Exhibit 10.105
TRADEMARK ASSIGNMENT
AGREEMENT
This Trademark Assignment Agreement (the “
Agreement ”) is entered into this 21st day
of December, 2006 (the “ Effective Date
”) by and between Applied Digital Solutions, Inc., a
corporation duly organized and existing under the laws of the State
of Missouri and having it principal place of business at 1690 S.
Congress Avenue, Suite 200, Delray Beach, FL 33445 (“
Assignor ”) and VeriChip Corporation, a
corporation duly organized and existing under the laws of the State
of Delaware and having it principal place of business at 1690 S.
Congress Avenue, Suite 200, Delray Beach, FL 33445 (“
Assignee ”).
A. WHEREAS, Assignor owns the entire right,
title and interest in and to certain U.S. and foreign trademarks
and services marks, both registered and unregistered, and
applications for trademark and service mark registrations filed
with the United States Trademark Office and foreign trademark
applications, as listed in attached Exhibit A or otherwise using
the prefix “Veri” (collectively the “
Marks ”);
B. WHEREAS Assignor owns 100% of the outstanding
stock of Assignee;
C. WHEREAS, Assignor and Assignee entered into a
certain Trademark License Agreement effective the 5th day of
August, 2005 (the “License Agreement”) which, among
other provisions,
(i) granted certain licenses to Assignee to use
the Marks;
(ii) provided for termination of the License
Agreement upon such time as (a) Assignor ceases to own 100% of
the outstanding stock of Assignee and (b) Assignor and
Assignee have failed, after good faith negotiations, to reach an
agreement providing for, inter alia , the payment of
royalties; and
(iii) in Section 12, obligated Assignee to
discontinue use of the Marks upon termination of the License
Agreement;
D. WHEREAS, Assignor is preparing to issue stock
of Assignee to the public; and
E. WHEREAS Assignee desires to acquire all of
Assignor’s right, title and interest, in and to the Marks
together with all the goodwill of the business symbolized thereby,
and Assignor desires to assign all such right, title and interest
in and to the Marks to Assignee, upon the terms and conditions set
forth herein.
NOW, THEREFORE, for good and valuable
consideration the receipt and sufficiency of which is hereby
acknowledged by Assignor, the parties agree as follows:
1. Assignor hereby conveys and assigns to
Assignee, and Assignee hereby accepts from Assignor, all of
Assignor’s right, title and interest in and to the Marks,
together with the goodwill of the business symbolized by the
Marks.
2. Assignor represents and warrants
that:
(i) Assignor owns the entire right, title
and interest in and to the Marks;
(ii) all registrations for the Marks are
currently valid and subsisting and in full force and
effect;
(iii) Assignor has not licensed the Marks to any
other person or entity or granted, either expressly or impliedly,
any trademark or servicemark rights with respect to the Marks to
any other person or entity;
(iv) there are no liens or security interests
against the Marks;
(v) Assignor has all authority necessary to
enter into this Agreement and the execution and delivery of this
Agreement has been duly and validly authorized; and
(vi) execution of this Assignment and
performance of Assignor’s obligations hereunder shall not
violate or conflict with any other agreement to which Assignor is a
party or provision of Assignor’s Certificate of Incorporation
or By-laws.
3. Assignor shall execute and deliver to
Assignee on or before the Effective Date the Trademark Assignment
in the form shown in Exhibit B. At any time, and from time to time
after the Effective Date, at Assignee’s request, Assignor
shall execute and deliver such other instruments of sale, transfer,
conveyance, assignment and confirmation and take such other action,
at Assignor’s expense, as Assignee may reasonably deem
necessary or desirable in order to perfect or ot
