TRADEMARK LICENSETrademark License Agreement |
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Exhibit 10.4
TRADEMARK LICENSE
This Trademark License (the “ Agreement ”) is made and entered into between TreeHouse Foods, Inc., a Delaware corporation (“ TreeHouse ”) and Dean Foods Company, a Delaware corporation (“ Dean ”) as of the Distribution Date set forth below.
WHEREAS, Dean, through its subsidiaries, operates the Specialty Foods Group, and the MochaMix ®, SecondNature ®, and food service dressings businesses (the “ Transferred Businesses ”);
WHEREAS, the Board of Directors of Dean has determined that it would be advisable and in the best interests of Dean and its stockholders for Dean to transfer and assign, or cause to be transferred and assigned, to TreeHouse the business, operations, assets and liabilities related to the Transferred Businesses;
WHEREAS, Dean desires to transfer and assign, or cause to be transferred or assigned, to the TreeHouse Parties (as defined in that certain Distribution Agreement between Dean and TreeHouse, dated as of June 27, 2005 (the “ Distribution Agreement ”)) the assets and properties of the Transferred Businesses and the TreeHouse Parties desire to accept the transfer and assignment of such assets and to assume, or cause to be assumed, the liabilities and obligations arising out of or relating to the Transferred Businesses as provided in the Distribution Agreement;
WHEREAS, the date on which the above transaction is to become effective is referred to as the “ Distribution Date ” as defined in the Distribution Agreement; and
WHEREAS, the parties hereto deem it to be appropriate and in the best interests of TreeHouse and the Dean Entities (as defined in Section 1(b) below) that TreeHouse grant to the Dean Entities a license to use certain trademarks, trade names and logos under the terms and conditions set forth herein;
NOW, THEREFORE, in consideration of the mutual promises contained herein, the parties hereto agree as follows:
1. Definitions . As used in this Agreement, the following terms shall have the meaning set forth in this Section 1.
(a) “ Affiliates ” means, with respect to any entity, any other entity that directly or indirectly controls, is controlled by or is under common control with such entity. For the purpose of this definition, the term “control” means the power to direct the management of an entity, directly or indirectly, whether through the ownership of voting securities, by contract or otherwise; and the term “controlled” has the meaning correlative to the foregoing.
(b) “ Dean Entities ” means Dean and its Affiliates, but only for so long as they remain Affiliates.
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2. License of Licensed Marks . During the term of this Agreement, and subject to termination pursuant to Section 10 below, TreeHouse hereby grants to the Dean Entities an exclusive, perpetual, royalty-free, and non-transferable license to display and use the trademarks, trade names, trade dress and logos set forth on Exhibit A hereto (the “ Licensed Marks ”) in the United States in connection with the marketing and sale of (i) products on which the Dean Entities used any of the Licensed Marks immediately prior to the Distribution Date and (ii) other dairy products (e.g., fluid dairy, cultured dairy, and ice cream products) and substitutes for such products (collectively, the “ Exclusive Products ”). For the avoidance of doubt, the term “dairy products” does not include salad dressings. In furtherance thereof, TreeHouse shall not use any of the Licensed Marks on the Exclusive Products.
3. Restrictions on Use .
(a) The Dean Entities may not register or reserve any Licensed Mark or any words or images confusingly similar thereto as a trademark, trade name, corporate name or domain name anywhere in the world. The Dean Entities may not attack or challenge the title and interest of TreeHouse in or to the Licensed Marks.
(b) If TreeHouse at any time finds that the Licensed Marks are being used other than in accordance with the terms of this Agreement (“ Unauthorized Use ”), TreeHouse may notify Dean in writing of such Unauthorized Use. If the relevant Dean Entity fails to correct or have corrected such Unauthorized Use within thirty (30) days after receipt of such notice, or if such correction can not reasonably be accomplished within such 30-day period if commercially reasonable steps to correct the Unauthorized Use have not been taken during such 30 day period, TreeHouse may, at its election, suspend any or all of the licenses granted under this Agreement until such time as such Unauthorized Use is corrected to TreeHouse’s reasonable satisfaction.
4. Reservation of Rights . TreeHouse reserves all rights in the Licensed Marks and other TreeHouse intellectual property not expressly granted in this Agreement. The Dean Entities shall not use the Licensed Marks or other TreeHouse intellectual property for the benefit of any person or entity, or permit any third party to use such intellectual property, and the Dean Entities have no rights or licenses with respect to such Licensed Marks or intellectual property, except as set forth in paragraph 2 above.
5. Ownership of Intellectual Property . The Dean Entities acknowledge and agree that the Licensed Marks, and all applications, registrations and renewals thereof, and all associated goodwill therein, are owned by and vested in TreeHouse. All use by the Dean Entities of the Licensed Marks hereunder shall inure to the benefit of TreeHouse. The Dean Entities agree not to challenge, directly or indirectly, the rights of TreeHouse in or to the Licensed Marks. The Dean Entities will cause the Licensed Marks to be accompanied by an appropriate trademark symbol (either â or TM or a corresponding foreign symbol) as specified by TreeHouse. TreeHouse shall ma






