TRADEMARK LICENSE
AGREEMENT
This TRADEMARK
LICENSE AGREEMENT (this “ Agreement ”), dated
June 22, 2005, is by and between THE TORONTO-DOMINION BANK, a
Canadian chartered bank (“ Licensor ”) and
AMERITRADE HOLDING CORPORATION, a Delaware corporation (“
Licensee ”). Hereafter, each of Licensor and Licensee
may be referred to individually as a “ Party ”
and collectively as the “ Parties .”
WHEREAS, Licensor
is the owner of the trademark “TD” for use in
connection with banking and related financial services, investment
services and securities’ underwriting, issuance, brokerage
and dealership services;
WHEREAS, Licensor
and Licensee have entered into an Agreement of Sale and Purchase
dated June 22, 2005 (the “ Agreement of Sale and
Purchase ”), pursuant to which Licensee shall purchase
from Licensor all of the capital stock of TD Waterhouse Group,
Inc., a Delaware corporation and a wholly owned subsidiary of
Licensor (“ TWG ”);
WHEREAS, Licensee
wishes to obtain the right to use the name and trademark “
TD ” (the “ TD Brand ”) and the
forest green rectangular logo “ TD ” attached as
Schedule A (the “ TD Green Logo ” and,
together with the TD Brand, the “ Name ”) as
part of trademarks, service marks, trade names, corporate names and
domain names incorporating “TD AMERITRADE” (the “
Composite Name ”), under which it will do business in
connection with providing securities brokerage services to retail
traders, individual investors and registered investment advisers
(the “ Business ”);
NOW THEREFORE, in
consideration of the promises and the mutual covenants and
agreements contained herein, and for other good and valuable
consideration (including that recited in the Agreement of Sale and
Purchase), the receipt and sufficiency of which are hereby
acknowledged, the parties hereto agree as follows:
Capitalized words
or phrases used and not otherwise defined herein shall have the
respective meanings ascribed thereto in the Agreement of Sale and
Purchase.
“
Action ” shall mean action, claim, suit, proceeding or
inquiry of any kind.
“
Affiliate ” means, with respect to any Person, any
other Person directly or indirectly Controlling or Controlled by or
under direct or indirect common Control with such
Person.
“ Change
of Control ,” with respect to a given entity, means any
transaction or series of related transactions that would occasion
and/or result in: (i) the sale or transfer of all or
substantially all of such entity’s business or assets;
(ii) any merger, consolidation, share or other equity
exchange, recapitalization, business combination or other
transaction resulting in the exchange of the outstanding equity
interests of such entity for securities or consideration
issued,
or caused to be
issued, by the acquiring party or its subsidiary, unless the owners
of such entity as of the date prior to the closing date of such
transaction (or series of related transactions) hold more than
fifty percent (50%) of the voting securities in the surviving
entity in such transaction, computed on a fully diluted basis; or
(iii) any person or entity (other than the owners of such
entity as of the date prior to the closing date of such transaction
(or series of related transactions)) having acquired beneficial
ownership or the right to acquire beneficial ownership of, or any
“group” (as “group” is defined under
Section 13(d) of the United States Securities Exchange Act of 1934)
having been formed that beneficially owns or has the right to
acquire beneficial ownership of, more than fifty percent (50%) of
the outstanding voting securities of such entity.
“
Competitor of Licensee ” means any Person, other than
Licensor or Licensee, in the business of providing securities
brokerage services to retail traders, individual investors and
registered investment advisers.
“
Control ” means the possession, directly or
indirectly, of the power to direct or cause the direction of the
management or policies of a Person, whether through the ownership
of voting securities or general partnership or managing member
interests, by contract or otherwise. “ Controlling
” and “ Controlled ” shall have
correlative meanings. Without limiting the generality of the
foregoing, a Person shall be deemed to Control any other Person in
which it owns, directly or indirectly, a majority of the ownership
interests representing the power to vote.
“
Corporate Identity Materials ” shall mean materials
that are used to communicate corporate identity, including forms
for incorporation or qualifying for or registering to do business,
SEC filings, press releases, business cards, letterhead,
stationery, signage, telephone listings, bank accounts, and website
content.
“
Infringement ” shall mean infringement, imitation,
dilution, misappropriation or any other unauthorized use or conduct
in derogation.
“
Marketing Materials ” shall mean all packaging, tags,
labels, advertising, press releases, promotions, promotional
materials, displays, instructions and written warranties, whether
displayed or communicated in print, electronic, optical, broadcast
or any other medium, and other materials of any and all types
associated with sales, marketing, promotional or advertising
efforts relating to Licensee’s products or
services.
