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IPIX TRADEMARK/SERVICE MARK LICENSE AGREEMENT
This IPIX Trademark/Service Mark License Agreement
(hereinafter,
"Agreement") is entered into as of the effective date set forth
below
(hereinafter, "Effective Date") by and between IPIX Corporation,
a Delaware
corporation (hereinafter, "Licensor"), and AdMission, Inc., a
Delaware
corporation (hereinafter, "Licensee").
WHEREAS, Licensor is the owner of and has the right to use and
license
others the right to use the trade name, trademark and service
mark IPIX,
including a U.S. Trademark Application Serial No.: 78/463,342
for "IPIX"
filed on August 6, 2004, Reg. No.: 2,462,085 for IPIX (Design)
and Reg. No.:
2,261,417 for IPIX, the details of which are attached hereto as
Exhibit 1
(hereinafter referred to collectively as the "Licensed Mark") in
the United
States and other countries throughout the world;
WHEREAS, Licensee is the purchaser of certain of the tangible
assets of
Licensor's AdMission business unit, exclusive of any use
relating to the
security, surveillance, military and/or police fields
(hereinafter,
"Security Sector") under the terms of an agreement entitled
"Asset Purchase
Agreement" by and between IPIX Corporation as "Seller", and
Licensee as the
"Buyer";
WHEREAS, Licensor is willing to license the Licensed Mark to
Licensee;
and
WHEREAS, Licensee is interested in using the Licensed Mark on
the terms
set forth herein;
NOW THEREFORE, in consideration of the mutual promises made
herein and
for good and valuable consideration, Licensor and Licensee agree
as follows:
ARTICLE I
LICENSE
1.1 Licensor hereby grants to Licensee on the terms and subject
to the
conditions of this Agreement a non-exclusive, royalty-free
license to use the
Licensed Mark for a term of eighteen (18) months from the
Effective Date
(hereinafter, "Term"); provided, however, that Licensee shall be
permitted to
use the Licensed Mark for an additional six (6) months to phase
out the use of
the Licensed Mark for IPIX AdMission installations in existence
prior to the
Effective Date of this Agreement.
1.2 Licensee agrees to use the Licensed Mark in accordance with
the
IPIX Admission Usage Guidelines attached hereto as Exhibit 2 and
made part
hereof.
1.3 Licensor grants to Licensee a license to use the Licensed
Mark in
those countries or jurisdictions in which the Licensor has
registered or does
register the Licensed Mark (the "Territory"). Nothing herein
shall be deemed to
create any obligation on the part of the Licensor to register
the Licensed Mark
in any country or jurisdiction.
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1.4 Licensor grants to Licensee a license to use the Licensed
Mark
only in connection with "Company's Marketplace Definition."
Licensee will not
conduct any business activities under the Licensed Mark other
than those sectors
and activities covered by "Company's Marketplace Definition",
and specifically
Licensee represents and warrants it will not use the Licensed
Mark in the
Security Sector. For the purposes of this Agreement, "Company's
Marketplace
Definition" shall have the meaning set forth in the Patent
Purchase and License
Agreement by and between the Licensor and the Licensee dated as
of January __,
2005.
ARTICLE II
GOODWILL
2.1 Licensee expressly recognizes and acknowledges that all use
of the
Licensed Mark and all goodwill connected therewith shall inure
to the benefit of
Licensor.
2.2 Licensee shall not use the Licensed Mark in any other
countries
outside the Territory, in any other locations, in any other
manner, in
connection with any other goods and services, or for any other
purposes other
than those set forth above.
ARTICLE III
LICENSEE'S OWN MARKS
3.1 Licensee shall develop a new product name and mark to
replace IPIX
and plan for implementation of that new name and mark prior to
the expiration of
this Agreement. Licensee shall notify Licensor of the new
product name and mark
prior to its introduction and supply Licensor with Licensee's
plan for
implementation of the new name and mark within twelve (12)
months of the
Effective Date of this Agreement. Licensee expressly agrees it
will not adopt
the trademark IPIX or any confusingly similar name or mark as
its new product
name and mark.
3.2 Licensor acknowledges it assigned all right, title and
interest in
and to the mark ADMISSION and its common law rights, including
goodwill
associated therewith, to Licensee, pursuant to the Asset
Purchase Agreement.
3.3 Licensee shall have the right to use its own marks,
advertising
expressions, and signs together with the Licensed Mark when
promoting,
advertising or marketing products and/or services covered by
this Agreement, or
separately when engaging in promotion, advertising and marketing
activities for
goods and services unrelated to Company's Marketplace Position.
The Licensed
Mark shall not be combined with marks or other intellectual
property owned by
Licensee or any third party in such a way as to diminish the
separate identity
of the Licensed Mark, except as otherwise provided in the IPIX
AdMission Usage
Guidelines.
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ARTICLE IV
QUALITY CONTROL
4.1 In order to preserve the inherent value of the Licensed
Mark,
Licensee agrees to use its best efforts to ensure the products
and services
being promoted, marketed and sold by Licensee under the Licensed
Mark pursuant
to this Agreement shall be of a quality reasonably comparable to
similar
products and services promoted, marketed and sold by Licensor
immediately prior
to the sale of assets to Licensee under the Asset Purchase
Agreement.
4.2 It is expressly understood that the quality control
standards
being adhered to include compliance with all federal, state, and
local laws and
regulations in all material respects relating to Company's
Marketplace
Definition described in Section 1.4 above. Furthermore, use of
the Licensed
Mark on goods and services shall be in a manner that does not
offend the sense
of propriety prevailing in the community in which such products
and services are
marketed.
4.3 Upon request, Licensee agrees to assist Licensor to the
extent
reasonably necessary to verify Licensee's compliance with the
quality control
provisions of this Agreement so long as such verification does
not unreasonably
interfere with Licensee's regular business. This assistance
shall include, but
shall not be limited to, reasonable review of representative
advertising and
other promotional uses of the Licensed Mark; visits to any and
all locations
where the Licensed Mark is displayed; review of all customer
complaint files;
and review of any complaints by federal, state or local
authorities.
4.4 Licensor and Licensee acknowledge that they are equally
aware of
the outstanding image, reputation and goodwill attached to the
Licensed Mark and
each share a common interest in protecting and preserving such
image, reputation
and goodwill. Licensee shall therefore exercise its best efforts
to perpetuate
said image, reputation and goodwill. It is agreed that Licensee
shall have the
right to use the Licensed Mark in television advertising,
Internet web sites and
advertising, outside signs, inside signs, stationery, newspaper
advertising,
business cards, forms, telephone directory listings, corporate
names, flyers,
brochures, magazines, public and private advertising and
promotional purposes,
displays and any other manner of use in the ordinary course of
its business
which will not be inconsistent with the use of identification
marks by other
similar businesses, and Licensee will not impair unreasonably
the image,
reputation and goodwill of the Licensed Mark by any such
use.
ARTICLE V
INDEMNITY
5.1 Licensee shall be responsible for and agree to indemnify
and
defend Licensor, its affiliates, its parent companies, and
all
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