Exhibit 10.5
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 ”), Dean Intellectual
Property Services II, L.P., a Delaware limited partnership (“
Dean IP II ”), and Dean Specialty Intellectual
Property Services, L.P., a Delaware limited partnership (“
Dean IP ”), 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 the Dean Licensors (as defined in Section 1(b) below) and the
TreeHouse Entities (as defined in Section 1(c) below) that the Dean
Licensors grant to the TreeHouse 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.
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(b) “
Dean Licensors ” means Dean, Dean IP II and Dean
IP.
(c) “
TreeHouse Entities ” means TreeHouse and its
Affiliates, but only for so long as they remain
Affiliates.
2. License of Licensed
Marks . During the term of this Agreement, and subject to
termination pursuant to Section 10 below, the Dean Licensors
hereby grant to the TreeHouse Entities an exclusive, royalty-free,
non-transferable license to display and use the trademarks, trade
names, trade dress and logos set forth on Exhibit A
hereto (the “ Licensed Marks ”) worldwide in
connection with the products produced, marketed or sold by the
Transferred Businesses.
3. Restrictions on
Use .
(a) The
TreeHouse 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 TreeHouse Entities may not attack or challenge the title and
interest of the Dean Licensors in or to the Licensed
Marks.
(b) If any
Dean Licensor at any time finds that the Licensed Marks are being
used other than in accordance with the terms of this Agreement
(“ Unauthorized Use ”), such Dean Licensor may
notify TreeHouse in writing of such Unauthorized Use. If the
relevant TreeHouse 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, the relevant Dean Licensor 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
such Dean Licensor’s reasonable satisfaction.
4. Reservation of
Rights . The Dean Licensors reserve all rights in the
Licensed Marks and other Dean intellectual property not expressly
granted in this Agreement.
5. Ownership of
Intellectual Property . The TreeHouse 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 the Dean Licensors. All use by
the TreeHouse Entities of the Licensed Marks hereunder shall inure
to the benefit of the Dean Licensors. The TreeHouse Entities agree
not to challenge, directly or indirectly, the rights of any Dean
Licensor in or to the Licensed Marks. The TreeHouse 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 any Dean Licensor.
The Dean Licensors shall maintain all the Licensed Marks at their
expense.
6. Quality Control
. The TreeHouse Entities shall maintain and adhere to any and all
trademark guidelines for display of the Licensed Marks or other
reasonable quality control standards for products bearing the
Licensed Marks t