“
Person ” means any individual, corporation,
partnership, joint venture, limited liability company, limited
liability partnership, association, joint stock company, trust,
unincorporated organization or other organization, whether or not a
legal entity, or any governmental authority.
“
Territory ” shall mean worldwide, except
Canada.
ARTICLE II
GRANT OF LICENSE; OBLIGATIONS FOR AND LIMITATIONS ON USE
SECTION
2.1. Grant of License. (a) During the Term
set forth in Article VII, and subject to the terms and
conditions contained herein, Licensor hereby grants to Licensee an
irrevocable (subject to Licensor’s rights pursuant to
Sections 7.2), royalty-free, fully paid-up,
non-exclusive
license to use each of the TD Brand and TD Green Logo solely
(i) throughout the Territory; (ii) as part of the
trademark, service mark, trade name, corporate name or domain name
“TD AMERITRADE;” (iii) in connection with
Licensee’s Business; (iv) as part of other trademarks,
service marks, trade names, corporate names or domain names
approved by Licensor; and (v) in Marketing Materials and
Corporate Identity Materials related thereto. Licensee expressly
acknowledges, except as otherwise provided in this Agreement, that
it has no right to use the name “TD” standing alone, as
part of a trademark or service mark, or as part of any corporate
name that is registered or filed with any governmental authority or
agency.
(b) Notwithstanding
anything contained in Section 2.1 to the contrary, during the
Term set forth in Article VII, and subject to the terms and
conditions contained herein, Licensee’s right to use
trademarks, service marks, trade names, corporate names and domain
names incorporating “TD AMERITRADE” shall be exclusive
to Licensee.
(c) Licensee
shall have the right to use each of the TD Brand and TD Green Logo
as a trademark, service mark, trade name, corporate name or domain
name in the Territory. If either the TD Brand or TD Green Logo has
not been registered, applied for or used by Licensor (i) in a
country in which Licensee intends to utilize the TD Brand and/or TD
Green Logo consistent with this Agreement, or (ii) for the
class of products or services on which or in connection with which
Licensee intends to utilize the TD Brand and/or TD Green Logo,
then, upon the request of Licensee, which shall not be unreasonably
rejected, delayed or conditioned, Licensor agrees that it will use
all reasonable efforts to register such TD Brand and/or TD Green
Logo in such country and/or with respect to such class of product
or service
(d) Consistent
with Section 4.2, Licensee shall be permitted to adopt and use
formatives or variations of the Composite Name without the prior
written consent of Licensor; provided , however ,
that Licensee’s use of any such formatives or variations is
consistent with Licensee’s Business. Licensee shall not use
any formatives or variations of the Composite Name for any purpose
other than one consistent with Licensee’s Business without
the prior written consent of Licensor, such consent not to be
unreasonably withheld, conditioned or delayed. Any such formatives
or variations used or approved pursuant to this Section 2.1(d)
shall be subject to the terms and conditions of this
Agreement.
SECTION
2.2. Sublicenses. Licensee may not sublicense
any of its rights under this Agreement without the prior written
consent of Licensor; provided , however , that
Licensee may (i) sublicense any of its rights granted under
this Agreement to any of its Controlled Affiliates with the prior
written consent of Licensor, such consent not to be unreasonably
withheld, conditioned or delayed, and (ii) sublicense any of
its rights granted under this Agreement to any wholly-owned
Affiliates without the prior written consent of
Licensor.
SECTION
2.3. Licensee’s Obligation to Use Composite
Name as Corporate Name. During the term of this Agreement,
Licensee shall be required to use the Composite Name in the United
States as its exclusive corporate entity name, and shall be
required to use the Composite Name with the TD Green Logo in the
United States in its Corporate Identity Materials and in its
Marketing Materials. Licensor and Licensee hereby agree that the
foregoing sentence shall apply to Licensee’s use of the
Composite Name and the TD Green Logo in all other countries within
the Territory; provided , however , that in the event
Licensee in its reasonable business judgment
determines it
is not consistent with or to the benefit of its Business to use the
Composite Name and the TD Green Logo in any particular country, it
shall notify Licensor of such determination and Licensor shall
consent to Licensee’s non-use.
SECTION
2.4. Limit on Licensor’s Ability to Use
Name. Licensor may not use the Name or any trademarks, service
marks, trade names, corporate names and domain names incorporating
the Name in connection with any business or activity prohibited
under Section 5.4 of the Stockholders Agreement.
