Exhibit 10.4
TRADEMARK LICENSE
AGREEMENT
This Trademark License Agreement
(“ Agreement ”) is entered into as of
December 20, 2006 (“ Effective Date ”) by
and between Lone Star Steel Company, L.P., a Delaware limited
partnership (“ Licensor ”) and Welspun-Lone Star
Tubulars LLC, a limited liability company (“ JV
”).
WHEREAS, Licensor is the owner of
the Licensed Marks (as defined below);
WHEREAS, pursuant to that certain
Limited Liability Company Agreement dated December 20, 2006
between Lone Star Technologies, Inc. (“ LST ”)
and Welspun Pipes, Inc. (“ Welspun ”) (“
JV Agreement ”), Licensor and Welspun will form the JV
to, among other things, engage in the manufacture and sale of
spiral weld pipe;
WHEREAS, pursuant to the JV
Agreement, Welspun and JV have entered into that certain Trademark
License Agreement (“ Welspun License Agreement
”) dated on or about the date hereof, whereby Welspun has
agreed to grant JV a non-exclusive sublicense to use certain Marks
(the “ Welspun Marks ”) in connection JV’s
business and products on the terms and conditions set forth in the
Welspun License Agreement; and
WHEREAS, in accordance with the JV
Agreement and in partial consideration of the amounts paid by the
parties pursuant to the JV Agreement, Licensor agrees to grant JV,
and JV desires to receive from Licensor, a non-exclusive license to
use the Licensed Marks in connection with JV’s business and
products on the terms and conditions set forth in this
Agreement.
NOW THEREFORE, in consideration of
the mutual covenants and promises contained herein, the parties
hereto agree as follows:
1.
Definitions.
1.1
“ Affiliate ” of
a specified Person (the “ Specified Person ”)
means any Person (a) who, directly or indirectly, controls, is
controlled by, or is under common control with the Specified
Person, (b) who, directly or indirectly, owns or controls more than
fifty percent (50%) of the Specified Person’s outstanding
voting securities or equity interests, (c) of whom the Specified
Person, directly or indirectly, owns or controls more than fifty
percent (50%) of the outstanding voting securities or equity
interests or (d) who has the right, directly or indirectly, to
appoint or elect more than fifty percent (50%) of the Specified
Person’s board of directors or equivalent managing
body.
1.2
“ Business Day ”
means a day on which banks are open for general banking business in
Dallas, Texas, the United States of America (excluding Saturdays,
Sundays and public holidays).
1.3
“ Licensed Marks
” means the mark(s) the set forth in Exhibit A
attached hereto and all trademark and service mark applications and
registrations for such mark(s)
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worldwide. The parties
acknowledge and agree that Exhibit A may be amended as
agreed upon by both parties in writing from time to time during the
term of this Agreement.
1.4
“ Person ” means
any individual, partnership, limited liability company,
corporation, cooperative, joint venture, trust, estate or other
entity.
1.5
“ Service Marks ”
means the mark(s) set forth in Exhibit A under the heading
“Service Marks,” and all trademark and service mark
applications and registrations for such mark(s)
worldwide.
1.6
“ Territory ”
means worldwide.
1.7
“ Trademarks ”
means the mark(s) set forth in Exhibit A under the heading
“Trademarks,” and all trademark and service mark
applications and registrations for such mark(s)
worldwide.
2.
License Grant.
2.1
Trademarks
. Subject to the terms and
conditions of this Agreement, Licensor hereby grants to JV a
limited, non-exclusive, non-transferable, non-sublicensable,
royalty-free, fully-paid up, perpetual (subject to Section
5.2 ) license to use the Trademarks in connection with
JV’s business and products (including, without limitation, as
JV’s corporate name, tradename, trademarks, service marks and
logos, or any part of any of the foregoing) solely in the
Territory; provided that the Trademarks are used only: (a) in
combination with the Welspun Marks to identify JV as the source of
products manufactured and sold by JV (any such combination shall be
referred to in this Agreement as a “ JV Mark ”);
and (b) in connection with the manufacture and sale of helical
submerged arc welded steel line pipe under class 6 (including such
line pipe used for water lines) manufactured at JV facilities
located in North America.
