Exhibit 10.9
TRADEMARK LICENSE
AGREEMENT
by and between
FRIEDMAN, BILLINGS, RAMSEY GROUP,
INC.
and
FBR CAPITAL MARKETS
CORPORATION
dated as of July 20,
2006
TRADEMARK LICENSE
AGREEMENT
This TRADEMARK LICENSE AGREEMENT
(“ Agreement ”) dated as of the 20
th
day of July, 2006 (the
“ Effective Date ”) is entered into by and
between FRIEDMAN, BILLINGS, RAMSEY GROUP, INC., a Virginia
corporation (“ Licensor ”) and FBR CAPITAL
MARKETS CORPORATION, a Virginia corporation (“
Licensee ”) (each of Licensor and Licensee a “
Party ” and collectively, the “ Parties
”).
WHEREAS, Licensor is the owner of
the service mark, corporate and trade name “Friedman Billings
Ramsey” and “FBR” (each of “ Friedman
Billings Ramsey ” and “ FBR ” a
“ Mark ” and collectively, the “
Marks ”);
WHEREAS, Licensee is an investment
banking, institutional brokerage and asset management firm recently
formed as a Virginia corporation (the “ Licensee
Business ”); and
WHEREAS, Licensee desires to use the
Marks in connection with the operation of the Licensee Business in
the United States, and Licensor is willing to permit Licensee to
use the Marks, subject to the terms and conditions
herein.
NOW, THEREFORE, in consideration of
the premises and the mutual promises and covenants contained herein
and for other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the Parties hereto
agree as follows:
Article 1.
Grant of Rights .
Subject to the terms and conditions herein, Licensor hereby grants
to Licensee, for itself and its subsidiaries, a paid-up,
non-exclusive, non-transferable right and license, under
Licensor’s right, title and interest in the Marks, to use
either of the Marks in the United States solely in connection with
the Licensee Business, solely (i) as part of the corporate
names FBR Capital Markets Corporation, Friedman, Billings,
Ramsey & Co., Inc., Friedman, Billings, Ramsey
International, Ltd., FBR Investment Management, Inc. and FBR Fund
Advisers, Inc. (the “ Corporate Names ”); and
(ii) as a corporate name, trade name or domain name. Licensor
acknowledges that Licensee may conduct the Licensee Business, make
investments or have shareholders outside the United States, and any
implied “use” of the Corporate Names or the Marks due
to this fact shall not violate this Agreement, but is subject to
Article 6. All rights not expressly granted to Licensee in
this Article 1 are reserved to Licensor.
Article 2.
Ownership . The
Parties agree that Licensor is the sole owner of the Marks.
Licensee agrees not to directly or indirectly challenge or contest
the validity of, or Licensor’s rights in the Marks (and the
associated goodwill), including without limitation, arising out of
or relating to any third-party claim, allegation, action, demand,
proceeding or suit (“Action”) regarding enforcement of
this Agreement or involving any third party. The Parties intend
that any and all goodwill in the Marks arising from
Licensee’s use of the Corporate Names or the Marks shall
inure solely to the benefit of the Licensor. Notwithstanding the
foregoing, in the event that Licensee is deemed to own any rights
in the Marks (or the Marks portion of the Corporate Names),
Licensee hereby assigns such rights to the Licensor.
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Article 3.
Use of the Marks
.
Section 3.1.
Licensee agrees to maintain and
preserve the quality of the Marks, and to use the Corporate Names
and Marks in good faith and in a dignified manner, in a manner
consistent with Licensor’s high standards of and reputation
for quality, and in accordance with good trademark practice
wherever the Corporate Names or Marks are used. Licensee shall not
take any action that could be detrimental to the Marks, the
Corporate Names or their associated goodwill. If Licensor decides
in its sole discretion to register the Marks or Corporate Names,
Licensee agrees to affix all such trademark notices as may be
requested by Licensor or required under applicable laws.
Section 3.2.
Upon request by Licensor, Licensee
shall furnish to Licensor’s representative samples of all
advertising and promotional materials in any media that are used in
connection with the Corporate Names or the Marks. Licensee shall
make any changes to such materials that Licensor requests to comply
with Section 3.1 , or preserve the validity of, or
Licensor’s rights in, the Marks.