SECTION
2.5. Reservation of Rights. All rights not
granted to Licensee pursuant to this Agreement are expressly
reserved to Licensor. Except as otherwise prohibited by this
Agreement or the Stockholders Agreement, Licensor reserves the
right to use the Name for any purpose throughout the
world.
ARTICLE III
OWNERSHIP OF NAME
(a) Subject
to the provisions of Articles II and III, Licensee agrees that, as
between Licensor and Licensee, Licensor is the sole and exclusive
owner of the Name and all right, title and interest in the Name.
Subject to the provisions of Articles II and III of this Agreement,
Licensee shall not contest, oppose or challenge Licensor’s
rights in the Name, including without limitation thereto, Licensee
shall not willingly become a party adverse to Licensor in
litigation in which a third party contests the validity of the Name
or Licensor’s rights therein. Subject to the provisions of
Articles II and III of this Agreement, Licensee shall not, either
during the Term or after expiration or termination of this
Agreement, attempt to use or register any trademark, service mark,
trade name, corporate name or domain name identical or confusingly
similar to the Name (including without limitation, the Composite
Name) or assist any third parties in doing the same without the
prior written consent of the Licensor, such consent not to be
unreasonably withheld, conditioned or delayed. Any and all goodwill
arising from Licensee’s use of the Name shall inure to the
benefit of Licensor.
(b) Licensor
and Licensee agree that they shall be joint owners of the Composite
Name, and that the registration of the Composite Name and all other
trademarks related thereto shall be governed by Section 3.2 of
this Agreement. Any Licensor-approved mark variant or formative
adopted pursuant to Section 2.1(d) shall be jointly owned by
Licensor and Licensee, shall be subject to the terms and conditions
of this Agreement, and any such trademark registrations of
Licensor-approved mark variants or formatives shall be governed by
Section 3.2 of this Agreement. Any and all goodwill arising
from Licensee’s use of the Composite Name and any
Licensor-approved mark variant or formative shall inure to the
benefit of Licensor and Licensee. Licensor and Licensee shall each
use their commercially reasonable efforts not take any action that
is detrimental to the Name, the Composite Name or the goodwill
associated therewith.
(c) Licensor
agrees that, as between Licensor and Licensee, Licensee is the sole
and exclusive owner of all right, title and interest in elements of
(i) the Composite Name,
(ii) any
marks and domain names that incorporate the Composite Name, and
(iii) any variant or formative of the Composite Name used by
Licensee pursuant to Section 2.1(d); provided ,
however , that Licensee shall have no ownership right, title
or interest in the Name itself and nothing contained in this
Section 3.1(c) shall be intended to be inconsistent with
Licensor’s ownership rights contained in Section 3.1(a).
Other than with respect to rights to the Name itself,
(x) Licensor shall not contest, oppose or challenge
Licensee’s rights in elements of the Composite Name, of any
marks and domain names that incorporate the Composite Name, and of
any variant or formative of the Composite Name used by Licensee
pursuant to Section 2.1(d), and (y) Licensor shall not
willingly become a party adverse to Licensee in litigation in which
a third party contests Licensee’s rights to, or the validity
of elements of, the Composite Name, of any marks and domain names
that incorporate the Composite Name, and of any variant or
formative of the Composite Name used by Licensee pursuant to
Section 2.1(d). Other than as to the Name itself, Licensor
shall not, either during the Term or after expiration or
termination of this Agreement, attempt to use or register any
trademark, service mark, trade name, corporate name or domain name
identical or confusingly similar to elements of the Composite Name,
of any marks and domain names that incorporate the Composite Name,
or any formative or variant of the Name used by Licensee pursuant
to Section 2.1(d), or assist any third parties in doing the same
without the prior written consent of the Licensee, such consent not
to be unreasonably withheld, conditioned or delayed. Other than any
and all goodwill arising from Licensee’s use of the Name
itself, any and all goodwill arising from Licensee’s use of
elements of the Composite Name, of any marks and domain names that
incorporate the Composite Name, and of any formative or variant of
the Composite Name used by Licensee pursuant to Section 2.1(d)
shall inure to the benefit of Licensee. Licensor shall use its
commercially reasonable efforts not take any action that is
detrimental to the elements of the Composite Name, of any marks and
domain names that incorporate the Composite Name, and any formative
or variant of the Composite Name used by Licensee pursuant to
Section 2.1(d) or the goodwill associated
therewith.
SECTION
3.2. Registration of Trademarks. Except as
provided below, Licensor shall be responsible for the registration,
maintenance and prosecution of any trademark applications and
registrations for the Name and any marks substantially or
confusingly similar thereto. Licens
|
