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.
Page 2
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
