TRADEMARK LICENSE AGREEMENTTrademark License Agreement |
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Lone Star Steel Company, LP | Lone Star Technologies, Inc | Majmudar & Co | Welspun Gujarat Stahl Rohren Limited | Welspun Pipes, Inc | Welspun-Lone Star Tubulars LLC. RealDealDocs™ contains millions of easily searchable legal documents and clauses from top law firms. Search for free - click here. |
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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, includi