2.2
Service Marks
. Subject to the terms and
conditions of this Agreement, Licensor hereby grants to JV a
limited, non-exclusive, non-transferable, non-sublicensable,
royalty-free, fully-paid up, perpetual (subject to Section
5.2 ) license to use the Service Marks in connection with
sales, promotional, marketing and advertising materials related to
JV’s manufacture and sale of helical submerged arc welded
steel line pipe (including such line pipe used for water lines)
manufactured at JV facilities located in North America.
3.
Ownership.
3.1
Licensor acknowledges that (a) as
between Licensor and JV, JV owns all rights, title and interest in
and to the JV Marks, (b) except as set forth herein, JV has no
rights, title or interest in or to the JV Marks and (c) all use of
the JV Marks by JV shall inure to the benefit of JV.
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3.2
JV acknowledges that (a) as between
Licensor and JV, Licensor owns all rights, title and interest in
and to the Licensed Marks, (b) except as set forth herein, JV has
no rights, title or interest in or to the Licensed Marks and (c)
all use of the Licensed Marks by JV shall inure to the benefit of
Licensor.
3.3
JV agrees not to (and agrees not to
permit or assist any third party to): (a) challenge, contest or
make any claim adverse to Licensor’s ownership of any
Licensed Mark or the validity of any Licensed Mark or the license
granted to JV in Section 2 above; (b) except as expressly permitted
by the terms of this Agreement, attempt to register any Licensed
Mark or any mark confusingly similar thereto; or (c) take any
action that might harm or tarnish the reputation or goodwill of any
Licensed Mark or Licensor. If, at any time, JV acquires any
rights, title or interest in, or registrations or applications for,
any of the Licensed Marks, JV agrees to immediately, upon
Licensor’s request and at no expense to Licensor, assign all
such rights, title, interest, registrations and applications to
Licensor, along with any and all associated goodwill.
3.4
Licensor agrees to cooperate with
Welspun and JV to file applications for, prosecute, and maintain
the registration of JV Marks in each North American country and
other countries as approved from time to time by both of Welspun
and Lone Star. Upon any termination of this Agreement
pursuant to Section 5.2: (a) JV shall abandon any and all JV Marks
incorporating the Licensed Marks and any rights therein (including,
without limitation, all contractual, statutory and common law
rights); and (b) Licensor and JV will cooperate with Welspun to
withdraw any pending applications for the registration of any JV
Marks, cancel any JV Marks registered pursuant to this Section, and
otherwise take and any all actions reasonably necessary to
effectuate JV’s abandonment of any and all JV Marks
incorporating the Licensed Marks.
4.
Quality Control Standards;
Compliance with Laws.
4.1
For Licensor’s trademark
quality control purposes, upon Licensor’s prior written
request, JV shall furnish to Licensor a sample of products and
materials bearing the Licensed Marks that JV then currently
distributes or intends to distribute. If Licensor reasonably
and in good faith believes the samples bearing the Licensed Marks
do not meet the Minimum Quality Threshold (as defined below),
Licensor shall notify JV in writing, and JV shall have a reasonable
period of time (but in no event more than 30 days from the date of
receipt of notice) to make the changes and/or corrections that the
parties mutually agree are necessary to protect the Licensed
Marks. For purposes of this Agreement, “ Minimum
Quality Threshold ” shall mean, with respect to each
product bearing the Licensed Marks, the level of quality necessary
to comply: (a) in all material respects, with the respective
specifications and technical requirements of JV’s customers
applicable to such product; and (b) in all respects, with all
statutory and regulatory standards applicable to such product,
including without limitation any and all laws or reg