Section 3.3.
Licensee shall, at its sole expense,
comply at all times with all applicable laws, regulations, exchange
and other rules and reputable industry practice pertaining to the
Licensee Business and the use of the Corporate Names and
Marks.
Article 4.
Termination.
Section 4.1.
The term of this Agreement (“
Term ”) commences on the Effective Date and continues
in perpetuity, unless termination occurs pursuant to the other
provisions of this Article 4 .
Section 4.2.
If Licensor materially breaches one
or more of its obligations hereunder, Licensee may terminate this
Agreement, effective upon written notice, if Licensor does not cure
such breach within 30 days of written notice thereof (or any
mutually-agreed extension). If Licensee materially breaches one or
more of its obligations hereunder, Licensor may terminate this
Agreement, effective upon written notice, if Licensee does not cure
such breach within 30 days of written notice thereof (or any
mutually-agreed extension). Licensor may terminate this Agreement
immediately, effective upon written notice, if Licensee violates
Article 7 .
Section 4.3.
Licensor has the right to terminate
this Agreement immediately upon written notice to Licensee if
(i) Licensee makes an assignment for the benefit of creditors;
(ii) Licensee admits in writing its inability to pay debts as
they mature; (iii) a trustee or receiver is appointed for a
substantial part of Licensee’s assets and (iv) to the
extent termination is enforceable under applicable law, a
proceeding in bankruptcy is instituted against Licensee which is
acquiesced in, is not dismissed within 60 days, or results in an
adjudication of bankruptcy.
Section 4.4.
If an event described in
Section 5 occurs, Licensor shall have the right, in
addition to their other rights and remedies, to suspend
Licensee’s rights regarding the Corporate Names and Marks
while Licensee attempts to remedy the situation.
Section 4.5.
Upon termination of this Agreement
for any reason, (i) Licensee shall immediately cease all use
of the Corporate Names (except for limited transitional use of the
Corporate Names, for a period of 30 days if Licensor consents) and
destroy all materials or forms
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bearing the Marks; (ii) the Parties shall
cooperate so as to best preserve the value of the Corporate Names;
and (iii) Sections 6.4, 6.5, 6.6 and 6.7 shall survive any such
event.
Article 5. Infringement,
Protection and Quality Control .
Section 5.1.
Licensee agrees to notify Licensor
promptly after it becomes aware of any actual or threatened
infringement, imitation, dilution, misappropriation or other
unauthorized use or conduct in derogation (“
Infringement ”) of either Mark. Licensor shall have
the sole right to bring any Action to remedy the foregoing (or to
refrain from taking any Action in its sole discretion), and
Licensee shall cooperate with Licensor in same, at Licensor’s
expense.
Section 5.2.
Licensee shall, at its expense,
cooperate fully and in good faith with Licensor for the purpose of
securing, preserving and protecting Licensor’s rights in and
to its Marks. At the request of Licensor, and at Licensee’s
expense, Licensee shall execute and deliver to Licensor any and all
documents and do all other acts and things which Licensor deems
necessary or appropriate to make fully effective or to implement
the provisions of this Agreement relating to the ownership,
registration, maintenance or renewal of Licensor’s Marks.
Licensee hereby appoints Licensor and any officer or agent thereof,
with full power of substitution, as its true and lawful
attorney-in-fact with irrevocable power and authority in place and
stead of Licensee and in the name of Licensee or in its own name,
for the purposes of carrying out the terms of this Agreement with
respect to Licensor’s Marks. Licensor shall have sole control
and discretion over the prosecution and maintenance of its Marks
and shall take or refrain from taking all actions it deems
necessary and/or reasonable to protect its Marks.
Section 5.3.
Licensee acknowledges that all
services provided under the Marks pursuant to the terms of this
Agreement must be of sufficiently high quality to protect the Marks
and the goodwill symbolized thereby. In order to preserve the
inherent value of the Marks, Licensee shall ensure that it
maintains the quality of the Licensee Business and the operation
thereof at least equal to the standards prevailing in the operation
of Licenso
