunder, shall be entitled to injunctive relief against any
such breach as
well as such other relief as any court with jurisdiction may deem
just and
proper.
6. REPRESENTATIONS AND WARRANTIES
6.1
Licensor represents and warrants to Licensee that it has all
rights,
power and authority necessary to grant the rights set out in this
Agreement.
6.2
Licensor represents and warrants that Licensee's exercise of its
rights
under the Inventory Trademark License in accordance with the terms
of this
Agreement will not, to Licensor's knowledge, infringe upon the
trademark rights
of any third party. Licensor shall defend, indemnify and hold
harmless Licensee
and its agents and employees from and against any and all Losses
arising out of
any claim that, if true, would mean that Licensor has breached the
above
representation and warranty.
6.3
Licensee shall defend, indemnify and hold harmless Licensor and
its
agents and employees from and against any and all Losses arising
out of any
claim by a third party relating directly or indirectly to
Licensee's labeling of
the Inventory.
7. TERM
This
Agreement shall commence and be effective upon the Closing Date
and
shall remain in full force and effect for the term set forth in
Section 2.3,
unless earlier terminated as follows:
(a)
by mutual written consent of the Parties at any time;
(b)
upon written notice by Licensor if Licensee is in material breach
of
this
Agreement, including exceeding the scope of the Inventory
Trademark
License or failing to comply with the provisions of Article 4, and
Licensee
fails to correct said breach to Licensor's reasonable satisfaction
within
fifteen (15) days






