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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
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